DETAILED ACTION
Notices to Applicant
This communication is a Non-Final Action on the merits. Claims 1, 3-4, 11, 13, 18, 21, and 24-36 as filed 02/26/2026, 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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 02/26/2026 has been entered.
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 § 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, 3-4, 11, 13, 18, 21, and 24-36 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
Claims 1, 3-4, 11, and 28-31 are drawn to a system for automatically acquiring and processing information associated with a performance-based healthcare contract, which is within the four statutory categories (i.e. machine).
Independent Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 1 recites (additional elements in bold):
1. (Currently Amended) A system comprising: a patient monitoring device configured to be positioned on a patient, wherein the patient monitoring device comprises a sensor configured to generate patient health data comprising at least one of medication adherence data, physiological monitoring data, or healthcare utilization data by monitoring the patient;
a memory; and a processor coupled to the memory, wherein the processor is configured to:
receive a first indication of assent to terms of a contract from a first computing device associated with a first party to the contract;
receive a second indication of assent to the terms of the contract from a second computing device associated with a second party to the contract;
send a query for the patient health data to the patient monitoring device via an oracle, wherein the oracle provides a secure point of connection between the contract and the patient monitoring device due to security constraints that limit the ability of the system to access resources outside a trusted network, and wherein the patient health data is encrypted to ensure that only the contract can decrypt and use the patient health data;
receive the encrypted patient health data from the oracle only after receiving the first indication and the second indication, wherein the contract is configured to only accept the patient health data from the patient monitoring device;
write the patient health data to a distributed ledger that is redundantly maintained on a network of computing devices, wherein the patient health data is immutably recorded on the distributed ledger, and wherein each of the network of computing devices that achieves the partial consensus receives the patient health data;
automatically execute the contract in response to at least a partial consensus of the network of computing devices determining, according to a proof of work standard, that the patient health data fulfills a condition of the contract, wherein automatically executing the contract further comprises writing the patient health data into the contract itself;
update the contract to include a record that the contract has been executed, wherein the record is immutable; and
send a payment initiation message that instructs a payment to be made in accordance with the terms of the contract, wherein the contract is self-executing such that the payment initiation message is sent without further interaction from the first computing device and the second computing device.
The claim, as drafted, is a machine that, under its broadest reasonable interpretation, covers performance of commercial or legal interactions including agreements in the form of contracts but for the recitation of generic computer components. That is, other than reciting the above bolded limitations, for example (but not limited to) “a patient monitoring device,” “a sensor” “a memory,” “a processor,” “a first computing device,” “a second computing device,” “an oracle,” “a distributed ledger,” and “a network of computing devices,” nothing in the claim precludes the steps from directing performance of commercial or legal interactions. For example, but for the above bolded claim limitations, receiving indications of assent to the terms of a contract between two parties, accept patient health data only after receiving the mutual assent to the contract as configured by the contract, execute the contract in response to determining that the patient health data fulfils a condition of the contract and writing the patient health data into the contract itself, updating the contract to include a record that the contract has been executed, and instruct a payment to be made in accordance with the terms of the contract in the context of this claim encompasses commercial or legal interactions including the agreements in the form of contracts. If a claim limitation, 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. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites the above bolded additional elements, for example (but not limited to) “a patient monitoring device,” “a sensor” “a memory,” “a processor,” “a first computing device,” “a second computing device,” “an oracle,” “a distributed ledger,” and “a network of computing devices,” to perform the claim limitations. The elements in each of these steps are recited at a high-level of generality (i.e., a patient monitoring device/patient health data computing device with a medical sensor, a processor, memory, and computing devices, an oracle such as a software agent executing on computer media, and a peer-to-peer network with logic for executing smart contract code (e.g. Ethereum) and distributed ledger for storing transactions (e.g. blockchain), as they as they relate to general purpose computer components (Application Specification [0016], [0019]-[0022], [0030], [0051])). As such, the limitations amount to no more than mere instructions to implement an abstract idea on a computer or machinery (e.g. a sensor) in its ordinary capacity, or merely uses a computer or machinery in its ordinary capacity as a tool to perform an abstract idea. See MPEP 2106.05(f)(2). Further, the limitations of “send a query for patient health data …,” “receive the encrypted patient health data from the oracle …,” and “send a payment initiation message …,” are mere data gathering and output recited at a high level of generality, and thus are insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). Lastly, the additional elements of “wherein the oracle provides a secure point of connection between the contract and the patient monitoring device due to security constraints that limit the ability of the system to access resources outside a trusted network, and wherein the patient health data is encrypted to ensure that only the contract can decrypt and use the patient health data;” and “write the patient health data to a distributed ledger that is redundantly maintained on a network of computing devices, wherein the patient health data is immutably recorded on the distributed ledger, and wherein each of the network of computing devices that achieves the partial consensus receives the patient health data; automatically execute the contract in response to at least a partial consensus of the network of computing devices determining, according to a proof of work standard,” result in generally linking the use of the commercial interaction to a particular technological environment – namely, a smart contract computing environment involving two parties in the healthcare field (i.e. an environment comprising a network of computing devices, an oracle, a distributed ledger that is redundantly maintained, data encryption, and a proof of work standard as generic features and mechanisms of smart contract technology. See Application Specification at [0015], [0028] [0032], [0050], [0052]; See also MPEP 2106.05(h). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the above bolded additional elements, for example (but not limited to) “a patient monitoring device,” “a sensor” “a memory,” “a processor,” “a first computing device,” “a second computing device,” “an oracle,” “a distributed ledger,” and “a network of computing devices,” to perform the claim limitations amounts to no more than mere instructions to apply the exception using generic computer components (i.e., a patient monitoring device/patient health data computing device with a medical sensor, a processor, memory, and computing devices, an oracle such as a software agent executing on computer media, and a peer-to-peer network with logic for executing smart contract code (e.g. Ethereum) and distributed ledger for storing transactions (e.g. blockchain), as they as they relate to general purpose computer components (Application Specification [0016], [0019]-[0022], [0030], [0051])). As such, the limitations amount to no more than mere instructions to implement an abstract idea on a computer or machinery (e.g. a sensor) in its ordinary capacity, or merely uses a computer or machinery in its ordinary capacity as a tool to perform an abstract idea. See MPEP 2106.05(f)(2). Further, the limitations of “send a query for patient health data …,” “receive the encrypted patient health data from the oracle …,” and “send a payment initiation message …,” amount to receiving or transmitting data over a network and are well-understood, routine, conventional activity. See MPEP 2106.05(d), subsection II. Lastly, the additional elements of “wherein the oracle provides a secure point of connection between the contract and the patient monitoring device due to security constraints that limit the ability of the system to access resources outside a trusted network, and wherein the patient health data is encrypted to ensure that only the contract can decrypt and use the patient health data;” and “write the patient health data to a distributed ledger that is redundantly maintained on a network of computing devices, wherein the patient health data is immutably recorded on the distributed ledger, and wherein each of the network of computing devices that achieves the partial consensus receives the patient health data; automatically execute the contract in response to at least a partial consensus of the network of computing devices determining, according to a proof of work standard,” result in generally linking the use of the commercial interaction to a particular technological environment – namely, a smart contract computing environment involving two parties in the healthcare field (i.e. an environment comprising a network of computing devices, an oracle, a distributed ledger that is redundantly maintained, data encryption, and a proof of work standard as generic features and mechanisms of smart contract technology. See Application Specification at [0015], [0028] [0032], [0050], [0052]; See also MPEP 2106.05(h). The claim is not patent eligible.
Dependent claims 3-4, 11, and 28-31 include limitations of the independent claim and are directed to the same abstract idea as discussed above and incorporated herein. The dependent claims are rejected under 35 U.S.C. § 101 because they are directed to non-statutory subject matter. These additional claims recite what the patient data is and how it is analyzed. These information characteristics do not integrate the judicial exception into a practical application, and, when viewed individually or as a whole, they do not add anything substantial beyond the abstract idea. Dependent claim 3 recites the additional element of “receive the patient health data as a result of the patient health data being pushed to the system,” claim 28 recites “transmit on a data value relevant to the condition of the contract …” however, this amounts to mere data gathering over a network that is extra-solution activity and is well-understood, routine, and conventional activity. See MPEP 2106.05(g) & (d)(II). Dependent claim 30 recites “identical copies of the contract are distributed and stored across the network of computing devices,” which results in generally linking the use of the commercial interaction to a particular technological environment. See MPEP 2106.05(h). Dependent claim 31 recites, “the processor is configured to periodically send queries for the patient health data to the patient monitoring device via the oracle,” which amounts to using a computer or other machinery in its ordinary capacity as a tool to perform the abstract idea. See MPEP 2106.05(f)(2). Furthermore, the combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology. Therefore the dependent claims are rejected under 35 U.S.C. § 101.
Claims 13, 27, and 32-33 are drawn to a non-transitory computer readable medium for automatically acquiring and processing information associated with a performance-based healthcare contract, which is within the four statutory categories (i.e. manufacture).
Independent Claim 13 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 13 recites (additional elements in bold):
13. (Currently Amended) A non-transitory computer readable medium having instructions stored thereon that, upon execution by a computing device, cause the computing device to perform operations comprising:
receiving a first indication of assent to terms of a contract from a first computing device associated with a first party to the contract;
receiving a second indication of assent to the terms of the contract from a second computing device associated with a second party to the contract;
sending a query for patient health data to a patient monitoring device via an oracle, wherein the oracle provides a secure point of connection between the contract and the patient monitoring device due to security constraints that limit the ability of the system to access resources outside a trusted network, and wherein the patient health data is encrypted to ensure that only the contract can decrypt and use the patient health data;
receiving the encrypted patient health data from the patient monitoring device via the oracle only after receiving the first indication and the second indication, wherein the patient monitoring device is configured to be positioned on a patient, wherein the patient health data comprises at least one of medication adherence data, physiological monitoring data, or healthcare utilization data and is generated by a sensor of the patient monitoring device by monitoring the patient, wherein the contract is configured to only accept the patient health data from the patient monitoring device;
writing the patient health data to a distributed ledger that is redundantly maintained on a network of computing devices, wherein the patient health data is immutably recorded on the distributed ledger, and wherein each of the network of computing devices that achieves the partial consensus receives the patient health data;
automatically executing the contract in response to at least a partial consensus of the network of computing devices determining, according to a proof of work standard, that the patient health data fulfills a condition of the contract, wherein automatically executing the contract further comprises writing the patient health data into the contract itself;
updating the contract to include a record that the contract has been executed, wherein the record is immutable; and
sending a payment initiation message that instructs a payment to be made in accordance with the terms of the contract, wherein the contract is self-executing such that the payment initiation message is sent without further interaction from the first computing device and the second computing device.
The claim, as drafted, is a manufacture that, under its broadest reasonable interpretation, covers performance commercial or legal interactions including agreements in the form of contracts but for the recitation of generic computer components. That is, other than reciting the above bolded limitations, for example (but not limited to) “a non-transitory computer readable medium,” “a computing device,” “a first computing device,” “a second computing device,” “a patient monitoring device,” “an oracle,” “a sensor,” “a distributed ledger,” and “a network of computing devices,” nothing in the claim precludes the steps from directing performance of commercial or legal interactions. For example, but for the above bolded claim limitations, receiving indications of assent to the terms of a contract between two parties, accept patient health data only after receiving the mutual assent to the contract as configured by the contract, execute the contract in response to determining that the patient health data fulfils a condition of the contract and writing the patient health data into the contract itself, updating the contract to include a record that the contract has been executed, and instruct a payment to be made in accordance with the terms of the contract in the context of this claim encompasses commercial or legal interactions including the agreements in the form of contracts. If a claim limitation, 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. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites the above bolded additional elements, for example (but not limited to) “a non-transitory computer readable medium,” “a computing device,” “a first computing device,” “a second computing device,” “a patient monitoring device,” “an oracle,” “a sensor,” “a distributed ledger,” and “a network of computing devices,” to perform the claim limitations. The elements in each of these steps are recited at a high-level of generality (i.e., a non-transitory computer readable medium, computing devices, a patient monitoring device with a medical sensor, an oracle such as a software agent executing on computer media, and a peer-to-peer network with logic for executing smart contract code (e.g. Ethereum) and distributed ledger for storing transactions (e.g. blockchain), as they as they relate to general purpose computer components (Application Specification [0016], [0019]-[0022], [0030], [0051])). As such, the limitations amount to no more than mere instructions to implement an abstract idea on a computer or machinery (e.g. a sensor) in its ordinary capacity, or merely uses a computer or machinery in its ordinary capacity as a tool to perform an abstract idea. See MPEP 2106.05(f)(2). Further, the limitations of “sending a query for patient health data …,” “receiving the encrypted patient health data from the oracle …,” and “sending a payment initiation message …,” are mere data gathering and output recited at a high level of generality, and thus are insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). Lastly, the additional elements of “wherein the oracle provides a secure point of connection between the contract and the patient monitoring device due to security constraints that limit the ability of the system to access resources outside a trusted network, and wherein the patient health data is encrypted to ensure that only the contract can decrypt and use the patient health data;” and “writing the patient health data to a distributed ledger that is redundantly maintained on a network of computing devices, wherein the patient health data is immutably recorded on the distributed ledger, and wherein each of the network of computing devices that achieves the partial consensus receives the patient health data; automatically executing the contract in response to at least a partial consensus of the network of computing devices determining, according to a proof of work standard,” result in generally linking the use of the commercial interaction to a particular technological environment – namely, a smart contract computing environment involving two parties in the healthcare field (i.e. an environment comprising a network of computing devices, an oracle, a distributed ledger that is redundantly maintained, data encryption, and a proof of work standard as generic features and mechanisms of smart contract technology. See Application Specification at [0015], [0028] [0032], [0050], [0052]; See also MPEP 2106.05(h). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the above bolded additional elements, for example (but not limited to) “a non-transitory computer readable medium,” “a computing device,” “a first computing device,” “a second computing device,” “a patient monitoring device,” “an oracle,” “a sensor,” “a distributed ledger,” and “a network of computing devices,” to perform the claim limitations amounts to no more than mere instructions to apply the exception using a generic computer component. (i.e., a non-transitory computer readable medium, computing devices, a patient monitoring device with a medical sensor, an oracle such as a software agent executing on computer media, and a peer-to-peer network with logic for executing smart contract code (e.g. Ethereum) and distributed ledger for storing transactions (e.g. blockchain), as they as they relate to general purpose computer components (Application Specification [0016], [0019]-[0022], [0030], [0051])). As such, the limitations amount to no more than mere instructions to implement an abstract idea on a computer or machinery (e.g. a sensor) in its ordinary capacity, or merely uses a computer or machinery in its ordinary capacity as a tool to perform an abstract idea. See MPEP 2106.05(f)(2). Further, the limitations of “sending a query for patient health data …,” “receiving the encrypted patient health data from the oracle …,” and “sending a payment initiation message …,” amount to receiving or transmitting data over a network and are well-understood, routine, conventional activity. See MPEP 2106.05(d), subsection II. Lastly, the additional elements of “wherein the oracle provides a secure point of connection between the contract and the patient monitoring device due to security constraints that limit the ability of the system to access resources outside a trusted network, and wherein the patient health data is encrypted to ensure that only the contract can decrypt and use the patient health data;” and “writing the patient health data to a distributed ledger that is redundantly maintained on a network of computing devices, wherein the patient health data is immutably recorded on the distributed ledger, and wherein each of the network of computing devices that achieves the partial consensus receives the patient health data; automatically executing the contract in response to at least a partial consensus of the network of computing devices determining, according to a proof of work standard,” result in generally linking the use of the commercial interaction to a particular technological environment – namely, a smart contract computing environment involving two parties in the healthcare field (i.e. an environment comprising a network of computing devices, an oracle, a distributed ledger that is redundantly maintained, data encryption, and a proof of work standard as generic features and mechanisms of smart contract technology. See Application Specification at [0015], [0028] [0032], [0050], [0052]; See also MPEP 2106.05(h). The claim is not patent eligible.
Dependent claims 27 and 32-33 include limitations of the independent claim and are directed to the same abstract idea as discussed above and incorporated herein. The dependent claims are rejected under 35 U.S.C. § 101 because they are directed to non-statutory subject matter. These additional claims recite what the patient data is and how it is analyzed. These information characteristics do not integrate the judicial exception into a practical application, and, when viewed individually or as a whole, they do not add anything substantial beyond the abstract idea. Dependent claim 32 recites “transmit on a data value relevant to the condition of the contract …” however, this amounts to mere data gathering over a network that is extra-solution activity and is well-understood, routine, and conventional activity. See MPEP 2106.05(g) & (d)(II). Dependent claim 33 recites “identical copies of the contract are distributed and stored across the network of computing devices,” which results in generally linking the use of the commercial interaction to a particular technological environment. See MPEP 2106.05(h). Furthermore, the combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology. Therefore the dependent claims are rejected under 35 U.S.C. § 101.or any other technology. Therefore the dependent claims are rejected under 35 U.S.C. § 101.
Claims 18, 21, 24-26, and 34-36 are drawn to a method for automatically acquiring and processing information associated with a performance-based healthcare contract, which is within the four statutory categories (i.e. method).
Independent Claim 18 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claim 18 recites (additional elements in bold):
18. (Currently Amended) A method comprising:
receiving, by a processor of a computing device, a first indication of assent to terms of a contract from a first computing device associated with a first party to the contract;
receiving, by the processor, a second indication of assent to the terms of the contract from a second computing device associated with a second party to the contract;
sending, by the processor, a query for patient health data to a patient monitoring device via an oracle, wherein the oracle provides a secure point of connection between the contract and the patient monitoring device due to security constraints that limit the ability of the system to access resources outside a trusted network, and wherein the patient health data is encrypted to ensure that only the contract can decrypt and use the patient health data;
receiving, by the processor, the encrypted patient health data from the patient monitoring device via the oracle only after receiving the first indication and the second indication, wherein the patient monitoring device is configured to be positioned on a patient, wherein the patient health data comprises at least one of medication adherence data, physiological monitoring data, or healthcare utilization data and is generated by a sensor of the patient monitoring device by monitoring the patient, wherein the contract is configured to only accept the patient health data from the patient monitoring device;
writing the patient health data to a distributed ledger that is redundantly maintained on a network of computing devices, wherein the patient health data is immutably recorded on the distributed ledger, and wherein each of the network of computing devices that achieves the partial consensus receives the patient health data;
automatically executing, by the processor, the contract in response to at least a partial consensus of the network of computing devices determining, according to a proof of work standard, that the patient health data fulfills a condition of the contract, wherein automatically executing the contract further comprises writing the patient health data into the contract itself;
updating the contract to include a record that the contract has been executed, wherein the record is immutable; and
sending a payment initiation message that instructs a payment to be made in accordance with the terms of the contract, wherein the contract is self-executing such that the payment initiation message is sent without further interaction from the first computing device and the second computing device.
The claim, as drafted, is a method that, under its broadest reasonable interpretation, covers performance commercial or legal interactions including agreements in the form of contracts but for the recitation of generic computer components. That is, other than reciting the above bolded limitations, for example (but not limited to) “a memory,” “a processor,” “a first computing device,” “a second computing device,” and “a sensor of a patient monitoring device,” nothing in the claim precludes the steps from directing performance of commercial or legal interactions. For example, but for the above bolded claim limitations, receiving indications of assent to the terms of a contract between two parties, accept patient health data only after receiving the mutual assent to the contract as configured by the contract, execute the contract in response to determining that the patient health data fulfils a condition of the contract and writing the patient health data into the contract itself, updating the contract to include a record that the contract has been executed, and instruct a payment to be made in accordance with the terms of the contract in the context of this claim encompasses commercial or legal interactions including the agreements in the form of contracts. If a claim limitation, 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. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements of using “a memory,” “a processor,” “a first computing device,” “a second computing device,” and “a sensor of a patient monitoring device,” to perform the claim limitations. The elements in each of these steps are recited at a high-level of generality (i.e., a processor, computing devices, a patient monitoring device with a medical sensor, an oracle such as a software agent executing on computer media, and a peer-to-peer network with logic for executing smart contract code (e.g. Ethereum) and distributed ledger for storing transactions (e.g. blockchain), as they as they relate to general purpose computer components (Application Specification [0016], [0019]-[0022], [0030], [0051])). As such, the limitations amount to no more than mere instructions to implement an abstract idea on a computer or machinery (e.g. a sensor) in its ordinary capacity, or merely uses a computer or machinery in its ordinary capacity as a tool to perform an abstract idea. See MPEP 2106.05(f)(2). Further, the limitations of “sending, by the processor, a query for patient health data …,” “receiving, by the processor, the encrypted patient health data from the oracle …,” and “sending a payment initiation message …,” are mere data gathering and output recited at a high level of generality, and thus are insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). Lastly, the additional elements of “wherein the oracle provides a secure point of connection between the contract and the patient monitoring device due to security constraints that limit the ability of the system to access resources outside a trusted network, and wherein the patient health data is encrypted to ensure that only the contract can decrypt and use the patient health data;” and “writing the patient health data to a distributed ledger that is redundantly maintained on a network of computing devices, wherein the patient health data is immutably recorded on the distributed ledger, and wherein each of the network of computing devices that achieves the partial consensus receives the patient health data; automatically executing, by the processor, the contract in response to at least a partial consensus of the network of computing devices determining, according to a proof of work standard,” result in generally linking the use of the commercial interaction to a particular technological environment – namely, a smart contract computing environment involving two parties in the healthcare field (i.e. an environment comprising a network of computing devices, an oracle, a distributed ledger that is redundantly maintained, data encryption, and a proof of work standard as generic features and mechanisms of smart contract technology. See Application Specification at [0015], [0028] [0032], [0050], [0052]; See also MPEP 2106.05(h). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the above bolded additional elements, for example (but not limited to) “a memory,” “a processor,” “a first computing device,” “a second computing device,” and “a sensor of a patient monitoring device,” to perform the claim limitations amounts to no more than mere instructions to apply the exception using generic computer components. (i.e., a processor, computing devices, a patient monitoring device with a medical sensor, an oracle such as a software agent executing on computer media, and a peer-to-peer network with logic for executing smart contract code (e.g. Ethereum) and distributed ledger for storing transactions (e.g. blockchain), as they as they relate to general purpose computer components (Application Specification [0016], [0019]-[0022], [0030], [0051])). As such, the limitations amount to no more than mere instructions to implement an abstract idea on a computer or machinery (e.g. a sensor) in its ordinary capacity, or merely uses a computer or machinery in its ordinary capacity as a tool to perform an abstract idea. See MPEP 2106.05(f)(2). Further, the limitations of “sending, by the processor, a query for patient health data …,” “receiving, by the processor, the encrypted patient health data from the oracle …,” and “sending a payment initiation message …,” amount to receiving or transmitting data over a network and are well-understood, routine, conventional activity. See MPEP 2106.05(d), subsection II. Lastly, the additional elements of “wherein the oracle provides a secure point of connection between the contract and the patient monitoring device due to security constraints that limit the ability of the system to access resources outside a trusted network, and wherein the patient health data is encrypted to ensure that only the contract can decrypt and use the patient health data;” and “writing the patient health data to a distributed ledger that is redundantly maintained on a network of computing devices, wherein the patient health data is immutably recorded on the distributed ledger, and wherein each of the network of computing devices that achieves the partial consensus receives the patient health data; automatically executing, by the processor, the contract in response to at least a partial consensus of the network of computing devices determining, according to a proof of work standard,” result in generally linking the use of the commercial interaction to a particular technological environment – namely, a smart contract computing environment involving two parties in the healthcare field (i.e. an environment comprising a network of computing devices, an oracle, a distributed ledger that is redundantly maintained, data encryption, and a proof of work standard as generic features and mechanisms of smart contract technology. See Application Specification at [0015], [0028] [0032], [0050], [0052]; See also MPEP 2106.05(h). The claim is not patent eligible.
Dependent claims 21, 24-26, and 34-36 include limitations of the independent claim and are directed to the same abstract idea as discussed above and incorporated herein. The dependent claims are rejected under 35 U.S.C. § 101 because they are directed to non-statutory subject matter. These additional claims recite what the patient data is and how it is analyzed. These information characteristics do not integrate the judicial exception into a practical application, and, when viewed individually or as a whole, they do not add anything substantial beyond the abstract idea. Dependent claim 21 recites the additional element of “sending the query, receiving the patient health data, … ,” claim 34 recites “transmit on a data value relevant to the condition of the contract …” however, this amounts to mere data gathering over a network that is extra-solution activity and is well-understood, routine, and conventional activity. See MPEP 2106.05(g) & (d)(II). Dependent claim 35 recites “identical copies of the contract are distributed and stored across the network of computing devices,” which results in generally linking the use of the commercial interaction to a particular technological environment. See MPEP 2106.05(h). Dependent claim 36 recites, “the processor is configured to periodically send queries for the patient health data to the patient monitoring device via the oracle,” which amounts to using a computer or other machinery in its ordinary capacity as a tool to perform the abstract idea. See MPEP 2106.05(f)(2). Furthermore, the combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology. Therefore the dependent claims are rejected under 35 U.S.C. § 101.
Examiner Statement - 35 USC § 102/103
The closest prior art of record – U.S. Patent Application Pub. No. 2021/0357481 A1 (hereinafter “Wieduwilt et al.”) in view of U.S. Patent Application Pub. No. 2017/0300627 A1 (hereinafter “Giordano et al.”), U.S. Patent Application Pub. No. 2012/0123891 A1 (hereinafter “Patel”), and U.S. Patent Application Pub. No. 2017/0364655 A1 (hereinafter “Farooqi”) – fails to anticipate or otherwise render obvious the ordered combination of elements of independent claims 1, 13, and 18. In particular, the closest prior art of record fails to teach or suggest the health data being received after assent of both parties. Accordingly, claims 1, 3-4, 11, 13, 18, 21, and 24-36, as currently drafted, are free of prior art.
Response to Arguments
Applicant's arguments filed 02/26/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed herein below in the order in which they appear in the response filed on 02/26/2026.
In the remarks, Applicant argues in substance that:
Regarding the 101 rejection of claims 1, 3-4, 11, 13, 18, 21, and 24-36, 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 respectfully disagrees.
First, Applicant argues that a human mind cannot perform the claimed limitations. Examiner respectfully submits that the claims, under step 2A, Prong 1, recite the abstract idea of “Certain Methods of Organizing Human Activity,” through commercial or legal interactions including agreements in the form of contracts but for the recitation of generic computer components.
Second, Applicant argues, under Step 2A, Prong 2, that the amended claims integrate the judicial exception into a practical application. Examiner respectfully disagrees. Applicant argues that “the oracle addresses a specific technical problem” by providing a secure point of connection between the contract and the patient monitoring device. See Remarks at pgs. 10-11. Examiner respectfully submits that the claims recite the “oracle” and its “secure point of connect” at a high level of generality. The claims merely recite that the oracle achieves a secure point of connection, but does not claim the how or way that the oracle operates to provide such a solution to an alleged problem of security. The claim further recites that the patient health data is encrypted at a high level of generality. That is, it does not claim any particular means or how the data is encrypted outside of generic data encryption. Both the claimed oracle and the data encryption, as recited in the claims and in view of the present Application Specification, recite a high-level linking of the abstract idea to a technical environment and does not address a specific technical problem with a technical solution directed to an oracle (i.e. a software agent) or to data encryption itself. This is in contrast to USPTO Example 41, that claims a specific manner of how the data is encrypted to solve a technical problem, providing a technical solution to data encryption technology to address the technical problem related to security.
Applicant also argues that “the contract is configured to only accept the patient health data from the patient monitoring device,” however, this limitation is merely a software contract rule or instruction to be applied by a general purpose computer as a tool for determining which source to accept data from. This does not provide a technical solution to a technical problem, but rather, is an “apply it” function of the generic computer components for data collection.
Applicant argues that the combination of additional elements provides an integration into a practical application. Examiner respectfully disagrees and respectfully submits that the additional elements, when viewed individually and as a whole, fall under the “apply it” standard of using generic computer components for data processing and collection (MPEP 2106.05(f)(2)), recite extra-solution activity that is well-understood, routine, and convention activity for data gathering over a network (MPEP 2106.05(g) & (d)(II)), and generically links the abstract idea to the technical environment of smart contracts, data encryption at a high level of generality (MPEP 2106.05(h)) to address a problem that is directed to the abstract idea itself, not a technical problem with a corresponding technical solution; this is in contrast to Examples 41, 42, and 47, respectively, that each are directed to technical solution to a technical problem.
Lastly, under Step 2B, Applicant argues that novelty is factual evidence to suggest that the ordered combination is not well-understood, routine, and conventional activity. Examiner respectfully submits that novelty is not the question under 101, and that the claims are directed to the abstract idea itself. Examiner respectfully submits that the instant claims recite an alleged improvement to the abstract idea itself, and not a technical solution to a technical problem. See MPEP 2106.04, subsection I (Myriad, 569 U.S. at 591, 106 USPQ2d at 1979 ("Groundbreaking, innovative, or even brilliant discovery does not by itself satisfy the §101 inquiry."). Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 714-15, 112 USPQ2d 1750, 1753-54 (Fed. Cir. 2014). Cf. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a new abstract idea is still an abstract idea") (emphasis in original)) A new abstract idea is still an abstract idea. Further, the additional elements of the dependent claims, when viewed individually and as a whole, do not indicate a significant improvement to the functioning of a computer or any other technology.
Therefore, Examiner maintains the 101 rejection of all claims 1, 3-4, 11, 13, 18, 21, and 24-36 for at least these reasons and as applied in the above Office Action.
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]).
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/A.M.B./Examiner, Art Unit 3682
/FONYA M LONG/Supervisory Patent Examiner, Art Unit 3682