15DETAILED ACTION
This communication is a Final Rejection Office Action in response to the submission filed on 12/15/2025 in Application 17/885,918.
Claims 6, 11, 13, 18, and 20-25 have been amended. Claims 6-25 are now presented.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed 12/15/2025 have been fully considered but they are not persuasive.
Regarding the rejections under 101 the Applicant argues “Subsequently, for a current test subject, the maximum accuracy value threshold Nmax is applied to the score of the characteristic quantity associated with each task performed to determine which one of the first and second group that the score of the characteristic quantity associated with the performance of the task of the current test subject belongs. This improves the accuracy of the evaluation of cognitive and motor functions thereby improving the technology of evaluating human cognitive and motor functions by a plurality of hand movements. The improvements discussed above are not an improvement to an abstract idea (identified in the Office Action), such as those within the mental process and certain methods of organizing human activities groupings.”
The Examiner respectfully disagrees. The dividing the scores of the previously tested subjects into two groups step; the calculating a discrimination accuracy value (AUC) step; the selecting from the evaluation accuracy database one of the plurality of the thresholds N step; and the applying the maximum accuracy value threshold Nmax to the score of the characteristic quantity steps can be performed in the human mind or with a human using a pen and paper and are as such abstract. Limitation that fall into abstract idea grouping cannot also amount to a technical improvement
.
Regarding the rejections under 101 the Applicant further argues “The improvement is also recited in the claims. For example, claim 6 recites "obtain test results of the group of test subjects previously tested and of a currently tested subject with magnetic sensors that obtain hand motion data of the subject being tested for each of the plurality of different tasks, select, from the evaluation accuracy database, one of the plurality of the thresholds N, for each reference task stored in the storage device, having a maximum accuracy value as a maximum accuracy value threshold Nmax, and apply the maximum accuracy value threshold Nmax to the score of the characteristic quantity associated with the performance of the reference task by a current test subject to discriminate the score on the basis of the threshold Nmax and determine in which one of the first and second groups that the score of the characteristic quantity associated with the performance of the reference task is grouped as a representation of the motor function and cognitive function of a current test subject."”
The Examiner respectfully disagrees. The claims have been amended to recite “obtain test results of the group of test subjects previously tested and of a currently tested subject with magnetic sensors that obtain hand motion data of the subject being tested for each of the plurality of different tasks,” However, the claims do not recited any particular way this data is obtained. Under the broadest reasonable interpretation this is directed to mere data gathering which is considered insignificant extra-solution activity.
Regarding the rejections under 101 the Applicant further argues “These elements are significant, at least because the claim includes a specific technique for improving the technology of evaluating human cognitive and motor functions by a plurality of hand movements. Accordingly, the sum of the functions of the additional elements of Applicant's claim 6, at least when viewed as an ordered combination, are significantly more than when each is taken alone. Therefore, similar to the claims in BASCOM, Applicant's claim 6, at least as an ordered combination, includes a non-conventional and non-generic arrangement of features comprising an inventive concept. As such, Applicant's claim 6 is not directed to routine, conventional, or well-known activities. Consequently, even if Applicant's claim 6 includes an abstract idea, the claim includes additional elements that singly and as an ordered combination amount to significantly more than the mere abstract idea, and therefore, Applicant's claim 6 is patent-eligible for these reasons as well.”
The Examiner respectfully disagrees. In step 2B, the examiner must be determined whether the claim adds a specific limitation other than what is well-understood, routine, conventional activity in the field - see MPEP 2106.05(d). In the instant case, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements computer readable medium amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Further, MPEP 2106.05(d) states that storing and retrieving information in memory is conventional when claimed generically (see Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93).
Further, nothing in the specification indicates that the retrieving of data is anything other than conventional. Further, MPEP 2106.05(d) states “Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink."” Further, MPEP 2106.05(d) also states that creating output data has been identified as conventional (see Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, -- USPQ2d --, slip op. at 32 (Fed. Cir. August 28, 2017)). The combination of the generic computer, and the conventional obtaining of data and data storage offer no more than when viewed individually. As such, the additional elements do not integrate amount to an inventive concept.
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 6-25 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 1-6 of prior U.S. Patent No. 12,079,633. This is a statutory double patenting rejection.
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 6-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
MPEP 2106.04 II. A. explains that in step 2A prong 1 Examiners are to determine whether a claim recites a judicial exception. MPEP 2106.04(a) explains that:
To facilitate examination, the Office has set forth an approach to identifying abstract ideas that distills the relevant case law into enumerated groupings of abstract ideas. The enumerated groupings are firmly rooted in Supreme Court precedent as well as Federal Circuit decisions interpreting that precedent, as is explained in MPEP § 2106.04(a)(2). This approach represents a shift from the former case-comparison approach that required examiners to rely on individual judicial cases when determining whether a claim recites an abstract idea. By grouping the abstract ideas, the examiners’ focus has been shifted from relying on individual cases to generally applying the wide body of case law spanning all technologies and claim types.
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
As per step 2A prong 1 of the eligibility analysis, claim 1 recites the abstract idea generating an event invite for a user of a family network comprising interconnected relationships and connections of the user's family members which falls into the abstract idea categories of certain methods of organizing human activity and mental processes. The elements of Claim 1 that represent the Abstract idea include:
divide the scores of the previously tested subjects into two groups, by discriminating between a first group of the previously tested subjects having a score less than a threshold N, N being an integer in a predetermined range of integers, and a second group of the previously tested subjects having a score equal to or more than the threshold N, based on an appearance frequency distribution with respect to the characteristic quantity of the first group and an appearance frequency distribution with respect to the characteristic quantity of the second group, the first group and the second group being discriminated by a discrimination index threshold,
calculate a discrimination accuracy value (AUC) of discriminating between the first group and the second group by the discrimination index threshold for each of a plurality of the thresholds N in the predetermined range corresponding to each reference task of the plurality of different tasks and storing a combination of the reference task and the discrimination accuracy value for each of the thresholds N for the predetermined range into an evaluation accuracy database,
select, from the evaluation accuracy database, one of the plurality of the thresholds N, for each reference task stored in the storage device, having a maximum accuracy value as a maximum accuracy value threshold Nmax, and
apply the maximum accuracy value threshold Nmax to the score of the characteristic quantity associated with the performance of the reference task by a current test subject to discriminate the score on the basis of the threshold Nmax and determine in which one of the first and second groups that the score of the characteristic quantity associated with the performance of the reference task is grouped as a representation of the motor function and cognitive function of a current test subject.
MPEP 2106.04(a)(2) II. states:
The phrase "methods of organizing human activity" is used to describe concepts relating to:
fundamental economic principles or practices (including hedging, insurance, mitigating risk);
commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities or behaviors, and business relations); and
managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions).
The Supreme Court has identified a number of concepts falling within the "certain methods of organizing human activity" grouping as abstract ideas. In particular, in Alice, the Court concluded that the use of a third party to mediate settlement risk is a ‘‘fundamental economic practice’’ and thus an abstract idea. 573 U.S. at 219–20, 110 USPQ2d at 1982. In addition, the Court in Alice described the concept of risk hedging identified as an abstract idea in Bilski as ‘‘a method of organizing human activity’’. Id. Previously, in Bilski, the Court concluded that hedging is a ‘‘fundamental economic practice’’ and therefore an abstract idea. 561 U.S. at 611–612, 95 USPQ2d at 1010.
The claimed invention is a method to determine task execution order to assess task performance and to group users based on task performance scores which fall into the methods of organizing human activity grouping.
Further, MPEP 2106.04(a)(2) states:
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions.
The dividing the scores of the previously tested subjects into two groups step; the calculating a discrimination accuracy value (AUC) step; the selecting from the evaluation accuracy database one of the plurality of the thresholds N step; and the applying the maximum accuracy value threshold Nmax to the score of the characteristic quantity step can be performed in the human mind or with a human using a pen and paper. Accordingly, the claim recites an abstract idea.
Under step 2A prong 2 the examiner must then determine if the recited abstract idea is integrated into a judicial exception. The 2019 PEG states that additional elements that are indicative of integration into a practical application include:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
In the instant case, this judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional element of:
A task execution order determination device, comprising:
a processor;
a storage device coupled to the processor; and
a memory coupled to the processor,
obtain test results of the group of test subjects previously tested and of a currently tested subject with magnetic sensors that obtain hand motion data of the subject being tested for each of the plurality of different tasks,
wherein the storage device stores task data of a plurality of different tasks performed by subjects to evaluate motor function and cognitive function of a current test subject by comparison of test
results of a current test subject with test results of a group of test subjects previously tested, and
wherein the memory stores instructions that when executed by the processor configures the processor to:
store, in the storage device, test results of the group of test subjects previously tested including scores of a characteristic quantity associated with the performance of each of the plurality of different tasks by each subject of the group of test subjects previously tested,
Claim 13 recites the additional element of a plurality of magnetic sensors that obtain hand motion data of the subject being tested
However, the processor; the storage device coupled to the processor; and a memory coupled to the processor are recited at a high-level of generality (i.e., as a generic processor to perform the Abstract idea) such that they amount no more than mere instructions to apply the exception using a generic computer component.
Further MPEP 2105.05(g) explains that data gathering and data output can be considered pre-solution activity and post-solution activity. See MPEP 2106.05(g) that states:
An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.
In the instant case, the claims do not provide any particular way that the test result data is obtained. Further, the magnetic sensors in claim 13 are also recited broadly and merely amount to tools to gather data. As such, the broadly recited acquisition of data amounts to insignificant pre-solution activity.
Further, MPEP 2106.05(h) also states that storing data is also considered insignificant extra-solution activity when it does not place meaningful limits of the claim.
The combination of the generic computer, and the conventional data gathering and data storage offer no more than when viewed individually. As such, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
In step 2B, the examiner must be determined whether the claim adds a specific limitation other than what is well-understood, routine, conventional activity in the field - see MPEP 2106.05(d). In the instant case, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements computer readable medium amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Further, MPEP 2106.05(d) states that storing and retrieving information in memory is conventional when claimed generically (see Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93).
Further, nothing in the specification indicates that the retrieving of data is anything other than conventional. Further, MPEP 2106.05(d) states “Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink."” Further, MPEP 2106.05(d) also states that creating output data has been identified as conventional (see Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, -- USPQ2d --, slip op. at 32 (Fed. Cir. August 28, 2017)).
The combination of the generic computer, and the conventional data gathering and storage offer no more than when viewed individually. As such, the additional elements do not integrate amount to an inventive concept.
Further, Claims 7-12 further limit that Abstract ideas already rejected in claim 6 by introducing limitations that are also drawn determining how to group users based on task performance which are directed to methods of organizing human activities. Further, the claims further limit the mental practices recited in claim 6, but the limitations remain directed to analysis that can be performed mentally. As such, the dependent claims do not recite additional elements that integrate the abstract idea into a practical application or provide and inventive concept.
The analysis above applies to all statutory categories of invention. As such, Claims 13-25 are rejected for the same reasons as claims 6-19.
Relevant Art Not Relied Upon in a Rejection
Doniger US 20050187436 A1 The present invention relates to a standardized medical cognitive assessment tool. More specifically, the present invention relates to systems and methods for testing and evaluating cognitive ability that are particularly sensitive to mild cognitive impairment and are suitable for a variety of challenging groups, including the elderly, children, people with learning disorders or short attention spans, the mildly visually impaired, and others. The systems and methods described are a tool for a clinician to be able to track cognitive ability and diagnose mental conditions such as Alzheimer's or other forms of dementia, attention deficit disorder, or learning disorders.
The prior art does not teach:
calculating a discrimination accuracy value (AUC) for each of a plurality of the thresholds N in the predetermined range corresponding to each reference task of the plurality of different tasks and storing a combination of the reference task and AUC value for each of the thresholds N for the predetermined range into an evaluation accuracy database;
selecting from the evaluation accuracy database one of the plurality of the thresholds N, for each reference task stored in the storage device, having a maximum accuracy value as a maximum accuracy value threshold Nmax; and
applying the maximum accuracy value threshold Nmax to the score of the characteristic quantity associated with the performance of the reference task by a current test subject to discriminate the score on the basis of the threshold Nmax and determine in which one of the first and second groups that the score of the characteristic quantity associated with the performance of the reference task is grouped as a representation of the motor function and cognitive function of a current test subject.
As such the instant claims are not rejected under 103.
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.
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/DEIRDRE D HATCHER/Primary Examiner, Art Unit 3625