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 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 1-14 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.
In claim 1, line 7, “the measurements” is vague as line 3 and line 5 both have measurements. It is unclear if both measurements in line 7 are being discussed or if only the sleep-wake rhythm measurements are being discussed in line 7. In line 10, “based on the user’s location” is inferentially included and makes the claim incomplete for omitting a step to perform this function. No step has been set forth to determine or provide “the user’s location” and therefore it is unclear how a target phase can be determined and “based on” the user’s location. In line 11, “said circadian adaption rate” lacks antecedent basis. In line 13, “the computed circadian adaption rate” lacks antecedent basis. In line 15, “the rate” is vague as there are multiple different rates in the claim and it is unclear which rate is being discussed. In lines 17 and 19, “based on a first adaption rate” and “based on…second rate” and the “if…” statements are vague, inferentially included, and unclear if they are being positively recited/claimed as a method step or not for using “based on…” and using “if”. It is unclear if the claim and/or prior art requires the steps/elements when the “if” statement is not met. It is suggested to use active voice to positively recite the method step, and a “when…” phrase. Suggested claim language of “and wherein:
when the current circadian phase is progressing toward the setpoint phase and the target phase, using a first adaptation rate to determine the circadian adaptation rate; and
when the current circadian…, using a second adaptation…, wherein the second adaptation rate is smaller…”.
In the last paragraph, “a parameter derivative” is vague as this term is also used in line 13 and it is unclear if they are the same element or different ones. If they are the same, then “the parameter derivative” should be used.
Similarly, claims 10 and 13 use the same/similar language and are therefore vague and indefinite.
Claims 2-5 and 7-8 are vague and in the passive voice and it cannot be determined if the claims are positively reciting/claiming a method step, or are just claiming an intended/functional use of how the limitations may be performed. It is suggested to use active voice, such as “measuring”, “determining”, “estimating”, etc.
In claim 3, “determine by user’s light exposure” is vague and makes the claim incomplete for first measuring the light exposure for the target phase to use the line exposure.
In claim 7, the claim uses an “if…” phrase and it is vague and unclear if the method and/or prior art requires this step. It is suggested to use a “when…” phrase.
Similarly, claim 8 uses “if” and the claim is vague.
In claim 9, “the measurements” is vague as it is unclear which measurements are being discussed.
In claim 10, the claim is vague as it is unclear what elements are being positively recited/claimed and what elements are meant as intended/functional use recitations. For example, in line 3, “at least one of a skin temperature sensor, a heart activity sensor, and a motion sensor”. It is unclear if the apparatus is only “receiving” these measurements or if the apparatus also is positively claiming and has the different sensors. If the sensors are meant to be positively recited, then the claim must first set forth the apparatus has at least one of these sensors before they can be used to take measurements. Several other elements also are unclear if they are being positively recited, such as the sensors, user’s location, the first and second adaptation rate, etc. In addition, in the last line “via an interface” is vague and inferentially including the interface and it is unclear if the system is positively reciting/claiming the interface or it is meant as a functional/intended use recitation. In addition, the claim is vague as it is unclear what element the “apparatus” actually is. Is it a processor performing the functions? Is it circuitry? A human mind?
In claim 14, “a” medium, computer, instructions, and apparatus are vague for using “a” or “an” . It is suggested to use “the” since these elements have been previously recited in claim 13.
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 13 and 14 are rejected under 35 U.S.C. 101 as not falling within one of the four statutory categories of invention and thus fails as eligible subject matter. Claim 13 characterizes the invention as a “computer program product on a distribution medium…comprising instructions”. A broadest reasonable interpretation of this language typically covers forms of non-transitory tangible media and transitory propagating signals per se, which are not patentable under 35 U.S.C. 101. Claims that cover both statutory and non-statutory embodiments under the broadest reasonable interpretation of the claims when read in light of the specification and in view of one skilled in the art, embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. The claim is considered to be broad enough to cover a transitory propagating signal that carries a programmed instruction set. Furthermore, even when the claim is directed to one of the four statutory categories of invention, the claim must not be wholly directed to subject matter encompassing a judicially recognized exception without a particular practical application. In the instant case, in addition to failing to fall within one of the four statutory categories of invention, the claim recites only instructions, i.e. an algorithm that is not limited to a particular practical application.
It is suggested to add “non-transitory” to the claim.
Claims 10-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) the mental concept or mathematical equation of using measurements to determine a circadian adaptation rate or parameter derivative. This judicial exception is not integrated into a practical application because the combination of additional elements (e.g. the apparatus) fails to integrate the judicial exception into a practical application. The generically recited computer elements (e.g. the apparatus) do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered separately and in combination do not add significantly more to the exception. The additional limitations only store, process/determine, or retrieve data and these are well-understood, routine, conventional computer functions as recognized by the court decisions listed in MPEP 2106.05.
The claims are directed to an abstract idea and/or the end result of the system/method, the essence of the whole, is a patent-ineligible concept. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they amount to a general computer performing a calculation. The claims are directed to an abstract idea, i.e. implementing the idea of using measurements to determine a circadian adaptation rate or parameter derivative, such as may be done by a mental process, critical thinking, and/or paper and pencil, or done by a mathematical equation, with additional generic computer elements, or additional structure (e.g. an apparatus, attachment mechanism in dependent claim 12, etc.) recited at a high level of generality that perform generic functions routinely used in the art, and do not add a meaningful limitation to the abstract idea because they would be routine in any computer implementation or in the relevant art. Thus, the recited generic computer components perform no more than their basic computer functions. These additional elements are well‐understood, routine and conventional limitations (see cited document(s)) that amount to mere instructions or elements to implement the abstract idea. In addition, the end result of the system/method, the essence of the whole, is a patent-ineligible concept. See the recent decisions by the U.S. Supreme Court, including Alice Corp., Myriad, and Mayo. In addition, the current claims are similar to other recent court decisions dealing with analyzing, comparing, and/or displaying data, such as Electric Power Group, Digitech, Grams, and Classen.
Based on the plain meaning of the words in the claim, the broadest reasonable interpretation of the claims (e.g. claim 10, an apparatus, which appears to be a memory and a processor) is a system having a memory and processor, wherein the processor is programmed with executable instructions to perform the calculations/mental process/critical thinking. The claims do not impose any limits on how the measurements/information is received by the processor, and thus this step covers any and all possible ways in which this can be done, for instance by typing the information into the system, or by the system obtaining the information from another device. The claim also does not impose any limits on how the computations are accomplished, and thus it can be performed in any way known to those of ordinary skill in the art.
The calculations are simple enough to be practically performed in the human mind or through critical thinking. Note that even if most humans would use a physical aid (e.g., pen and paper, a slide rule, or a calculator) to help them complete the recited calculation, the use of such physical aid does not negate the mental nature of this limitation. Nor does the recitation of a processor in the claim negate the mental nature of this limitation because the claim here merely uses the processor as a tool to perform the otherwise mental process.
The apparatus, or memory and processor, are recited so generically (no details whatsoever are provided other than that they are a memory and processor) that they represent no more than mere instructions to apply the judicial exception on a computer. These limitations can also be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of these computer components does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014).
Although the processor or claim limitations may fall under several exceptions (e.g., a mathematical concept-type abstract idea or a mental process-type abstract idea), there are no bright lines between the types of exceptions. See, e.g., MPEP 2106.04(I). Thus, it is sufficient for the examiner to identify that the limitations align with at least one judicial exception, and to conduct further analysis based on that identification.
The limitations of the claims are carried out by the processor and the memory. No element has been set forth to sense the measurements/signals, and the only additional element is the memory, where the processor performs the necessary software tasks so that the result of the abstract mental process is just data/a circadian adaptation rate or parameter derivative. The memory or attachment mechanism limitations represent extra-solution activity because it is a mere nominal or tangential addition to the claim and/or does not practically integrate the mental concept or mathematical equation into a complete system. See MPEP 2106.05(g), discussing limitations that the Federal Circuit has considered to be insignificant extra-solution activity. Even when viewed in combination, the additional elements in this claim do no more than automate the mental processes (e.g., the mental computation of using measurements to determine a circadian adaptation rate or parameter derivative, etc.), using the computer components as a tool. While this type of automation may improve the life of a practitioner/physician (by minimizing or eliminating the need for mentally computing metrics), there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology. See, e.g., Trading Technologies Int’l v. IBG, Inc., 921 F.3d 1084, 1093 (Fed. Cir. 2019) (using a computer to provide a trader with more information to facilitate market trades improved the business process of market trading, but not the computer) and the cases discussed in MPEP 2106.05(a)(I), particularly FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095 (Fed. Cir. 2016) (accelerating a process of analyzing audit log data is not an improvement when the increased speed comes solely from the capabilities of a general-purpose computer) and Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055 (Fed. Cir. 2017) (using a generic computer to automate a process of applying to finance a purchase is not an improvement to the computer’s functionality). Accordingly, the claim as a whole does not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception.
NOTE that it cannot be determined what elements are being positively recited in claim 10 (as addressed above in the 112b rejections). If the claim positively recites/claims the sensors and interface to present the result, the claim would most likely not fall under 101 as those additional elements would practically integrate the mental concept into a complete system –which claims 1 and 13 accomplish.
Conclusion
The closest prior art of Lockley et al shows some of the claimed elements of measuring the user’s circadian shift, the user’s sleep-wake rhythm, and the user’s location to determine if the user needs to adapt their sleep-wake cycles, but does not show using two different adaptation rates based on which way the current circadian phase is progressing, where the second adaptation rate is smaller than the first.
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/George R Evanisko/ Primary Examiner, Art Unit 3792 9/10/26
