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 .
DETAILED ACTION
The amendment filed on June 01, 2026 is acknowledged and entered. Claims 1-2, 5-7 and 12-17 are amended. Claims 9 and 20 are canceled. Claims 21-22 are new. Claims 1-8, 10-19 and 21-22 are pending and under examination in this Office action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on June 01, 2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Response to Amendment
The objection to claims 5-7 is now withdrawn in view of the claim amendment.
The rejection under 35 U.S.C. 101 is maintained but modified to address the claim amendment and the newly added claims.
The rejections to claims 1-20 under 35 U.S.C. 1012(b) are now withdrawn in view of the claim amendment or claim cancellation. New grounds of rejection are now made.
The rejections to claims 1-20 under 35 U.S.C. 103 are now withdrawn in view of the claim amendment or claim cancellation.
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 1-8, 10-19 and 21-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 of the subject matter eligibility test (see MPEP 2106.03).
Claims 1-8, 10-19 and 21-22 are directed to a “method” which describes one of the four statutory categories of patentable subject matter, i.e., a process.
Step 2A of the subject matter eligibility test (see MPEP 2106.04).
Prong One:
Claim 1 recites (“sets forth” or “describes”) the abstract idea of “a mental process” (MPEP 2106.04(a)(2).III.), substantially as follows: assessing divergence in user PT performance from a reference performance; receiving a first pain assessment; providing a mental pain management exercise; receiving a second pain assessment; and using the assessments to select a second PT exercise.
In claim 1, the above recited steps can be practically performed in the human mind, with the aid of a pen and paper. For example, a physical therapist and/or a doctor (a person who monitors the recovery of another person), when assessing the effectiveness of the physical therapy assigned to a user, he/she would review the monitoring result, either by visually monitor the progress, to assess the effectiveness of the PT exercise by comparing the performance with a reference performance that may be a previous PT performance, some reference data, or some reasonably expectation based on his/her own experience. The difference between the performances or between the performance and the reference is the divergence. In order to gauge the effectiveness of the PT exercise, or whether it is suitable, the physical therapist may check if the pain level has any change before and after the exercise. The physical therapist may further assign mental pain management exercise if he/she determines that the mental exercise may help reduce the pain level, and assess the pain level again. Then depending on how effective the PT exercise is and how much pain has been reduced, a second PT may be selected.
Claim 1 further recites that the recovery regime, the first PT exercise, the second PT exercise and the reference are associated with a barcode. However, it merely further describe the PT exercise and the reference, yet the above identified assessment and selection steps can still perform mentally.
There is nothing recited in the claim to suggest an undue level of complexity in how the PT performance is monitored, how the divergence is assessed, how the pain assessment is received, and how the mental pain management is provided. Therefore, a person would be able to perform the above step mentally, with a pen and paper, or with a generic computer.
In regard to the “barcode”, if Applicant intends to recite that a single barcode packages all these component such that it provides an unconventional platform, it is suggested to amend claim 1 to actively recite a step that packages the components into a barcode.
Prong Two: Claim 1 does not include additional elements that integrate the mental process into a practical application.
This judicial exception is not integrated into a practical application. In particular, the claims recites additional step of digitally monitoring the PT performance via a camera. It represents a pre-solution activity with a tool that is recited at a high level of generality.
As a whole, the additional element merely serves as a tool for performing a pre-solution activity. There is no practical application because the abstract idea is not applied, relied on, or used in a meaningful way. No improvement to the technology is evident, and assessment and the divergence are not outputted in any way such that a practical benefit is realized. Therefore, the additional elements, alone or in combination, do not integrate the abstract idea into a practical application.
Step 2B of the subject matter eligibility test (see MPEP 2106.05).
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the claims recites an additional step of digitally monitoring the PT performance via a camera. This step represents mere data gathering or pre/post/extra-solution activities that are necessary for use of the recited judicial exception and are recited at a high level of generality.
For similar reasons set forth in Step 2A, Prong Two above, the additional element does not provide an inventive concept under Step 2B.
A claim that requires computer (i.e., digitally) may still recite a mental process. MPEP 2106.04(a)(2).III.C.: “Performing a mental process on a generic computer, in a computer environment, or using a computer as a tool to perform the steps are considered a mental process”.
Accordingly, this additional step amounts to no more than insignificant conventional extra-solution activity. Mere insignificant conventional extra-solution activity and well-known tools cannot provide an inventive concept. The claim hence is not patent eligible.
Dependent Claims
The dependent claims incorporate all the limitations of their respective independent claims. The following analysis focus on the limitations recited in the dependent claims to determine whether they merely recite further abstract idea, or whether or not they recite additional elements that may either amount to significantly more than the abstract idea in their respective independent claims, or may integrate the abstract idea in their respective independent claims to a practical application.
The following dependent claims merely further define the abstract idea and are, therefore, directed to an abstract idea for similar reasons as stated in the analysis for their respective independent claims, hence are patent ineligible:
further defines the assessment done by a deep learning model (claims 7-8 - the deep learning model and the machine learning library is used to apply the abstract idea (i.e., perform the math calculation in the claim) without placing any limitation on how they operate. The limitation amounts to 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));
further defining the mental pain management (claims 10-11);
further defining the assessment of the divergence (claims 12-13);
further define the performance assessment (claims 21-22)
The following dependent claims merely further describe the extra-solution activities and therefore, do not amount to significantly more than the judicial exception or integrate the abstract idea into a practical application for similar reasons as stated in the analysis for their respective independent claims, hence are patent ineligible:
describing the type of recovery regimen (claims 2-4 – the type of recovery regimen does not alter how the abstract idea is performed, i.e., regardless the type of recovery regime, the identified mental steps would still be performed mentally);
describing the type of digital monitor (claims 5-6 – video recording and recording with markers are recited at a high level of generality with no inventive concept);
describing additional elements of reporting the divergence or pain assessment (claims 14-17 – these are addition steps of outputting the outcome of the abstract idea. Claim 14 reports (i.e., output) merely the divergence or the pain assessment. Claims 15-16 report (i.e., output) a value that is a quantification of the divergence. Claim 17 reports (i.e., output) an improvement that is a result of another comparison. These reporting is not outputted in any way such that a practical benefit is realized. Therefore, the additional elements, alone or in combination, do not integrate the abstract idea into a practical application);
describing additional elements of reporting to a remote location or to a user community (claims 18-19 – these further defines where the reporting is sent to – sending the result to a remote location or to a specific population are well-known routine and conventional tools – see the art rejection for support from the cited prior arts);
Taken alone and in combination, the additional elements do not integrate the judicial exception into a practical application at least because the abstract idea is not applied, relied on, or used in a meaningful way. They also do not add anything significantly more than the abstract idea. Their collective functions merely provide computer/electronic implementation and processing, and no additional elements beyond those of the abstract idea. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. There is no indication that the combination of elements improves the functioning of a computer, output device, improves technology other than the technical field of the claimed invention, etc. Therefore, the claims are rejected as being directed to non-statutory subject matter.
Based on the above consideration and analysis, claims 1-8, 10-19 and 21-22 are patent ineligible, i.e., rejected under 35 U.S.C. 101.
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 1-8, 10-19 and 21-22 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 pre-AIA the applicant regards as the invention.
Claim 1 recites in lines 1-2 “a method of assessing performance of a recovery regimen, associated with a barcode,…” that renders the scope of the claim indefinite. It is unclear whether it is the assessment method that is associated with a barcode, or the recovery regimen that is associate with a barcode.
Claim 1 recites various components being “associated with a/the barcode”. It is unclear if (1) being “associated” merely means that they are correlated, directly or indirectly, or (2) Applicant intends to recite that a single barcode packages all these components. For examination purpose, it is broadly interpreted to be (1). For (2), Applicant is suggested to amend claim 1 to actively recite a step that packages the components into a barcode.
Claim 1 recites in line 3 “the user first physical therapy performance” that lacks proper antecedent basis.
Claim 1 recites in line 3 “the user first physical therapy performance” and in lines 4-5 “user first performance of the physical therapy step”. It is unclear whether they refer to the same or there is any link between them. Consistent claim language with proper antecedent basis is required. Note that either “the physical therapy” or “the physical therapy step” lacks proper antecedent basis. Note that the term “user first performance of the physical therapy step” is also recited in claims 12-19 and the same rejection applies to these claims.
Claim 1, line 8, the punctuation comma should be correct to a semi colon.
Claim 1, line 9, “, and…” should be corrected to just the punctuation semi colon.
Claim 1, lines 5-6 and claim 7, lines 3-4 recite “a/the first physical therapy performance reference performance” appears to be a term with redundant word. It is unclear what it means by a physical therapy performance reference performance. It is unclear if it refers to a physical therapy performance or a reference performance, and it is unclear whether the reference performance is anyhow linked to the physical therapy performance.
Claim 7: “the user performance of the first physical therapy performance” lacks proper antecedent basis. Further it is unclear if there is any link of this term and the term “user first performance of the physical therapy step” and “the user first physical therapy performance” recited in claim 1.
Claim 1 recites “assessing divergence” and claim 7 recites “evaluating divergence”. It is unclear what the difference is between these two divergence. Both divergences are recited to be associated with the first PT performance and a reference. It is unclear whether Applicant intends to recite that in claim 7, the divergence (of claim 1) is digitally assessed by applying a deep learning model.
Claim 1 recites “a user first pain assessment” in line 7 and claim 17 recites “first user pain assessment” in line 4. It is unclear whether they refer to the same. Consistent claim language with proper antecedent basis is required.
Claim 1 recites at the end of the claim “…select a progression course…to a second physical therapy exercise associated with the barcode” that renders the scope of the claim indefinite. The meaning of this limitation is unclear. It is unclear whether the second physical therapy exercise is among selections for the progression course and is selected, or any other meaning.
The dependent claims of the above rejected claims are rejected due to their dependency.
Response to Arguments
Applicant’s arguments in regard to the rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive. Applicant’s assertions are addressed below.
“the recovery regime is associated with a barcode that corresponds to a first PT exercise, a first PT reference performance and a second PT exercise. That is, the claimed subject matter is incorporated into a specific physical therapy regimen that comprises multiple physical therapy exercises and a reference performance” (Remarks, p.8). Examiner respectfully disagrees and notes that, as considered in the rejection under 35 U.S.C. 112(b), claim 1 merely recites that these components are “associated with a/the barcode”. Without further defining the scope of being “associated with”, it is broadly interpreted to mean that they are correlated. As suggested in the rejection under 35 U.S.C. 101, step 2A, Prong 1 - if Applicant intends to recite that a single barcode packages all these component such that it provides an unconventional platform, it is suggested to amend claim 1 to actively recite a step that packages the components into a barcode.
In regard to claims 2-4, as considered in the rejection under 35 U.S.C. 101, 4.(2).i - the type of recovery regimen does not alter how the abstract idea is performed, i.e., regardless the type of recovery regime, the identified mental steps would still be performed mentally.
In regard to the monitoring being performed digitally via a camera, as considered in the rejection under 35 U.S.C. 101, Step 2A, Prong 2 and Step 2B, this step represents mere data gathering or pre/post/extra-solution activities that are necessary for use of the recited judicial exception and are recited at a high level of generality and it does not provide an inventive concept. In regard to claims 5-6, video recording and recording with markers are recited at a high level of generality with no inventive concept.
New grounds of rejection under 112(b) are also made in view of the claim amendment.
Based on the above consideration, claims 1-8, 10-19 and 21-22 are rejected.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to YI-SHAN YANG whose telephone number is (408) 918-7628. The examiner can normally be reached Monday-Friday 8am-4pm PST.
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/YI-SHAN YANG/Primary Examiner, Art Unit 3798
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