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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Notice of Amendment
In response to the amendment(s) filed on 7/22/26, amended claim(s) 14, 22, 26, 28, 30, and 37, and canceled claim(s) 21, 27, and 29 is/are acknowledged. The following new and/or reiterated ground(s) of rejection is/are set forth:
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.
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: “at least one sensor device” in claim 14, which corresponds to “a 3D camera” or “an ordinary (2D) optical camera” (see para [0021] of Applicant’s specification as originally filed); and “a processing device configured to receive sensor signals from the at least one sensor device,” in claim 14, which corresponds to “a computer, such as a personal computer, a cloud computer, a server” (see para [0022] of Applicant’s specification as originally filed).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 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.
Claim(s) 14-15, 22-26, 28, and 30-38 is/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.
For claim 1, the claim term “the body surface area” (line 19) lacks antecedent basis. The claim is examined as this being a newly introduced claim term.
For claim 1, the claim terms “body surface area” (line 19) and “a body surface area” (line 21) are ambiguous. It is unclear whether the same body surface area is being referred to or whether these are different body surface areas. The claim is examined under the former interpretation.
Dependent claim(s) 15, 22-26, 28, and 30-38 fail to cure the ambiguity of independent claim 14, thus claim(s) 14-15, 22-26, 28, and 30-38 is/are rejected under 35 U.S.C. 112(b).
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.
Claim(s) 14-15, 22-26, 28, and 30-38 is/are rejected under 35 U.S.C. 101 because the claimed invention, considering all claim elements both individually and in combination as a whole, do not amount to significantly more than a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea).
Claim 14 is a claim to a process, machine, manufacture, or composition of matter and therefore meets one of the categorical limitations of 35 U.S.C. 101. However, claim 14 meets the first prong of the step 2A analysis because it is directed to a/an abstract idea, as evidenced by the claim language of “sample a subject … to acquire sample data of the subject,” “transfer the sample data to the processing device,” “create a virtual avatar model of a surface of the subject based on the sample data and a statistical shape model, such that a shape of the virtual avatar model and a pose of the virtual avatar model is a fit to the sample data, the fit adhering to a boundary condition defined by the statistical shape model, the statistical shape model including a database of a range of standard subject shapes and poses that define a range of shapes and poses the virtual avatar model is bound to adhere to,” “calculate an avatar surface area of the virtual avatar model,” “apply a convolutional neural network trained to derive a neural network estimate for the body surface based on the sample data,” “calculate a body surface area of the subject based on the avatar surface area and the neural network estimate,” and “output derived information based on the calculated body surface area.” This claim language, under the broadest, reasonable interpretation, encompasses subject matter that may be performed by a human using mental steps or with pen and paper that can involve basic critical thinking, which are types of activities that have been found by the courts to represents abstract ideas (i.e., the mental comparison in Ambry Genetics, or the diagnosing an abnormal condition by performing clinical tests and thinking about the results in Grams). The claim language also meets prong 2 of the step 2A analysis because the above-recited claim language does not integrate the abstract idea into a practical application. That is, there appears to be no tangible improvement in a technology, effect of a particular treatment or prophylaxis, a particular machine or manufacture that is integrated, or transformation/reduction of a particular article to a different state or thing as a result of this claimed subject matter. As a result, step 2A is satisfied and the second step, step 2B, must be considered.
With regard to the second step, the claim does not appear to recite additional elements that amount to significantly more. The additional elements are “at least one sensor device,” and “a processing device configured to receive sensor signals from the at least one sensor device.” However, these elements are not “significantly more” because they are well-known, routine, and/or conventional as evidenced by Fig. 2 and para [0079] of U.S. Patent Application Publication No. 2016/0066877 to Gluncic et al. (hereinafter “Gluncic”). Therefore, these elements do not add significantly more and thus the claim as a whole does not amount to significantly more than a judicial exception.
Additionally, the ordered combination of elements do not add anything significantly more to the claimed subject matter. Specifically, the ordered combination of elements do not have any function that is not already supplied by each element individually. That is, the whole is not greater than the sum of its parts.
In view of the above, independent claim 14 fails to recite patent-eligible subject matter under 35 U.S.C. 101. Dependent claim(s) 15, 22-26, 28, and 32-38f ail to cure the deficiencies of independent claim 14 by merely reciting additional abstract ideas and/or further limitations on abstract ideas already recited. Dependent claim 31 fails to cure the deficiencies of independent claim 14 because the further limitations of claim 31 are not significantly more in view of para [0079] of Gluncic. Thus, claim(s) 14-15, 22-26, 28, and 30-38 is/are rejected under 35 U.S.C. 101.
Response to Arguments
Applicant’s arguments filed 7/22/26 have been fully considered.
With respect to the 112 rejections, Applicant’s amendments and arguments are persuasive and thus the rejections are withdrawn. New 112 rejections have been necessitated by Applicant’s amendments to the claims.
With respect to the 101 rejection(s), Applicant’s arguments will be treated in the order they were presented. With respect to the first argument, this argument is not commensurate in scope with the claim language. Claim 14 recites “sample a subject with the at least one sensor device to acquire sample data of the subject.” The term “sample data of the subject” is broad enough just to encompass 1 data point. That is, a single data point is “sample data of the subject.” Gathering a single data point of a subject can be performed in the human mind. For example, without limitation, a distance between a person’s eyes is a numerical value that can be processed by the human mind. With respect to the second argument, the alleged improvement is not an improvement in technology, but rather an improvement in an abstract idea and/or math. The idea that the claim language solves “a technical problem with current surface area estimation methods” including “difficulty of gathering all information, the slowness of the process, and the inability to take into account physical ‘particularities’” (see page 10 of the response) does not actually address a technology, but rather improves information processing. For example, making data not as difficult to gather is an improvement in data gathering and data gathering is an abstract idea. Same with taking into account particularities: that is a data processing improvement. Similarly, “improvements disclosed by the specification because the calculating is based on the avatar surface area” is an improvement in calculations, which is an improvement in math, not improvement in technology. With respect to the third argument, there is no transformation of an article from one state to another. That is, the data that is sampled in claim 14 is not transformed into a different state. Instead, claim 14 recites that “a virtual avatar model of a surface of the subject” is created “based on the sample data.” That is data processing, i.e., creating new data from a different data set. That is not transforming the data from one state to another.
With respect to the 102/103 rejections, Applicant’s amendments and arguments are persuasive and thus the rejections are withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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 DANIEL LEE CERIONI whose telephone number is (313) 446-4818. The examiner can normally be reached M - F 8:00 AM - 5:00 PM PT.
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/DANIEL L CERIONI/Primary Examiner, Art Unit 3791
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