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 .
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 1, 8 & 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7 & 13 of U.S. Patent No. 10,617348. Although the claims at issue are not
identical, they are not patentably distinct from each other because of the following rationale:
Claims 1 and 15: US 18/629468
Claim 1 and 13: U.S. Pat. 10,617,348
A computer-implemented method for affecting living neural tissue comprising/a computer program product for affecting living neural tissue…comprising a non-transitory computer readable storage having program instructions embodied therewith…
A computer-implemented method for affecting living neural tissue comprising/ a computer program product for affecting living neural tissue…comprising a non-transitory computer readable storage having program instructions embodied therewith…
receiving at least one signal from at least one modality…representing release of photons…the read modality comprising at least one read modality neural interface implanted in living neural tissue;
receiving at least one signal from at least one read modality…the signal representing release of photons from the living neural tissue
computing at least one signal to effect alterations to the living neural tissue…the computer signal adapted to cause transmission of photons to the living neural tissue; and delivering the photons to the living neural tissue
computing at least one signal to effect alterations to the living neural tissue…the computed signal adapted to cause transmission of photons to the living neural tissue; delivering the photons to the living neural tissue…
Claim 8: US 18/629468
Claim 7: U.S. Pat. 10,617,348
A system for affecting living neural tissue comprising: at least one photonic read modality…generating a signal representing the released photons…comprises at least one read modality neural interface planted in the living tissue;
A system for affecting living tissue comprising:
at least one photonic read modality adapted to receive photons…and generating a signal representing the released photons.
at least one photonic write modality adapted to deliver photons…wherein the at least one photonic write modality comprises at least on write modality neural interface implanted…
at least one photonic write modality adapted to deliver photons to the living neural tissue…based on at least one computed signal;
Computing circuitry comprising a processor, memory…computer program instructions…to compute the at least one signal.
and computing circuitry comprising a processor, a memory accessible by the processor, and computer program instructions…to compute the at least one signal.
As depicted above, the limitations of claim 1, 8 & 15 of the present invention differ from claims 1, 7 & 13 of U.S. Pat. No. ‘348 in that the method, computer program product and system are directed towards a read modality comprising at least one read modality neural interface implanted in living neural tissue, which represents an obvious species of the generic method, computer program product and system of U.S. Pat. ‘348, i.e. the generic claims are directed to at least one read modality. No additional structure or functional limitations between the two claim sets that would render the claims patentably distinct from one another.
AND;
Claims 1, 8 & 15 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 7 & 13 of U.S. Patent No. 11,950,924. Although the claims at issue are not
identical, they are not patentably distinct from each other because of the following rationale:
Claims 1 and 15: US 18/629468
Claim 1 and 13: U.S. Pat. 11,950,924
A computer-implemented method for affecting living neural tissue comprising/a computer program product for affecting living neural tissue…comprising a non-transitory computer readable storage having program instructions embodied therewith…
A computer-implemented method for affecting living neural tissue comprising/ a non-transitory computer program product for affecting living neural tissue… having program instructions embodied therewith…
receiving at least one signal from at least one modality…representing release of photons…the read modality comprising at least one read modality neural interface implanted in living neural tissue;
receiving at least one signal from at least one read modality…the signal representing release of photons from the living neural tissue
computing at least one signal to effect alterations to the living neural tissue…the computer signal adapted to cause transmission of photons to the living neural tissue; and delivering the photons to the living neural tissue
computing at least one signal to effect alterations to the living neural tissue…the computed signal adapted to cause transmission of photons to the living neural tissue; delivering the photons to the living neural tissue…
Claim 8: US 18/629468
Claim 7: U.S. Pat. 11,950,924
A system for affecting living neural tissue comprising: at least one photonic read modality…generating a signal representing the released photons…comprises at least one read modality neural interface planted in the living tissue;
A system for affecting living tissue comprising:
at least one photonic read modality adapted to receive photons…and generating a signal representing the released photons.
at least one photonic write modality adapted to deliver photons…wherein the at least one photonic write modality comprises at least on write modality neural interface implanted…
at least one photonic write modality adapted to deliver photons to the living neural tissue…based on at least one computed signal;
Computing circuitry comprising a processor, memory…computer program instructions…to compute the at least one signal.
and computing circuitry comprising a processor, a memory accessible by the processor, and computer program instructions…to compute the at least one signal.
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 1-21, specifically independent claims 1, 8 & 15, are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. Please see the below analysis providing the details as to why the invention is directed towards non-statutory subject matter.
Step 1:
Claim 1 is directed to a method. Therefore, the claim falls within a statutory category of invention.
Claim 8 is directed to a system, which is a product. Therefore, the claim falls within a statutory category of invention.
Claim 15 is directed to a computer program product comprising a non-transitory computer readable storage. Therefore, the claim falls within a statutory category of invention.
Step 2A, prong 1:
Claim 1 recites a method comprising:
“…receiving at least one signal from at least one read modality…”
“…computing at least one signal to effect alterations to the living neural tissue…”
Claim 8 recites a system comprising
“…a photonic read modality adapted to receive photons from living neural tissue and generating a signal…”
“…a photonic write modality…to effect alterations to the living tissue…”
“…computing circuitry…to compute the at least one signal.”
Claim 15 recites a computer program product comprising non-transitory computer readable storage having instructions (method steps of):
“…receiving at least one signal from at least one read modality…”
“…computing at least one signal to effect alterations to the living tissue…”
Under the broadest reasonable interpretation, claims 1, 8 & 15, recites a series of steps practically performed in the human mind. A human could receive at least one signal, compute at least one signal to effect alterations and deliver the photons to the living tissue. Therefore, it would be practical to perform the steps in a human’s mind, or with a pen and paper.
Therefore, claims 1, 8 & 15 recite method steps comprising mental processes (i.e. receiving) and mathematical concepts (i.e. computing). Since claims 1, 8 & 15 recite limitations that fall within the mental processes and mathematical concepts of abstract ideas, and the claims are therefore directed to an abstract idea.
Step 2A, prong 2:
Claim 1 recites the following additional elements, which for the reasons set forth below, do not integrate the abstract idea into a practical application:
“…at least one read modality…” which is directed to mere instructions to apply an exception, see MPEP 2106.05(f).
“…at least one read modality neural interface…” which is directed to mere instructions to apply an exception, see MPEP 2106.05(f).
“…at least one write modality neural interface…” which is directed to mere instructions to apply an exception, see MPEP 2106.05(f).
Claim 8 recites the following additional elements, which for the reasons set forth below, do not integrate the abstract idea into a practical application:
“…at least one read modality…” which is directed to mere instructions to apply an exception, see MPEP 2106.05(f).
“…at least one read modality neural interface…” which is directed to mere instructions to apply an exception, see MPEP 2106.05(f).
“…at least one write modality…” which is directed to mere instructions to apply an exception, see MPEP 2106.05(f).
“…at least one write modality neural interface…” which is directed to mere instructions to apply an exception, see MPEP 2106.05(f).
“…a processor, memory accessible by the processor…” which is directed to mere instructions to apply an exception, see MPEP 2106.05(f).
Claim 15 recites the following additional elements, which for the reasons set forth below, do not integrate the abstract idea into a practical application:
“…at least one read modality…” which is directed to mere instructions to apply an exception, see MPEP 2106.05(f).
“…at least one read modality neural interface…” which is directed to mere instructions to apply an exception, see MPEP 2106.05(f).
“…at least one write modality…” which is directed to mere instructions to apply an exception, see MPEP 2106.05(f).
“…at least one write modality neural interface…” which is directed to mere instructions to apply an exception, see MPEP 2106.05(f).
Therefore, the claims fail to integrate the abstract idea into a practical application. The examiner also notes that the additional elements recited in claims 1, 8 & 15 do not apply or use the judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition. The claims are silent to providing any treatment at all to a patient.
Step 2B:
The claims as a whole fails to recite an inventive concept. The additional elements, when considered individually and in combination, do not recite significantly more than the abstract idea for the reasons as set forth above in Step 2A, Prong 2. Upon re-evaluating the limitation that was previously identified as insignificant extra-solution activity in Step 2A, Prong 2, the following evidence to show that the limitation is well-understood, routine and conventional:
real-time discrete data obtained from a medical device/data previously collected from a medical device (i.e. body surface/unipolar electrodes) Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network).
producing at said computer processor a human-readable output (i.e. processor) of the analysis of the gathered data, this is also WURC, as evidenced by Electric Power Group, LLC v. Alstom S.A., 830F.3d 1350, 119 USPQ2d 1739 (Fed.Cir. 2016), which discusses “conventional computer, network, and display technology” and states that “nothing in the patent contains any suggestion that the displays needed for that purpose are anything but readily available. We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are “insufficient to pass the test of an inventive concept in the application” of an abstract idea”.” Similarly, there is nothing in Applicant’s specification that indicates that the device that is “producing at said computer processor a human-readable output indicating” the findings of the analysis is anything but readily available.
Therefore, the claims fail to recite significantly more than the abstract idea and claims 9-28 are rejected under 35 U.S.C 101.
The limitations of the dependent claims 2-7, 9-14 & 16-21 further defines the read/write modality neural interfaces, which further limit claim limitations already indicated above as being directed to an abstract idea. Therefore, the dependent claims are also directed to patient-ineligible subject matter.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-2, 8-9 & 15-16 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Howard et al. (US 2013/0338526).
Howard et al. discloses;
1.
A computer-implemented method for affecting living neural tissue comprising: receiving at least one signal from at least one read modality, the signal representing release of photons from the living neural tissue,
E.G. via the disclosed modality utilizing photon-driven conformational changes ([0014]-[0015] & [0048]).
the read modalitycomprising at least one read modality neural interface implanted in the living neural tissue;
E.G. ([0015] & [0043]-[0045]).
computing at least one signal to effect alterations to the living neural tissue based on the received input signal, the computed signal adapted to cause transmission of photons to the living neural tissue;
E.G. via the data inputted into computational algorithms based on FCU models used to feedback into the brain ([0015], [0046]-[0051])
and delivering the photons to the living neural tissue to effect alterations to the
living tissue using at least one write modality neural interface implanted in the living
neural tissue.
E.G. via the disclosed means of modifying cognitive activity to neutralize the negative effects via the use of photon-driven changed in protein neurotransmitters ([0046]-[0051], [0070] & [0105]).
2.
The method of claim 1, wherein the at least one read modality neural interface and the at least one write modality neural interface comprise the same read/write apparatus.
E.G. via the disclosed modalities being able to perform both functions within the FCU/MCP models ([0041], [0043]).
8.
A system for affecting living neural tissue comprising:
at least one photonic read modality adapted to receive photons from living
neural tissue and generating a signal representing the released photons, wherein the at least one photonic read modality comprises at least one read modality neural interface implanted in the living neural tissue;
E.G. via the disclosed FCU which represents physiological brain function using one or more read/write modalities via a variety sensors, which implement, that analyses the response signal to the brain and analytical methods based on FCU used to feedback into the brain as activity of neural activity ([0013]-[0015] & [0033]-[0034]).
* Note that the examiner is interpreting the disclosed FCUs that implement read and white modalities that provide series of signals to the brain using analytical methods based on said FCU as being inherently implanted in the living neural tissue, as is instantly claimed.
at least one photonic write modality adapted to deliver photons to the living neural tissue to effect alterations to the living tissue based on at least one computed signal, wherein the at least one photonic write modality comprises at least one write
modality neural interface implanted in the living neural tissue;
E.G. via the data inputted into computational algorithms based on read/write FCU models used to feedback into the brain ([0015], [0043] & [0046]-[0051]).
* Note that the examiner is interpreting the disclosed FCUs that implement read and white modalities that provide series of signals to the brain using analytical methods based on said FCU as being inherently implanted in the living neural tissue, as is instantly claimed.
and computing circuitry comprising a processor, memory accessible by the processor, and computer program instructions stored in the memory and executable by the processor to compute the at least one signal.
E.G. via the disclosed hardware implementation of the read and write modality ([0019], [0043] & (Fig 4)}.
9.
The system of claim 8, wherein the at least one read modality neural interface
and the at least one write modality neural interface comprise the same read/write
apparatus.
E.G. via the disclosed modalities being able to perform both functions within the FCU/MCP models ([0041], [0043]).
15.
A computer program product for affecting living neural tissue, the computer
program product comprising a non-transitory computer readable storage having program
instructions embodied therewith, the program instructions executable by a computer, to
cause the computer to perform a method comprising:
receiving at least one signal from at least one read modality, the signal
representing release of photons from the living neural tissue, the read modality
comprising at least one read modality neural interface implanted in the living neural
tissue;
E.G. via the disclosed medical co-processor which analyzes the analytical methods based on the FCUs which represents physiological brain function using one or more read/write modalities via a variety sensors, which implement, that analyses the response signal to the brain and analytical methods based on FCU used to feedback into the brain as activity of neural activity ([0013]-[0015] & [0033]-[0034]).
* Note that the examiner is interpreting the disclosed FCUs that implement read and white modalities that provide series of signals to the brain using analytical methods based on said FCU as being inherently implanted in the living neural tissue, as is instantly claimed.
computing at least one signal to effect alterations to the living neural tissue
based on the received input signal, the computed signal adapted to cause transmission of
photons to the living neural tissue;
E.G. via the data inputted into computational algorithms based on read/write FCU models used to feedback into the brain ([0015], [0043] & [0046]-[0051]).
and delivering the photons to the living neural tissue to effect alterations to the
living tissue using at least one write modality neural interface implanted in the living
neural tissue.
E.G. via the disclosed means of modifying cognitive activity to neutralize the negative effects via the use of photon-driven changed in protein neurotransmitters ([0046]-[0051], [0070] & [0105]).
16.
The computer program product of claim 15, wherein the at least one read
modality neural interface and the at least one write modality neural interface comprise the
same read/write apparatus.
E.G. via the disclosed modalities being able to perform both functions within the FCU/MCP models ([0041], [0043]).
Allowable Subject Matter
Claims 3-7, 10-14 & 17-21 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is an examiner’s statement of reasons for indicating allowable subject matter: The closest prior art, Howard, fails to disclose, suggest and/or teach the claimed invention since the reference fails to mention at least one read modality neural interface and the at least one write modality neural interface comprising at least one optic fiber coated with signal wall carbon nanotubes, in combination with the other claimed elements.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NICOLE F JOHNSON whose telephone number is (571)270-5040. The examiner can normally be reached Monday-Friday 8:00am-5:00pm EST.
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, David Hamaoui can be reached at 571-270-5625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/NICOLE F JOHNSON/ Primary Examiner, Art Unit 3796