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 .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Response to Amendment
This is a response to Applicant’s amendment filed on 05 March 2026, wherein:
Claims 1-15 are amended.
Claims 1-15 are pending.
Information Disclosure Statement
The information disclosure statement (IDS) filed 20 November 2024 fails to comply with 37 CFR 1.98(a)(2), which requires a legible copy of each cited foreign patent document; each non-patent literature publication or that portion which caused it to be listed; and all other information or that portion which caused it to be listed. In particular, there are no copies for non-patent literature cite no. 2 and 7 while the entire book after the Table of Contents is missing for non-patent literature cite no. 6. It is further noted that there is a single page document that is titled “About This Book” in the application file that includes several sentences but there is no indication which document this is supposed to be. It has been placed in the application file, but the information referred to therein has not been considered.
Claim Objections
Claim 15 is objected to because of the following informalities:
The term “a” preceding “computer program” should not be capitalized.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
The text of those sections of Title 35, U.S. Code 101 not included in this action can be found in a prior Office action.
Claims 1-15 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 including additional elements that are sufficient to amount to significantly more than the judicial exception itself.
Step 1
The instant claims are directed to a products and a method which fall under at least one of the four statutory categories (STEP 1: YES).
Step 2A, Prong 1
Independent claim 1 recites:
A cognitive performance determination apparatus, comprising:
a processing unit configured to obtain results of a plurality of trials of a test, wherein the results of each trial is generated by a person undertaking a plurality of events of each trial;
wherein the processing unit is configured to determine a plurality of performance values for the results of the plurality of trials of the test, wherein a performance value is determined for each trial of the plurality of trials; and
wherein the processing unit is configured to determine information about the person, and by calculating a curve of a model fit to at least some of the plurality of performance values to thereby determine cognitive performance of the person.
Independent claim 14 recites:
A cognitive performance determination method, comprising:
providing a processing unit with results of a plurality of trials of a test, wherein the results of each trial is generated by a person undertaking a plurality of events of each trial;
determining by the processing unit a plurality of performance values for the results of the plurality of trials of the test, wherein a performance value is determined for each trial of the plurality of trials; and
determining by the processing unit information about the person by calculating a curve of a model fit to at least some of the plurality of performance values to thereby determine cognitive performance of the person.
All of the foregoing underlined elements identified above, both individually and as a whole, amount to the abstract idea grouping of a certain method of organizing human activity because it is managing personal behavior or interactions between people (including social activities, teaching, and following rules or instructions) by collecting information, analyzing the information, and outputting the results of the collection and analysis. This also amounts to the abstract idea grouping of mental processes as the claims, under their broadest reasonable interpretation, cover performance of the limitations in the mind with the aid of pen and paper (including observation, evaluation, judgment, opinion) but for the recitation of generic computer components. See MPEP 2106.04(a)(2)(III)(C) - A Claim That Requires a Computer May Still Recite a Mental Process. Lastly, the determining and calculating steps amount to the abstract idea grouping of mathematical concepts because they recite mathematical calculations as defined in MPEP 2106.04(a)(2)(I) which recites that a “claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the ‘mathematical concepts’ grouping” because a “mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation. There is no particular word or set of words that indicates a claim recites a mathematical calculation. That is, a claim does not have to recite the word ‘calculating’ in order to be considered a mathematical calculation. For example, a step of ‘determining’ a variable or number using mathematical methods or ‘performing’ a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation of the claim in light of the specification encompasses a mathematical calculation."
The dependent claims, except for claim 15, amount to merely further defining the judicial exception.
Therefore, the claims recite a judicial exception. (STEP 2A, PRONG 1: YES).
Step 2A, Prong 2
This judicial exception is not integrated into a practical application because the independent and dependent claims do not include additional elements that are sufficient to integrate the exception into a practical application under the considerations set forth in MPEP 2106.04(d). The elements of the claims above that are not underlined constitute additional elements.
The following additional elements, both individually and as a whole, merely generally link the judicial exception to a particular technological environment or field of use: a cognitive performance determination apparatus comprising a processing unit (claim 1), a processing unit (claim 14), and a computer program loaded into a working memory of the processing unit (claim 15). This is evidenced by the absence of structure in the drawings and the nature in which any additional element is described in the claims and the specification. See, for example, Fig. 2 which illustrates the elements as a collection of black boxes and at least para. 44 and 166-172 of the published specification which identify that the disclosed elements are merely schematically illustrated based on their function and do not represent specific hardware or software or combinations thereof. This also evidences that the computer components are merely an attempt to link the abstract idea to a particular technological environment, but do not result in an improvement to the technology or computer functions employed as well as that the claims do not recite any specific rules with specific characteristics that improve the functionality of the computer system. Applicant’s arguments with respect to interpretations and rejections under 35 USC 112 further evidence this by admitting that the claimed functions performed by the processing unit amount to coextensive functions and not to special programming. See Remarks at pg. 8-9. Additionally, the method claim is silent regarding any additional elements actively performing the claimed functions indicating that the entire method is performed by a human, including a human operating the recited additional elements. Therefore, the claims merely define the abstract idea identified above, and are focused on the abstract idea rather than an improvement to the computer functionality or another technology. The claims do not apply or use a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition. In particular, the claims are silent regarding any specific treatment or prophylaxis for any specific disease or medical condition. Accordingly, based on all of the considered factors, these additional elements do not integrate the abstract idea into a practical application. Therefore, the claims are directed to the judicial exception. (STEP 2A, PRONG 2: NO).
Step 2B
The independent and dependent claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception under the considerations set forth in MPEP 2106.05. As identified in Step 2A, Prong 2, above, the claimed system and the process it performs does not require the use of a particular machine, nor does it result in the transformation of an article. The claims do not involve an improvement in a computer or other technology. Although claims recite computer components associated with performing at least some of the recited functions, these elements are recited at a high level of generality in a conventional arrangement for performing their basic computer functions (i.e., collecting, processing, and outputting data). This is at least evidenced by the manner in which this is disclosed that indicates that Applicant believes the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 USC 112(a) as identified in Step 2A, Prong 2, above. This also evidences that the computer components are merely an attempt to link the abstract idea to a particular technological environment, but do not result in an improvement to the technology or computer functions employed. In particular, the claims are wholly focused on mathematically estimating cognitive performance of an individual. Thus, the focus of the claimed invention is on the analysis of the collected data (i.e., determining cognitive performance), which is itself at best merely an improvement within the abstract idea. See pg. 2-3 in SAP America Inc. v. lnvestpic, LLC (890 F.3d 1016, 126 USPQ2d 1638 (Fed. Cir. 2018)) which proffered “[w]e may assume that the techniques claimed are groundbreaking, innovative, or even brilliant, but that is not enough for eligibility. Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. The claims here are ineligible because their innovation is an innovation in ineligible subject matter. Their subject is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations.” Furthermore, the steps are merely recited to be performed by, or using, the elements while the specification makes clear that the computerized system itself is ancillary to the claimed invention as identified above. See, for example, para. 44 and 166-172 which, at best, merely recite in results-based language that they are used. This further evidences that the claims do not recite any specific rules with specific characteristics that improve the functionality of the computer system. Thus, none of the additional elements offer a meaningful limitation beyond generally linking the performance of the steps to a particular technological environment, that is, implementation via computers. Therefore, viewed as a whole, these additional claim elements do not provide any 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 of itself (STEP 2B: NO).
Thus, the claims are rejected under 35 USC 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
The text of those sections of Title 35, U.S. Code 103 not included in this action can be found in a prior Office action.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-15 are rejected under 35 U.S.C. 103 as being unpatentable over Gevins et al. (US 2003/0013981, hereinafter referred to as Gevins) in view of Collie et al.1 (hereinafter referred to as Collie).
Regarding claim 1, Gevins teaches a cognitive performance determination apparatus, comprising:
a processing unit is configured to obtain results of a plurality of trials of a test, wherein the results of each trial is generated by a person undertaking a plurality of events of each trial (Gevins, at least para. 80-82 describe this.);
wherein the processing unit is configured to determine a plurality of performance values for the results of the plurality of trials of the test, wherein a performance value is determined for each trial of the plurality of trials (Gevins, at least para. 80-82 describe this.); and
wherein the processing unit is configured to determine information about the person to thereby determine cognitive performance of the person (Gevins, para. 41, “compare measurements of neurophysiological signals and cognitive task performance between successive test sessions to determine whether the subject's neurophysiological signals and cognitive task performance have changed and continue to change under a regime of any non-drug related therapy meant to enhance such performance or delay its deterioration.”).
While Gevins implies wherein the processing unit is configured to determine information about the person by calculating a curve of a model fit to at least some of the plurality of performance values (Gevins, para. 175, 189, 239, “They then practiced the tasks until performance levels reached asymptote.” Reaching asymptote implies that a curve is fit to the plurality of performance values.), Gevins does not explicitly teach wherein the processing unit is configured to determine information about the person by calculating a curve of a model fit to at least some of the plurality of performance values.
However, in a related art, Collie teaches wherein the processing unit is configured to determine information about the person by calculating a curve of a model fit to at least some of the plurality of performance values (Collie, pg. 422, “Power curves were fitted to this trial-by-trial data to gain an estimate of the magnitude of within test practice effects occurring at all four assessments.”).
It would have been obvious to a person having ordinary skill in the art for determining when an asymptote is reached in Gevins to include fitting power curves as taught by Collie because power curves have asymptotes and were used to “gain an estimate of the magnitude of within test practice effects” and “[p]ost-hoc trend analyses indicated that power functions provided the best description of this practice effect for most tests”. See Collins at pg. 422.
Regarding claim 14, Gevins teaches a cognitive performance determination method, comprising:
providing a processing unit with results of a plurality of trials of a test, wherein the results of each trial is generated by a person undertaking a plurality of events of each trial (Gevins, at least para. 80-82 describe this.);
determining by the processing unit a plurality of performance values for the results of the plurality of trials of the test, wherein a performance value is determined for each trial of the plurality of trials (Gevins, at least para. 80-82 describe this.); and
determining by the processing unit information about the person to thereby determine cognitive performance of the person (Gevins, para. 41, “compare measurements of neurophysiological signals and cognitive task performance between successive test sessions to determine whether the subject's neurophysiological signals and cognitive task performance have changed and continue to change under a regime of any non-drug related therapy meant to enhance such performance or delay its deterioration.”).
While Gevins implies determining the information about the person by calculating a curve of a model fit to at least some of the plurality of performance values (Gevins, para. 175, 189, 239, “They then practiced the tasks until performance levels reached asymptote.” Reaching asymptote implies that a curve is fit to the plurality of performance values.), Gevins does not explicitly teach determining the information about the person by calculating a curve of a model fit to at least some of the plurality of performance values.
However, in a related art, Collie teaches determining the information about the person by calculating a curve of a model fit to at least some of the plurality of performance values (Collie, pg. 422, “Power curves were fitted to this trial-by-trial data to gain an estimate of the magnitude of within test practice effects occurring at all four assessments.” Pg. 424, “Figure 1 displays power curves fitted to group mean RT data for each of 15 individual trials in the SRT1 test at all four assessments.” Pg. 426, Fig. 1, Within and between assessment practice effects revealed by analyses of trial by trial data for the Simple Reaction Time (SRT) test. Power curves are fitted to the group mean data plotted by trial number.).
It would have been obvious to a person having ordinary skill in the art for determining when an asymptote is reached in Gevins to include fitting power curves as taught by Collie because power curves have asymptotes and were used to “gain an estimate of the magnitude of within test practice effects” and “[p]ost-hoc trend analyses indicated that power functions provided the best description of this practice effect for most tests”. See Collins at pg. 422.
Regarding claim 2, Gevins in view of Collie teaches the apparatus according to claim 1, wherein the determination of the information about the person comprises the calculation of performance variability between at least one consecutive pair of performance values, and wherein the information about the person comprises one or more trials of the plurality of trials selected on the basis of the performance variability between at least one consecutive pair of performance values (Gevins, para. 41, “compare measurements of neurophysiological signals and cognitive task performance between successive test sessions to determine whether the subject's neurophysiological signals and cognitive task performance have changed and continue to change under a regime of any non-drug related therapy meant to enhance such performance or delay its deterioration.”).
Regarding claim 3, Gevins in view of Collie teaches the apparatus according to claim 1, wherein the determination of the information about the person comprises the calculation of performance variability between at least one consecutive pair of performance values, and wherein the information about the person comprises one or more trials of the plurality of trials that were undertaken by the person after the performance variability between a consecutive pair of performance values is equal to or is below a threshold value (Gevins, para. 175, 189, 239, “They then practiced the tasks until performance levels reached asymptote.” One of ordinary skill in the art would understand that reaching asymptote is an identification that the performance variability between a consecutive pair of performance values is equal to or below a threshold value.).
Regarding claim 4, Gevins in view of Collie teaches the apparatus according to claim 3.
Gevins doesn’t explicitly teach wherein the threshold value is a percentage value and is one of: 1%, 2%, 3%, 4%, 5%, 6%, 7%, 8%, 9%, 10%, 15%, 20%.
However, it would have been obvious matter of design choice to a person having ordinary skill in the art before the effective filing date of the claimed invention for the threshold value to be a percentage value and is one of: 1%, 2%, 3%, 4%, 5%, 6%, 7%, 8%, 9%, 10%, 15%, 20% since applicant has not disclosed that the threshold value being a threshold and is 1%, 2%, 3%, 4%, 5%, 6%, 7%, 8%, 9%, 10%, 15%, 20% solves any stated problem or is for any particular purpose and it appears that the invention would perform equally well with any other metric as a threshold value.
Regarding claim 5, Gevins in view of Collie teaches the apparatus according to claim 1, wherein the determination of the information about the person comprises the calculation of performance variability between at least one consecutive pair of performance values, wherein the processing unit is configured to obtain a performance variability between at least one consecutive pair of performance values for one or more further persons generated from results of a plurality of trials of the test undertaken by the one or more further persons, and wherein the information about the person comprises a comparison of the performance variability between the at least one consecutive pair of performance values for the person with the performance variability between at least one consecutive pair of performance values for the one or more further persons (Gevins, para. 39, “compare measurements of a subject's neurophysiological signals and cognitive task performance from one or more test sessions to similar measurements made from a normative population to determine whether the subject's neurophysiological signals and cognitive task performance are impaired due to an underlying clinical condition, thus allowing detection of the aforementioned condition.”).
Regarding claim 6, Gevins in view of Collie teaches the apparatus according to claim 1, wherein the determination of the information about the person comprises the calculation of the curve of the model fit to the at least some of the plurality of performance values, and wherein the information about the person comprises information derived from the curve of the model fit to the at least some of the plurality of performance values (Collie, pg. 422, “Power curves were fitted to this trial-by-trial data to gain an estimate of the magnitude of within test practice effects occurring at all four assessments.”).
Regarding claim 7, Gevins in view of Collie teaches the apparatus according to claim 6, wherein the information derived from the curve of the model fit to the at least some of the plurality of performance values comprises one or more trials of the plurality of trials selected on the basis of the curve of the model fit to the at least some of the plurality of performance values (Collie, pg. 422, “Power curves were fitted to this trial-by-trial data to gain an estimate of the magnitude of within test practice effects occurring at all four assessments.”).
Regarding claim 8, Gevins in view of Collie teaches the apparatus according to claim 6, wherein the information derived from the curve of the model fit to the at least some of the plurality of performance values comprises a time constant of the model used to fit the curve of the model to the at least some of the plurality of performance values (Collie, pg. 422, “Power curves were fitted to this trial-by-trial data to gain an estimate of the magnitude of within test practice effects occurring at all four assessments.”).
Regarding claim 9, Gevins in view of Collie teaches the apparatus according to claim 8, wherein the processing unit is configured to obtain a time constant of the model used to fit the curve of the model to a plurality of performance values for one or more further persons generated from results of a plurality of trials of the test undertaken by the one or more further persons, and wherein the information about the person comprises a comparison of the time constant of the model used to fit the curve of the model to the at least some of the plurality of performance values for the person with the time constant of the model used to fit the curve of the model to the plurality of performance values for one or more further persons (Gevins, para. 39, “compare measurements of a subject's neurophysiological signals and cognitive task performance from one or more test sessions to similar measurements made from a normative population to determine whether the subject's neurophysiological signals and cognitive task performance are impaired due to an underlying clinical condition, thus allowing detection of the aforementioned condition.”).
Regarding claim 10, Gevins in view of Collie teaches the apparatus according to claim 6, wherein the processing unit is configured to obtain one or more curves of the model each fit to a plurality of performance values for one or more further persons generated from results of a plurality of trials of the test undertaken by the one or more further persons, and wherein the information about the person comprises a comparison of the curve of the model fit to the at least some of the plurality of performance values for the person with the one or more curves of the model each fit to a plurality of performance values for one or more further persons (Gevins, para. 39, “compare measurements of a subject's neurophysiological signals and cognitive task performance from one or more test sessions to similar measurements made from a normative population to determine whether the subject's neurophysiological signals and cognitive task performance are impaired due to an underlying clinical condition, thus allowing detection of the aforementioned condition.”).
Regarding claim 11, Gevins in view of Collie teaches the apparatus according to claim 6, wherein the information derived from the curve of the model fit to the at least some of the plurality of performance values comprises an asymptotic performance value of the model used to fit the curve of the model to the at least some of the plurality of performance values, and wherein the information about the person comprises one or more trials of the plurality of trials that were undertaken by the person after a trial that has a performance value within a threshold value of the asymptotic performance value of the model (Gevins, para. 175, 189, 239, “They then practiced the tasks until performance levels reached asymptote.” Determining that the performance levels reached asymptote is construed as within a threshold value of the asymptotic performance value of the model.).
Regarding claim 12, Gevins in view of Collie teaches the apparatus according to claim 1, wherein the determination of the information about the person comprises the calculation of the curve of the model fit to the at least some of the plurality of performance values and the calculation of performance variability between at least one consecutive pair of performance values, and wherein the processing unit is configured to determine the at least some of the plurality of performance values as the performance values before a performance value that is one of the consecutive pair performance values that have a performance variability equal to or below a threshold value (Gevins, para. 175, 189, 239, “They then practiced the tasks until performance levels reached asymptote.”).
Regarding claim 13, Gevins in view of Collie teaches the apparatus according to claim 1,
wherein the processing unit is configured to obtain results of a plurality of trials of a second test, wherein the results of each trial of the second test is generated by the person undertaking a plurality of events of each trial of the second test (Gevins, at least para. 80-82 describe this.);
wherein the processing unit is configured to determine a plurality of performance values for the results of the plurality of trials of the second test, wherein a performance value is determined for each trial of the plurality of trials of the second test (Gevins, at least para. 80-82 describe this.);
wherein the processing unit is configured to calculate a curve of the model fit to at least some of the plurality of performance values of the second test (Gevins, para. 175, 189, 239, “They then practiced the tasks until performance levels reached asymptote.”) and/or to calculate performance variability between at least one consecutive pair of performance values of the second test (Gevins, para. 41, “compare measurements of neurophysiological signals and cognitive task performance between successive test sessions to determine whether the subject's neurophysiological signals and cognitive task performance have changed and continue to change under a regime of any non-drug related therapy meant to enhance such performance or delay its deterioration.”); and
wherein the information about the person comprises a comparison of the curve of the model fit to at the least some of the plurality of performance values of the test with the curve of the model fit to at the least some of the plurality of performance values of the second test and/or a comparison of the performance variability between at least one consecutive pair of performance values of the test with the performance variability between at least one consecutive pair of performance values of the second test (Gevins, at least para. 96, 98, and 99 teach this).
Regarding claim 15, Gevins in view of Collie teaches the apparatus according to claim 1, wherein the apparatus is controlled by a computer program loaded into a working memory of the processing unit (Gevins, para. 17, “The system uses a digital computer workstation”. One of ordinary skill in the art understands that the digital computer workstation includes a computer program loaded into a working memory of the processing unit to control the system.).
Response to Arguments
Applicant’s arguments with respect to drawings and specification objections have been fully considered. The amendments obviate the associated objections. Thus, the objections have been withdrawn.
Applicant’s arguments with respect to the objection to claim 13 have been fully considered. The amendments obviate the associated objection. Thus, this objection has been withdrawn. However, Applicant is directed to the new objection, above, which addresses amendments to claim 15.
Applicant’s arguments with respect to the rejection of claim 15 under 35 USC 112(d) have been fully considered. The amendments obviate the rejection. Thus, this rejection has been withdrawn.
Applicant's arguments against the interpretations of the claims under 35 USC 112(f) and the associated rejections under 35 USC 112(a)&(b) have been fully considered. Applicant’s assertion that presumptions had not been properly rebutted is merely a conclusory statement made without substantive support, and is not persuasive. However, the amendments removing the term “input unit” render the associated interpretation and rejections moot. Applicant later asserts that the “processing unit” includes a data processor that executes instructions loaded into a working memory and points to recitation of such a processor in the specification and should not be interpreted under 35 USC 112(f). This argument is considered persuasive for the following reasons. The Federal Circuit has stated that "a microprocessor can serve as structure for a computer-implemented function only where the claimed function is ‘coextensive’ with a microprocessor itself." EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 622, 114 USPQ2d 1711, 1714 (Fed. Cir. 2015), citing In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1316, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011). "Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’ data—the only three functions on which the Katz court vacated the district court’s decision and remanded for the district court to determine whether disclosure of a microprocessor was sufficient." 785 F.3d at 622, 114 USPQ2d at 1714. Thus, "[a] microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm." Id., 114 USPQ2d at 1714. Therefore, Applicant’s assertion amounts to identifying that the claimed functions performed by the processing unit amount to coextensive functions and not to special programming.
Applicant's arguments with respect to the rejection of claim 15 under 35 USC 101, computer program per se, have been fully considered. The amendments obviate the rejection. Thus, this rejection has been withdrawn.
Applicant's arguments with respect to the rejection of the claims under 35 USC 101, judicial exception, have been fully considered but they are not persuasive. In pg. 10-15, Applicant asserts that the features in the claims are not directed to a certain method of organizing human activity, a mental process, or mathematical concepts under Step 2A, Prong 1.
Examiner is not persuaded. As a preliminary note, evaluation under Prong 1 of Step 2A is a determination of whether the claims recite a judicial exception. Whether the claims are directed to the recited judicial exception is determined under Prong 2 of Step 2A. Applicant’s assertions amount to a series of conclusory statements made without substantive support, and are thus not persuasive. In contrast, Applicant is directed to the rejection above which identifies that, under Step 2A, Prong 1, the claims recite and, under Step 2A, Prong 2, are directed to a judicial exception. It is noted that the courts have repeatedly affirmed that mere collecting information, analyzing the information, and outputting the results of the collection and analysis falls under both a certain method of organizing human activity and mental processes. Applicant is further reminded that a claim may recite multiple judicial exceptions. See MPEP 2106.04(II)(B).
In pg. 15, Applicant asserts that the claims integrate any judicial exception into a practical application. Here, Applicant also asserts that combinations in claims 1 and 14 provide a technology solution to technology problems in that practice effects must be eliminated from consideration when determining cognitive performance in evaluating dementia risk, and this is impossible without applying technologies as in the pending claims.
Examiner is not persuaded. This is merely a conclusory statement made without substantive support, and is not persuasive. It is further noted that it is widely known that practice effects is a problem that is not specific to any technology as it is a problem within testing, in general. It is a problem within the judicial exception itself. Therefore, Applicant’s assertion amounts to providing further evidence that the focus of the claimed invention is itself, at best, an improvement within the judicial exception. See pg. 2-3 in SAP America Inc. v. lnvestpic, LLC (890 F.3d 1016, 126 USPQ2d 1638 (Fed. Cir. 2018)) which proffered "[w]e may assume that the techniques claimed are groundbreaking, innovative, or even brilliant, but that is not enough for eligibility. Nor is it enough for subject-matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103. The claims here are ineligible because their innovation is an innovation in ineligible subject matter. Their subject is nothing but a series of mathematical calculations based on selected information and the presentation of the results of those calculations."
Applicant then asserts that that claims 1 and 14 include features that collectively improve a technical field – evaluation of dementia risk via an apparatus-based diagnostic procedure representation – because it is a specific, apparatus-based diagnostic procedure with a structure to provide a technical diagnostic support tool for diagnosing dementia risk.
Examiner is not persuaded. Again, this is merely a conclusory statement made without substantive support, and is not persuasive. As identified above, the focus of the claimed invention is itself, at best, an improvement within the judicial exception, not an improvement to any technical field. As identified in the rejections, the structural elements (i.e., the mere use of a computer) are merely an attempt to link the abstract idea to a particular technological environment, but do not result in an improvement to the technology or computer functions employed as well as that the claims do not recite any specific rules with specific characteristics that improve the functionality of the computer system. Applicant’s arguments with respect to interpretations and rejections under 35 USC 112 further evidence this by admitting that the claimed functions performed by the processing unit amount to coextensive functions and not to special programming. See Remarks at pg. 8-9.
Applicant's arguments with respect to the rejections of the claims under 35 USC 103 have been fully considered but they are not persuasive. In pg. 17-18, Applicant asserts that there is no teaching in the citations that suggest modifying Gevins with the teachings from Collie.
Examiner is not persuaded. In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, Collie is used to more explicitly teach what Gevins already implies in relation to data analysis. Further, Collie provides the motivation, as identified in the rejection, which is “to gain an estimate of the magnitude of within test practice effects” and “[p]ost-hoc trend analyses indicated that power functions provided the best description of this practice effect for most tests. See Collie at pg. 422. Applicant is directed to the rejections above which have been updated to address the amendments to the claims and to further explain how the cited prior art teach the claims.
In pg. 18, Applicant asserts that neither Gevins nor Collie teaches curve-fitting across trials in claims 1 and 14. Applicant is directed to the rejections of claims 1 and 14 above which illustrate teaching curve-fitting across trials using the cited prior art. It is further noted that the prior art made of record and not relied upon identified in the Office Action mailed 05 March 2026 illustrate curve-fitting in determining practice effects is a conventional data analysis technique.
Th rejections stand.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL LANE whose telephone number is (303)297-4311. The examiner can normally be reached Monday - Friday 8:00 - 4:30 MT.
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, Xuan Thai can be reached at (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/DANIEL LANE/Examiner, Art Unit 3715
1 Collie et al. (2003). The effects of practice on the cognitive test performance of neurologically normal individuals assessed at brief test–retest intervals. Journal of the International Neuropsychological Society, 9(3), 419–428. https://doi.org/1017/s1355617703930074
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