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 .
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.
Examiner interpreted “sensing means” and “processing means” of claim 1 as invoking 112(f) interpretation. The “sensing means” can be found in specification pg. 5 ll. 20-35. The “processing means” can be found on pg. 6.
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.
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.
Regarding claims 1, 5 and 8 the phrase "such as" renders the claim indefinite because it is unclear whether the limitations following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
Regarding claim 1, the phrase "…thanks to the correction…" renders the claim indefinite because it is unclear whether the limitation(s) following the phrase are part of the claimed invention. See MPEP § 2173.05(d).
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to the abstract idea of a mental process without significantly more.
STEP 2A prong one
The claim(s) recite(s) generally the abstract idea of a mental process.
STEP 2A prong two
This judicial exception is not integrated into a practical application because the claim recites:
1. (Original) System (100) for making optimised insoles, comprising sensing means (101) and processing means (102);
wherein the sensing means (101) are configured to perform a sensing function which includes:
- sensing quantities relating to a postural setup and position and movement patterns of one or more predefined parts of the body of a patient in orthostasis and during walking, and an arrangement of the various components of the feet of the patient in orthostasis and during walking; (PRELIMINARY DATA GATHERING)
- generating, based on the quantities sensed, corresponding sensing data; (MENTAL STEPS: THE HUMAN MIND WOULD BE CAPABLE OF GENERATING DATA )
wherein the processing means (102) are configured to acquire from the sensing means (101) the sensing data generated by said sensing means (101) and are programmed to perform a processing and analysis function including: (Uses the computer as a tool)
- performing a predefined processing of the acquired sensing data by determining, based on the predefined processing performed, the postural setup and the position and movement patterns adopted by said predefined part(s) of the body of the patient in orthostasis and during walking and the arrangement of the various components of the feet of the patient while said position and movement patterns are being adopted by the patient; (Mental Steps as the human mind could determine appropriate setup, position and movement patterns of the patient’s body)
- analyzing the postural setup and the position and movement patterns determined to detect one or more pathological patterns and one or more corresponding postural imbalances of said predefined part(s) of the patient's body; and (Mental Steps)
- determining, based on the pathological pattern(s) and the corresponding postural imbalance(s) detected, one or more corresponding changes to be made to the setup of the patient's feet and of the lower limbs, such as to allow to modify the postural setup and/or the position and movement patterns adopted by said predefined part(s) of the patient's body, so as to no longer adopt said pathological scheme(s) thanks to the correction of said corresponding postural imbalance (s). (Mental steps)
The limitations are recited at a high level of generality such that they could be performed in the human mind by collecting information and analyzing the results and merely used the computer as a tool to perform the process.
Step 2B
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not recite any further limitations recited beyond the recitation of judicial exception itself.
Regarding claim 2, this claim is not patent-eligible because it recites at a high level of generality the detection of “pathological patterns” and modifications to be made based on the determined models without reciting how the result is to be achieved.
Regarding claim 3, this claim is not patent-eligible because it recites repeating the process iteratively until the desired outcome is achieved and similarly recites at a high level of generality the desired outcome of modifying the result at each iteration.
Regarding claim 4, this claim is not patent-eligible because it merely recites stopping the iterative process when the ideal result is achieved without details as to how to stop iterating.
Regarding claim 5, this claim is not patent-eligible because it merely recites the generation of data based on the ideal result obtained in previous steps.
Regarding claim 6, this claim is not patent-eligible because it merely adds at a high level of generality that the results are to be achieved via artificial intelligence, analogous to mere instructions to “apply it.”
Regarding claim 7, this claim is not patent-eligible because it merely recites at high level of generality the use of machine learning techniques and neural networks.
Regarding claim 8, this claim appears to be patent-ineligible because it recites the step of making the insoles, however this appears to be mere extra-solution activity.
Claims 9-10 appears to recite a practical application of the abstract idea and are thus patent-eligible.
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.
Claims 9 and 10 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Avent et al. US 2010/0154252 A1.
Regarding claims 9 and 10, these claims relate to an insole which is defined as a product-by-process claim. Claim 10 does not recite any further step for manufacturing " insole" as claimed in claim 8. Claims for products defined in terms of a process of manufacture are allowable only if the products as such fulfil the requirements for patentability, i.e. inter alia that they are new and inventive. A product is not rendered novel merely by the fact that is produced by means of a new process.
US PGPUB 20100154252 discloses an exemplary orthotic insole (see Fig, 4 [0092]). From the insole on its own it is not possible to determine whether the specific dimensions of the insole have been determined with the help of a method defined in claim 8 or with the help of another method.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GARY COLLINS whose telephone number is (571)270-0473. The examiner can normally be reached Monday - Friday 1-930PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kamini Shah can be reached at (571) 272-2279. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/GARY COLLINS/Primary Examiner, Art Unit 2115
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