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 .
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 08/19/2024. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities: the phrase “a motor function index value variation” in line 6 should be amended to read –the motor function index value variation--. Appropriate correction is required.
Claim 8 is objected to because of the following informalities: the phrase “a motor function index value variation” in line 5 should be amended to read –the motor function index value variation--. Appropriate correction is required.
Claim 9 is objected to because of the following informalities: the phrase “a motor function index value variation” in line 7 should be amended to read –the motor function index value variation--. Appropriate correction is required.
Claim 10 is objected to because of the following informalities: the phrase “a motor function index value variation” in line 4 should be amended to read –the motor function index value variation--. Appropriate correction is required.
Claim 17 is objected to because of the following informalities: the phrase “a motor function index value variation” in line 4 should be amended to read –the motor function index value variation--. Appropriate correction is required.
Claim 18 is objected to because of the following informalities: the phrase “a motor function index value variation” in line 4 should be amended to read –the motor function index value variation--. Appropriate correction is required.
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.
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:
Limitation “processing device” in claims 1, 9, 10 and 18, and limitations “acquisition unit”, “extraction unit”, “calculation unit”, “output unit” and “generation unit” in claims 8 and 17, the claims does not recite enough structure that would correspond to the claimed units above to perform the claimed function. The specification also failed to disclose any structure that can be interpreted to correspond to the claimed units above (see par.0063).
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 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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-18 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.
Claims 1, 8-10, 17 and 18 recite the limitation “a learned motor function index value variation estimation model obtained by machine learning”, the current specification fails to disclose the specific estimation model obtained by machine learning in a manner to allow one of ordinary skill in the art to make or use the invention. Claimed estimation models obtained by machine learning must be disclosed as either a flowchart showing the process that is taken by the processor to process the incoming data to provide the desired output, or the actual algorithm must be shown in order to allow one of ordinary skill in the art the ability to make or use the current invention without undue experimentation.
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 1-18 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, 9, 10 and 18 recite the limitation “processing device”, claims 8 and 17 recite the limitation “acquisition unit”, “extraction unit”, “calculation unit”, “output unit” and “generation unit”. These limitations are not defined by the claims which render the claims indefinite. One with ordinary skill in the art would not be able to know whether the claimed “processing device”, “acquisition unit”, “extraction unit”, “calculation unit”, “output unit” and “generation unit” constitutes software, hardware or a combination of software and hardware.
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1: claims 1, 8-10, 17 and 18 recite an apparatus and method. Thus, the claims are directed to a product and a process. which are ones of the statutory categories of invention.
STEP 2A PRONG ONE: Claims 1, 8-10, 17 and 18 recite(s) specific limitations/method steps of: acquiring physical strength measurement data of a target; extracting a plurality of feature amounts based on the physical strength measurement data having been acquired; calculating a motor function index value variation of the target by inputting the plurality of feature amounts having been extracted to a learned motor function index value variation estimation model obtained by machine learning using, as training data, the plurality of feature amounts and actual measurement data of the motor function index value variation from start of rehabilitation and after passage of a predetermined period of time, which pertain to each of a plurality of subjects.
These limitations recite a mental process, because the claimed limitation describes a concept performed in the human mind (including an observation, evaluation, judgment, opinion). For example, a physician can obtain the physical strength and extract plurality of features to determine motor function of the patient. Thus, the claims are drawn to a Mental Process, which is an Abstract Idea. Examiner also notes that nothing from the claims suggest that the limitations cannot be practically performed by a human, or using simple pen/paper.
STEP 2A PRONG TWO: Claims 1, 8-10, 17 and 18 does not recite additional elements that integrates the judicial exception into a practical application. Claims 1, 8-10, 17 and 18 recites the following additional elements beyond the judicial exception: A) processing unit, and claims 8 and 17 recites the following additional elements beyond the judicial exception: B) acquisition unit, C) extraction unit, D) output unit, and E) calculation/generation unit.
Accordingly, the combination of the additional element/step B-E does not integrate the exception into a practical application of the exception because the use of acquisition unit, extraction unit, output unit, and calculation/generation unit is merely adding insignificant extra-solution activity to the judicial exception, e.g. using those elements for mere data gathering (see MPEP 2106.05(g)).
Element A does not integrate the exception into a practical application of the exception because the use of a controller/processor amounts to merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)).
Accordingly, each of the additional elements or a combination of the additional elements do not integrate the abstract idea into a practical application as they fail to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception.
STEP 2B: Claims 1, 8-10, 17 and 18 does/do not include additional structural elements that are sufficient to amount to significantly more than the judicial exception because the claims recite additional elements, such as, claims 1, 8-10, 17 and 18 recites the following additional elements beyond the judicial exception: A) processing unit, B) acquisition unit, C) extraction unit, D) output unit, and E) calculation/generation unit.
The combination of elements B-E of an acquisition unit, extraction unit, output unit, and calculation/generation unit does not amount to significantly more than the judicial exception because the use of the units above is merely adding insignificant extra-solution activity to the judicial exception, e.g. using those elements for mere data gathering (see MPEP 2106.05(g)). Furthermore, the elements B-E are well-understood, routine, and conventional, as is evidenced by WO 2019/008657 and WO 2021/065184 which all show acquisition unit, extraction unit, output unit, and calculation/generation unit as claimed in claims 1-18 evidencing that these elements are well-understood, route, and conventional in the applanation arts.
Element A does not amount to significantly more than the judicial exception because adding a controller/processor is simply appending well-understood, routine and conventional activities previously known in the industry, specified at a high level of generality, to the judicial exception, e.g. a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known in the industry (see MPEP 2106.05(d)II).
Accordingly, the additional elements individual or in co do not integrate the abstract idea into a practical application as they fail to recite additional element(s) or a combination of additional elements to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limitation on the judicial exception.
When viewed alone or in combination, the limitations of claims 1-18 merely instruct the practitioner to implement the concept of collecting data with routine, conventional activity specified at a high level of generality in a particular technological environment. The inventive concept cannot be furnished by the abstract idea; instead, the application must provide something inventive, beyond mere “well-understood, routine, conventional activity” (Genetic Technologies Limited v. Merial L.L.C.). The additional elements of independent claims when viewed alone or as whole, do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea and does not amount to significantly more than the abstract idea itself. In other words, this claim merely applies an abstract idea to a computer and does not (i) improve the performance of the computer itself (as in McRO, Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Therefore, claims 1-18 are not patent eligible under 35 USC 101.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MAY A ABOUELELA whose telephone number is (571)270-7917. The examiner can normally be reached 8-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, JACQUELINE CHENG can be reached at 5712725596. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MAY A ABOUELELA/Primary Examiner, Art Unit 3791
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