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 .
Note Regarding Change in Examiner
The foregoing application has been assigned to a different Examiner from that which authored the previous Office Actions. Despite this change, every effort has been made to maintain substantive consistency between actions.
Response to Arguments
Applicant's arguments filed 8/5/2026 regarding the rejection of Independent Claims 1 and 10 and dependent Claims 2-9 and 11-18 under 35 USC 101 have been fully considered but they are not persuasive.
Applicant argues that Claims 1 and 10 do not recite a mental process because (1) the recited “RRI sensor for detecting a signal corresponding to an R wave of an electrocardiogram signal…” is not practically performable in the human mind and (2) the recited “chaos index” cannot be practically determined in the human mind. These arguments are not persuasive. Neither the “RRI sensor” nor the “chaos index” highlighted by Applicant have been deemed abstract ideas, but instead are additional elements that amount to mere data gathering and which are well-understood, routine and conventional in the art.
Applicant further argues that the claims integrate a practical application under Step 2A, Prong 2 because they “present additional elements that reflect ‘an improvement to ... technology or [a] technical field,’ and ‘appl[y] or use[] the judicial exception in [a] 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.’ MPEP § 2106.04(d)(1)” (Applicant’s 8/5/2026 Remarks at Pg. 17). In support of this position, Applicant cites the precedential Decision in Ex Parte Desjardins et al., Appeal 2024-000567, dated September 26, 2025, likening “detecting a signal corresponding to an R wave of an electrocardiogram signal via an RRI sensor and to a tangible output, i.e., displaying a message of the determination result on a display device” to the improvement of Desjardins (Applicant’s 8/5/2026 Remarks at Pg. 18). The Examiner respectfully disagrees.
In contrast to Desjardins, Independent Claims 1 and 10 do not recite an improvement to computer functioning itself as contemplated by MPEP 2106.05(a). Instead recite, the improvement of Claims 1 and 10 is the abstract idea of “determining a brain activity state … based on a comparison of a brain activity threshold and the index value ratio,” which determining is implemented by a computer. This improvement is facilitated by the additional elements highlighted by Applicant in that these additional elements provide data required for the improvement/determination, but is not provided by those additional elements: it is provided by the abstract idea. In accordance with MPEP 2106.05(a), “…the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements.” As such, and consistent with Desjardins, Claims 1 and 10 do not recite such an improvement as would render its subject matter patent eligible.
Applicant further argues that the claims recite “significantly more” under Step 2B because “[d]etermining a brain activity state through the ratio of chaos index values computed from RRI data acquired in two distinct states is not a well-understood, routine, or conventional activity previously engaged in by those in the field.” In support of this position, Applicant notes the allowability relative to prior art noted in the Non-Final Office Action dated 8/5/2026. This argument is not persuasive. “The question of whether a particular claimed invention is novel or obvious is ‘fully apart’ from the question of whether it is eligible. Diamond v. Diehr, 450 U.S. 175, 190, 209 USPQ 1, 9 (1981). The “determination” highlighted by Applicant is an abstract idea implemented based on data gathered through well understood, routine and conventional means. The claimed invention as a whole does not amount to significantly more than the abstract idea recited therein.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
Claim 10, Ln. 4-5 and Claim 20, Ln. 2, “a sensor component communication unit for communicating the RRI data to a computer communication unit,” regarding which the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function.
For purposes of this Office Action, the above element is being interpreted as a generic computer component capable of achieving the claimed function.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
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 10 and 20, and Claims 11-18 by dependency, 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.
Regarding Claims 10 and 20, the Claim limitation “a sensor component communication unit for communicating the RRI data to a computer communication unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. As there is no disclosure of structure, material or acts for performing the recited function, the claim fails to satisfy the requirements of 35 U.S.C. 112(b) (see Rejection of Claims 10 and 20 under 35 USC 112(b), below). MPEP 2181(II)(A). The claimed “sensor component” appears from the Present Specification to be a computer-implemented function. “When a claim containing a computer-implemented 35 U.S.C. 112(f) claim limitation is found to be indefinite under 35 U.S.C. 112(b) for failure to disclose sufficient corresponding structure (e.g., the computer and the algorithm) in the specification that performs the entire claimed function, it will also lack written description under 35 U.S.C. 112(a).” MPEP 2181(II)(B). Accordingly, Claims 1 and 10 lack written description under 35 U.S.C. 112(a).
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 10 and 20, and Claims 11-18 by dependency, 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.
Regarding Claims 10 and 20, the Claim limitation “a sensor component communication unit for communicating the RRI data to a computer communication unit” invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claim Rejections - 35 USC § 101
Claims 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1-9 are for a device, and claims 10-18 are for a computer readable medium, storing instructions. Thus, the claims are for statutory subject matter.
Step 2a, prong 1
Claim 1 includes a determination unit that compares brain a activity threshold and an index value ratio. This step is considered to be an abstract idea in the form of a mental process. That is, the determination can be performed in the user’s head. Further, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) See MPEP 2106.04(a).
Claim 10 also includes a determination unit that compares a brain activity threshold and an index value ratio, and thus includes an abstract idea.
Step 2a, prong 2
Claim 1 also includes a chaos index value calculation unit, a reference value data retention control unit, and a determination target chaos index value calculation unit and an index value ratio calculation unit. These are all used to gather and produce data for use with the abstract idea. Thus, they do not integrate the abstract idea into a practical application since they do not improve the functioning of a computer or technical field, or treat a particular medical condition. Further, use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). See MPEP 2106.05(f).
Claims 2-9 also only set forth further details of the data gathering steps, and further details about the abstract idea itself. Thus, there are no elements that integrate the abstract idea into a practical application. Claim 10, similar to claim 1, also includes data gathering steps, separate from the abstract idea itself. Thus, there are no elements that integrate the abstract idea into a practical application. Claims 11-18 also, similar to claims 2-9, only set forth further details of the data gathering steps, and further details about the abstract idea itself. Thus, there are no elements that integrate the abstract idea into a practical application. Claim 19 sets forth a computer implementation (i.e., a smart watch), which is a generic computer structure for performing a generic computer function, and thus simply amounts to using a computer as a tool to implement the abstract idea. Claim 20 sets forth a “sensor component communication unit,” which is a generic computer structure for performing a generic computer function, and thus simply amounts to using a computer as a tool to implement the abstract idea.
Step 2b
The above claims include calculation units and control unit. These elements are described in applicant’s specification as being a computer. Computers are considered to be well understood, routine and conventional in the art. For example, Minusa (2024/0282414) teaches a processor and storage along with various evaluation units, as well as a sensor to measure RRI, see figure 1. Also, Tanaka (2023/0211780) teaches processor, memory and sensors that determine RRI. Furthermore, H. Diaz et al., "Order and Chaos in the Brain: Fractal Time Series Analysis of the EEG Activity During a Cognitive Problem Solving Task;" Procedia Computer Science, Volume 55, 2015, Pages 1410-1419 describes computer implementation of a chaos index, see Abstract. Seguin (US 2023/0076361 A1) describes such a display as claimed as “well-known” at Para. [0039]. Bell (US 2014/0035745 A) describes such smartwatch implementation as claimed as “well-known” at Para. [0004].
Potentially Allowable Subject Matter
The prior art does not teach the device set forth in claims 1,10 including a chaos index calculation unit for calculating a chaos index, a determination target chaos index value calculation unit, an index value calculation unit and a determination unit as set forth in the claims. The Examiner notes that future amendments which alter the scope of the claims may result in a concomitant change in applicable art. As such, the Examiner reserves the right to apply art should future change in claim scope so-warrant.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHRISTOPHER J MUTCHLER whose telephone number is (571)272-8012. The examiner can normally be reached M-F 7:00 am - 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jennifer McDonald can be reached at 571-270-3061. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/C.J.M./Examiner, Art Unit 3796
/LYNSEY C Eiseman/Primary Examiner, Art Unit 3796
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