DETAILED ACTION
Acknowledgements
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claims 1-17 are pending.
This action is Non-Final.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Specification
The disclosure is objected to because of the following informalities: abbreviations should be defined prior to usage: “BIOZ” appears to be an abbreviation and not a reference to an actively registered trademarked, its meaning should be set at the first instance.
Appropriate correction is required.
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.
Claims 1-17 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.
The independent claims recite the features “determine an error impedance based on the measured first bodypart impedance, the measured second bodypart impedance, a stored first parasitic bodypart impedance, a stored second parasitic bodypart impedance, and a stored input impedance” which are rejected for lack of adequate written description. This is expansive scope that does not appear to be adequately described for the scope being set out with the disclosure as filed. In review of the disclosure as filed, it appears that there is only a single way (equation) for error determination using the measured impedance itself, which is that in claims 16-17. However, these equations do not have any inclusion of the stored parasitic bodypart impedances, but the scope of the claim includes such that these three stored metrics are the basis for the error impedance. It appears that the parasitic impedances are used in a separate process in calibration and correction, but it is not clear how they are used to determine the error impedance as the equation uses the singular stored input impedance with the clearly defined measured impedances. This is supported by claims 16-17 not including the parasitic features at all which are positively required by the independent claims. This rejection is for scope in the first part, and similar to LizardTech, as the inventors do not have expansive support for any and all ways the claimed functions can be performed but to measured/corrected impedances as set forth in parallel dependent claims. There does not appear to be support for the expansive scope being claimed to base such calculation from the 5 specific separate variables. For these reasons one of skill in the art would not have recognized applicant had possession of the claimed invention at the time the application was filed. The dependent claims are rejected for depending on a rejected claim.
MPEP 2163:
“The Federal Circuit has explained that a specification cannot always support expansive claim language and satisfy the requirements of 35 U.S.C. 112 “merely by clearly describing one embodiment of the thing claimed.” LizardTech v. Earth Resource Mapping, Inc., 424 F.3d 1336, 1346, 76 USPQ2d 1731, 1733 (Fed. Cir. 2005). The issue is whether a person skilled in the art would understand inventor to have invented, and been in possession of, the invention as broadly claimed. In LizardTech, claims to a generic method of making a seamless discrete wavelet transformation (DWT) were held invalid under 35 U.S.C. 112, first paragraph, because the specification taught only one particular method for making a seamless DWT and there was no evidence that the specification contemplated a more generic method. Id.; see also Tronzo v. Biomet, 156 F.3d at 1159, 47 USPQ2d at 1833 (Fed. Cir. 1998)(holding that the disclosure of a species in a parent application did not provide adequate written description support for claims to a genus in a child application where the specification taught against other species).”
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.
Claims 1-17 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.
The independent claims recite the features “determine an error impedance based on the measured first bodypart impedance, the measured second bodypart impedance, a stored first parasitic bodypart impedance, a stored second parasitic bodypart impedance, and a stored input impedance” which are rejected for being indefinite in view of the disclosure as filed. As addressed above, this expansive scope does not appear to be adequately described for the scope being set out. In review of the disclosure as filed, it appears that there is only a single way (equation) for error determination from measured and stored input, which is that in claims 16-17. However, these equations do not have any inclusion of the stored parasitic bodypart impedances, but the scope of the claim includes such that these three stored metrics are the basis for the error impedance. It appears that the parasitic impedances are used in a separate process in calibration/correction set forth in parallel dependent claims, but it is not clear how they are used to determine the error impedance as the equation uses the singular stored input impedance in 16-17 are not based on 3 stored values. This issue is supported by claims 16-17 directly as they do not include the parasitic features at all, which again, are positively required by the independent claims. Which also makes claims 16-17 indefinite as the equation is not based on all 5 variables being set forth in the independent claims. For these reasons the metes and bounds of the claims are unclear, which renders the claims indefinite.
The dependent claims are rejected for depending on a rejected claim.
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.
Section 33(a) of the America Invents Act reads as follows:
Notwithstanding any other provision of law, no patent may issue on a claim directed to or encompassing a human organism.
Claims 1-8 are rejected under 35 U.S.C. 101 and section 33(a) of the America Invents Act as being directed to or encompassing a human organism. See also Animals - Patentability, 1077 Off. Gaz. Pat. Office 24 (April 21, 1987) (indicating that human organisms are excluded from the scope of patentable subject matter under 35 U.S.C. 101). Under a broadest reasonable interpretation, the limitations of claim 1 “a first terminal for connecting a first electrode to be attached to a body; a second terminal for connecting a second electrode to be attached to the body; a third terminal for connecting a third electrode to be attached to the body; and a fourth terminal for connecting a fourth electrode to be attached to the body;” claim 6 “the first, second third and fourth terminals are connected to a calibration body via respective electrodes”, and claim 7 “an electrode arrangement for attaching to a body” are directed to or encompass human organisms. The features should be amended to recite claim 1 “a first terminal adapted for connecting a first electrode to be attached to a body; a second terminal adapted for connecting a second electrode to be attached to the body; a third terminal adapted for connecting a third electrode to be attached to the body; and a fourth terminal adapted for connecting a fourth electrode to be attached to the body;” claim 6 “the first, second third and fourth terminals are adapted to be connected to a calibration body via respective electrodes”, and claim 7 “an electrode arrangement adapted for attaching to a body” changes would overcome the rejections. The dependent claims are rejected for depending on a rejected claim.
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because under a broadest reasonable interpretation, the claim is to a program per se and/or to a structure which can include carrier waves (program product as opposed to non-transitory media or non-transitory program product embodied on a processor which causes the processor to perform the method).
Claims 1-17 (compact prosecution) are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. The claim(s) recite(s):
Claim 1 representative
determine an error impedance based on the measured first bodypart impedance, the measured second bodypart impedance, a stored first parasitic bodypart impedance, a stored second parasitic bodypart impedance, and a stored input impedance (mathematical concepts and/or mental processes including performing math using pen and paper)
determine a corrected body impedance based on the measured body impedance and the error impedance (mathematical concepts and/or mental processes including performing math using pen and paper)
These claim limitations fall within the identified groupings of abstract ideas:
Mathematical Concepts:
mathematical relationships
mathematical formulas or equations
mathematical calculations
Mental Processes
concepts performed in the human mind (including an observation, evaluation, judgment, opinion)
This judicial exception is not integrated into a practical application because:
Under the step 2A, analysis is conducted on the additional features of the claim. Under this analysis, the additional features beyond the judicial exception are:
circuit, comprising:
a set of terminals comprising:
a first terminal for connecting a first electrode to be attached to a body;
a second terminal for connecting a second electrode to be attached to the body;
a third terminal for connecting a third electrode to be attached to the body; and
a fourth terminal for connecting a fourth electrode to be attached to the body;
a control circuit to control application of a stimulus current with a measurement frequency through a first subset of two selected terminals of the set of terminals and measurement of an input voltage in response to the stimulus current at a second subset of two selected terminals of the set of terminals;
an evaluation circuit for determining a measured impedance in response to the stimulus current and the measured input voltage; and
a signal processing circuit for determining a body impedance;
wherein the control circuit is configured to control measurement of:
the body impedance, where the stimulus current is applied through the first and the second terminal, and the input voltage is measured between the third and the fourth terminal;
a first bodypart impedance, where the stimulus current is applied through the first and the third terminal, and the input voltage is measured between the first and the third terminal; and
a second bodypart impedance, where the stimulus current is applied through the second and the fourth terminal, and the input voltage is measured between the second and the fourth terminal; and
wherein the signal processing circuit is configured to:
The limitations amount to a 4-point impedance system for data gathering using processing circuitry for implementing the exception.
These features in the claim do not integrate the exception into a practical application of the exception as the additional elements in the claim do not apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is no more than a drafting effort designed to monopolize the exception.
Limitation concepts that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Limitation concepts that are not indicative of integration into a practical application:
Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f)
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Under Step 2B, the claim limitations are evaluated for an inventive concept. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and in combination, they do not add significantly more to the exception. Analyzing the additional claim limitations individually, the additional limitation that are not directed to the abstract idea are the same as those identified above in step 2A related to the 4-point impedance system and circuitry for implementing the exceptions. Such limitations related to the impedance system are recognized by the courts as routine data gathering in order to input data to the mathematical algorithm, and thus, do not add a meaningful limitation to the product/system/method as it would be routinely used by those of ordinary skill in the art in order to apply the mathematical algorithm. In addition, these 4-point impedance systems including those with controlled paths are known from US 2011/0270066, US 2016/0015290, US 2021/0330212, US 8831898, US 2021/0325328, US 2022/0071503, US 2014/0296662, US 2015/0293045, US 2016/0106337, US 2020/0096463, US 2016/0128604, US 2018/0206761, US 10555686, and the system in general receives the expected data values being gathered. The method does not contain any computing structure, such that the steps can all be analog/mental processing of the equation from the data gathered which further supports that the claims are directed to a judicial exception without significantly more. The computer structures cited above are claimed as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The additional limitations recited in the dependent claims are directed to further details to the data gathering, and further details to the data processing (A more specific abstraction is still an abstraction). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. Therefore, analyzing the claims as an ordered combination under the Mayo/Alice analysis the features claimed are directed to patent ineligible limitations.
Conclusion
No prior art rejections have been applied but the claims are not in condition for allowance due to the rejections of the claims under 35 U.S.C. 101 and/or 112.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. . US 2011/0270066, US 2016/0015290, US 2021/0330212, US 8831898, US 2021/0325328, US 2022/0071503, US 2014/0296662, US 2015/0293045, US 2016/0106337, US 2020/0096463, US 2016/0128604, US 2018/0206761, US 10555686 teach 4-point impedance systems including those with controlled paths.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL R BLOCH whose telephone number is (571)270-3252. The examiner can normally be reached M-F 11-8 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert (Tse) Chen can be reached at (571)272-3672. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL R BLOCH/Primary Examiner, Art Unit 3791
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