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 .
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is 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. Claim 2 is further rejected due to its dependency to claim 1.
Claim 1 recites “machine learning models” In line 9. However, the disclosure fails to provide support for all kinds of machine learning models to be trained to assist the user in achieving a particular mental state. [0093], [0103], and [0108] of the PGPUB generally recite the machine learning algorithms but do not recite which machine learning algorithms in particular are being used.
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 2 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 2 recites that the bio-signal comprises at least one of an EEG bio-signal sensor, a functional near-infrared spectroscopy (fNIRS) sensor, an EMG sensor, a galvanometer sensor, an electrocardiograph sensor, a heart rate sensor, a photoplethysmography (PPG) sensor, an eye-tracking sensor, a blood pressure sensor, a breathing sensor, a pedometer, a gyroscope. However, claim 1 recites that the bio-signal sensor measures brain activity. It is unclear how the bio-signal sensor would measure brain activity with a sensor besides the recited EEG bio-signal sensor (a fNIRS sensor, an EMG sensor, a galvanometer sensor, an electrocardiograph sensor, a heart rate sensor, a PPG sensor, an eye-tracking sensor, a blood pressure sensor, a breathing sensor, a pedometer, or a gyroscope). Clarification is requested.
Claim Rejections - 35 USC § 102
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 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 –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 and 2 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Soulet de Brugiere et al. ‘717 (US Pub No. 2018/0368717 – cited by Applicant).
Regarding claim 1, Soulet de Brugiere et al. ‘717 teaches wearable device to wear on a head of a user (Fig. 1 device 100 and [0068]), the device comprising:
a flexible band shaped to correspond to the user’s head ([0072]), the flexible band including a front portion configured to contact at least part of a frontal region of the user’s head (Portion around forehead of user is interpreted as the front portion.), a rear portion configured to contact at least part of an occipital region of the user’s head (Portion including analysis means 150 is interpreted as the rear portion.), and at least one side portion extending between the front portion and the rear portion (Portion between the front portion and rear portion that includes transmission means 140 is interpreted as the side portion.);
a bio-signal sensor disposed on the flexible band to receive bio-signals from the user to measure brain activity (Fig. 1 acquisition means 130 and [0092]); and
an audio emitter configured to deliver feedback to the user based on the bio-signals (Fig. 2 acoustic transducer 110 and [0147]-[0150]), wherein the feedback is generated based on machine learning models trained to assist the user in achieving a particular mental state ([0002], [0138]-[0141]).
Regarding claim 2, Soulet de Brugiere et al. ‘717 teaches wherein the bio-signal sensor comprises at least one of an EEG bio-signal sensor ([0089], [0092]), a functional near-infrared spectroscopy (fNIRS) sensor, an EMG sensor ([0089]), a galvanometer sensor, an electrocardiograph sensor ([0089]), a heart rate sensor, a photoplethysmography (PPG) sensor, an eye-tracking sensor, a blood pressure sensor, a breathing sensor, a pedometer, a gyroscope.
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.
Claims 1 and 2 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 and 19 of U.S. Patent No. 12,251,236 in view of Soulet de Brugiere et al. ‘717).
Regarding claim 1, the US Patent teaches wearable device to wear on a head of a user, the device comprising:
a flexible band shaped to correspond to the user’s head, the flexible band including a front portion configured to contact at least part of a frontal region of the user’s head, a rear portion configured to contact at least part of an occipital region of the user’s head, and at least one side portion extending between the front portion and the rear portion (Claim 1);
a bio-signal sensor disposed on the flexible band to receive bio-signals from the user to measure brain activity (Claim 1); and
an audio emitter (Claim 19).
The US Patent fails to teach the audio emitter configured to deliver feedback to the user based on the bio-signals, wherein the feedback is generated based on machine learning models trained to assist the user in achieving a particular mental state.
Soulet de Brugiere et al. ‘717 teaches an audio emitter configured to deliver feedback to the user based on the bio-signals (Fig. 2 acoustic transducer 110 and [0147]-[0150]), wherein the feedback is generated based on machine learning models trained to assist the user in achieving a particular mental state ([0002], [0138]-[0141]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified the audio emitter of the US Patent to include being configured to deliver feedback to the user based on the bio-signals, wherein the feedback is generated based on machine learning models trained to assist the user in achieving a particular mental state as Soulet de Brugiere et al. ‘717 teaches that this will aid in synchronizing the emitted acoustic signal with a predefined brain wave temporal pattern when the person is in a state fitting for stimulation.
Regarding claim 2, the US Patent teaches wherein the bio-signal sensor comprises at least one of an EEG bio-signal sensor (Claim 1), a functional near-infrared spectroscopy (fNIRS) sensor, an EMG sensor, a galvanometer sensor, an electrocardiograph sensor, a heart rate sensor, a photoplethysmography (PPG) sensor, an eye-tracking sensor, a blood pressure sensor, a breathing sensor, a pedometer, a gyroscope.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AURELIE H TU whose telephone number is (571)272-8465. The examiner can normally be reached [M-F] 7:30-3:30.
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/AURELIE H TU/ Primary Examiner, Art Unit 3791
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