I. ACKNOWLEDGEMENT
This Office Action addresses U.S. Application No. 18/651216 (“’216 Application” or “instant application”). Based upon a review of the instant application, the actual filing date of the instant application is April 30, 2024.
II. STATUS OF CLAIMS
Claims 1-20 were filed with the application. Therefore, as of the date of this Office Action, the status of the claims is:
a. Claim 1-20 (“Pending Claims”).
b. Claim 1-20 are examined (“Examined Claims”)
III. PRIORITY AND CONTINUING DATA
The ‘189 application claims the benefit of provisional application 63/499638, filed 5/2/2023. Because the earliest possible effective filing date is after March 16, 2013, the first to file provision of the AIA , apply to this proceeding.
IV. 112 REJECTIONS
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.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for 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.
As per MPEP 2161.01 I, the disclosure must set for the steps of performing the method in sufficient detail to enable one of ordinary skill in the art to know that Applicant possessed the claimed invention. At present, the disclosure does not identify what the first portion of data is. The only discussion of the first portion of the data, i.e. the data sent to the second computing device, is that it is data that does not include personal information. Furthermore, there is no discussion of what the initial set of stimuli is. Given that there is no discussion of what the first portion of the data includes, therefore, there is no algorithm or steps for determining the initial stimulus. Furthermore, there is also no real discussion of what the second portion of the data is, or what the initial set of stimuli is. As such, then there is no algorithm disclosed for determining the final set of stimuli. Essentially, the disclosure amounts to take some data, which is not identified, from the sleep data, send it to a computing device, determine some initial undescribed stimuli, and then using the undescribed stimuli and some other undescribed data to determine a final set of stimuli. The lack of detail in the disclosure does not provide an algorithm for determining the final stimuli or any other indication that Applicant was in possession of the invention at the time of filing. Accordingly, the disclosure does not provide a sufficient description of the claimed invention to enable that one of ordinary skill in the art would recognize that applicant was in possession of the claimed invention.
Claims 1-20 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 enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
The disclosure does not identify what the first portion or second portion of the data is, and does not identify what the initial set of stimuli is. Given that the disclosure does not describe these elements, one or ordinary skill cannot make and use the invention, ass it is unclear what the inputs or outputs are.
Claims 1-10 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites that the second computing device is configured to generate the initial set of stimuli. It is unclear whether the initial set of stimuli is actually generated. Applicant should recite that he second computing device generates the stimuli.
Claims 2-10 are rejected as being dependent upon a rejected base claim.
V. REJECTIONS UNDER 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 USC 101 because the claimed invention is directed to an abstract idea without significantly more (See MPEP 2106.04(a)).
Using claim 1 as a representative example, the claim recites the limitations:
receiving at a first computing device, data …
transmitting … a first portion of the data …to a second computing device … to generate an initial set of one or more stimuli …
receiving at the first computing device the initial set of stimuli
determining, at the first computing device, a final set of one or more stimuli … based at least in part of the first set of stimuli ad a second portion of the data.
The first step in the 101 analysis, step 1 in MPEP 2106, is whether the claimed invention is in one of the 4 statutory classes of invention. Here, the claim is a method, which is one of the 4 statutory classes of invention. Hence, step 1 is satisfied.
The next step in the analysis, step 2A prong one, is whether the claim is directed to judicial exception, i.e. a law of nature, a natural phenomenon, or an abstract idea. The claim recites a judicial exception in that the steps transmitting ... to generate, receiving, and determining, amount to a mental processes that can be carried out in the mind or by a pen and paper. According to MPEP 2106.04(a), mental processes are abstract ideas. As such, claim 1 recites an abstract idea or abstract ideas.
In Step 2A, prong two of the analysis, the claim is analyzed to determine whether the claim recites additional elements that integrate the judicial exception into a practical application. The initial receiving step is merely insignificant extra-solution activity recited at a high level of generality. As such, these steps do not integrate the abstract idea into a practical application, as the additional steps do not impose any meaningful limits on the practice of the abstract idea. As such, the answer to step 2A, prong 2, is no.
The final step of the analysis, step 2B, where the claim is evaluated to determine whether the recited additional elements amount to significantly more than the judicial exception. Nothing in the claim is more than routine and well-known techniques and therefore the additional steps fail to integrate the exception into a practical application.
Claims 2-10 do not add anything that changes the analysis.
Claim 11 is rejected for the reasons given in the rejection to claim 1. To the extent that claim 11 recites structure, the structure is recited generically and does not integrate the exception into a practical application.
Claims 12-20 do not add anything that changes the analysis.
VI. ALLOWABLE SUBJECT MATTER
Claims 1-20 would be allowable if the rejections under 35 USC 112 and 101 above were overcome.
Claims 1-20 define over the art of record in that none of the art sends a first portion of the data associated with a sleep session, that is received at a first computing device, to a second computing device, where the second computing device determines an initial stimuli set of one or more stimuli and transmits the initial set to the first computing device, which then uses a second portion of the data associated with the sleep session and the initial set of stimuli to determine a final set of one or more stimuli.
VII. PRIOR ART
Ghaffari et al US PG PUB 2017/0095670 sends sleep data from a first computing device to a second computing device, where stimuli are determined.
VIII. CONCLUSION
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT L NASSER whose telephone number is (571)272-4731. The examiner can normally be reached M-F 8-6.
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, Alexander Kosowski can be reached at (571) 272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ROBERT L NASSER/ Primary Examiner, Art Unit 3992
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