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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
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. 15/540,887, 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.
Claim 1 recites “detecting, in real time, physical quantities representative of a state of mind of the subject, the detecting using sensors for electrical activity detection” in lines 3-4. However, the prior-filed application fails to provide any support for the above limitation. There is no indication that physical quantities representative of a state of mind of the subject are determined. At most, the prior-filed application indicates that the probes are related to electromyography (¶¶ [0113] [0156], [0187] of US 2018/0011986 A1). However, electromyographic signals do not appear to correspond to physical quantities representative of a state of mind of the subject, and there is no description of how they are connected. Claims 2-7 do not have sufficient support by virtue of their dependence from claim 1. Accordingly, claims 1-7 are not entitled to the benefit of the prior application.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 04/01/2024 was considered by the examiner.
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:
Such claim limitation(s) is/are:
Detecting unit in claim 8;
Identifying unit in claim 8;
Determining unit in claim 8;
Conversion unit in claim 8;
Computing module in claim 8;
Comparison module in claim 8;
Identification module in claim 8;
Classification module in claim 8;
Unit configured to display the at least one alteration in claim 10;
Module configured to display the muscles and said bones in a combined view in claim 12;
First request module in claim 14; and
Second request module in claim 14.
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.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) or preAIA 35 U.S.C. 112, sixth paragraph limitation:
Detecting unit in claim 8, Identifying unit in claim 8, Determining unit in claim 8, Conversion unit in claim 8, Computing module in claim 8, Comparison module in claim 8, Identification module in claim 8, Classification module in claim 8, Unit configured to display the at least one alteration in claim 10, Module configured to display the muscles and said bones in a combined view in claim 12, First request module in claim 14, Second request module in claim 14 are being interpreted to parts of one or more processors and their associated programming, as described in ¶¶ [0252]-[0256] of the published application, and equivalents thereof.
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are:
Detecting means in claim 8 because it recites “sensors for electrical activity detection”, which is sufficient structure for performing the recited functions of “detecting” and “for detecting physical quantities representative of a state of the subject”.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends 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 remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 1-7 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
As indicated in MPEP 2161.01, the specification fails to support a claim that defines the invention in functional language specifying a desired result when the specification does not sufficiently identify how the invention achieves the claimed function. For there to be sufficient disclosure for a computer-implemented claim limitation, it is not enough that one skilled in the art could write a program to achieve the claimed function. Rather, the specification must disclose the algorithm, steps, or procedure for performing the claimed function in sufficient detail such that one of ordinary skill can reasonably conclude that the inventor invented the claimed subject matter. In other words, the algorithm, steps, or procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.
Claim 1 recites “detecting, in real time, physical quantities representative of a state of mind of the subject” in lines 3-4 and “determining combined movements of muscles and bones as a function of the physical quantities and the biomechanical model” in lines 11-12. However, the specification does not provide sufficient description of the algorithms, steps, or procedures for arriving at the determination of the combined movements as a function of physical quantities representative of a state of mind of the subject. At most, the specification indicates that the probes are related to electromyography (¶¶ [0114] [0155], [0185] of the published application). However, electromyographic signals do not appear to correspond to physical quantities representative of a state of mind of the subject, and there is no description of how quantities representative of a state of mind are used to arrive at the determination of the combined movements.
Claims 2-7 are rejected by virtue of their dependence from claim 1.
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 1-7 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 1 recites “detecting, in real time, physical quantities representative of a state of mind of the patient” in line 3, which is indefinite. Physical quantities appear to correspond to quantities of or related to the body. State of mind appears to correspond to a person’s emotional state or mood. It is unclear which quantities of the body are representative of a person’s emotional state or mood. The specification does not provide any clarity as to what the quantities are. For the purposes of examination, “physical quantities representative of a state of mind of the patient” will be interpreted to correspond to brain signals.
Claims 2-7 are rejected by virtue of their dependence from claim 1.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 8-14 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 8-14 of U.S. Patent No. 11,942,225 B2 (hereinafter referred to as “the ‘225 patent”). Although the claims at issue are not identical, they are not patentably distinct from each other because the species of claims 8-14 of the ‘225 patent anticipates the genus of the claims 8-14 of the instant application. See MPEP 804 (II)(B)(2).
Claims 1-7 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-7 of U.S. Patent No. 11,942,225 B2 (hereinafter referred to as “the ‘225 patent”) in view of US 2007/0016265 A1 (Davoodi). In this case, claims 1-7 of the ‘225 patent include all the limitations of claims 1-7 of the instant application except that the physical quantities are representative of a state of mind of the subject.
In the same field of endeavor of detecting and modeling movements, Davoodi teaches physical quantities are representative of a state of mind of the subject (¶ [0015] using neural signals from peripheral motor neurons or from the brain to detect intended limb movement). It would have been obvious for one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the physical quantities of claims 1-7 of the instant application to incorporate that they are representative of a state of mind of the subject. Because both EMG and brain signals are capable of being used for detecting movements of a user (¶ [0015] of Davoodi teaches both neural signals and EMG signals may be used for detecting intended voluntary movement signal), it would have been the simple substitution of one known equivalent element for another to obtain predictable results.
No Prior Art Rejections
With regards to claim 1, the prior art does not teach or suggest “detecting, in real time, physical quantities representative of a state of mind of the subject, the detecting using sensors for electrical activity detection”; “determining combined movements of muscles and bones as a function of said physical quantities and said biomechanical model as a function of: first joint parameters (Pz) of a first joint (Atz) and at least one second joint parameter (Pz+1) computed as a function of second joints (Az+1) affected by the movement of the first joint (Atz)”; “converting said combined movements of muscles and bones into a plurality of movement steps of human body segments of the subject and human body joints of the subject”; and “identifying the at least one alteration based on the failed matching between parameters (PALi), determined based on the plurality of movement steps, and reference values representative of alteration thresholds in the musculoskeletal system” along with the other features of claim 1.
Claim 8 recites similar limitations which are not taught or suggested in the prior art.
Claims 2-7 and 9-14 do not have prior art rejections by virtue of their dependence on respective claims 1 and 8.
US 2007/0016265 A1 (Davoodi) teaches determining voluntary movement signals based on EMG or neural signal detection (¶ [0015]) and simulating limb movements in a virtual environment based on the voluntary movement signals (¶ [0016]). However, Davoodi does not teach or suggest “converting said combined movements of muscles and bones into a plurality of movement steps of human body segments of the subject and human body joints of the subject” and “identifying the at least one alteration based on the failed matching between parameters (PALi), determined based on the plurality of movement steps, and reference values representative of alteration thresholds in the musculoskeletal system” along with the other features of claims 1 and 8.
US 2017/0136265 A1 (Hyde) teaches calculation of a human model which may include a human connectivity model, a musculoskeletal model, or other model of movement (¶ [0106]). However, Hyde does not teach or suggest “determining combined movements of muscles and bones as a function of said physical quantities and said biomechanical model as a function of: first joint parameters (Pz) of a first joint (Atz) and at least one second joint parameter (Pz+1) computed as a function of second joints (Az+1) affected by the movement of the first joint (Atz)” along with the other features of claims 1 and 8.
US 2011/0054870 A1 (Dariush) teaches generating a biomechanical model for the subject as a function of execution of a step-by-step user instruction procedure (¶ [0006] discloses providing the user with guidance to perform certain movements, and captures the user's movements in an image stream. The image stream is analyzed to estimate the user's movements, which is tracked by a user-specific human model. Biomechanical quantities such as center of pressure and muscle forces are calculated based on the tracked movements. Feedback such as the biomechanical quantities and differences between the guided movements and the captured actual movements are provided to the user). However, Dariush does not teach or suggest the above features using sensors for electrical activity detection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL C KIM whose telephone number is (571)272-8637. The examiner can normally be reached M-F 8:00 AM - 5:00 PM EST.
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/S.C.K./Examiner, Art Unit 3791
/JACQUELINE CHENG/Supervisory Patent Examiner, Art Unit 3791