DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
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 3 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 3 has been analyzed to determine whether it is directed to any judicial exceptions.
Step 2A, Prong 1
Claim 3 recites at least one step or instruction for modeling and comparing the modeling of user’s joints to stimulate the user based on the comparing, which is grouped as a mental process under the 2019 PEG and a certain method of organizing human activity under the 2019 PEG. The claimed limitations involve managing interactions between people, namely, a human following rules while manipulating the joints of a user, comparing joint modeling movements, and a human manually stimulating the user based on the comparison Accordingly, Claim 3 recites an abstract idea.
Specifically, Claim 3 recites modeling first and second internal forces applied to a model of a user’s joints, comparing the first and second modeled internal forces, and stimulating the user based on the comparison (observation, judgment or evaluation, which is grouped as a mental process under the 2019 PEG) (involves managing interactions between people, namely, humans following rules, which is grouped as a certain method of organizing human activity under 2019 PEG and/or a judgement or evaluation, which is grouped as a mental process under 2019 PEG).
Accordingly, as indicated above, each of the above-identified claims recites an abstract idea.
Step 2A, Prong 2
The above-identified abstract idea in independent Claims 3 is not integrated into a practical application under 2019 PEG because the additional elements either alone or in combination, generally link the use of the above-identified abstract idea to a particular technological environment or field of use. More specifically, the additional elements of: a processor are generically recited computer elements in independent Claims 3 which do not improve the functioning of a computer, or any other technology or technical field. Nor do these above-identified additional elements serve to apply the above-identified abstract idea with, or by use of, a particular machine, effect a transformation or apply or use the above-identified abstract idea in some other meaningful way beyond generally linking the use thereof to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. Furthermore, the above-identified additional elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. For at least these reasons, the abstract idea identified above in independent Claim 3 is not integrated into a practical application under 2019 PEG.
Moreover, the above-identified abstract idea is not integrated into a practical application under 2019 PEG because the claimed method and system merely implements the above-identified abstract idea (e.g., mental process and certain method of organizing human activity) using rules (e.g., computer instructions) executed by a computer (e.g., processor as claimed). In other words, these claims are merely directed to an abstract idea with additional generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. Additionally, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. That is, like Affinity Labs of Tex. v. DirecTV, LLC, the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution. Thus, for these additional reasons, the abstract idea identified above in independent Claim 3 is not integrated into a practical application under the 2019 PEG.
Accordingly, independent Claim 3 is each directed to an abstract idea under 2019 PEG.
Step 2B
Claims 3 includes additional elements that are sufficient to amount to significantly more than the abstract idea for at least the following reasons.
These claims require the additional elements of: the processor in Claim 3.
The above-identified additional elements are generically claimed computer components which enable the above-identified abstract idea(s) to be conducted by performing the basic functions of automating mental tasks. The courts have recognized such computer functions as well understood, routine, and conventional functions when claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See, Versata Dev. Group, Inc. v. SAP Am., Inc. , 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); and OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
Per Applicant’s specification, the processor is generically described at paragraph 0074 of the instant application as any devices that processes electronic data.
Accordingly, in light of Applicant’s specification, the claimed term “processor” is reasonably construed as a generic computing device. Like SAP America vs Investpic, LLC (Federal Circuit 2018), it is clear, from the claims themselves and the specification, that these limitations require no improved computer resources, just already available computers, with their already available basic functions, to use as tools in executing the claimed process.
Furthermore, Applicant’s specification does not describe any special programming or algorithms required for the processor. This lack of disclosure is acceptable under 35 U.S.C. §112(a) since this hardware performs non-specialized functions known by those of ordinary skill in the computer arts. By omitting any specialized programming or algorithms, Applicant's specification essentially admits that this hardware is conventional and performs well understood, routine and conventional activities in the computer industry or arts. In other words, Applicant’s specification demonstrates the well-understood, routine, conventional nature of the above-identified additional elements because it describes these additional elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a) (see Berkheimer memo from April 19, 2018, (III)(A)(1) on page 3). Adding hardware that performs “‘well understood, routine, conventional activit[ies]’ previously known to the industry” will not make claims patent-eligible (TLI Communications).
The recitation of the above-identified additional limitations in Claim 3 amounts to mere instructions to implement the abstract idea on a computer. Simply using a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); and TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Moreover, implementing an abstract idea on a generic computer, does not add significantly more, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer.
A claim that purports to improve computer capabilities or to improve an existing technology may provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); and Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). However, a technical explanation as to how to implement the invention should be present in the specification for any assertion that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. Here, Applicant’s specification does not include any discussion of how the claimed invention provides a technical improvement realized by these claims over the prior art or any explanation of a technical problem having an unconventional technical solution that is expressed in these claims. Instead, as in Affinity Labs of Tex. v. DirecTV, LLC 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016), the specification fails to provide sufficient details regarding the manner in which the claimed invention accomplishes any technical improvement or solution.
For at least the above reasons, the method of Claim 3 is directed to applying an abstract idea as identified above on a general purpose computer without (i) improving the performance of the computer itself, or (ii) providing a technical solution to a problem in a technical field. Claim 3 does not provide a meaningful limitation to transform the abstract idea into a patent eligible application of the abstract idea such that these claims amount to significantly more than the abstract idea itself.
Taking the additional elements individually and in combination, the additional elements do not provide significantly more. Specifically, when viewed individually, the above-identified additional elements in independent Claims 3 do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment. That is, neither the general computer elements nor any other additional element adds meaningful limitations to the abstract idea because these additional elements represent insignificant extra-solution activity. When viewed as a combination, these above-identified additional elements simply instruct the practitioner to implement the claimed functions with well-understood, routine and conventional activity specified at a high level of generality in a particular technological environment. As such, there is no inventive concept sufficient to transform the claimed subject matter into a patent-eligible application. When viewed as whole, the above-identified additional elements do not provide 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 itself. Thus, Claims 3 merely applies an abstract idea to a computer and does not (i) improve the performance of the computer itself (as in Bascom and Enfish), or (ii) provide a technical solution to a problem in a technical field (as in DDR).
Accordingly, Claim 3 is not patent eligible and rejected under 35 U.S.C. 101.
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 rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,734,296 (hereinafter,’296). Although the claims at issue are not identical, they are not patentably distinct from each other because granted patent ‘296 falls entirely within pending claim 1, every element of the pending claim is present, and the granted claim adds a comparator and splits the steps between a processor and a finite state controller. Pending claim 1’s “at least one controller” reads on the granted claim’s processor and finite state controller collectively, since “at least one” permits multiple structures and a finite state controller is a controller.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,734,296 (hereinafter,’296). Although the claims at issue are not identical, they are not patentably distinct from each other because granted patent ‘296 falls entirely within pending claim 2. Pending claim 2 differs only in reciting that the controller communicates with a stimulator. However, this would have been notoriously obvious to a skilled artisan, as the patented claim requires the processor to stimulate muscle via the electrode, and a processor cannot deliver stimulation through an electrode without conveying a control signal to stimulation circuitry.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 9,734,296 (hereinafter,’296) in view of US 7684896 B2 to Darish. Although the claims at issue are not identical, they are not patentably distinct from each other because granted patent ‘296 falls entirely within pending claim 3, except for where the two modeled forces arise from external forces applied at positions unequal to the first position. However, Darish teaches modeling internal forces applied to a joint of a model at spatially distinct points in order to resolve loading at distinct-point load bearing locations of a compound joint – therefore, the combination of ‘296 with Darish would have been obvious to one of ordinary skill in the art.
Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,923,235 (hereinafter,’235). Although the claims at issue are not identical, they are not patentably distinct from each other because granted patent ‘235 falls entirely within pending claim 1, differing only in the recited Markus group as set forth in pending claim 1 of the same members. The claims are substantially identical in scope, and the difference in Markush phrasing is not a patentable distinction.
Claim 2 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of U.S. Patent No. 10,923,235 (hereinafter,’235). Although the claims at issue are not identical, they are not patentably distinct from each other because granted patent ‘235 falls entirely within pending claims 1 and 2,differing only in that the ‘235 claim recites stimulating muscle “via at least one additional electrode”, whereas pending claim 2 recites stimulating “via the at least one electrodes”. Both recitations require delivery of stimulation through an electrode not otherwise positively recited as an element of the claim system, and the difference in nomenclature is not a patentable distinction.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 of U.S. Patent No. 10,923,235 (hereinafter,’235) in view of US 7684896 B2 to Darish. Although the claims at issue are not identical, they are not patentably distinct from each other because granted patent ‘235 falls entirely within pending claim 3, except for where the two modeled forces arise from external forces applied at positions unequal to the first position. However, Darish teaches modeling internal forces applied to a joint of a model at spatially distinct points in order to resolve loading at distinct-point load bearing locations of a compound joint – therefore, the combination of ‘296 with Darish would have been obvious to one of ordinary skill in the art.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-4 of U.S. Patent No. 12,121,465 B2 (hereinafter ’465) in view of US 7684896 B2 to Darish. Although the claims at issue are not identical, they are not patentably distinct from each other because granted patent ‘235 falls entirely within pending claim 3, except for where pending claim 3 recites that the modeled internal forces are applied to a model of the user’s joint and are based on first and second external forces externally applies to the joint. This would have been obvious to a skilled artisan, as the patenting claim models internal forces applied to the joint from the output of sensors affixed near the joint, which necessary requites a model of the joint through which sensed external loading is resolved into internal forces.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless – (b) the invention was…in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States
Claim 3 is rejected under pre-AIA 35 U.S.C. 102(b) as being anticipated by US 7684896 B2 to Darish.
Regarding Claim 3, Dariush discloses a method executed by at least one processor comprising inter alia:
modeling a first internal force applied to a model of a user's joint based on a first external force externally applied to the joint at a first position (col. 5, lines 48-52 “Starting with measured reaction forces and moments 115, for example ground reaction forces and moments, the internal forces and moments acting on ankle joint 120, knee joint 125, and hip joint 130 can successively be estimated”);
modeling a second internal force applied to the model based on a second external force externally applied to the joint at a second position unequal to the first position (The BRI of “comparing” consistent with Applicant’s specification (which describes comparing as determining whether the modeled force4s are “substantially equal according to a chosen factor” paragraph [0071] encompasses any operation evaluating the two modeled internal forces relative to another, including differencing. Equations 9 and 11 of Dariush compute the difference between the internal force at joint I and the internal force at joint I + 1, thereby comparing the first and second modeled internal forces.);
comparing the first and second modeled internal forces (col. 9, lines 4-6 “equation 11 represents an expression for summing the torques acting at joint i 305 and 5 joint i+l 310”); and
stimulating the user based on the comparison (Claim 1 “determining simulated kinematic data for the segment”).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SEAN PATRICK DOUGHERTY whose telephone number is (571)270-5044. The examiner can normally be reached 8am-5pm (Pacific Time).
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/SEAN P DOUGHERTY/Primary Examiner, Art Unit 3791
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