DETAILED ACTION
Claim 1 is hereby the present claim under consideration.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 line 7 it appears that “a rest pose” should read “the rest pose”
Claim 1 line 8 it appears that “identifying key-points” should read “identifying key-points on the patient” to better describe what key points are being identified as is consistent with paragraph 0037 of Applicant’s specification.
Appropriate correction is required.
Claim Rejections - 35 USC § 112(b)
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.
Claim 1 is 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.
Claim 1 recites “capturing the frames of the patient in a rest pose and the fully stretched pose” but it is unclear if the “capturing” step is the same as, related to, or different from “recording a video of the patient” which includes such frames. It is unclear if recording a frame and capturing a frame are different processes or if the “capturing” step is intended to convey an identification or extraction of the frame from the recording. For the purposes of this examination, the limitation is interpreted as identifying the recited frames from the recording which contains them.
Claim 1 recites “the range of movement for the key-points” there is insufficient antecedent basis for this limitation in the claim.
Claim 1 recites “a patient’s range of motion” in line 1 but it is unclear if “a range of motion angle” of line 10 which appears to be the output of the algorithm, is the same as, related to, or different from “a patient’s range of motion”. For the purposes of this examination, the limitations are interpreted as referring to the same value.
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.
Claim 1 is 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. Claim 1 is directed to a method of processing images using a computational algorithm, which is an abstract idea. Claim 1 does not include additional elements that integrate the exception into a practical application or that are sufficient to amount to significantly more than the judicial exception for the reasons provided below which are in line with the 2014 Interim Guidance on Patent Subject Matter Eligibility (Federal Register, Vol. 79, No. 241, p 74618, December 16, 2014), the July 2015 Update on Subject Matter Eligibility (Federal Register, Vol. 80, No. 146, p. 45429, July 30, 2015), the May 2016 Subject Matter Eligibility Update (Federal Register, Vol. 81, No. 88, p. 27381, May 6, 2016), and the 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 4, page 50, January 7, 2019) and the 2024 Update on Subject Matter Eligibility (Federal Register, Vol 89, No. 137, page 58128, July 17, 2024).
The analysis of claim 1 is as follows:
Step 1: Claim 1 is drawn to a process.
Step 2A – Prong One: Claim 1 recites an abstract idea. In particular, claim 1 recites the following limitations:
[A1] capturing the frames of the patient in a rest pose and the fully stretched pose
[B1] identifying key-points within the frames;
[C1] tracing the range of movement for the key-points in the frames
[D1] calculating a range of motion angle by comparing key-point positions between the frames
[E1] recording the range of motion angle
[F1] reporting the range of motion angle to the patient or a clinician
These elements [A1]-[F1] of claim 1 are drawn to an abstract idea since they involve a mental process that can be practically performed in the human mind including observation, evaluation, judgment, and opinion and using pen and paper.
Step 2A – Prong Two: Claim 1 recites the following limitations that are beyond the judicial exception:
[A2] a computer system having a database
[B2] a device comprising a camera
[C2] recording a video of the patient as they proceed through a stretching procedure, the video comprising: a frame of the patient in a rest pose and a frame of the patient in a fully stretched pose
These elements [A2]-[C2] of claim 1 do not integrate the exception into a practical application of the exception. In particular, the elements [B2]-[C2] are merely adding insignificant extra-solution activity to the judicial exception, i.e., mere data gathering at a higher level of generality - see MPEP 2106.04(d) and MPEP 2106.05(g). Furthermore, the element [A2] is merely an instruction to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.04(d) and MPEP 2106.05(f).
Step 2B: Claim 1 does not recite additional elements that amount to significantly more than the judicial exception itself. In particular, the recitations “a device comprising a camera” and “recording a video of the patient as they proceed through a stretching procedure, the video comprising: a frame of the patient in a rest pose and a frame of the patient in a fully stretched pose” is merely insignificant extrasolution activity to the judicial exception, e.g., mere data gathering in conjunction with the abstract idea that uses conventional, routine, and well known elements or simply displaying the results of the algorithm that uses conventional, routine, and well known elements. In particular, the data acquirer is nothing more than a camera. Such cameras are conventional as evidenced by Applicant’s lack of a particular description of the camera, its structure, and operation. Furthermore, cameras are frequently found in conventional computers such as laptops and smartphones. Such cameras are conventional as further evidenced by:
US Patent Application Publication Number US 20190227627 A1 hereinafter Kaifosh which teaches that camera based tracking systems for the body are conventional (Paragraph 0054); and
US Patent Application Publication Number US 20190150531 A1 hereinafter McKenzie which teaches that cameras are conventional and can be used movement analysis (Paragraphs 0063-0064)
Further, the element [A2] does not qualify as significantly more because this limitation 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 Electric Power Group, 830 F.3d 1350 (Fed. Cir. 2016); Alice Corp. v. CLS Bank Int’l, 110 USPQ2d 1976 (2014)) and/or a claim to an abstract idea requiring no more than being stored on a computer readable medium which is a well-understood, routine and conventional activity previously known in the industry (see Electric Power Group, 830 F.3d 1350 (Fed. Cir. 2016); Alice Corp. v. CLS Bank Int’l, 110 USPQ2d 1976 (2014); SAP Am. v. InvestPic, 890 F.3d 1016 (Fed. Circ. 2018)).
In view of the above, the additional elements individually do not integrate the exception into a practical application and do not amount to significantly more than the above-judicial exception (the abstract idea). Looking at the limitations as an ordered combination (that is, as a whole) adds nothing that is not already present when looking at the elements taking individually. There is no indication that the combination of elements improves the functioning of a computer, for example, or improves any other technology. There is no indication that the combination of elements permits automation of specific tasks that previously could not be automated. There is no indication that the combination of elements includes a particular solution to a computer-based problem or a particular way to achieve a desired computer-based outcome. Rather, the collective functions of the claimed invention merely provide conventional computer implementation, i.e., the computer is simply a tool to perform the process.
Claim Rejections - 35 USC § 103
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
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.
Claim 1 is rejected under 35 U.S.C. 103 as being unpatentable over Vanderpool US Patent Application Publication Number US 20220392082 A1 hereinafter Vanderpool in view of Blonna “Validation of a photography-based goniometry method for measuring joint range of motion” published by ScienceDirect January 2012, pages 1-7 hereinafter Blonna
Regarding claim 1, Vanderpool teaches a method of measuring a patient’s range of motion (Abstract; Paragraph 0053: the range of motion assessment), operable on a computer system having a database, and a device comprising a camera (Paragraphs 0054-0055: the machine which carries out the method includes a camera and may be a computer), the method comprising:
recording a video of the patient as they proceed through a stretching procedure (Paragraphs 0020 and 0029: the camera captures range of motion data as the user carries out an exercise or movement), the video comprising:
a frame of the patient in a rest pose (Paragraph 0027: the instructions include starting at a resting position) and
capturing the frames of the patient in a rest pose (Paragraph 0027: the camera turns on and the user is starting in the resting pose);
identifying key-points within the frames (Paragraphs 0021 and 0030: a skeletal model may be used to track or identify body part, joint, and limb locations);
tracing the range of movement for the key-points in the frames (Paragraphs 0021-0024 and 0030: the system tracks the locations, positions, and angles of the skeletal model);
calculating a range of motion by comparing key-point positions between the frames (Paragraph 0053 and 0060-0063: the range of motion data, including the positions of the key-points between the frames, is used to calculate the patient’s range of motion);
recording the range of motion (Paragraphs 0012, 0022, 0025, and 0027-0028 are each drawn towards evaluating the progress of the user over time including evaluating range of motion over time which implies that the generated data is stored to facilitate such progress tracking over time. Paragraph 0053: the data may be used to update a patient profile and is thus considered to be recorded); and
reporting the range of motion to the patient or a clinician (Paragraphs 0020, 0053: the range of motion data may be output).
Vanderpool fails to further disclose the method wherein the video recording of the patient includes a frame of the patient in a fully stretched pose and capturing such a frame, or the calculated range of motion being a range of motion angle.
Blonna teaches an image based goniometry method for range of motion assessment (Page 1: Abstract). Thus, Blonna falls within the same field of endeavor as Applicant’s invention.
Blonna teaches the capture of images of a patient at a standard, or rest, position and the capture of images of the patient at a fully flexed position. Bony landmarks are used to provide points from which the angles are derived. The images were then analyzed to provide a range of motion angle using the points corresponding to the bony landmarks. (Pages 2-3 : Materials and Methods – Digital photography-based goniometry; Fig. 1A and 1B and the description of Fig. 1).
It would have been obvious to one of ordinary skill in the art prior to the effective filling date of the invention to configure the range of motion assessment method of Vanderpool to operate in a similar manner to the method of Blonna where the skeletal model points of Vanderpool (Figs. 2-4; Paragraphs 0021 and 0030) are used to provide a range of motion angle by comparing the position of the skeletal model at an initial rest state and at a fully flexed state as taught by Blonna because such a range of motion angle assessment may be more widely accepted and applicable to more body portions than the scoring method of Vanderpool (Paragraph 0060-0062).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claim 1 is provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of copending Application No. 19/413,858 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because each of the limitations required by the present claim is anticipated by the reference application claim 1.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Conclusion
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/MATTHEW ERIC OGLES/ Examiner, Art Unit 3791
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