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Claims 8-14 are withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected Groups II-III, there being no allowable generic or linking claim. Election was made without traverse in the reply filed on May 14th, 2026.
Applicant’s election without traverse of Group I (Claims 1-7) in the reply filed on May 14th, 2026 is acknowledged.
Claim Objections
Claims 1-7 are objected to because of the following informalities:
Claim 1 recites “diagnose BBPV condition of vertigo patients” in line 1, but should read “diagnose a Benign Paroxysmal Positional Vertigo (BPPV) condition in vertigo patients”
Claim 1 recites “by;” in line 2, but should read “by:”
Claim 1 recites “to DH Right” in line 3, but should read “to a Dix-Hallpike (DH) Right”
Claim 1 recites “(62), calculating” in line 5, but should read “(62); calculating”
Claim 1 recites “Latency (38), Duration (39)” in line 5, but should read “latency (38) and duration (39)”
Claim 1 recites “Patient” in line 5, but should read “patient”
Claim 1 recites “(1), interrogating” in line 6, but should read “(1); interrogating”
Claim 1 recites “Which” in line 7, but should read “which”
Claim 1 recites “Which” in line 8, but should read “which”
Claim 1 recites “Patient” in line 9, but should read “patient”
Claim 1 recites “(1), reaching diagnosis decision (838) and generating diagnosis” in lines 9-10, but should read “(1); reaching a diagnosis decision (838); and generating a diagnosis”
Claim 2 recites “A method of claim 1, where Latency” in line 1, but should read “The method of claim 1, wherein latency”
Claim 3 recites “A method of claim 1, where Duration” in line 1, but should read “The method of claim 1, wherein duration”
Claim 3 recites “Patient” in line 2, but should read “patient”
Claim 4 recites “A method of claim 1, where” in line 1, but should read “The method of claim 1, wherein”
Claim 4 recites “responded by” in line 2, but should read “responded to by”
Claim 5 recites “A method of claim 1 where” in line 1, but should read “The method of claim 1, wherein”
Claim 6 recites “A method of claim 1 where” in line 1, but should read “The method of claim 1, wherein”
Claim 7 recites “A method of claim 4 where diagnosis” in line 1, but should read “The method of claim 4, wherein the diagnosis”
Claim 7 recites “in Roll Right” in line 2, but should read “in the Roll Right”
Claim 7 recites “and Roll Left” in line 2, but should read “and the Roll Left”
Appropriate correction is required.
Examiner notes that there are multiple times a word is capitalized throughout the claims. Although some of these capitalized words seem intentional, there are times when certain elements are sometimes capitalized, while sometimes in lowercase. In order to maintain consistency, the Examiner has objected to the claims in order to keep the elements mainly in lowercase, unless when referring to a proper noun, or something of the like. If these capitalizations were intentional and/or integral to the claimed invention, the Examiner requests clarification and the Applicant’s cooperation in correcting any errors of which Applicant may become aware of.
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 1-7 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.
Claims 1-7 are generally narrative and indefinite, failing to conform with current U.S. practice. They appear to be a literal translation into English from a foreign document and are replete with grammatical and idiomatic errors.
Claim 1 recites the limitation "the patient" in line 2. There is insufficient antecedent basis for this limitation in the claim. Further, it is unclear as to whether this limitation is referring to one of the “vertigo patients” previously introduced in line 1 of Claim 1, or a separate element.
Claim 1 recites “interrogating the patient (94) which position causes more dizziness in Which side dizzier (823) questioning” in lines 6-7 and then recites “interrogating the patient (94) which position causes more dizziness in Which side dizzier (835)” in lines 7-8. It is unclear as to what this limitation entails, as there seem to be multiple grammatical errors present. Furthermore, it is unclear as to whether these two limitations were meant to be recited twice, as they are almost identical. The only difference between these two limitations seems to be the reference numeral, as the first recitation recites “(823)”, while the second recitation recites “(835)”. It is unclear as to how these two limitations can recite the same elements, but have two separate reference numerals assigned to them. For examination purposes, the Examiner will interpret the claim as best understood, and interpret “Which side dizzier” to have been meant as a question presented to the patient that recites “Which side is dizzier?”. However, it is still unclear as to why these limitations are recited twice, as the patient would have had to experienced both sides before being able to answer which side they experienced more dizziness from. Clarification is requested.
Claim 1 further recites “reaching diagnosis decision” in line 9; however, it is unclear as to exactly how the diagnosis decision is reached, as there is no limitation that correlates the previous positioning, calculating, and interrogating steps to the actual diagnosis decision.
Claim 2 recites “the duration” in line 1. It is unclear as to whether this limitation is referring to the previously introduced “Duration (39)” from Claim 1, or a separate element.
Claim 2 recites the limitation "the moment" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "the patient diagnosis reposition confirmation signal (20)" in line 2. There is insufficient antecedent basis for this limitation in the claim.
Claim 2 recites the limitation "the patient button press moment (89)" in lines 2-3. There is insufficient antecedent basis for this limitation in the claim.
Claim 3 recites “the duration” in line 1. It is unclear as to whether this limitation is referring to the previously introduced “Duration (39)”, or a separate element.
Claim 3 recites the limitation "the patient button press moment (89)" in line 3. There is insufficient antecedent basis for this limitation in the claim.
Claim 4 recites “which side dizzier (823), (835) questioning” in line 1. Similar to the recitations of “interrogating the patient (94) which position causes more dizziness in Which side dizzier (823) questioning” in lines 6-7 and “interrogating the patient (94) which position causes more dizziness in Which side dizzier (835)” in lines 7-8 of claim 1, it is unclear as to what exactly the limitation “which side dizzier (823), (835)” entails.
Claim 5 recites “duration” in line 1. It is unclear as to whether this limitation is referring to the previously introduced “Duration (39)”, or a separate element.
Claim 5 recites “it” in line 1. It is unclear as to what this limitation is referring to.
Claim 6 recites “duration” in line 1. It is unclear as to whether this limitation is referring to the previously introduced “Duration (39)”, or a separate element.
Claim 6 recites “it” in line 1. It is unclear as to what this limitation is referring to.
Claim 7 recites the limitation "the moment of questioning" in line 3. There is insufficient antecedent basis for this limitation in the claim.
The term “violent” in claim 7 is a relative term which renders the claim indefinite. The term “violent” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 1-7 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.
Each of Claims 1-7 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 1
Claims 1-7 recite a series of steps or acts for diagnosing BBPV condition. Thus, the claims are directed to a process, which is one of the statutory categories of invention.
Step 2A, Prong 1
Each of Claims 1-7 recites at least one step or instruction for diagnosing BBPV condition, which is grouped as a mental process and/or mathematical concept. Claim 1 recites an abstract idea in the form of mental processes, as consistent with Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012). If a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind, see Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318 (Fed. Cir. 2016). Reaching a diagnosis decision through observing patient positions and incorporating patient feedback may be performed by a human. This applies for all claims dependent on claim 1. Furthermore, “[a] mathematical relationship is a relationship between variables or numbers. A mathematical relationship may be expressed in words ….” October 2019 Update: Subject Matter Eligibility, II. A. i. “[T]here are instances where a formula or equation is written in text format that should also be considered as falling within this grouping.” Id. at II. A. ii. “[A] claim does not have to recite the word “calculating” in order to be considered a mathematical calculation.” Id. at II. A. iii. See for example, SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163-65 (Fed. Cir. 2018).
The claimed steps of calculating parameters by using patient feedback signals to reach a diagnosis decision recite a mathematical concept (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations).
Accordingly, each of Claims 1-7 recites an abstract idea.
Specifically, Claim 1 recites the abstract idea of: “to diagnose BPPV condition of vertigo patients based on voluntary signals given by the patient (94) within a decision algorithm (91)”…“calculating Latency (38), Duration (39) parameters by using Patient feedback signals (1)”…“reaching diagnosis decision (838)”. The other limitations of Claim 1 comprise data-gathering or data-outputting steps, which are considered insignificant extra-solution activity.
Further, dependent Claims 2-7 merely include limitations that either further define the abstract idea (and thus don’t make the abstract idea any less abstract) or amount to no more than generally linking the use of the abstract idea to a particular technological environment or field of use because they’re merely incidental or token additions to the claims that do not alter or affect how the process steps are performed.
Accordingly, as indicated above, each of the above-identified claims recites an abstract idea.
Step 2A, Prong 2
The above-identified abstract idea in each of independent Claim 1 (and its respective dependent Claims 2-7) is not integrated into a practical application under 2019 PEG because the additional elements, either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional element of a “decision algorithm” comprises of generically recited computer elements in independent Claims 1 (and its dependent claims) which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. For at least these reasons, the abstract idea identified above in independent Claim 1 (and its dependent claims) is not integrated into a practical application under 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application under 2019 PEG because the claimed method merely implements the above-identified abstract idea (e.g., mental process and certain method of organizing human activity) using rules (e.g., computer instructions) executed by a computer (e.g., “decision algorithm” as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claim 1 (and its dependent claims) is not integrated into a practical application under the 2019 PEG.
Accordingly, independent Claim 1 (and its dependent claims) are each directed to an abstract idea under 2019 PEG.
Step 2B
None of Claims 1-7 include additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
These claims require the additional element of a “decision algorithm”. The above-identified additional element comprises generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Those in the relevant field of art would recognize the above-identified additional elements as being well-understood, routine, and conventional means for data-gathering and computing, as demonstrated by:
Applicant’s specification (e.g. Pages 8 and 12) which discloses that the “decision algorithm” comprises generic computer components that are configured to perform the generic computer functions (e.g. calculating and generating) that are well-understood, routine, and conventional activities previously known to the pertinent industry.
Applicant’s Background in the specification; and
The non-patent literature of record in the application.
Accordingly, in light of Applicant’s specification, the claimed term “decision algorithm” is reasonably construed as a generic computing device. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
Furthermore, Applicant’s specification does not describe any special programming required for the “decision algorithm”. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional elements 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) (see Berkheimer memo from April 19, 2018, (III)(A)(1) on page 3). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications).
The recitation of the above-identified additional limitations in Claims 1-7 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the method of Claims 1-7 is directed to applying an abstract idea as identified above on a general purpose computer without (i) improving the performance of the computer itself, or (ii) providing a technical solution to a problem in a technical field. None of Claims 1-7 provides meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claim 1 (and its dependent claims) do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. When viewed as whole, the above-identified additional elements do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. Thus, Claims 1-7 merely apply an abstract idea to a computer and do not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Therefore, none of the Claims 1-7 amounts to significantly more than the abstract idea itself. Accordingly, Claims 1-7 are not patent eligible and rejected under 35 U.S.C. 101.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Jardeleza et al (U.S. Publication No. 2020/0179642 A1) teaches wherein devices, methods, and systems for vertigo therapy (Abstract) comprising: monitoring the position of a subject’s head and/or provide instruction to bring the subject's head into a desired position, to perform a desired movement, or a series of head positions and/or movements, wherein the movements included the Dix-Hallpike maneuvers ([0045-0046], [0049-0050]).
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/CHANEL J YOON/Examiner, Art Unit 3791
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