DETAILED ACTION
Applicant' s arguments, filed 05/15/2026 have been fully considered. The following rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
Applicants have amended their claims, filed 11/15/2023, and therefore rejections newly made in the instant office action have been necessitated by amendment.
Claims 13-15 and 22-30 are the current claims hereby under examination.
All references to Applicant’s specification are made using the paragraph numbers assigned in the US publication of the present application US 2024/0090817 A1.
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 .
Priority
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 62/519,561 fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. In particular, the provisional application 62/519,561 makes no mention of Brodmann Areas and thus does not support claims 13-21 which are directed towards the measurement and evaluation of EEG data from a specific Brodmann Area. The instant Application is supported by PCTUS2018037342 and will be granted the priority date of 06/13/2018 as the effective filing date for the claimed subject matter of claims 13-21.
Claim Objections
Claims 13-15 are objected to because of the following informalities:
Claim 13 line 4 it appears that “the left Brodmann” should read “a left Brodmann”
Claim 13 line 13 it appears that “the memory performance” should read “the level of memory performance” to better match the language of line 2.
Claims 14 and 15 line 3 it appears that “analysis of wavelet convolution” should read “analysis of a wavelet convolution”
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 13-15 and 22-30 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 13 recites “evaluating the high gamma and beta biomarkers from said electrical signal data collected at each of the first time and the second time, including determining a combination of characteristics from among: onset, offset, power, duration, and spectral content, to produce first and second evaluations, respectively” but it is unclear what the evaluation of the biomarkers entails. It is unclear if the evaluation of the biomarkers is simply the determination of a combination of the recited characteristics or if the evaluation is a different process that utilizes the determined characteristics. The language appears to indicate that the evaluations are “produced” using the determined characteristics but it is unclear what such a production of the evaluation entails and what its result is. For the purposes of this examination, the evaluation is considered to be the determination of the characteristics such that the output of the evaluation is the characteristics themselves.
Claim 13 recites “quantifying the memory performance of the subject corresponding to the first time and the second time based on the first and the second evaluations, respectively” but it is unclear what this quantification entails. It is unclear how the evaluations are considered to produce the quantified memory performance, and it is unclear what the output of the quantification is. It is unclear what the meets and bound of a “quantification of memory performance” include. For the purposes of this examination, the quantification will be interpreted as some value produced from the combination of characteristics of the evaluations.
Claim 13 recites “quantifying the memory performance of the subject corresponding to the first time and the second time based on the first and the second evaluations, respectively” but it is unclear how this step relates to the rest of the claimed method. In particular, it would seem that the outcome of the method is the generated report but the quantification of memory performance is not recited as being part of this report. The quantification of memory performance appears to be entirely separate from the rest of the claimed method. For the purposes of this examination, the method will be considered as requiring the quantification to be performed but not requiring any further use of the quantifies value.
Claim 13 recites “the report representing biomarker-derived indications of the memory performance of the subject at the second time relative to the memory performance determined at the first time” but it is unclear what the “biomarker-derived indications of the memory performance of the subject” entail. In particular it would seem that the biomarkers are set forth as the high gamma and beta oscillations. The claim then sets forth that the biomarkers are evaluated and the evaluation includes determining a combination of characteristics. The claim further indicates that the result of the evaluations, which is being interpreted as the characteristics themselves, are used to make a quantification and that they are further compared. Thus it would seem that the characteristics derived from the biomarkers and the result of the quantification are each derived from the biomarkers. Thus it is unclear if the “biomarker-derived indications of the memory performance of the subject” are the same as, related to, different from, or a subset of the characteristics and/or the result of the quantification. It is further unclear if the report is merely a display of these determined values or includes a parameter and/or metric that is derived from these values since the report “represents” the indications of the memory-performance. For the purposes of this examination, the limitation will be interpreted as outputting the characteristics derived from the measurements at the first and second time and the comparison result.
Claims 14-15 and 22-30 are rejected by virtue of their dependence on claim 13.
Claim 22 recites “wherein the quantifying of the memory performance of the subject corresponding to each of the first time and the second time includes quantifying the memory performance as a probability measure.” But it is unclear what such a quantification entails. It is unclear what such a probability measure is representative of. For the purposes of this examination, the limitation will be interpreted as any form of generating a probability measure and the probability measure being a probability related to cognitive performance.
Claim 24 recites the limitation " the one or more properties of the high-gamma and beta oscillation biomarkers " in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this limitation is meant to refer to the “combination of characteristics” determined from the biomarkers in claim 13 or some other property of the biomarkers. For the purposes of this examination, the limitation will be interpreted as referring to properties different from the characteristics of claim 13.
Claim 24 recites “wherein the quantifying of the memory performance of the subject corresponding to each of the first time and the second time includes classifying the one or more properties of the high-gamma and beta oscillation biomarkers” but it is unclear what the classification result is. It is unclear what metrics are considered to produce a classification result. It is unclear how the classification of the properties is considered a “quantification of the memory performance” as it would seem that such a quantification would necessarily result in a value as an output. For the purposes of this examination, the limitation is interpreted as any classification related to memory performance.
Claim 25 recites the limitation " the one or more properties of the high-gamma and beta oscillation biomarkers " in lines 3-4. There is insufficient antecedent basis for this limitation in the claim. It is unclear if this limitation is meant to refer to the “combination of characteristics” determined from the biomarkers in claim 13 or some other property of the biomarkers. For the purposes of this examination, the limitation will be interpreted as referring to properties different from the characteristics of claim 13.
Claim 25 recites “herein the quantifying of the memory performance of the subject corresponding to each of the first time and the second time includes applying a logistic regression model to the one or more properties of the high-gamma and beta oscillation biomarkers” but it is unclear what the outcome of the logistic regression model entails and how such an outcome is considered a quantification. It is unclear what the logistic regression model is being applied to and how it is being applied. For the purposes of this examination, the limitation will be interpreted as any application of a logistic regression model.
Claim 26 recites “wherein evaluating the high gamma and beta biomarkers from said electrical signal data includes classifying whether the signal data represents encoding, recalling, or performing another cognitive task” but it is unclear if this classification is in addition to, alongside of, or in the place of the determination of characteristics recited in claim 13. It is further unclear how the output of such an evaluation, an indication of encoding, recalling, or performing, would then be used in the subsequent quantification and comparing steps recited in claim 13. For the purposes of this examination, the limitation will be interpreted as performing the classification in addition to the determination of characteristics of claim 13.
Claims 28-30 each recite that a type of stimulation is supplied to the subject in response to the report. It is unclear how the outcome of the report is interpreted, considered, or otherwise utilized to determine the therapy application to the patient. It is unclear how the report is processed to result in the administration of therapy and what such processing entails. For the purposes of this examination, the limitation will be interpreted as the administration of therapy for any outcome of the report.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 13 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 13 recites “quantifying the memory performance of the subject corresponding to the first time and the second time based on the first and second evaluations respectively” but the specification does not appear to describe how the quantification of memory performance using the recited characteristics of the evaluation (see the interpretation provided corresponding to the above presented clarity rejection with respect to the outcome of the evaluations). In particular, paragraphs 0095-0143 describe a particular process of selecting ripple and spike events and performing power and spectral analysis on these events to serve as predictors. Additionally, the specification does not appear to describe how the “memory performance” is “quantified” using the characteristics. In particular, paragraphs 0033, 0037-0039, 0078-0079, and 0158 include mere generic statements of functionality reciting that the memory performance is measured from the biomarkers. Paragraphs 0083 and 0134 appear to indicate that the high gamma and beta oscillations are biomarkers and that a measurement of memory performance is derived from them, but do not appear to elaborate on how such a measurement is derived from the biomarkers. Paragraph 0151 appears to indicate that some form of classifier is used to determine a strong or weak memory performance using the biomarkers and their properties but it would seem that a classification of the memory performance as strong or weak is not a “quantification” of memory performance. Finally, paragraphs 0156 and 0161-0162 appear to indicate that a measurement of memory performance is relative and based upon comparisons to previous memory performance measures and the differences in the properties of the biomarkers between these times. The specification does not appear to describe how one could “quantify” the “memory performance” of a patient based on the recited characteristics. It would seem that paragraphs 0156 and 0161-0162 describe a quantification of memory performance but such a quantification is only performed when the measured biomarkers are associated with a given performance determined through a separate memory task, not from solely analyzing the biomarkers themselves. Thus the specification is considered to lack sufficient written description support for the recited quantification of the memory performance based on the characteristics determined in the claim.
Claims 22-23 recite that the quantification includes the quantifying the memory performance as a probability measure. The claims encompass any method of generating a probability measure using the output of the recited evaluations but it would seem that the specification does not fully support such a scope. In particular, paragraphs 0123-0126 describe that the probability of recall success can be determined using high gamma and beta band vectors of power but such a determination is carried out using a logistic regression model which is established using training data derived from a plurality of memory trails and their corresponding high gamma and beta power measurements. Thus it would seem that the determination of a probability measure of recall success by the subject would be supported if the claim were to limit such a determination to be carried out using a logistic regression model trained on previous memory trials and their associated biomarker measurements. It would seem that the specification does not support the quantification of a probability measure using only the measured electrical signal data. The specification seems to indicate that the measured electrical signal data must be correlated with a corresponding memory trial to establish a reference or baseline that can differentiate unrecalled versus recalled trials.
Claim 26 recites “wherein evaluating the high gamma and beta biomarkers from said electrical signal data includes classifying whether the signal data represents encoding, recalling, or performing another cognitive task” which indicates that the biomarker data of high gamma and beta EEG recordings are classified into encoding, recalling, or performing another cognitive task. The specification does not appear to describe how such a classification is performed. The specification does not appear to describe what parameters, characteristics, or features of the biomarkers are considered and how they correlate to a given classification result. Paragraph 0038 of the specification recites a mere statement of functionality that the classification is performed but does not describe how the signals are classified into these groups. Paragraphs 0148-0149 relate tot eh classification of encoding activity into either recalled encoding activity or unrecalled encoding activity but does not describe the classification of the biomarkers into the recited groups. The specification does not appear to describe how the biomarkers are considered or otherwise processed to result in their classification into the recited groups.
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 13-15 and 22-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claims 13-15 and 22-27 are directed to a method of processing data using a computational algorithm, which is an abstract idea. Claims 13-15 and 22-27 do not include additional elements that integrate the exception into a practical application or that are sufficient to amount to significantly more than the judicial exception for the reasons provided below which are in line with the 2014 Interim Guidance on Patent Subject Matter Eligibility (Federal Register, Vol. 79, No. 241, p 74618, December 16, 2014), the July 2015 Update on Subject Matter Eligibility (Federal Register, Vol. 80, No. 146, p. 45429, July 30, 2015), the May 2016 Subject Matter Eligibility Update (Federal Register, Vol. 81, No. 88, p. 27381, May 6, 2016), and the 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 4, page 50, January 7, 2019) and the 2024 Update on Subject Matter Eligibility (Federal Register, Vol 89, No. 137, page 58128, July 17, 2024).
The analysis of claim 13 is as follows:
Step 1: Claim 13 is drawn to a process.
Step 2A – Prong One: Claim 13 recites an abstract idea. In particular, claim 13 recites the following limitations:
[A1] receiving electrical signal data collected from the left Brodmann Area 40 (BA40) of the subject at a first time and at a second time, the electrical signal data comprising data from which high gamma (65-250 Hz) and beta (14-20 Hz) oscillation biomarkers are detectable
[B1] evaluating the high gamma and beta biomarkers from said electrical signal data
[C1] determining a combination of characteristics from among: onset, offset, power, duration, and spectral content, to produce first and second evaluations, respectively
[D1] quantifying the memory performance of the subject corresponding to the first time and the second time based on the first and second evaluations respectively
[E1] comparing the first and second evaluations to produce a comparison result
[F1] generating a report based on the first and second evaluations, and on the comparison result, the report representing biomarker-derived indications of the memory performance of the subject at the second time relative to the memory performance determined at the first time.
These elements [A1]-[F1] of claim 13 are drawn to an abstract idea since they involve a mental process that can be practically performed in the human mind including observation, evaluation, judgment, and opinion and using pen and paper.
Step 2A – Prong Two: Claim 13 recites the following additional limitations that are beyond the judicial exception:
[A2] a computing system
This element [A2] of claim 13 does not integrate the exception into a practical application of the exception. In particular, the element [A2] is merely an instruction to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.04(d) and MPEP 2106.05(f).
Further, the element [A2] does not qualify as significantly more because this limitation is simply appending well-understood, routine and conventional activities previously known in the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known in the industry (see Electric Power Group, 830 F.3d 1350 (Fed. Cir. 2016); Alice Corp. v. CLS Bank Int’l, 110 USPQ2d 1976 (2014)) and/or a claim to an abstract idea requiring no more than being stored on a computer readable medium which is a well-understood, routine and conventional activity previously known in the industry (see Electric Power Group, 830 F.3d 1350 (Fed. Cir. 2016); Alice Corp. v. CLS Bank Int’l, 110 USPQ2d 1976 (2014); SAP Am. v. InvestPic, 890 F.3d 1016 (Fed. Circ. 2018)).
In view of the above, the additional elements individually do not integrate the exception into a practical application and do not amount to significantly more than the above-judicial exception (the abstract idea). Looking at the limitations as an ordered combination (that is, as a whole) adds nothing that is not already present when looking at the elements taking individually. There is no indication that the combination of elements improves the functioning of a computer, for example, or improves any other technology. There is no indication that the combination of elements permits automation of specific tasks that previously could not be automated. There is no indication that the combination of elements includes a particular solution to a computer-based problem or a particular way to achieve a desired computer-based outcome. Rather, the collective functions of the claimed invention merely provide conventional computer implementation, i.e., the computer is simply a tool to perform the process.
Claims 14-15 and 22-27 depend from claim 13, and recite the same abstract idea as claim 13. Furthermore, these claims only contain recitations that further limit the abstract idea (that is, the claims only recite limitations that further limit the algorithm) with the following exception:
Claim 25: a logistic regression model
Claim 27: an electroencephalogram system
Each of these claim limitations do not integrate the exception into a practical application. In particular, the elements of claim 27 are merely adding insignificant extra-solution activity to the judicial exception, i.e., mere data gathering at a higher level of generality - see MPEP 2106.04(d) and MPEP 2106.05(g). and the element of claim 25 is nothing more than the computer implementation/automation of an abstract mental process of screening a patient, which is what a physician typically does with a patient in a diagnostic setting and thus amounts to an instruction to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.04(d) and MPEP 2106.05(f).
The limitation of claim 27 does not recite additional elements that amount to significantly more than the judicial exception itself because it is merely insignificant extrasolution activity to the judicial exception, e.g., mere data gathering in conjunction with the abstract idea that uses conventional, routine, and well known elements or simply displaying the results of the algorithm that uses conventional, routine, and well known elements. In particular, the electroencephalogram system is nothing more than a typical EEG system which is well-known in the art as evidenced by Applicant’s lack of a particular description of the system in the specification and further evidenced by:
U.S. Patent Application Publication No. US 2006/0173510 A1 (Besio) discloses that EEG electrodes are conventional (paragraph 0013 of Besio); and
U.S. Patent Application Publication No. US 2015/0313498 A1 (Coleman) discloses that EEG electrodes and EEG electrode caps in various configurations are conventional (paragraphs 0108 of Coleman).
In view of the above, the additional elements individually do not integrate the exception into a practical application and do not amount to significantly more than the above-judicial exception (the abstract idea). Looking at the limitations of each claim as an ordered combination in conjunction with the claims from which they depend (that is, as a whole) adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer, for example, or improves any other technology. There is no indication that the combination of elements permits automation of specific tasks that previously could not be automated. There is no indication that the combination of elements includes a particular solution to a computer-based problem or a particular way to achieve a desired computer-based outcome. Rather, the collective functions of the claimed invention merely provide conventional computer implementation, i.e., the computer is simply a tool to perform the process.
Claims 28-30 also depend from claim 13 but are not rejected under 35 USC 101 because they implement the abstract idea into a practical application by using the output of the algorithm to administer a therapeutic effect to the patient.
Prior Art
The closest prior art of record is considered to be:
US Patent Application Publication Number US 2018/0021579 A1 hereinafter Kahana teaches a method for delivering electrical stimulation to alter a cognitive state of a user, the method comprising: monitoring a brain signal from the user via one or more intracranial electrodes implanted in the brain of the user while the user is presented with a stimulus; comparing the brain signal to a testing phase biomarker, wherein the testing phase biomarker is derived from a cognitive test performed on a contributor during a testing phase; delivering electrical stimulation to a brain of the user based on the comparing step to steer the brain of the user towards a high performance cognitive state (Abstract). Kahan teaches that different brain regions are activated when performing different cognitive tasks such as encoding and recall. The activation of various brain regions may be monitored during these tasks and regions that show statistically significant increases or decreases in activation during these tasks can be noted. The brain signals associated with these regions may be associated with each stage of the cognitive task and can be used as biomarkers indicative of accurate or inaccurate memory formation (Paragraph 0064-0065 and Fig. 1). The brain signals can be used to determine if the user is in a high or low performance cognitive state and stimulation may be provided to guide the user towards a high-performance cognitive state (Paragraph 0066). Biomarkers are assessed during cognitive tasks by correlating brain signals with task performance. The biomarkers may be associated with a level of cognitive performance. A large number of biomarkers may be identified but the biomarker set may be reduced to one or more biomarkers to classify brain signals into performance states (Paragraphs 0068-0069).
US Patent Number US 8918176 B2 hereinafter Nelson teaches systems and methods for assessing a degenerative cognitive disorder of a patient based on a plurality of episodes of non-motor epileptiform bioelectrical activity. The non-motor epileptiform bioelectrical activity can be detected from one or more bioelectrical brain signals. A worsening cognitive disorder may be indicated by an increase in one or more of intensity, duration, and frequency of occurrence of the episodes of non-motor epileptiform bioelectrical activity. A therapy can be delivered to reduce one or more of intensity, duration, and frequency of occurrence of the episodes of non-motor epileptiform bioelectrical activity. The delivery of the therapy can be controlled based on the plurality of episodes of non-motor epileptiform bioelectrical activity (Abstract). Nelson teaches that gamma and/or beta oscillations may indicate an acceptable or improved cognitive state (Col 19 lines 7-10).
US Patent Number US 9116835 B1 hereinafter Smyth teaches that Brodmann Area 40 (BA 40) is associated with language processing and understanding (Col 13 lines 10-15). This is further taught by US Patent Application Publication Number US 2009/0299126 A1 hereinafter Fowler which teaches that BA 39 and 40 are typically involved with sensory integration or speech. Additionally, US Patent Application Publication Number US 2010/0057159 A1 hereinafter Lozano teaches that BA 40 may be one of a plurality of suitable target sites for stimulation to treat a variety of neurological conditions including those associated with cognitive ability.
Lundqvist et. al. “Gamma and Beta Bursts Underlie Working Memory” published by Neuron a Cell Press Journal on 04/06/2016, pages 152-164 teaches that working memory is thought to result from sustained neuron spiking. Lundqvist teaches that brief bursts of narrow-band gamma oscillations (45-100Hz) were present in monkeys performing a working memory task and that these spikes accompanied encoding and re-activation of sensory information. Beta oscillations (20-35Hz) also occurred (Summary). Lundqvist teaches that Gamma and Beta oscillations have specific roles in encoding and decoding (Discussion paragraph 6)
Double Patenting
The present application is a divisional application of 16622098 and drawn towards a restricted group. Thus, no double patenting rejection is necessitated. Amendments to the scope of the claims may necessitate new grounds of double patenting rejections.
Response to Arguments
In regards to the rejections presented under 35 USC 112(b)
Applicant’s arguments have been fully considered but are moot in light of the new grounds of rejection presented towards the amended claim language.
In regards to the rejections presented under 35 USC 112(a)
Applicant’s arguments with respect to claim 13, to the extent that they apply to the presently presented grounds of rejection, are not found to be persuasive because Application does not provide paragraph citations and describe how the language in the specification supports the claimed language. Applicant provides statements that he language is supported but no evidence to support such statements. As such, Applicant’s arguments are not found to be persuasive.
In regards to the rejections presented under 35 USC 101
Applicant’s arguments have been fully considered but are not found to be persuasive.
In particular, Applicant argues that Examiner mischaracterizes the claim language and that the presently presented claim cannot practically be performed in the human mind using nothing more than pen and paper and that the previously presented rejection does not explain how the process could be carried out mentally.
Applicant’s arguments are not found to be persuasive because the claim language does not include any constraint that would preclude the process from being practically performed in the human mind. In particular, a user may receive the electrical signal data such as printed EEG data, the user may evaluate the high gamma and beta biomarkers by determining a combination of the recited characteristics. It is noted that there is no recited time constraint on such a process, so even the more complex parameters such as spectral content may be determined using pen and paper given sufficient time. Additionally, the parameters such as duration, onset, offset, and power are all quickly determinable using nothing more than pen and paper. The determined parameters may then be used to “quantify the memory performance” as this step is not particularly limited there is no complex calculation or decision to be made. The quantification could be rating the performance on a scale of 1-10 based on the result of the evaluation. Next, the user may make a comparison of the evaluation results to produce a comparison result, again this step is not particularly limited and may simply be the identification that the first or second evaluation produced a larger or smaller value. The user may then “generate a report” by writing the evaluation results and comparison result down on a piece of paper.
As described above, the claim contains no limitations drawn towards particularly complex calculations or decisions made in a rapid enough timeframe or with a particular level of accuracy that would preclude the method from being performed in the human mind using nothing more than pen and paper.
Applicant further argues that even if an abstract idea is present then the office action did not properly address the limitations beyond the judicial exception.
Applicant’s arguments are not found to be persuasive because the listed limitations that are supposedly not addressed are either mere descriptions of the data being received (the electrical signal data from a specific region and the particular frequencies), or part of the abstract idea itself (each element listed from 3-7) and thus cannot amount to significantly more than the abstract idea because the element is part of the abstract idea. Moreover, the claims contain no indication that the claimed invention improves the functions of a computer or to the technological field as evaluations of cognitive function, or memory performance are known in the art (see Kahana paragraphs 0064-0069). Applicant’s arguments are not commensurate in scope with the claimed invention. No specific improvement has been set forth in the claims.
Applicant further argues that the office action improperly treats specific neurophysiological signal-processing limitations as generic data analysis. Applicant argues that the claims do not recite generic data processing because the claim requires signals from particular locations and analyzes particular oscillation biomarkers.
Applicant’s arguments are not found to be persuasive because they are not considered to be commensurate in scope with the claimed invention. The claimed invention does require specific electrode locations and the analysis of specific frequency bands but such limitations merely describe the data being received. Additionally, the analysis of particular frequencies of a signal is not outside the realm of possibility of being performed by the human mind using nothing more than pen and paper as there are no constraints to the timeframe or number of datapoints being analyzed. The particular analysis performed on the specific received signals is also considered to be capable of being performed in the human mind using nothing more than pen and paper as described above. Applicants’ arguments are not considered to be commensurate in scope with the claim language.
Applicant asserts that the analysis under step 2B is conclusory and unsupported. Applicant asserts that no evidence is support that the computer system is merely a tool to carry out the process
Applicant’s arguments are not found to be persuasive because they mischaracterize the rejection. The analysis under 2B asserts that the conventional computer system is being used for its conventional purpose, that is the execution of a program or process. The process itself is considered an abstract idea as described in the analysis under step 2A. Additionally the claimed computer system must be a generic computing system as applicant’s specification does not describe a specific, non-conventional computing system for carrying out the process.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/MATTHEW ERIC OGLES/ Examiner, Art Unit 3791
/JASON M SIMS/Supervisory Patent Examiner, Art Unit 3791
Prosecution Insights