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 .
The following is a non-final, first office action on the merits, in response to application filed 4/8/2024. Claims 1-20 have been examined and are currently pending.
Priority
Acknowledgment is made of applicant's claim for a provisional application filed on 10/3/2019. The Applicant claims benefit of continuation of 17/379827 (now Patent 11,955,218) filed on 7/19/2021, which is in turn a continuation of 17/174990 (now Patent 11,521,858), filed 2/12/2021, and 17/147990, now Patent 11,069,436) filed 1/13/2021. Application 17/174990 (now Patent 11,521,858), filed 2/12/2021, and 17/147990, now Patent 11,069,436) filed 1/13/2021, which are in turn a CIP of 17/021895, (now Patent 11,071,597), filed 9/15/2020.
Receipt is acknowledged of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 6/24/2024, 7/17/2024, 10/15/2024, 12/20/2024, 2/28/2025, 5/22/2025, 7/23/2025, 9/18/2025, 11/3/2025, 12/27/2025, 3/6/2026, 4/23/2026 follows the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-20 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.
Alice Corp. also establishes that the same analysis should be used for all categories of claims, regardless of a system/apparatus, a method, or a product claim.
The claimed invention (Claims 1-20) is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim(s) recite(s) abstract ideas including “Certain Methods of Organizing Human Activity”, “an idea of itself”, “mental process” which have been identified/found by the courts as abstract ideas in new 101 memos of the subject matter eligibility in here (https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility) including 2019 Revised Patent Subject Matter Eligibility Guidance. This judicial exception is not integrated into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because It/they is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications:
Independent claim 9 (Step 2A, Prong I): is directed to multiple abstract ideas including “an idea of itself”, and “Mental process”.
Claim 9, Steps of,
assigning a first user to a cohort, wherein the cohort includes users sharing certain matching characteristics;
selecting, via a trained machine learning model, a treatment plan for the user; responsive to transmitting a signal to patient interfaces of the users in the cohort, establishing the virtual shared session between the patient interfaces; and
while the first user uses a first electromechanical machine and a second user uses a second electromechanical machine, controlling, based on the treatment plan and during the virtual shared session, the first electromechanical machine and the second electromechanical machine.
fall within “Certain Methods of Organizing Human Activity” grouping of abstract idea because the instant claims recite “assigning a first user cohort”, “selecting…a treatment plan”, “users control their machine…“ which are human activities and/or interactions and therefore, certain methods of organizing human activity which encompasses both certain activity of a single person, certain activity that involves multiple people, and certain activity between a person and a computer.
The instant claims also fall within “Mental Processes” grouping of abstract ideas since these limitation covers performance of the limitations in the mind or by paper and pen.
For example, a human being can observe/assign a user to a group, can observe/select a treatment plan, can observe/control/press button on the machine.
Independent claim 9, Step 2A (Prong II): Accordingly, the claim recites an abstract idea(s) as pointed out above. This judicial exception(s) is/are not integrated into a practical application. In particular, the claim recites additional element “electromechanical machine”, “via a trained machine learning model”, that are not significant more than the abstract ideas. In particular, there is no machine/hardware/computer to actually perform the abstract steps mentioned above. Other than reciting “via a trained machine learning model…”, nothing in the claim element precludes the step from practically being performed in the mind, and is simply organized information through human activity or merely mental tasks, and is part of, or a related, judicial exception and does not meaningfully limit the application of the identified judicial exception, and as such does not constitute significantly more.
There is no specificity regarding any technology, just broadly, assigning a user to a cohort, execute the programming instructions to select data, and have the users control, for example, press a button on their machine. There are no additional elements, for example, hardware processor of a machine to actually perform all of the steps at all. The steps are mainly selecting data. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Accordingly, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself, and does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Independent claim 9, (step 2B):
There are no additional elements in claim 9 to actually perform the steps. No additional element adds nothing of substance to the underlying abstract idea; thus, they are not significantly more than the identified abstract idea.
The procedural limitation, “selecting…via a trained machine learning model…” is specified at a high level of generality. A person can put any or user information into an existing machine learning model and run the model, and is simply organized information through human activity or merely mental tasks, and is part of, or a related, judicial exception and does not meaningfully limit the application of the identified judicial exception, and as such does not constitute significantly more.
Furthermore, the reciting of “selecting …via a trained machine learning model….” merely using “machine learning” as a tool to perform an existing machine learning model/process and/or merely adding the words "apply it" to the judicial exception. See MPEP 2106.05(f).
(1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished.
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
(3) The particularity or generality of the application of the judicial exception.
In the specification (Fig. 6, [0003]), Applicants say about the machine learning to utilize suitably trained machine learning algorithms and models to perform the prediction/likelihood accuracy. But what does it actually do to accomplish that function? For example, does applicant merely refer to it as a black box or off the shelf product and not really care which machine learning technique is used? Is the machine learning/AI used exactly how an off the shelf tool is typically used and expected to operate? Or is there a specific way in which machine learning/AI is used that might be a technical solution to a problem?
Note that the machine learning claim limitation is broad about what AI technique in particular is used (could be any one) and how it might be implemented (in any type of use). If applicant had a technical solution to a problem in the spec, do the elements needed for that technical solution according to the specification appear in the claim? In other words, the claim needs to reflect any improvement in the specification to pass on “improvement”.
Therefore, the Examiner concluded that there are no details of the solution because of claim breadth for (1), using machine learning technique merely a tool to perform an existing process since the specification e.g., indicates it’s off the shelf AI doing what it’s supposed to do for (2), or
generality of the application because of the breadth of the claim (any and every machine learning used in any way) for (3). See MPEP 2106.05(f).
Thus, this element “machine learning” amount to merely indicating a field of use or general linking to technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using other machinery (e.g., machine learning) to perform the steps/limitations amounts to no more than mere instructions to “apply it” the exception using other machinery component. For the above-mentioned reasons, viewed the claim as a whole, the additional elements individually and in combination do not integrate the identified abstract idea into a practical application. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself.
Dependent claims 10-16, are merely add further details of the abstract steps/elements recited in claim 9 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, dependent claims 10-16 are also non-statutory subject matter.
Independent claim 1, 17: Alice Corp. also establishes that the same analysis should be used for all categories of claims. Therefore, independent system claim 1, and product claim 17 are also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claim(s) 9.
Further, the components (i.e., a machine, a server computing device, a computer-readable medium) described in independent claims 1, 17, add nothing of substance to the underlying abstract idea. Similarly, as it relates to the computer system claims, the limitations appear to be performed by a generic processor/computing system/device. These components are merely recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. Generic computer components recited as performing generic sensing/computer functions that are well-understood, routine and convention activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to select/display/send/transmit data/information over communication network/internet does not impose any meaningful limit on the computer implementation of the abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 9).
According to MPEP 2106.05 (d), elements that the Courts have recognized as well-understood, routine, conventional activity in particular fields are e.g., "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); Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93” (evidence required by Berkeimer memo). Further, according to Berkheimer memo 04/19/2018, section III.A.1, “A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional (or an equivalent term), as a commercially available product, or 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)”.
Applicant’s Specification, [0088] indicate a general-purpose computer perform the instant steps and demonstrates the well-understood, routine, conventional nature of the information processing device (a processor/a memory/a computer) in any computing implementation. Thus, evidence has been provided to show these additional elements are well-understood, routine, conventional activity according to Berkheimer memo. Therefore, for the above-mentioned reasons, viewed as a whole, even in combination, the above steps do not amount to significantly more/do not provide an inventive concept.
The procedural limitation, “selecting…via a trained machine learning model…” is specified at a high level of generality. A person can put any or user information into an existing machine learning model and run the model, and is simply organized information through human activity or merely mental tasks, and is part of, or a related, judicial exception and does not meaningfully limit the application of the identified judicial exception, and as such does not constitute significantly more.
Furthermore, the reciting of “selecting …via a trained machine learning model….” merely using “machine learning” as a tool to perform an existing machine learning model/process and/or merely adding the words "apply it" to the judicial exception. See MPEP 2106.05(f).
(1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished.
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
(3) The particularity or generality of the application of the judicial exception.
In the specification (Fig. 6, [0003]), Applicants say about the machine learning to utilize suitably trained machine learning algorithms and models to perform the prediction/likelihood accuracy. But what does it actually do to accomplish that function? For example, does applicant merely refer to it as a black box or off the shelf product and not really care which machine learning technique is used? Is the machine learning/AI used exactly how an off the shelf tool is typically used and expected to operate? Or is there a specific way in which machine learning/AI is used that might be a technical solution to a problem?
Note that the machine learning claim limitation is broad about what AI technique in particular is used (could be any one) and how it might be implemented (in any type of use). If applicant had a technical solution to a problem in the spec, do the elements needed for that technical solution according to the specification appear in the claim? In other words, the claim needs to reflect any improvement in the specification to pass on “improvement”.
Therefore, the Examiner concluded that there are no details of the solution because of claim breadth for (1), using machine learning technique merely a tool to perform an existing process since the specification e.g., indicates it’s off the shelf AI doing what it’s supposed to do for (2), or
generality of the application because of the breadth of the claim (any and every machine learning used in any way) for (3). See MPEP 2106.05(f).
Thus, this element “machine learning” amount to merely indicating a field of use or general linking to technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using other machinery (e.g., machine learning) to perform the steps/limitations amounts to no more than mere instructions to “apply it” the exception using other machinery component. For the above-mentioned reasons, viewed the claim as a whole, the additional elements individually and in combination do not integrate the identified abstract idea into a practical application. Furthermore, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself.
Dependent claims 2-8, and 18-20, are merely add further details of the abstract steps/elements recited in claim 1, and 17 respectively, without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, dependent claims 22-23, are also non-statutory subject matter.
Viewed as a whole, the claims (1-20) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Thus, the claims do NOT recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
Thus, the claimed invention, as a whole, does not provide 'significantly more' than the abstract idea, and is non-statutory subject matter.
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.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-19 of allowed Application No. 17/379827 (reference application, now Patent 11,955,218). Although the claims at issue are not identical, they are directed to the same invention.
For reference, the following table matches the primary limitations of pending claim 9 (method) of application 17/379827, with the similar limitations of claim 9 (method) of the instant application (differences highlighted in bold type).
18/629576, instant application which is a continuation patent application 17/379827
17/379827, reference application, (now Patent 11,955,218), allowed claim
9. A computer-implemented method for configuring a virtual shared treatment session to encourage a user compliance with a treatment plan, the method, comprising:
9. A computer-implemented method for configuring a virtual shared treatment session to encourage a user compliance with a treatment plan, the method comprising:
assigning a first user to a cohort, wherein the cohort includes users sharing certain matching characteristics;
selecting, via a trained machine learning model, a treatment plan for the user;
responsive to transmitting a signal to patient interfaces of the users in the cohort, establishing the virtual shared session between the patient interfaces; and
while the first user uses a first electromechanical machine and a second user uses a second electromechanical machine, controlling, based on the treatment plan and during the virtual shared session, the first electromechanical machine and the second electromechanical machine.
determining whether at least one characteristic of the user matches at least one second characteristic of a second user, the second user belonging to a cohort;
responsive to determining the at least one characteristic of the user matches the at least one second characteristic of the second user, assigning the user to the cohort and
select, via a trained machine learning model, a treatment plan for the user;
responsive to transmitting a signal to patient interfaces of users in the cohort, establishing the virtual shared session between the patient interfaces; and
while the first user uses a first treatment apparatus and a second user uses a second treatment apparatus, controlling, based on the treatment plan and during the virtual shared session, the first treatment apparatus and the second treatment apparatus.
This is a nonstatutory double patenting rejection because the patentably indistinct claims have in fact been patented. Independent claim 1, 17 is similarly rejected.
Therefore, as discussed above, the scope of claim 9 (method) of the present application and allowed claim 9, (method) respectively of U.S. Application No. 17/379827 (now Patent 11,955,218) are practically identical.
Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to the same subject matter, perform the same method steps, and a person of ordinary skill in the art would not be free to practice one of the claimed inventions without infringing upon the other invention.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the application to include “determining matching characteristic between users” claimed in this application as taught or suggested by claims 1, 9, 16 of patent application 17/379827 because instant application claims 1-20 would have been obvious over the reference claims 1-20 in allowed application 17/379827. An approved Terminal Disclaimer is required.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Prior Art Rejection
Independent claims 1, 9, 17, as a whole recite a combination of limitations that has Not been found and fail to teach all the claimed feature as define over prior art of record, (the combination of Dorris et al (US 2017/0235906), Dias et al (US 2018/0060494), Kelly et al. (US Patent 10,923,231), Cox et al. (US 2017/0286622), Dorris et al. (US 2017/90236063), Cox et al. (US 2017/0235894), Kumar et al. (US 2017/0091422),
and
NPL1---Bonney A, Knight-Billington P, Mullan J, Moscova M, Barnett S, Iverson D, Saffioti D, Eastland E, Guppy M, Weston K, Wilson I, Hudson JN, Pond D, Gill G, Hespe C. The telehealth skills, training, and implementation project: an evaluation protocol. JMIR Res Protoc. 2015 Jan 7;4(1):e2. doi: 10.2196/resp (Year: 2015)
NPL2---Kim BY, Lee J. Smart Devices for Older Adults Managing Chronic Disease: A Scoping Review. JMIR Mhealth Uhealth. 2017 May 23;5(5):e69. doi: 10.2196/mhealth.7141. PMID: 28536089; PMCID: PMC5461419. (Year: 2017)
NPL3---Banbury A, Nancarrow S, Dart J, Gray L, Parkinson L. Telehealth Interventions Delivering Home-based Support Group Videoconferencing: Systematic Review. J Med Internet Res. 2018 Feb 2;20(2):e25. doi: 10.2196/jmir.8090. PMID: 29396387; PMCID: PMC5816261. (Year: 2018)
All fail to teach the recited claimed features.
Allowable Subject Matter
Claims 1-20 are deemed to be allowed in light of the specification, claims filed on 4/8/2024. As to the prior art rejections, upon further search and consideration, it is found that claims 1-20 are allowable subject to outstanding 101 rejections and double patenting rejection.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with, and pending remedy to outstanding issues cited above. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
Olsen et al (US 2017/0278209) disclose a patient care plan creation and monitoring system that maintains a personalized patient care plan database that stores data corresponding to the personalized patient care plans generated for various patients and a patient cohort database that stores cohort association information for various patients having similar characteristics, e.g., demographics and/or medical data.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN M LI whose telephone number is (571)270-5489. The examiner can normally be reached on Mon-Thurs, 8:30am--5pm. Fax is 571-270-6489.
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/SUN M LI/Primary Examiner, Art Unit 3685
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