DETAILED ACTION
Status of Claims
This action is in reply to the application filed on 13 December, 2024.
Claims 1 - 10 are currently pending and have been examined.
The present application is a continuation of U.S. Application Number 17/761,288 now U.S. Patent Number 12,205,704.
The present application is co-pending with U.S. Application Numbers 18/797,785 and 18/797,863.
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 .
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 - 10 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1 - 8 of U.S. Patent No. 12,205,704 B2. Although the independent claims are not identical, they are not patentably distinct from each other because the pending independent claim recites all of the limitations of the issued independent claim; however, the pending claim adds a terminal device, comprising a processor and memory, configured to output the rehabilitation plan. It would be obvious to one of ordinary skill to include a terminal device to output results in a system, along with the planning apparatus. Dependent Claims 2 – 7 are identical to the corresponding issued Claims 2 – 7.
Pending Claims 8 – 10 are similar in scope to limitations recited in issued Claims 1, 7 and 8, except for the recitation of the terminal device above. For example, issued Claim 8 is similar to Claim 10 except for the recitation of the terminal device; and is further similar to Claim 8, except for also outputting the predicted hospitalization period (i.e. different content). Issued Claim 1 recites similar limitations as those in Claim 9 relative to outputs. These claims are directed to content included in the output. Such content does not patentably distinguish the claims.
The table below shows the pending claims and their corresponding issued claims:
Pending Claims Issued Claims
1 1
2 2
3 3
4 4
5 5
6 6
7 7
8 8
9 1
10 8
Double Patenting - Provisional
Claims 1 – 10 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 - 10 of co-pending Application No. 18/979,785 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claims merely recite alternate wording for the predicting and selecting/determining steps. Claims 2 – 10 are identical between applications. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claims 1 – 10 are further provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1 - 10 of co-pending Application No. 18/979,863 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claim in the reference application merely recites alternate wording for the predicting and selecting/determining steps; and does not recite the terminal device. Claims 2 – 10 are identical between applications. This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
The Prior Art
The prior art of record fails to expressly teach a method, apparatus and a computer readable medium with instructions for planning rehabilitation, where the claims, in combination with other recited features, includes training a prediction model to output a predicted physical ability value for each of a plurality of ability types, where the prediction model is trained using a plurality of pieces of historical patient information including a disease name, symptoms, and patient attributes including at least age and gender; as well as past rehabilitation patterns performed, and resulting physical ability values attained thereby.
Statutory Subject Matter
The claims recite an abstract mental process – selecting a rehabilitation pattern to attain a physical ability value. However, the claims recite limitations that integrate the abstract idea into a practical application. For example, the machine learning process is configured to generate an effective prediction model using historical population data according to a specific statistical functionality – i.e. a support vector machine - and relying on particular inputs. Hence, as with the incorporation of particular “rules” in the claims of McRO, the specific operations and inputs employed by the recited machine learning process in generating an effective prediction model impose meaningful limits to the claims beyond any judicial exception. When the claims are considered as a whole, including the series of orchestrated steps requiring specific interoperation of hardware and specially configured computing modules that generate effective prediction models and courses of rehabilitation, the alleged ineligible subject matter is integrated into a practical application. (Ex Parte Donovan PTAB 2017-005993)
CONCLUSION
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to John A. Pauls whose telephone number is (571) 270-5557. The Examiner can normally be reached on Mon. - Fri. 8:00 - 5:00 Eastern. If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Robert Morgan can be reached at (571) 272-6773.
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Alternatively, official replies to this Office action may still be submitted by any one of fax, mail, or hand delivery. Faxed replies should be directed to the central fax at (571) 273-8300. Mailed replies should be addressed to “Commissioner for Patents, PO Box 1450, Alexandria, VA 22313-1450.” Hand delivered replies should be delivered to the “Customer Service Window, Randolph Building, 401 Dulany Street, Alexandria, VA 22314.”
/JOHN A PAULS/
Primary Examiner, Art Unit 3683
Date: 11 February, 2026