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 .
Drawings
Regarding FIGS. 1, 3-5, 7-10, 12 and 14-15, 37 CFR 1.84(t) states the following:
(t) Numbering of sheets of drawings. The sheets of drawings should be numbered in consecutive Arabic numerals, starting with 1, within the sight as defined in paragraph (g) of this section. These numbers, if present, must be placed in the middle of the top of the sheet, but not in the margin. The numbers can be placed on the right-hand side if the drawing extends too close to the middle of the top edge of the usable surface. The drawing sheet numbering must be clear and larger than the numbers used as reference characters to avoid confusion. The number of each sheet should be shown by two Arabic numerals placed on either side of an oblique line, with the first being the sheet number and the second being the total number of sheets of drawings, with no other marking.
37 CFR 1.84(u) states the following:
(u) Numbering of views.
(1) The different views must be numbered in consecutive Arabic numerals, starting with 1, independent of the numbering of the sheets and, if possible, in the order in which they appear on the drawing sheet(s). Partial views intended to form one complete view, on one or several sheets, must be identified by the same number followed by a capital letter. View numbers must be preceded by the abbreviation "FIG." Where only a single view is used in an application to illustrate the claimed invention, it must not be numbered and the abbreviation "FIG." must not appear.
(2) Numbers and letters identifying the views must be simple and clear and must not be used in association with brackets, circles, or inverted commas. The view numbers must be larger than the numbers used for reference characters.
FIGS. 1, 3-5, 7-10, 12 and 14-15 do not illustrate the proper sheet numbering, nor views in view of the “Brief Description of Drawings” in the written description of the specification as originally filed, within paras. [0017] through [0032]. Specifically, the term “continued” must not be used and any subsequent FIGS. or views must be clearly indicated as described within 37 CFR 1.84(t) and (u) (i.e. FIG. 4A, FIG. 4B, FIG. 4C, FIG. 4D, and FIG. 4E).
Therefore, the unclear numbering of sheets and views that lack in agreement with the “Brief Description of Drawings” prevents FIGS. 1, 3-5, 7-10, 12 and 14-15 from complying with 37 CFR 1.84(t) and (u).
Regarding FIGS. 1-4, 7-10, and 13-15, 37 CFR 1.84(b)(1), stated in part, indicates that black and white photographs, including photocopies of photographs and clip art, are not ordinarily permitted in utility and design patent applications. The Office will accept photographs in utility and design patent applications, however, if photographs are the only practicable medium for illustrating the claimed invention. The photographs must be of sufficient quality so that all details in the photographs are reproducible in the printed patent. In the present case, FIGS. 1-4, 7-10, and 13-15 contain screenshots/clip art that are not of sufficient quality so that all details in the screenshots are reproducible in the printed patent. Therefore, the use of screenshots/clip art lacking sufficient reproducible quality prevents FIGS. 1-4, 7-10, and 13-15 from complying with 37 CFR 1.84(b)(1).
Regarding FIGS. 3, 7, 8-10, 14-15, 37 CFR 1.84(m), stated in part, prefers the use of shading when parts are shown in perspective. In the present case, FIGS. 3, 7, 8-10, 14-15 uses various forms of shading making the figures unclear Therefore, the use of shading in an otherwise non-perspective view prevents FIGS. 3, 7, 8-10, 14-15 from complying with 37 CFR 1.84(m).
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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 1-22 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.
Step 1 – “Statutory Category Identification”
Claim 1 is directed to “a method” (i.e. “a process”), claim 8 is directed to “a system” (i.e. “a machine”), claim 15 is directed to “a computer program product” (i.e. “a machine”), and claims 21 and 22 are directed to “a method” (i.e. “a process”), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 1 “Abstract Idea Identification”
However, the claims are drawn to an abstract idea of “determining a risk that a person is likely to develop one or more behaviors,” either in the form of “certain methods of organizing human activity,” in terms of managing personal behavior or relationships or interactions between people (including social activities, teaching and following rules or instructions), or reasonably in the form of “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion). Regardless, the claims are reasonably understood as either “certain methods of organizing human activity” or “mental processes,” which require the following limitations:
Per claim 1:
“acquiring magnetic resonance imaging (MRI) data of a first cohort of persons through an MRI device, the MRI data comprising gray matter volume and a plurality of task-related fMRI contrasts;
performing a multimodal fusion of the gray matter volume and the plurality of task-related fMRI contrasts using a MCCAR+jICA supervised fusion model, wherein the MCCAR+jICA supervised fusion model comprises multi-site canonical correlation analysis with reference combined with joint independent component analysis;
identifying using the MCCAR+jICA supervised fusion model, a highest portion of novelty seeking associated multimodal brain networks in the first cohort of persons based on the multimodal fusion;
computing a plurality of scores, each score indicating a risk of developing one of a plurality of specified behaviors;
determining, for the first cohort of persons at a later time, how accurately the computed plurality of scores indicated the risk of developing each of the plurality of specified behaviors;
classifying at least a second person not belonging to the first cohort of persons using features of those novelty seeking associated multimodal brain networks that indicated the risk of developing the specified behaviors with greater than a predefined accuracy; and
displaying to a user the risk of the second person of developing any of the plurality of specified behaviors.”
Per claim 8:
“acquiring magnetic resonance imaging (MRI) data of a first cohort of persons through an
MRI device, the MRI data comprising gray matter volume and a plurality of task-related fMRI contrasts;
performing a multimodal fusion of the gray matter volume and the plurality of task-related fMRI contrasts using a MCCAR+jICA supervised fusion model, wherein the MCCAR+jICA supervised fusion model comprises multi-site canonical correlation analysis with reference combined with joint independent component analysis;
identifying using the MCCAR+jICA supervised fusion model, a highest portion of novelty seeking associated multimodal brain networks in the first cohort of persons based on the multimodal fusion;
computing a plurality of scores, each score indicating a risk of developing one of a plurality of specified behaviors;
determining, for the first cohort of persons at a later time, how accurately the computed plurality of scores indicated the risk of developing each of the plurality of specified behaviors;
classifying at least a second person not belonging to the first cohort of persons using features of those novelty seeking associated multimodal brain networks that indicated the risk of developing the specified behaviors with greater than a predefined accuracy; and
displaying to a user the risk of the second person of developing any of the specified behaviors.”
Per claim 15:
“acquiring magnetic resonance imaging (MRI) data of a first cohort of persons through an MRI device, the MRI data comprising gray matter volume and a plurality of task-related fMRI contrasts;
performing a multimodal fusion of the gray matter volume and the plurality of task-related fMRI contrasts using a MCCAR+jICA supervised fusion model, wherein the MCCAR+jICA supervised fusion model comprises multi-site canonical correlation analysis with reference combined with joint independent component analysis;
identifying, using the MCCAR+jICA supervised fusion model, a highest portion of novelty seeking associated multimodal brain networks in the first cohort of persons based on the multimodal fusion;
computing a plurality of scores, each score indicating a risk of developing one of a plurality of specified behaviors;
determining, for the first cohort of persons at a later time, how accurately the computed plurality of scores indicated the risk of developing each of the plurality of specified behaviors;
classifying at least a second person not belonging to the first cohort of persons using features of those novelty seeking associated multimodal brain networks that indicated the risk of developing the specified behaviors with greater than a predefined accuracy; and
displaying to a user the risk of the second person of developing any of the specified behaviors.”
Per claim 21:
“acquiring magnetic resonance imaging (MRI) data of a first cohort of persons through an MRI device, the MRI data comprising gray matter volume and a plurality of task-related fMRI contrasts;
performing a multimodal fusion of the gray matter volume and the plurality of task-related fMRI contrasts using a MCCAR+jICA supervised fusion model, wherein the MCCAR+jICA supervised fusion model comprises multi-site canonical correlation analysis with reference combined with joint independent component analysis;
providing multimodal reward related biomarkers associated with a generalized dysfunctional novelty seeking multimodal brain network;
identifying using the MCCAR+jICA supervised fusion model, a highest portion of novelty seeking associated multimodal brain networks in the first cohort of persons based on the multimodal fusion;
computing a plurality of scores, each score indicating a risk of developing one of a plurality of specified behaviors;
determining, for the first cohort of persons at a later time, how accurately the computed plurality of scores indicated the risk of developing each of the plurality of specified behaviors; and
building a predictive model able to classify the risk of a person not belonging to the first cohort of persons developing at least one of the plurality of specified behaviors based on at least MRI data of the person.”
Per claim 22:
“acquiring magnetic resonance imaging (MRI) data of a person's brain through an MRI device, the MRI data comprising gray matter volume and a plurality of task-related fMRI contrasts;
performing a multimodal fusion of the gray matter volume and the plurality of task-related fMRI contrasts using a MCCAR+jICA supervised fusion model, wherein the MCCAR+jICA supervised fusion model comprises multi-site canonical correlation analysis with reference combined with joint independent component analysis;
feeding the multimodal fusion into a predictive model;
determining, using the predictive model, a person's risk of developing one or more of a plurality of specified behaviors; and
displaying to a user the determined risk that the person is likely to develop one or more of the plurality of specified behaviors.”
These limitations simply describe a process of data gathering and manipulation, which is analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 2 – “Practical Application”
Furthermore, the applicants claimed elements of “a computer system comprising a processor, memory accessible by the processor, and computer program instructions” and “an MRI device,” are merely claimed to generally link the use of a judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) to (1) a particular technological environment or (2) field of use, per MPEP §2106.05(h); and are applying the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, per MPEP §2106.05(f). In other words, the claimed “determining a risk that a person is likely to develop one or more behaviors,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Step 2B – “Significantly More”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “a computer system comprising a processor, memory accessible by the processor, and computer program instructions” and “an MRI device,” are claimed, these are generic, well-known, and conventional data gather computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the Applicant’s claimed “a computer system comprising a processor, memory accessible by the processor, and computer program instructions” as described in paras. [0041], [0043], [0048] and [0050] of the Applicant’s written description as originally filed, provides the following:
“[0041] An exemplary block diagram of a computer system 1600, in which processes and components involved in the embodiments described herein may be implemented, is shown in FIG. 16. Computer system 1600 may be implemented using one or more programmed general-purpose computer systems, such as embedded processors, systems on a chip, personal computers, workstations, server systems, and minicomputers or mainframe computers, or in distributed, networked computing environments such as the cloud. Computer system 1600 may include one or more processors (CPUs) 1602A-1602N, input/output circuitry 1604, network adapter 1606, and memory 1608. CPUs 1602A-1602N execute program instructions in order to carry out the functions of the present communications systems and methods. Typically, CPUs 1602A-1602N are one or more microprocessors, such as an INTEL CORE® processor. FIG. 16 illustrates an embodiment in which computer system 1600 is implemented as a single multi-processor computer system, in which multiple processors 1602A-1602N share system resources, such as memory 1608, input/output circuitry 1604, and network adapter 1606. However, the present communications systems and methods also include embodiments in which computer system 1600 is implemented as a plurality of networked computer systems, which may be single-processor computer systems, multi-processor computer systems, or a mix thereof.”
“[0043] Memory 1608 stores program instructions that are executed by, and data that are used and processed by, CPU 1602 to perform the functions of computer system 1600. Memory 1608 may include, for example, electronic memory devices, such as random-access memory (RAM), read-only memory (ROM), programmable read-only memory (PROM), electrically erasable programmable read-only memory (EEPROM), flash memory, etc., and electro-mechanical memory, such as magnetic disk drives, tape drives, optical disk drives, etc., which may use an integrated drive electronics (IDE) interface, or a variation or enhancement thereof, such as enhanced IDE (EIDE) or ultra-direct memory access (UDMA), or a small computer system interface (SCSI) based interface, or a variation or enhancement thereof, such as fast-SCSI, wide-SCSI, fast and wide-SCSI, etc., or Serial Advanced Technology Attachment (SATA), or a variation or enhancement thereof, or a fiber channel-arbitrated loop (FC-AL) interface.”
“[0048] The computer readable storage medium may be, for example, but is not limited to, an electronic storage device, a magnetic storage device, an optical storage device, an electromagnetic storage device, a semiconductor storage device, or any suitable combination of the foregoing. A non-exhaustive list of more specific examples of the computer readable storage medium includes the following: a portable computer diskette, a hard disk, a random access memory (RAM), a read-only memory (ROM), an erasable programmable read-only memory (EPROM or Flash memory), a static random access memory (SRAM), a portable compact disc read-only memory (CD-ROM), a digital versatile disk (DVD), a memory stick, a floppy disk, a mechanically encoded device such as punch-cards or raised structures in a groove having instructions recorded thereon, and any suitable combination of the foregoing. A computer readable storage medium, as used herein, is not to be construed as being transitory signals per se, such as radio waves or other freely propagating electromagnetic waves, electromagnetic waves propagating through a waveguide or other transmission media (e.g., light pulses passing through a fiber-optic cable), or electrical signals transmitted through a wire.”
“[0050] Computer readable program instructions for carrying out operations of the present invention may be assembler instructions, instruction-set-architecture (ISA) instructions, machine instructions, machine dependent instructions, microcode, firmware instructions, state-setting data, configuration data for integrated circuitry, or either source code or object code written in any combination of one or more programming languages, including an object oriented programming language such as Smalltalk, C++, or the like, and procedural programming languages, such as the “C” programming language or similar programming languages. The computer readable program instructions may execute entirely on the user's computer, partly on the user's computer, as a stand-alone software package, partly on the user's computer and partly on a remote computer or entirely on the remote computer or server. In the latter scenario, the remote computer may be connected to the user's computer through any type of network, including a local area network (LAN) or a wide area network (WAN), or the connection may be made to an external computer (for example, through the Internet using an Internet Service Provider). In some embodiments, electronic circuitry including, for example, programmable logic circuitry, field-programmable gate arrays (FPGA), or programmable logic arrays (PLA) may execute the computer readable program instructions by utilizing state information of the computer readable program instructions to personalize the electronic circuitry, in order to perform aspects of the present invention.”
This broadly describes a generic computer system having generic, well-known, and conventional data gathering elements commonly and commercially available today.
Finally, the Applicant’s claimed “an MRI device,” is not described with any detail in the written description of the specification as originally filed. Regardless, “an MRI device,” is reasonably interpreted as a generic, well-known, and conventional data gathering element that is commonly and commercially available today.
Therefore, the Applicant’s own specification discloses ubiquitous standard equipment that is (1) generic, routine, conventional, and/or commercially available; and (2) does not provide anything significantly more. Thus, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-7, 9-14, and 16-20 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-7, 9-14, and 16-20 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1, 8 or 15. Therefore, claims 1-22 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject-matter.
Claim Rejections - 35 USC § 112
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.
Claims 1-22 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
Claims 1, 8, 15, 21 and 22, recite the following limitation: “an MRI device.” This limitation is not adequately described in the specification as originally filed and forms the basis of the rejection. Specifically, the written description of the specification as originally filed fails to disclose any details with regard to “an MRI device,” as claimed. As such, the limitations are reasonably rejected under a theory of new matter. Therefore, claims 1, 8, 15, 21 and 22 are rejected under 35 U.S.C. §112(a), as failing to comply with the written description requirement. Claims 2-7, 9-14 and 16-20 are also rejected under 35 U.S.C. § 112(a), based on their respective dependencies to claim 1, 8 or 15.
Response to Arguments
The Applicant’s arguments filed on February 3, 2025 related to claims 1-22 are fully considered, but are not persuasive.
Drawing Objections
The Applicant respectfully argues “In the Office Action, the Examiner objected to the drawings for various informalities. Applicant herein submits replacement drawing sheets containing a corrected FIGS. 1-16. Accordingly, Applicant respectfully requests withdrawal of the drawing objection.”
The Examiner respectfully disagrees. The Applicants replacement drawing sheets continue to be objectionable as previously stated above. As such, the argument is not persuasive. Therefore, the drawing objections are not withdrawn.
Claim Rejections - 35 USC § 101
The Applicant respectfully argues “The Examiner characterized the claims as analogous to "collecting information, analyzing it, and displaying certain results" under Electric Power Group, 830 F.3d 1350 (Fed. Cir. 2016). However, the amended claims recite specific technical steps that go far beyond mere data collection and analysis. Claim 1 as amended now recites "acquiring magnetic resonance imaging (MRI) data of a first cohort of persons through an MRI device, the MRI data comprising gray matter volume and a plurality of task-related fMRI contrasts." This recitation requires the use of a specific medical imaging device to acquire particular types of neuroimaging data, which cannot be performed mentally or through organizing human activity.”
The Examiner respectfully disagrees. It is worth noting in MPEP §2106 under “II. Certain Methods of Organizing Human Activity,” certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping. As applied in this case, a person interacting with a computer for “determining a risk that a person is likely to develop one or more behaviors,” reasonably constitutes identifying the Applicant’s claims as an abstract idea in the form of “certain methods of organizing human activity.” As such, the argument is not persuasive.
The Applicant respectfully argues “Claim 1 as amended further recites "performing a multimodal fusion of the gray matter volume and the plurality of task-related fMRI contrasts using a MCCAR+jICA supervised fusion model, wherein the MCCAR+jICA supervised fusion model comprises multi-site canonical correlation analysis with reference combined with joint independent component analysis." As described in the specification, this MCCAR+jICA supervised fusion model is a specific technical algorithm that "can identify multimodal imaging components associated with a specific measure of interest (NS)." As-Filed Specification, paragraph [0039]. This mathematical transformation of raw MRI data into fused multimodal components represents a specific technical improvement in neuroimaging data processing that cannot be performed in the human mind. Claims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations. See SRI Int'l, Inc. V. Cisco Systems, Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019).
Claim 1 as amended also recites "identifying, using the MCCAR+jICA supervised fusion model, a highest portion of novelty seeking associated multimodal brain networks in the first cohort of persons based on the multimodal fusion." This step applies the specific fusion model to identify brain network components from the fused data, which is a technical process rooted in neuroimaging technology. Independent claims 8, 15, 21, and 22 have been similarly amended to include these same technical limitations regarding MRI data acquisition through an MRI device, multimodal fusion of gray matter volume and task-related fMRI contrasts, and application of the MCCAR+jICA supervised fusion model.”
The Examiner respectfully disagrees. With respect to mental processes, actual mental performance of the abstract idea is not required, Further, the MPEP § 2106.04(a)(2)(III)(C) states that “claims can recite a mental process even if they are claimed as being performed on a computer” and that “examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and Applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite a mental process.” In the present case, the claim limitations perform steps that are performed on a generic computer and/or computer environment, and merely uses a computer as a tool to perform the concept. As such, the argument is not persuasive.
The Applicant respectfully argues “Even if the claims were found to recite an abstract idea at Step 2A, Prong 1, the amended claims integrate any such idea into a practical application under Step 2A, Prong 2. Limitations the courts have found indicative that an additional element may have integrated the exception into a practical application include an improvement in the functioning of a computer, or an improvement to other technology or technical field, as well as implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim. The amended claims require acquiring specific types of MRI data through an MRI device, which is not merely "generally linking" to a technological environment but rather requires specific data acquisition from a particular medical imaging technology.
The multimodal fusion using the MCCAR+jICA supervised fusion model processes gray matter volume and task-related fMRI contrasts "to identify the high-NS (top 20% scored) associated brain regions." As-Filed Specification, paragraph [0039]. This represents a specific technical process for transforming raw neuroimaging data into clinically meaningful biomarkers. The identified multimodal features are then "used to build prediction models for both follow up (19-year-olds) disease risks prediction and transdiagnostic symptom severity evaluation, and even classification among multiple diseases." As-Filed Specification, paragraph [0069]. The claims thus provide a practical application in the field of mental health evaluation and treatment.”
The Examiner respectfully disagrees. The Applicant’s argument is misguided as to the proper analysis of a “Practical Application” as required under Step 2A, Prong 2. Specifically, the Applicant’s argument appears to describe claimed utility, which is not the test. Instead, the Applicant’s claims are not considered a “Practical Application,” because the claims do not provide any of the following:
An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
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Furthermore, there are also several factors that reasonably explain that the Applicant’s claims are not indicative of integration into a practical application, which include:
Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
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Here, the Applicant’s claims are not providing any technological advancement as described in the first five bulleted factors and, as described above in the rejection, the Applicant’s claims are merely claimed to use a computer as a tool to perform an abstract idea and to generally link the use of a judicial exception to a particular technological environment or field of use. As such, the argument is not persuasive.
The Applicant respectfully argues “At Step 2B, the amended claims recite elements that are not generic, well-known, or conventional. The MCCAR+jICA supervised fusion model recited in the amended claims is a specific technical algorithm that combines multi-site canonical correlation analysis with reference and joint independent component analysis. This is not a generic computing element but rather a specialized neuroimaging data processing technique. The specific combination of gray matter volume and task-related fMRI contrasts processed through the MCCAR+jICA model to identify novelty seeking associated brain networks represents a specific technical approach that provides significantly more than the alleged abstract idea. The ordered combination of acquiring specific MRI data types, performing multimodal fusion using the MCCAR+jICA model, and identifying brain network components based on the fusion results represents a specific technical process that is not routine or conventional in the art.”
The Examiner respectfully disagrees. The Applicant’s claimed “a computer system comprising a processor, memory accessible by the processor, and computer program instructions” and “an MRI device,” are nothing more than generic, well-known, and conventional data gather computing elements as previously described above in the rejection. As such, the argument is not persuasive.
The Applicant respectfully argues “Dependent claims 2-7, 9-14, and 16-20 depend from amended independent claims 1, 8, and 15, respectively, and are therefore patent eligible for at least the same reasons as their respective independent claims. Claims 5, 12, and 19 further specify that the plurality of task-related fMRI contrasts comprises at least some of a modified monetary incentive delay task, a face emotion identification task, and a stop-signal task, which adds additional technical specificity to the claimed methods.
In view of the foregoing, Applicant respectfully submits that claims 1-22 as amended are patent eligible under 35 U.S.C. § 101 and requests withdrawal of this rejection”
The Examiner respectfully disagrees, for the reasons stated here and above. Therefore, the rejections under 35 U.S.C. §101 are not withdrawn.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT P BULLINGTON whose telephone number is (313)446-4841. The examiner can normally be reached Mon.-Fri. 8:00-4:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter Vasat can be reached on (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Robert P Bullington, Esq./
Primary Examiner, Art Unit 3715