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 .
Election/Restrictions
Claims 29-32 have been withdrawn by the Examiner as previously being drawn to non-elected inventions, as noted in the previous Non-Final Rejection, filed 07/10/25, and are therefore not currently being examined.
Acknowledgments
Claims 22-28 have been withdrawn. Claim 33 has been canceled. Claims 18-21 are currently being examined.
Examiner notes that the amendments to the claims are non-compliant for the following reason(s): “The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters.” (37 CFR 1.121(c)(2)). However, in the interest of expedited prosecution, characters placed within double parentheses, as opposed to double brackets, will be interpreted to be deleted.
Response to Arguments
The claim objections to claims 18-21 have been withdrawn in light of the amendments to the claims, filed 10/30/25. The claim objections to claims 22-23 and 25-28 are moot, as the claims have been withdrawn.
The interpretation of the “data acquisition channel means”, “timestamping means”, “metadata acquisition channel means”, and “associated timestamping means” under 35 U.S.C. 112(f) has been maintained. While the limitations have been amended to remove the term “means”, the limitations use 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.
The rejections of claims 19-21 under 35 U.S.C. 112(a) have been maintained, as presented in detail below. The rejections of claims 25-28 under 35 U.S.C. 112(a) are moot, as the claims have been withdrawn. Moreover, a new rejection(s) under 35 U.S.C. 112(a) has been presented in light of the amendments to the claims, as presented below.
The rejections of claims 18-21 under 35 U.S.C. 112(b) have been maintained, in part, as presented in detail below. Moreover, a new rejection(s) under 35 U.S.C. 112(b) has been presented in light of the amendments to the claims, as presented below.
The rejection of claims 18-20 under 35 U.S.C. 101 has been maintained, as presented in detail below. The rejections of claims 23-28 and 33 are moot, as the claims have been withdrawn and canceled, respectively.
Applicant’s arguments with respect to the rejection of claim 18 under 35 U.S.C. 103 have been fully considered but are not persuasive.
Applicant argues that the prior art, specifically Apple, fails to disclose “a device extracting binary mental states of a subject from bio signal segments collected from said subject’s body, communicating binary mental state transitions to said subject and enhancing said subject’s mindfulness” comprising “a processor programmed to detect a binary mental state transition happening in at least a first segment of…bio signal…from an initial state known as an Initial Mental State (IMS) to a final state known as a Final Mental State (FMS)” (Remarks, filed 08/20/25, p. 1). Particularly, Applicant argues that the claim recitation “by analyzing at least a first segment” to detect a binary mental state transition requires that the processor must be capable of identifying the transition within a single segment (Remarks, filed 08/20/25, pp. 1-2). Examiner respectfully disagrees. The claim recites, as noted by Applicant, detecting a binary mental state transition “by analyzing at least a first segment of at least a first type of bio signal” (emphasis added). Accordingly, the claim is not limited to detecting a mental state transition within a single data segment, but rather, can be identified using more than one data segments. Apple discloses this limitation, as previously presented in the Non-Final Rejection, filed 07/10/25, and presented again in detail below.
Applicant further argues that the transition is detected by user observation of the user interface, as opposed to by the processor (Remarks, filed 08/20/25, p. 2). Examiner respectfully disagrees. The claim recites a processor programmed to detect a binary mental state transition by analyzing at least a first segment of at least a first type of bio signal. As previously noted above, the transition may be detected by analyzing multiple segments of at least a first type of bio signal data. Apple discloses this limitation, wherein a data segment(s) (data point(s)) are collected and compared to a baseline and/or previously measured data segments to determine mental state transitions (e.g., stressed or calming down) (2:05-2:30), as previously presented in the Non-Final Rejection, filed 07/10/25, and presented again in detail below.
Accordingly, the rejection of claim 18 under 35 U.S.C. 103, and further of claims 19-21, are maintained.
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 limitations use 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 limitations are:
data acquisition channel (claim 19);
timestamping input (claim 19);
metadata acquisition channel (claim 20); and
associated time-stamping input (claim 20).
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they 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 these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid 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 limitations recite sufficient structure to perform the claimed functions so as to avoid 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 18-21 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 claims contain 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.
Claim 18 recites in part “a binary mental state transition happening in at least a first type of mental condition recognizable to said subject” and further, “where said binary mental state transition is a shift occurring in said at least a first type of mental condition”. The Specification does not disclose a first type of mental condition, nor detecting a binary mental state transition happening in at least a first type of mental condition recognizable by said subject, where said binary mental state transition is a shift occurring in said at least a first type of mental condition, as required by the claim.
Claims 19-21 are rejected by virtue of their dependencies on claim 18.
Claim 19 recites in part “at least one data acquisition channel and associated timestamping input configured to supply said processor with said at least a first segment of said at least a first type of bio signal of duration spanning pre and post transition history of said binary mental state transition”. However, the Specification does not disclose what the recited data acquisition channel and associated timestamping input comprise, thereby failing to provide support for the full scope of the claim limitation, such as framework to perform the claimed function(s). Therefore, claim 19 is rejected under 35 U.S.C. 112(a).
Claim 20 is rejected for the same reasoning (see claim 20, “metadata acquisition channel” and “associated time-stamping input”).
Claims 20-21 are rejected by virtue of their dependencies on claim 19.
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 18-21 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 18 recites in part “a binary mental state transition happening in at least a first type of mental condition recognizable to said subject”. It is indefinite as to how a binary mental state transition is a shift that happens in at least a first type of mental condition, as required by the claim, and further, what it means to be recognizable to said subject, and the Specification does not offer further guidance. Additionally, is “recognizable to said subject” referring to the binary mental state transition, or the at least a first type of mental condition?
Claims 19-20 are indefinite because the written description fails to disclose the corresponding structure, material, or acts of the “data acquisition channel”, “timestamping input”, “metadata acquisition channel”, and “associated time-stamping input” such that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function(s).
Claims 20-21 are rejected by virtue of their dependencies on claim 19.
Claim 21 recites in part “actions that are transduced into signals by said human interface system 18(c) including but not limited to a switch activation, a voice prompt, a haptic input and a gesture input” (Emphasis added). It is indefinite as to what the actions may comprise such that a person of ordinary skill in the art could reasonably interpret the metes and bounds of the claim so as to understand how to avoid infringement. Accordingly, claim 21 is rejected for indefiniteness.
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 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding claim 18, analyzed as representative claim:
[Step 1] Claim 18 recites in part “A device”, which falls within the “product” statutory category of invention under 35 U.S.C. 101.
[Step 2A – Prong 1] Claim 18 recites “A device extracting binary mental states of a subject from bio signal segments collected from said subject's body, communicating binary mental state transitions to said subject and enhancing said subject's mindfulness comprising: a) a processor programmed to detect a binary mental state transition happening in at least a first type of mental condition recognizable to said subject, by analyzing at least a first segment of at least a first type of bio signal, where said binary mental state transition is a shift occurring in said at least a first type of mental condition from an initial state annotated by Initial Mental State (IMS) to a final state annotated by Final Mental State (FMS) which together form a pair of binary mental states; b) a memory communicatively coupled to said processor configured to store a Physiological Response Model (PRM) of said subject, formulated to derive at least said pair of binary mental states belonging to said at least a first type of mental condition from said at least a first segment of said at least a first type of bio signal; and c) a human interface system communicatively coupled to said processor comprising at least one of an audio, video or haptic system configured to communicate said binary mental state transition detected by said processor to said subject.”
The limitation of detect a binary mental state transition by analyzing gathered data (e.g., at least a first segment of at least a first type of bio signal) encompasses, under its broadest reasonable interpretation, a mental process. That is, a human can mentally analyze at least a first segment of at least a first type of bio signal (e.g., heart rate) and determine a shift in mental state from an initial condition (e.g., calm) to a final condition (e.g., stressed).
Additionally, the limitation to derive at least said pair of binary mental states from said at least a first segment of said at least a first type of bio signal via a Physiological Response Model (PRM) encompasses, under its broadest reasonable interpretation, a mental process that can be performed in the human mind and/or with pen and paper. That is, PRM is a mathematical model, or equation(s), which a human could mentally, and/or with the use of pen and paper, use to derive at least said pair of binary mental states from said at least a first segment of said at least a first type of bio signal.
[Step 2A – Prong 2] The claim recites the additional limitations of a device comprising a processor, memory, and human interface system to perform the recited functions discussed above (processor executing code, memory for storing, human interface system for communicating data). However, these additional limitations are recited at a high level of generality such that they amount to no more than instructions to apply the judicial exception using generic computing components. That is, a computer is used as a tool to perform the abstract ideas, which does not integrate the abstract idea into a practical application.
Moreover, the claim recites the additional limitation of a human interface system communicatively coupled to said processor comprising at least one of an audio, video, or haptic system configured to communicate said binary mental state transition detected by said processor to said subject. This limitation is directed to the extra-solution activity of data transmission/display (communicate said binary mental state transition to said subject), which cannot integrate the abstract idea into a practical application.
[Step 2B] As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply the abstract idea using generic computing components and insignificant extra-solution activity. Therefore, claim 18 is not patent eligible.
Claims 19-20 are dependent on claim 18 and therefore recite the same abstract ideas noted above. While dependent claims 19-20 may have a narrower scope than the independent claim, the claims fail to recite additional limitations that would integrate the abstract ideas into a practical application or provide significantly more (i.e., an inventive concept). Therefore, claims 19-20 are also not patent eligible.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 18-21 are rejected under 35 U.S.C. 103 as being unpatentable over “Measure heart rate variability (HRV) and stress using Apple Watch”, 13 pages, uploaded on January 6, 2022 by user “Smartwatch Geek”, retrieved from Internet: < https://www.youtube.com/watch?v=yvOO5GBIV0Y> (hereinafter “Apple”) in view of Heneghan et al. (U.S. 11,191,466 B1) (hereinafter “Heneghan”).
Regarding claim 18, Apple discloses a device extracting binary mental states of a subject from bio signal segments collected from said subject’s body, communicating binary mental state transitions to said subject and enhancing said subject’s mindfulness (2:05-2:30, wherein a smartwatch utilizes bio signal segments collected from a wearer’s body (e.g., heart rate variability) to detect binary mental state transitions over time (e.g., stressed to neutral, calm to stressed, calm to neutral, and/or stressed to calm) and displays said transitions to the wearer) comprising:
a) a processor programmed to detect a binary mental state transition happening in at least a first type of mental condition recognizable to said subject, by analyzing at least a first segment of at least a first type of bio signal, where said binary mental state transition is a shift occurring in said at least a first type of mental condition from an initial state annotated by Initial Mental State (IMS) to a final state annotated by Final Mental State (FMS) which together form a pair of binary mental states (2:05-2:30, wherein the smartwatch utilizes at least a first segment of at least a first type of bio signal (e.g., heart rate variability at a specific time during the day) to detect binary mental state transitions (e.g., stressed (initial condition) to neutral (final condition), calm (initial condition) to stressed (final condition), calm (initial condition) to neutral (final condition), and/or stressed (initial condition) to calm (final condition)));
b) a memory communicatively coupled to said processor (2:30-2:40, the smartwatch inherently comprising a memory, and which stores data such as bio signals and/or stress levels throughout the day and/or week); and
c) a human interface system communicatively coupled to said processor comprising at least one of an audio, video or haptic system configured to communicate said binary mental state transition detected by said processor to said subject (2:07-2:40, wherein the smartwatch comprises a user interface for displaying detected mental state transitions over time (e.g., day, week) to the wearer).
Apple further discloses wherein the smartwatch can store bio signal data trends over time (2:24-2:45, wherein trend data allows for the detection of above-average or lower-than-average bio signal data (i.e., indicative of stressed or calmness in relation to a baseline) at a particular time). While Apple may not explicitly disclose the memory configured to store a Physiological Response PRM of said subject, formulated to derive at least said pair of binary mental states belonging to said at least a first type of mental condition from said at least a first segment of said at least a first type of bio signal, Heneghan teaches that limitation (Col. 8, ln. 11-49; Col. 11, ln. 24-Col. 12, ln. 3; Col. 16, ln. 32-Col. 17, ln. 12, wherein a neural network, trained on a set of metrics, physiological data, or otherwise, for a particular user is stored and used to determine relationships between the user’s metrics or physiological data and correspondingly, a mental state status). It would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to utilize a stored trained neural network (physiological response model), as taught by Heneghan, in the invention of Apple in order to analyze the physiological data to more accurately detect mental state transitions of the wearer (Heneghan, Col. 8, ln. 11-49, wherein machine learning can be used to attempt to improve the accuracy of pattern recognition and classifications over time).
Regarding claim 19, Apple further discloses wherein said processor 18(a) is coupled to at least one data acquisition channel and associated timestamping input configured to supply said processor with said at least a first segment of said at least a first type of bio signal of duration spanning pre and post transition history of said binary mental state transition (2:05-2:40, wherein the smartwatch comprises a means to acquire at least a first segment of said at least a first type of bio signal over the course of a day, for example, which may be timestamped throughout the day to indicate changes in mental state).
Regarding claim 20, Apple further discloses where said processor 18(a) is additionally coupled to at least one metadata acquisition channel and associated time-stamping input configured to supply said processor with at least a first segment of a metadata signal of duration spanning said pre and post transition history of said binary mental state transition (2:40-2:46, wherein time-stamped metadata (e.g., a calendar and associated events) may be supplied to the smartwatch to provide an indication of potential causes for changes in mental state).
Regarding claim 21, Apple further discloses where said human interface system 18(c) is additionally configured to communicate to said processor 18(a) at least a first timestamp information generated by said subject by means of actions that are transduced into signals by said human interface system 18(c) including but not limited to a switch activation, a voice prompt, a haptic input and a gesture input (1:00-2:10, wherein, via the human interface system, the wearer may generate a first timestamp information (e.g., HRV reading at a specific time of the day)).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
a. U.S. Pub. 2022/0304603 A1 – This reference teaches monitoring physiological parameters of a user to detect changes in emotional state of the user.
b. U.S. Pub. 2022/0061726 A1 – This reference teaches extracting a set of biomarkers to identify a change from a first cognitive state (e.g., positive) to a second cognitive state (e.g., adverse).
c. U.S. Pub. 2021/0169389 A1 – This reference teaches wherein bio signals (e.g., electrical measurements on the skin, HRV, etc.) may be used to detect mental changes in a user.
d. U.S. Pub. 2020/0294670 A1 – This reference teaches wherein LED mood lights of a smart wearable device change color with mood.
e. U.S. Pub. 2007/0173733 A1 – This reference teaches using EEG signals to detect mental state of a user, wherein the signals are divided into segments of a duration spanning before and after the onset of a change in the mental state of the user.
f. WO 2020/157493 A1 – This reference teaches determining mental state of a user based on sensor data (e.g., optical heart or electrocardiography data) captured from wearable devices.
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 ALYSSA N BRANDLEY whose telephone number is (571)272-4280. The examiner can normally be reached M-F: 8:30am-5:00pm.
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/ALYSSA N BRANDLEY/Examiner, Art Unit 3715
/DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715