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 .
Status Of Claims
This action is in reply to the response filed 03/31/2026.
Claims 1-14, 16-30 and 32-34 have been amended. Claims 23-24 were previously cancelled. Claims 1-22 and 25-34 are currently pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/31/2026 has been entered.
Claim Objections
Claim 5 is objected to for minor informalities.
Claim 5 recites “comprising Aspart Protoamine” which should be corrected to “comprising Aspart Protamine.”
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 1-22 and 25-34 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-12, 25-28, 31 and 33 and claim 34 are drawn to methods of treating an individual, which is within one of the four statutory categories (i.e. process). Claims 13-16, 29-30 and 32 are drawn to one or more non-transitory media to facilitate a method of treating an individual, which is within the four statutory categories (i.e. manufacture). Claims 17-22 are drawn to a system for facilitating a method of treating an individual, which is within the four statutory categories (i.e. manufacture).
Claims 1-12, 25-28, 31 and 33 (Group I) recite a method of treating an individual for diabetes, the method comprising:
identifying, at one more hardware processors (MPEP § 2106.05(f), apply it), active-treatment information associated with a current diabetes condition ailing an individual, searching a data structure based on a unique identifier associated with the active-treatment information to produce one or more characteristics of at least one active treatment indicated by the active-treatment information;
determining (i) a first set of filtering criteria, based on the one or more characteristics of the at least one active treatment that indicates a treatment medication and (ii) a second set of filtering criteria, based on the current diabetes condition ailing the individual, that indicates the delivery mechanism;
applying the first set of filtering criteria and the second set of filtering criteria to a set of potential treatments to produce a first subset of potential treatments for the current diabetes condition ailing the individual, that indicates the delivery mechanism;
determining a particular treatment for the individual based on the first subset of potential treatments and an electronic presentation of the first subset of potential treatments that includes a particular diabetes medication of insulin corresponding to the treatment medication and includes a diabetes medication delivery mechanism of injection corresponding to the delivery mechanism; and
administering the particular diabetes medication of insulin to the individual via the diabetes medication delivery mechanism of injection to treat the individual for the current diabetes condition ailing the individual (MPEP § 2106.05(h), generally linking).
Claim 13 recites one or more non-transitory media having computer-readable instructions that, when executed by one or more hardware processors, cause the one or more hardware processors to facilitate a method of treating an individual for diabetes (MPEP § 2106.05(f), apply it), the method comprising:
identifying, at one or more hardware processors (MPEP § 2106.05(f), apply it), in response to an indication to provide active-treatment information associated with a current diabetes condition ailing an individual;
searching a data structure based on a unique identifier associated with the active-treatment information to produce one or more characteristics of at least one active treatment indicated by the active-treatment information;
determining (i) a first set of filtering criteria, based on the one or more characteristics of the at least one active treatment that indicates a treatment medication and (ii) a second set of filtering criteria, based on the current diabetes condition ailing the individual, that indicates a delivery mechanism;
applying the first set of filtering criteria and the second set of filtering criteria to a set of potential treatments to produce a first subset of potential treatments for the current diabetes condition ailing the individual;
determining a particular treatment for the individual based on the first subset of potential treatments and an electronic presentation of the first subset of potential treatments that includes a particular diabetes medication corresponding to the treatment medication and includes a heart disease medication delivery mechanism corresponding to the delivery mechanism; and
administering the particular diabetes medication to the individual via the diabetes medication delivery mechanism to treat the individual for the current diabetes condition ailing the individual (MPEP § 2106.05(h), generally linking).
Claim 17 recites a system comprising:
one or more hardware processors (MPEP § 2106.05(f), apply it);
one or more non-transitory media and computer-readable instructions stored on the one or more non-transitory media that, when executed by one or more hardware processors configured cause the one or more hardware processors to facilitate a method of treating an individual for a condition associated with diabetes, the method comprising:
identifying, at one or more hardware processors (MPEP § 2106.05(f), apply it), active-treatment information associated with a current diabetes condition ailing an individual;
searching a data structure based on a unique identifier associated with the active-treatment information to produce one or more characteristics of at least one active treatment indicated by the active-treatment information;
determining (i) a first set of filtering criteria, based on the one or more characteristics of the at least one active treatment, that indicates a treatment medication and (ii) a second set of filtering criteria based on the current diabetes condition ailing the individual, that indicates a delivery mechanism;
applying the first set of filtering criteria and the second set of filtering criteria to a set of potential treatments to produce a first subset of potential treatments for the current diabetes condition ailing the individual
determining a particular treatment for the individual based on the first subset of potential treatments and an electronic presentation of the first subset of potential treatments that includes a particular diabetes medication corresponding to the treatment medication and includes a diabetes medication delivery mechanism corresponding to the delivery mechanism; and
administering the particular treatment to the individual via the diabetes medication delivery mechanism to treat the individual for the current diabetes condition ailing the individual (MPEP § 2106.05(h), generally linking).
Claim 34 recites a method of treating an individual having diabetes and a co-condition associated with heart diseases, arthritis, or asthma, the method comprising:
identifying, at one or more hardware processors (MPEP § 2106.05(f), apply it), active-treatment information associated with a current diabetes condition ailing an individual;
searching a data structure based on a unique identifier associated with the active-treatment information to produce one or more characteristics of at least one active treatment indicated by the active-treatment information;
determining (i) a first set of filtering criteria, based on the one or more characteristics of the at least one active treatment that indicates a treatment medication and (ii) a second set of filtering criteria, based on the current diabetes condition ailing the individual, that indicates the delivery mechanism;
applying the first set of filtering criteria and the second set of filtering criteria to a set of potential treatments to produce a first subset of potential treatments for the current diabetes condition ailing the individual;
determining a particular treatment for the individual, based on the first subset of potential treatment and an electronic presentation of the first subset of potential treatments that includes a particular diabetes medication corresponding to the treatment medication and includes a diabetes medication delivery mechanism corresponding to the delivery mechanism; and
administering a particular diabetes medication to the individual via the asthma medication delivery mechanism to treat the individual for the current diabetes condition ailing the individual (MPEP § 2106.05(h), generally linking).
The bolded limitations, given the broadest reasonable interpretation, cover a certain method of organizing human activity because it recites fundamental economic practices, commercial or legal interactions, and/or managing personal behavior or relationships or interactions between people. Any underlined limitations not identified above as part of abstract idea are deemed “additional elements,” and will be discussed in further detail below.
Furthermore, the abstract idea for Claims 17-22 is substantially similar as the abstract idea for Claims 1-12 and 25-28 (Group I), 13-16, 29-30 and 32 (Group II) and Claim 34 (Group IV) as indicated above, because the only difference between is that the claims are drawn to different disease or combination of diseases and/or different statutory categories.
Dependent Claims 2-12, 14-16, 18-22, and 25-34 include other limitations, for example Claim 2 recites wherein the unique identifier is an assigned standardized concept unique identifier code, Claim 3 recites wherein the active-treatment information indicates a plurality of active treatments, and wherein each active treatment of the plurality of treatments is assigned a standardized concept unique identifier code, Claim 4 recites wherein the first set of filtering criteria indicates a particular active ingredient associated with controlling blood glucose in the individual, Claim 5 recites where the second set of filtering criteria indicates a particular delivery mechanism for delivering a blood glucose level targeting medication comprising Aspart Protamine to the individual, Claim 6 recites wherein the delivery mechanism comprises intravenous or injection delivery, Claims 7 and 21 recite wherein the method further comprises identifying a third set of filtering criteria that indicates a treatment medication dosage and applying the third set of filtering criteria to the set of potential treatments to identify a first dose, and wherein an amount of the diabetes medication of insulin delivered to the individual is the first dose, Claims 8, 9 and 16 recite wherein the set of potential treatments comprises one or more of Fiasp, NovoLog, and Ryzodeg, the administering comprises a Fiasp treatment, and the method further comprises storing the set of potential treatments at a data store for future use and wherein the operations further comprise storing the second set of potential treatments at a data store for future use (MPEP § 2106.05(g), insignificant extra-solution activity), Claim 10 recites wherein the method further comprises communicating, at predetermined intervals, with a treatment electronic data repository, associated with the data structure, to dynamically update the potential treatments of the set of potential treatments that meet one or both of the first set of filtering criteria and the second set of filtering criteria, Claim 11 recites wherein the data structure comprises a treatment electronic data repository associated with a web application program interface that is configured to provide a list of ingredients for each active treatment, of the active treatment information, communicated to the web application program interface (MPEP § 2106.05(f), apply it); Claim 12 recites wherein the administering further treats an asthma condition of the individual, Claim 14 recites wherein one or both based on the electronic presentation of the first subset of potential treatments: a particular course of treatment corresponding to the first set of filtering criteria indicating the particular diabetes medication is administered to the individual to treat the current diabetes condition of the individual, Claim 15 recites wherein the data structure comprises a treatment electronic data repository associated with a web application programming interface that provides a list of ingredients for each active treatment, of the active treatment information, communicated to the web application program interface (MPEP § 2106.05(f), apply it), Claim 16 recites wherein one or both of the of potential treatments and the first subset of potential treatments are stored at a treatment electronic data store for future use (MPEP § 2106.05(g), insignificant extra-solution activity), and wherein at least one additional criteria is identified and applied to at least one of the set of potential treatments or first subset of potential treatments, Claim 18 recites wherein the second set of filtering criteria indicates a particular delivery mechanism that is configured to deliver one or more of the first subset of potential treatments to the individual, Claim 19 recites wherein the method further comprise: storing one or both of the set of potential treatments and the first subset of potential treatments at a treatment electronic data store for future use; and retrieving one or both of the set of potential treatments and the first subset of potential treatments from the treatment electronic data store for use in management of treatments for a same condition for a second individual (MPEP § 2106.05(g), insignificant extra-solution activity), Claim 20 recites based on the electronic presentation of the first subset of potential treatments: a particular course of treatment corresponding to the first set of filtering criteria indicating the particular diabetes medication is administered to the individual to treat the current diabetes condition of the individual, Claim 22 recites wherein the delivery mechanism corresponds to delivery of a medication for diabetes, Claim 25 recites wherein the identifying of the active-treatment information is performed in response to receiving, at the one or more hardware processors (MPEP § 2106.05(f), apply it), a request for active treatments currently utilized by the individual to treat one or more conditions, Claim 26 recites wherein the method further comprises accessing, from an electronic data store: (a) one or more active treatments indicated by the treatment information and (b) one or more corresponding unique identifiers for the one or more active treatments, Claim 27 recites wherein based on the electronic presentation of the first subset of potential treatments: a particular course of treatment, corresponding to the treatment medication and the delivery mechanism indicating insulin and intravenous injection delivery, respectively, is administered to the individual to treat the current diabetes condition of the individual, Claim 28 recites wherein the particular treatment for the individual comprises administration to the individual of a diabetes medication and a biomarker monitoring device, Claim 29 recites wherein the particular treatment for the individual: after the administration to the individual of the diabetes medication, administering the biomarker monitoring device to the individual, Claim 30 recites wherein the particular treatment for the individual corresponds to intravenous or injection delivery of the first subset of potential treatments to the individual based on the second set of filtering criteria, Claim 31 recites wherein applying the first set of filtering criteria and second set of filtering criteria comprises applying the first of filtering criteria to the set of potential treatments to produce a second subset of potential treatments and applying a second set of filtering criteria to the second subset of potential treatments to produce the first subset of the potential treatment, and Claim 32 recites wherein the first set of filtering criteria comprises a diabetes targeting medication or drug, and Claim 33 recites wherein one or both of the first element and the delivery mechanism correspond to administration of a medication or drug that facilitates stable blood sugar levels in the individual, but these only serve to further limit the abstract idea or contain additional elements discussed below, and hence are nonetheless directed towards fundamentally the same abstract idea as independent Claims 1, 13 and 17.
Furthermore, Claims 1-22 and 25-34 are not integrated into a practical application because the additional elements (i.e. the limitations not identified as part of the abstract idea) amount to no more than limitations which:
amount to mere instructions to apply an exception – for example, the recitation of one or more hardware processors, non-transitory computer readable medium, data structure, and data repository, which amounts to merely invoking a computer as a tool to perform the abstract idea, e.g. see paragraphs [0016, 0019 0043] of the present Specification, see MPEP 2106.05(f);
add insignificant extra-solution activity to the abstract idea – for example, the recitation of retrieving data, which amounts to mere data gathering, and/or the recitation of storing data, which amounts to an insignificant application, see MPEP 2106.05(g); and
generally link the abstract idea to a particular technological environment or field of use – for example, administering a treatment, see MPEP 2106.05(h).
Furthermore, the Claims do not include additional elements that are sufficient to amount to “significantly more” than the judicial exception because, the additional elements (i.e. the elements other than the abstract idea) amount to no more than limitations which:
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, as demonstrated by:
The Specification expressly disclosing that the additional elements are well-understood, routine, and conventional in nature:
paragraphs [0016, 0043] of the Specification discloses that the additional elements (i.e. non-transitory media, processors, data structure) comprise a plurality of different types of generic computing systems that are configured to perform generic computer functions (i.e. storing and retrieving data) that are well-understood, routine, and conventional activities previously known to the pertinent industry (i.e. healthcare).
Relevant court decisions: The following are examples of court decisions demonstrating well-understood, routine and conventional activities, e.g. see MPEP 2106.05(d)(II):
Electronic recordkeeping, e.g. see Alice Corp v. CLS Bank – similarly, the current invention merely recites the storing of treatment data on a database and/or electronic memory;
Storing and retrieving information in memory, e.g. see Versata Dev. Group, Inc. v. SAP Am., Inc. – similarly, the current invention recites storing treatment data in a database and/or electronic memory, and retrieving the treatment data from storage in order to analyze by apply various criteria.
Dependent Claims 2-12, 14-16 and 18-34 include other limitations, but none of these functions are deemed significantly more than the abstract idea because the additional elements recited in the aforementioned dependent claims similarly represent no more than electronic recordkeeping (e.g. the storing feature of dependent Claims 8, 9, 19 and 26) and retrieving of data (e.g., retrieving feature of dependent Claim 19).
Thus, taken alone, the additional elements do not amount to “significantly more” than the above-identified abstract idea. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually, and there is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and their collective functions merely provide conventional computer implementation.
Therefore, whether taken individually or as an ordered combination, Claims 1-22 and 25-34 are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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 1-12, 25-31, 33 and 34 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.
Claim 1 recites “administering the particular diabetes medication of insulin to the individual via the diabetes medication delivery mechanism of injection to treat the individual for the current diabetes condition ailing the individual.” There is no support in the instant disclosure for actually administering any medication to an individual. Paragraph [0037] discusses how different drugs can be administered, such as whether the drugs can be administered intravenously or orally. Paragraph [0039] only discusses presenting the user with treatment options after filtering, not actually administering the medication. See at least [0002], [0004-0005], and [0014] and figures 4 and 5.
Claims 2-12, 25-31 and 33 are rejected as they depend from claim 1.
Claim 28 recites “wherein the particular treatment for the individual comprises administration to the individual of a diabetes medication and a biomarker monitoring device,” which does not have any support in the instant disclosure. Similar to claim 1, there is no support for administering any medication to a patient. There is also no mention of biomarkers or any monitoring device in the disclosure.
Claims 29 and 30 are rejected as it depends from claim 28.
Claim 29 recites “wherein the particular treatment for the individual comprises: after the administration to the individual of the diabetes medication, administering the biomarker monitoring device to the individual.” There is no support for administering a medication and there is no mention of biomarker monitoring device.
Claim 30 is rejected as it depends from claim 29.
Claim 34 recites “administering the particular diabetes medication to the individual via the diabetes medication delivery mechanism to treat the individual for the current diabetes condition ailing the individual” and is rejected for similar reasons as claim 1 as there is no support for actually administering any treatment.
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.
Claim 8 is 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.
Claim 8 contains the trademarks/trade names Fiasp®, NovoLog®, and Ryzodeg®. Where a trademark or trade name is used in a claim as a limitation to identify or describe a particular material or product, the claim does not comply with the requirements of 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph. See Ex parte Simpson, 218 USPQ 1020 (Bd. App. 1982). The claim scope is uncertain since the trademark or trade name cannot be used properly to identify any particular material or product. A trademark or trade name is used to identify a source of goods, and not the goods themselves. Thus, a trademark or trade name does not identify or describe the goods associated with the trademark or trade name. In the present case, the trademark/trade name is used to identify/describe Fiasp, NovoLog, and Ryzodeg as potential treatments and, accordingly, the identification/description is indefinite.
Appropriate correction is required.
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 1-22 and 25-34 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 (Amended Claims dated 06/30/2025) of copending Application No. 19/028,374 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because they recite substantially the same subject matter. The instant application is narrower than the child application, and therefore it reads on the claims of the child application.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Response to Arguments
Applicant's arguments filed 03/31/2026 have been fully considered.
Interview Request
Examiner notes that Applicant requested an interview prior to issuance of an office action in response to the Request for Continued Examination filed 03/31/2026. Examiner scheduled an interview with Applicant per Applicant’s request, however, Applicant ended the interview as there were no amendments proposed by Examiner. As nothing of substance was discussed regarding the application and therefore, there was nothing to document, an interview summary was not made.
Rejections under 35 U.S.C. § 101
Applicant argues that the claims do not recite a method of organizing human activity because claim 1 “recites a technique for "searching a data structure based on a unique identifier (using a web application program interface) to produce one or more characteristics ...; determining (i) a first set of filtering criteria, based on the one or more characteristics ... and (ii) a second set of filtering criteria ...that indicates a delivery mechanism," which does not recite even one human and which therefore is not a CMOOHA abstract idea” and that “[h]umans do not perform these functions while following rules or instructions (no matter the form of the rules or instructions and no matter the communication-method of the rules or instructions to the human) (Remarks, page 12).” This is not persuasive as this is regularly done by medical professionals while treating patients. See In re Meyer, 688 F.2d 789, 791-93, 215 USPQ 193, 194-96 (CCPA 1982). The instant disclosure supports this position as it states that the system improves efficiency with respect to treating the patient (See [0041] stating that the claimed invention “would further improve the efficiency for treatment management as the system would be able to provide the potential treatment options to the healthcare provider almost instantly, allowing the healthcare provider to make treatment determinations sooner, which may also result in the individual receiving care and a quicker improved health status for the individual in some circumstances.”) and saves healthcare professionals time (See [0014] stating “leads to reduced costs as healthcare providers can make more focused treatment decisions in faster time, which may also result in additional time for a healthcare provider to treat more individuals within a work day.”). These are improvements to the recited abstract idea. The use of a computer to implement the claimed invention does not preclude the claimed invention from reciting an abstract idea.
Applicant cites to Desjardins, but does not assert how it is relevant to the instant case. As there are no similarities between the claims in Desjardins and the instant claims, it is irrelevant as the instant claims recite an abstract idea and they do not result in a technical improvement when comparing to the limitations indicative of a practical application in MPEP § 2106.
Applicant asserts that the “claim recites determining a treatment (for a condition, i.e., diabetes, ailing an individual), along with an active ingredient for the treatment and a delivery mechanism for the active ingredient, and administering the treatment with the active ingredient to the individual via the delivery mechanism to treat the medical condition of diabetes (Remarks, page 13).” Examiner notes that on the previous page of the Remarks (page 12), Applicant asserted that “[h]umans do not perform these functions while following rules or instructions (no matter the form of the rules or instructions and no matter the communication-method of the rules or instructions to the human).” It is unclear how if there are no humans involved any treatment is administered to an individual. First, the claimed invention is not for a particular condition. The claims recite searching a system for “active-treatment information associated with a current diabetes condition ailing an individual.” The “active-treatment information associated with a current diabetes condition ailing an individual” does not specify what the condition is. Therefore, even if the treatment was particular, it is not clear what condition the treatment is treated, and therefore not particular. Example 43 was determined to be eligible as “the abstract idea is used to identify the patient as being non-responsive to glucocorticoids, and the patient is then administered a treatment that is particular to that identified phenotype (rapamycin is not a glucocorticoid) (See Example 43).” There is no such relationship in the instant claims as the “treatment” limitation is only nominally related to the judicial exception as the condition is already known and therefore, does not impose a meaningful limit on the recited abstract idea. This is apparent with the previous amendments in that any condition can be substituted and the claim language still works, such as the substitution of “diabetes” for “heart disease” in independent claim 13.
Applicant, citing to Example 29, asserts that claim 1 “recites features similar or analogous to elements of the hypothetical claims of Example 29 and accordingly is directed to statutory subject matter (Remarks, page 14).” There is no such analysis present in the instant claims, as the condition related to diabetes is already known. There is no analysis as found in claims 5 and 6 of Example 29.
Applicant further asserts that the claim “further recites improving a technical field via performing the corresponding multiple sequential filtering operations and initiating transmission to an electronic interface of a resulting first subset based on the corresponding multiple sequential filtering operations, which is not ‘abstract’ (e.g., not performed by people) and which integrates any purported abstract idea recited in the claim into a practical application [emphasis in original] (Remarks, page 14).” Examiner notes that the Applicant repeatedly argues that someone is being treated and that no humans are involved in the claim, both of which cannot be true at the same time. Examiner maintains that the filtering is part of the abstract idea as it is rules used to eliminate potential treatments for an individual. There is no technical problem, apparent or explicit, with filtering data. Medical professionals filter out potential treatments regularly using “rules” or “conditions.” The abstract idea, which includes the filtering, cannot be used to integrate itself into a practical application. The additional elements, including the recited computer elements, are not improved as a result of the claimed invention.
Applicant argues that “by virtue of at least these reasons and based further on the reasons referenced in Applicant's previously submitted Prong Two and Step 2B analyses (e.g., regarding additional claim elements that, individually or in combination with the other elements in the claim, amount to significantly more than a judicial exception by operation of including ‘an element [that] is unconventional or otherwise more than what is well-understood, routine, conventional activity in the field ... [and] amount to significantly more than the exception itself [meaning] there is ... inventive concept in the claim’; see MPEP Section 2106.05(11)), the claims are allowable and in compliance with § 101 (Remarks, page 14).” It appears Applicant is conflating the different parts of the 101 analysis. All additional elements have been addressed as being recited at an “apply it” level, insignificant extra-solution activity and/or generally linking. The additional elements, alone or combination, are neither indicative of resulting a practical application in accordance MPEP § 2106 nor are they indicative of significantly more than the abstract idea.
Independent claims 13, 17 and 34 remain rejected for similar reasons. Additionally, Examiner notes that claims 13 and 17 require “caus[ing] one or more hardware processors to facilitate a method,” which is construed as not physically administering a drug to the patient, but rather presenting a treatment option on a display consistent with the instant disclosure. Examiner notes that the claims 13 and 17 are implemented by a computer and there is nothing in the specification to suggest that a computer or processor is physically administering any medication to an individual.
The claims remain rejected as being directed towards ineligible subject matter.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rachelle Reichert whose telephone number is (303)297-4782. The examiner can normally be reached M-F 9-5 MT.
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/RACHELLE L REICHERT/Primary Examiner, Art Unit 3686
Prosecution Insights