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 .
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/27/2026 has been entered.
Presently, Claims 1, 5-12, 14-18, and 20 remain pending.
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 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:
“an optical blood flow detecting device configured to…” in Claim 1 (defined as “at least one infra-red and visible LED and at least one photo-detector, Para. [0043]); and
“a device configured to…” in Claim 1 (defined as “an ASIC”, Para. [0046]).
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):
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 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.
Claims 1, 5-12, and 14-17 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 written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
With regard to Claim 1, the limitation “using a nonlinear parametric function to generate predicted optical signals”. The parametric function is however not described in the original Specification in such a way as to reasonably convey to one of ordinary skill in the art that the inventor or a joint inventor, at the time the application was filed, had possession of the claimed invention. More specifically, the original Specification only describes “the parametric function is an exponential.” (Para. [0087, 107]). However, it is not readily clear how the parametric function (or an exponential) generates predicted optical signals from one or more candidate DBP and SBP values. Clarification and support is required.
The similar recitation in Claim 12 is also rejected for similar reasons set forth above.
Claims 5-11 and 14-17 are also rejected under 35 U.S.C. 112(a) because they inherit the deficiency of the claim(s) they respectively depend upon.
Claims 18 and 20 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.
With regard to Claim 18, each instance of “essentially incompressible” is a relative term that was not defined in the original Specification with adequate specificity. More specifically, it is unclear what constitutes as “essentially incompressible”. The limitations are therefore indefinite.
Claim 20 is also rejected under 35 U.S.C. 112(b) because it inherits the indefiniteness of the claim(s) it depends upon.
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, 5-9, 12, and 14-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
With regard to Claim 1:
Step 1: the claim is directed to a machine.
Step 2A, Prong One: the claim recites the steps of: (a) “estimating an initial diastolic blood pressure (DBP) value and an initial systolic blood pressure (SBP)…”; (b) “calculating a measured DBP and a measured SBP value…”; (c) “estimat[ing] the initial DBP value and initial SBP value by…using a nonlinear parametric function; comparing…; adjusting…values…”. The limitations, under their broadest reasonable interpretation, recite limitations that can be performed in the mind or with the aid of pen/paper and also constitute limitations that recite mathematical concepts.
Step 2A, Prong Two: the claim further recites the additional elements of a processor and a signal acquisition device. Such components are however endemic of blood pressure measuring devices and recited at a high-level of generality that it does not integrate the judicial exceptions above into a practical application. Furthermore, it is well-established that a processor alone used to implement an abstract idea is not enough to integrate said abstract idea into a practical application.
Step 2B: For similar reasons set forth above, the additional elements do not amount to significantly more than the judicial exception and therefore does not confer an inventive concept.
For the reasons set forth above, Claim 1 is directed to an abstract idea without significantly more and is therefore deemed to be non-patent eligible.
With regard to Claims 5-7, the limitations recite further details of the judicial exception and therefore are not patent-eligible.
With regard to Claims 8 and 9, the limitations recite additional elements that are recited at a high-level of generality. It is noted that the claim does not provide any additional relationship between the claimed camera/processor and the overall system or the judicial exceptions. It is therefore deemed that the limitations do not integrate the judicial exceptions into a practical application.
Note: The Applicant is invited to appreciate the specificity and limitations of Claim 10, which specifically provides for optimizing the location of the body part and the blood flow occlusion device (to provide more accurate blood pressure measurements). Claims 10 and 11 are therefore considered to be patent-eligible.
With regard to Claims 12 and 14:
Step 1: the claim is directed to a method.
Step 2A, Prong One: the claim recites the steps of: “providing a measurement of the subject’s DBP and SBP…comprising calculating an error estimate…”; “estimat[ing] the initial DBP value and initial SBP value by…using a nonlinear parametric function; comparing…; adjusting…values…” and “calculating…”. The limitations, under their broadest reasonable interpretation, recite limitations that can be performed in the mind or with the aid of pen/paper and also constitute limitations that recite mathematical concepts.
Step 2A, Prong Two: the claim further recites the additional elements of “receiving electrical signals….” and “providing a measurement of the subject’s DBP and SBP…”. Such limitations are however insignificant pre-extra solution activities of data gathering that do not integrate the judicial exceptions into a practical application.
Step 2B: For similar reasons set forth above, the additional elements do not amount to significantly more than the judicial exception and therefore does not confer an inventive concept.
For the reasons set forth above, Claim 12 is directed to an abstract idea without significantly more and is therefore deemed to be non-patent eligible.
With regard to Claim 15-17, the limitations recite further details of the judicial exception and therefore are not patent-eligible.
With regard to Claim 18:
Step 1: the claim is directed to a method.
Step 2A, Prong One: the claim recites the steps of: “calibrating the SAD by measuring the height of the flexible and essentially incompressible gel…”; “providing a measurement of the subject’s DBP and SBP estimated by…calculating an initial DBP value and an initial SBP value…” and “calculating a measured DBP value and a measured SBP value…”. The limitations, under their broadest reasonable interpretation, recite limitations that can be performed in the mind or with the aid of pen/paper and also constitute limitations that recite mathematical concepts.
Step 2A, Prong Two: the claim further recites the additional elements of a processor and a signal acquisition device. Such components are however endemic of blood pressure measuring devices and recited at a high-level of generality that it does not integrate the judicial exceptions above into a practical application. Furthermore, it is well-established that a processor alone used to implement an abstract idea is not enough to integrate said abstract idea into a practical application.
Step 2B: For similar reasons set forth above, the additional elements do not amount to significantly more than the judicial exception and therefore does not confer an inventive concept.
For the reasons set forth above, Claim 18 is directed to an abstract idea without significantly more and is therefore deemed to be non-patent eligible.
Note: Claim 20 is deemed to be patent-eligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PASCAL M. BUI-PHO whose telephone number is (571)272-2714. The examiner can normally be reached M-F: 8:30 AM - 5:00 PM EST.
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/PASCAL M BUI PHO/Supervisory Patent Examiner, Art Unit 3798
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