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
Claim Objections
Claim 18 is objected to because of the following informalities:
In line 5, “second use” seems to be incorrect and it appears “second user” was intended because in parallel claim 9, “second user” occurs. Appropriate correction is required.
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 1-9 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 “unique data signal” lacks antecedent basis.
Claim 20 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential elements, such omission amounting to a gap between the elements. See MPEP § 2172.01. The omitted elements are: the action of the generated modified treatment plan. It appears, the intended elements are readmitting the user to a healthcare facility.
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 provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of copending Application No. 19/363,378 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the present claims are directed to receiving data, correlating the data using an artificial intelligence engine similarly to claims 1-20 of copending Application No. 19/363,378. Present claims 1-20 are directed to generating a unique data signature associated with a regression of a user’s condition. This is obvious over a treatment gap because claims 14 and 18 of copending Application No. 19/363,378 suggest generating a unique data signature associated with the treatment gap.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 4, 10, 13 and 19 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Roh et al (US 2019/0262084).
Regarding claims 1, 10 and 19, Roh discloses a computer-implemented method, instructions, and system comprising: receiving, from one or more of an electromechanical machine (surgical robot), a sensor, and a computing device, data associated with a user that uses the electromechanical machine to perform a treatment plan, see paragraph [0029];
based on one or more correlations of one or more indicators included in the data, generating, using an artificial intelligence engine, a unique data signature associated with a regression of the user’s condition (adverse events), wherein the unique data signal is generated when the one or more indicators satisfy a respective threshold indicator level, and the one or more indicators comprise a pain measurement, a measurement of revolutions per minute, and a session pedaling time, see paragraph [0031],
based on the unique data signature associated with the regression of the user’s condition, generating, using the artificial engine, a modified treatment plan at least by modifying a parameter or activity associated with at least one of the pain measurement, the measurement of revolutions per minute, and the session pedaling time, see paragraph [0031], and
controlling, while the user uses the electromechanical machine and using the modified treatment plan, the electromechanical machine, see paragraphs [0101] and [0115].
Regarding claims 4 and 13, Roh discloses the artificial intelligence engine uses one or more trained computer-implemented models to generate the unique data signature associated with the regression of the user’s condition, see paragraphs [0031], [0031] and [0051].
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 3, 9, 12 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Roh et al (US 2019/0262084).
Regarding claims 3 and 12, Roh teaches pain can be monitored and evaluated to determine whether to modify the treatment plan, see paragraph [0031]. In addition, Roh teaches a user can input information for performing procedures, see paragraph [0084]. One of ordinary skill in the art would have found it obvious to provide a user input peripheral to transmit a pain measurement that has been input by the user to monitor and evaluate the pain to determine whether to modify the treatment plan.
Regarding claims 9 and 18, Roh teaches, the data processing system may be implemented utilizing any suitable commercially available components, such as those typically found in data computing/communication and/or network computing/communication systems, see paragraph [0159].
One of ordinary skill in the art would have found a telehealth session to be a network computing/communication system implementation that is well known in the art. Thus, based on the unique data signature associated with the regression of the user’s condition, initiating a telehealth session between the computing device and a second computing device associated with a second user would have been obvious to one of ordinary skill in the art.
Claims 2, 11 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Roh et al (US 2019/0262084) as applied to claims 1, 10 and 19 above, and further in view of Hyde et al (US 2013/0173305).
Regarding claims 2, 11 and 20, Roh does not disclose generating the modified treatment plan comprises an action of readmitting the user to a healthcare facility based on the unique data signature associated with the regression of the user’s condition.
Hyde teaches readmitting the user to a healthcare facility based on the unique data signature associated with the regression of the user’s condition, see paragraph [0217].
One of ordinary skill in the art would have found it obvious to combine the teaching of Hyde with the electromechanical machine (surgical robot) of Roh to readmit the user to a healthcare facility based on the unique data signature associated with the regression of the user’s condition because Hyde suggests readmission for the same condition when a prior treatment presents a regression of the user’s condition.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to George Manuel whose telephone number is (571) 272-4952.
The examiner can normally be reached on regular business days.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Benjamin Klein can be reached on (571) 270-5213. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/George Manuel/
Primary Examiner
Art Unit: 3792
3/26/2026
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