DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant’s remarks concerning the §101 rejections have been fully considered but are mostly not persuasive, except for the remark related to new claim 21.
Applicant argues that the claimed invention results in various technological improvements such as improved sensitivity of atrial fibrillation detection, reduction of false positives, and the like. The Examiner respectfully disagrees. These alleged improvements appear to be due entirely to the mental steps themselves. As noted in MPEP § 2106.05(a), “It is important to note, the judicial exception alone cannot provide the improvement.” Thus, alleged improvements that result solely from the mental steps themselves cannot be considered a “technological” improvement. Here, if a person were to manually carry out the functions of the assessment circuit and atrial fibrillation detection circuit, they would presumably arrive at the very same “improvements” compared to carrying out those steps on generic processing circuitry, such as reducing false positives. As such, to the degree that an improvement is claimed, it is not an inherently technological one. Applicant’s further remarks concerning the alleged improvements in Para. [0047] (which it appears should have been Para. [0048]) are not persuasive because they are vague (e.g. they allege vague improvements generally without any specific basis for comparison, e.g. when stating “reducing storage” – reduced compared to what?), and also because those alleged improvements are not claimed nor are they tied to any of the specific limitations currently claimed.
Applicant’s remark about transitioning the device from a low-power mode to a high-power mode in connection with new claim 21 is persuasive. The Examiner agrees that such a step as positively claimed amounts to a fundamental change in how the underlying technology operates, and thus is sufficient to be categorized as a technological improvement in combination with the other elements of claim 1 (from which new claim 21 depends). As such, claim 21 is indicated as containing allowable subject matter if it were amended to be in independent form.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process without significantly more.
Step 1: All of claims 1-20 are directed either to a method/process or to a system/machine.
Step 2A, Prong One: The claims recite a mental process including steps such as the steps carried out by the assessment circuit (“to determine … and to determine …”) and the atrial fibrillation circuit (“to detect …”) in claim 1 (see corresponding steps in claim 12, which are the steps of “determining … determining … and detecting …”) which could be performed by the human mind and/or by a human with a physical aid such as pen and paper.
Step 2A, Prong Two: This judicial exception is not integrated into a practical application because the claims merely implement the mental process using generic processing technology and add insignificant extra-solution activity. Specifically: the steps of “receiving” the data using a signal receiver circuit, and/or using sensors to sense the data, is considered insignificant pre-solution activity of mere data gathering, since it merely collects the data necessary to carry out the mental process. Furthermore, merely carrying out mental steps using generic computing technology such as “an assessment circuit” and the like is well established to not amount to an integration into a practical application under the § 101 analysis. See, e.g., MPEP §§ 2106.04(a)(2)(III)(C) and 2106.04(d)(I) and 2106.05(f). Additionally, merely carrying out the mental process in the context of an implantable device (as in claims 3 or 14) is considered to be merely linking the use of the mental process to a particular technological environment. See MPEP § 2106.05(e).
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional elements recited in the claims are generic processing/computing components and generic data receiving and sensing components. The Examiner takes official notice that these are basic, generic components which are well-understood, routine and conventional in the medical diagnostic arts, and the claims here merely use them for their well-understood, routine and conventional functions. As such, those additional elements cannot be considered “significantly more” than the judicial exception in Step 2B of the § 101 analysis.
Dependent claims 2-11 and 13-20 otherwise merely expand on the mental steps themselves and/or expand on the insignificant pre-solution activity of mere data gathering, and thus follow the same analysis above.
Allowable Subject Matter
Claim 21 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R DOWNEY whose telephone number is (571)270-7247. The examiner can normally be reached Monday-Friday 8:30am-5:00pm ET.
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/JOHN R DOWNEY/Primary Examiner, Art Unit 3792
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