DETAILED ACTION
Notices to Applicant
This communication is a Final Office Action on the merits. Claims 1, 3-4, 11, 13, 18, 21, 24-27, 29-31, 33, and 35-39 as filed 06/26/2026, are currently pending and have been considered below.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority
The present application is a 35 U.S.C. §371 U.S. National Stage Application of International Application No. PCT/US2018/045708 filed August 8, 2018, which claims priority to U.S. Provisional Patent Application Serial No. 62/542,359, filed August 8, 2017.
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, 3-4, 11, 13, 18, 21, 24-27, 29-31, 33, and 35-39 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.
Independent claim 1 recites the limitation, “transmit, from the dataset to the contract, only a data value relevant to the condition of the contract by pushing a transaction embedding the data value onto a distributed ledger, wherein personal information of the patient is not transmitted to the distributed ledger,” however, the present application specification fails to provide sufficient written description for this limitation as currently claimed. That is, the above limitation requires an extraction of “only a data value relevant to the condition” is transmitted by pushing a transection embedding the data value onto the distributed ledger, and then further affirmatively claiming “personal information of the patient is not transmitted to the distributed ledger.” The present application specification does not support this explicit functional step of separating the data value from the personal information of the patient such that only the data value and not the personal information of the patient is transmitted to the distributed ledger. See Application Specification at [0033], [0034], [0036]. Independent claims 13 and 18 each recite the same above limitation as independent claim 1 and are rejected for the same rationale. Dependent 3-4, 11, 21, 24-27, 29-31, 33, and 35-39 are rejected through their dependency upon their respective independent claims.
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, 3-4, 11, 13, 18, 21, 24-27, 29-31, 33, and 35-39 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.
Independent claim 1 recites the limitation, “transform the patient health data into a structure appropriate for use by the contract,” however, the present application specification fails to particularly point out and disclose what an “appropriate” structure for use by the contract is. As a result, the meets and bounds of the limitation are indefinite. Independent claims 13 and 18 each recite the same above indefinite limitation as independent claim 1 and are rejected for the same rationale. Dependent 3-4, 11, 21, 24-27, 29-31, 33, and 35-39 are rejected as through their dependency upon their respective independent claims.
Examiner Statement - 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.
1, 3-4, 11, 13, 18, 21, 24-27, 29-31, 33, and 35-39, as currently amended, recite patent eligible subject matter under 35 U.S.C. 101 because, while the claimed invention is directed to a judicial exception (i.e., an abstract idea), the additional elements of the claim, when viewed individually and as a whole, amount to significantly more than the abstract idea.
Independent Claim 1 encompasses commercial or legal interactions including the agreements in the form of contracts such that, under its broadest reasonable interpretation, covers commercial or legal interactions but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas; however, the claim further recites the additional element of “transmit, from the dataset to the contract, only a data value relevant to the condition of the contract by pushing a transaction embedding the data value onto a distributed ledger, wherein personal information of the patient is not transmitted to the distributed ledger,”. Under Step 2A, Prong Two, this additional element, when viewed individually and in the claim as a whole, amounts to adding insignificant extra-solution activity, such that the additional elements of the claim fail to integrate the claim into a practical application. See MPEP 2106.05(g). Under Step 2B, the same additional element, when viewed individually and in the claim as a whole, amounts to significantly more than the abstract idea because the additional element does not simply append well‐understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the abstract idea. See MPEP 2106.05(d) and Berkheimer Memo.
Independent claims 13 and 18 each recite substantially similar limitations as independent claim 1 and recite patent eligible subject matter for at least the same rationale.
Response to Arguments
Applicant's arguments filed 06/26/2026 have been fully considered are persuasive. Applicant’s arguments will be addressed herein below:
In the remarks, Applicant argues in substance that:
Regarding the 101 rejection of claims 1, 3-4, 11, 13, 18, 21, 24-27, 29-31, 33, and 35-39, Applicant argues the claimed invention recites patent eligible subject matter.
In response to Applicant’s argument that (a) regarding the 101 rejection of claims 1, 3-4, 11, 13, 18, 21, and 24-36, Examiner is persuaded. Examiner submits that the claims, as currently amended, recite patent eligible subject matter as the additional elements of the claims, when viewed individually and as a whole, recite significantly more than the abstract idea.
Examiner notes, however, newly applied 112(a) and 112(b) rejections are applied to the currently amended independent claims that critically impact the broadest reasonable interpretation of the claim in light of the present application specification.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
U.S. Patent Application Pub. No. 20170039330 A1 teaches a patient Health BlockChain for automated smart contracts ([0091]);
U.S. Patent Application Pub. No. 2014/0358571 A1 teaches the patient monitoring device can be connected to a database that contains an electronic health record including examination results ([0046]); and
U.S. Patent Application Pub. No. 2018/0082024 teaches patient profile comprises clinical and health information including health information from various monitoring devices such as wearable health monitoring devices ([0039]).
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.
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/A.M.B./Examiner, Art Unit 3682
/FONYA M LONG/Supervisory Patent Examiner, Art Unit 3682
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