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 § 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 1-20 are rejected under 101 see the analysis below.
Step 1
The claimed invention in claims 1-20 are directed to the statutory category of a machine (system and wearable) or process (method). The claims recite the abstract idea of a mental process and/or mathematical concept.
Step 2A, Prong 1
Regarding Claim 1/11/18, recite the limitations of “determine” whether the plurality of temperature values deviates from a baseline, determining “an authorization signal . . .” based on the having a valid form of authentication and determining there is a deviation is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind and/or a mathematical concept. That is nothing in the claim element precludes the step from practically being performed in the mind. For example, upon gathering the new data a person can mentally (or with pen and paper) compare it to previously gathered data, calculate a degree of deviation from a threshold and combining that knowledge with the knowledge the person is “valid” determine someone should be denied. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the “Mental Processes” grouping of abstract ideas; while the use of mathematical relationships, mathematical formulas or equations, mathematical calculations are Mathematical concepts. Accordingly, the claim recites an abstract idea.
Step 2A, Prong 2
Regarding Claim 1/11/18, the judicial exception is not integrated into a practical application. The claim includes the additional elements “measure . . .” and “transmit . . .” the determined authorization signal. The steps of “measure . . .” amounts to insignificant, extra- solution activity in that it is data gathering. While the step of “transmit . . . ” amounts to insignificant, extra- solution activity in that it is outputting the result of the abstract idea. The processor (i.e., “processor”, “computer processor”, “cloud-computing device”, “mobile device”, “processing system” etc.) in computing steps are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of estimating using a model) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B
Regarding Claim 1, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As with step 2A, Prong 2 above, The claim includes the additional elements “measure . . .” and “transmit . . .” the determined authorization signal. The steps of “measure . . .” amounts to insignificant, extra- solution activity in that it is data gathering. While the step of “transmit . . . ” amounts to insignificant, extra- solution activity in that it is outputting the result of the abstract idea. The processor (i.e., “processor”, “computer processor”, “cloud-computing device”, “mobile device”, “processing system” etc.) in computing steps are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of estimating using a model) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Additionally, per the Berkheimer requirement, wearable with sensors for temperature, oxygenation, heart rate, accelerometer and processing are shown by: (1) US 20180120892 see [0130]-[0132], Fig. 2; (2) US 20190122125 see [0030], [0036], Fig. 2; (3) US 20140276119 see [0120], [0123]-[0124]; (4) US 20170095670 see [0030], [0033], [0050]-[0051]. As such the elements are shown to be WRC. The claim limitations when viewed individually and in combination therefore do not amount to significantly more than the abstract idea itself. The claims are therefore ineligible.
Claims 2-10, 12-17, 19-20 only further define the data gathering/outputting a result (insignificant, extra-solution activity) or further define the abstract idea (i.e., only further define the mental process/mathematical concept. Therefore, the claims do not include any additional elements that show integration into a practical application and do not include any additional elements that amount to significantly more than the abstract idea. The claims are ineligible.
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 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12232849 in view of US 20200285873 to Condon et al. (recited in IDS dated 7/17/26).
Claim 1 of ‘849 discloses a wearable gathering the temperature sensors, wearable determining temperature values from the sensed value, wearable transmitting an authorization signal that instructs a peripheral device to deny access to the user when a valid form of authentication and there is a deviation from baseline skin temperatures. It also discloses processors determining a temperature deviation from baseline.
While Claim 1/11/18 of ‘849 recites all of the determined elements being determined on a processor, it does not recite all of the determinations made on the processor of the wearable. However, in the same field of endeavor (medical devices), Condon teaches that processing steps can be performed on the processor on the wearable ([0058], [0062]-[0063], figs. 5-6b see also [0071], [0107]). Examiner notes that Condon also discloses the determination of both an authentication element and a physiological state including determining valid authentication but that based on the physiological state the person should not have access ([0068]-[0069])
It would have been prima facie obvious to one of skill in the art before the effective filing date of the claimed invention to have modified the elements of Claim 1 of ‘849 to include the processing steps are all performed on the wearable as opposed to a secondary device is merely “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; the processing can be performed either on the secondary device or on the wearable each of which has a processor providing a predictable solution with a reasonable expectation of success.
The dependent claims of the current app either add additional elements disclosed in the base claim or elements found in similar dependent claims in the ‘849.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
See references used in the NF rejection in 17326101 dated 4/15/24
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/James Moss/Examiner, Art Unit 3792
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