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 .
Remarks
This action is in response to the remarks filed 08/26/2025.
Claims 1, 2, 4-8, 10, 13-19, and 21 are pending.
Response to Arguments
Applicant’s arguments, see pages 13-24, filed 08/26/2025, with respect to the rejection of claims 1-8, 10, 13-19, and 21 under 35 U.S.C. 103 have been fully considered.
Applicant argues (see Remarks, pages 19-25) that there is no motivation to combine the references, and further that Saenz teaches away from the claimed subject matter. Applicant first argues (see Remarks, pages 20-21) that Saenz does not disclose a system for self-guided injury comprising a graphical user interface and further does not disclose the benefits of the claimed invention and leads a PHOSITA away from the claimed subject matter.
However, this is not found persuasive. Saenz discloses a computer implemented system for self-guided injury treatment (e.g. Abstract; claim 12) including receiving inputs (e.g. Par. [0008]; Fig. 1; Par. [0042]) and providing an output to the user (e.g. Fig. 3). Therefore, Saenz does not teach away from the claimed invention because Saenz discloses the claimed limitation of self-guided injury treatment. Therefore, Saenz is still eligible as prior art.
Upon further consideration, a new ground of rejection is made, as explained in the office action below.
Applicant's arguments filed 08/26/2025 have been fully considered.
Rejection of claims 1, 2, 4-8, 10, 13-19, and 21 under 35 U.S.C. 112(a)
Applicant argues (see Remarks, pages 11-13) that the specification describes possession of an algorithm-driven system for self-guided care and points to paragraphs [0045]-[0048], [0051]-[0052], [0064]-[0069], and Figs. 3-11. However, this is not found persuasive. While the cited portions of the specification generally describe exemplary outputs and an embodiment that uses a decision tree algorithm, it is still not clear how a generic decision tree algorithm can be used to determine an output for a user including a diagnosis, treatment plan, and a legitimized order to seek a diagnostic procedure. For example, while pars. [0051]-[0052] of the specification say that the algorithm is a decision tree algorithm, it does not explain how this algorithm is used to perform all of the claimed steps. These paragraphs describe an embodiment using a decision tree algorithm, but do not provide details as to how the decision tree algorithm is used to achieve the claimed steps of determining a diagnosis, treatment plan, and an order to seek a diagnostic procedure. Therefore, this rejection is maintained.
Rejection of claims 1, 2, 4-8, 10, 13-19, and 21 under 35 U.S.C. 101
Applicant argues (see Remarks, pages 6-11) that the claims are not directed to an abstract idea, because they embody specific technical improvements that advance the field of self-guided injury management.
First, the argument (pages 7-9) that the claims are directed to a specific technological improvement, not a mental process, are not found to be persuasive. As claimed, the claims recite a system for self-guided injury treatment comprising a graphical user interface, a processor, memory, and computer readable code, wherein the graphical user interface is configured to receive patient data and transmit the data to a processor, wherein the processor is configured to apply an algorithm to provide an output to the user, wherein the output includes a diagnosis of the injury and a treatment plan for the injury or a recommendation that the user seek further diagnostic procedures, and further provides details of medical equipment, such as type of equipment and an image or link to purchase the device, if needed. As best understood, the crux of the invention is the processing of the received information to provide an output to the user, which is an abstract idea. The argument (see paragraph spanning pages 7-8) that the invention is a technological improvement and reduces wait times for the user is not persuasive. Any alleged improvement or reduction in wait times is due to the data processing performed by the invention, which is an abstract idea. The claimed technological improvement is within the abstract idea itself.
References to Enfish, LLC v. Microsoft Corp., McRO, Inc. v. Bandai Namco Games America, Inc., and CardioNet, LLC v. InfoBionic, Inc. are not relevant here due to distinct fact patterns. The claims in Enfish were found eligible because the self-referential database provided a specific improvement to computer operation. Here, as explained above, any technological improvement is within the abstract idea of the data processing performed to provide an output to the user. The claims in McRO used a combined order of specific rules that rendered information into a specific format that is then used and applied to create the desired results of a sequence of synchronized, animated characters. By incorporating the specific features of the rules as claim limitations, these claims were found by the court to be limited to a specific process for automatically animating characters using particular information and techniques. None of the instant claims are directed towards the specific process of automatically animating characters using particular information and techniques as discussed in McRo. Additionally, the instant claims do not either improve the performance of the computer itself or computer animation in any way. The claims in CardioNet were found to be eligible because they improved arrhythmia detection by specifically analyzing beat variability. Here, as claimed, only simple unexplained data analysis is performed through the use of a generic algorithm to provide an output to the user. There is no specific output or arrhythmia detection as in CardioNet. Further, the comparison to Examples 37, 40, and 42 of the USPTO 101 Examples is not found persuasive. The claim of Example 37 was found eligible because it provides a specific combination of the additional elements that integrates the mental process into a practical application. The claim of Example 40 was found eligible because it provides a specific improvement over prior systems, which results in improved network monitoring. The claim of Example 42 was found eligible because it recites a combination of additional elements that recited a specific improvement. The additional elements of the instant claims (the GUI and processor) do not integrate the abstract idea into a practical application, because they are generic computer components that are used in their ordinary capacity as tools to apply the abstract idea.
Second, the argument (pages 9-11) that the multiple outputs provided to the user amounts to significantly more and integrates the abstract idea into a practical application of streamlined injury diagnosis and management is not found to be persuasive. As recited, the additional elements of the instant claim are the GUI and the processor. As explained above, as best understood, the crux of the invention is the data processing performed to provide an output to the user, which is an abstract idea. Applicant is reminded that abstract ideas cannot provide a practical application or significantly more (e.g., an improvement). Both Step 2A Prong 2 and Step 2B require an additional element, not an abstract idea, to provide a practical application or significantly more (e.g., an improvement). See Genetic Technologies Limited v. Merial LLC (Fed Cir 2016). Here, the additional elements of the claims are merely generically recited computer elements used as tools for executing the abstract ideas or insignificant extra-solution activity.
There is no further description, in the claims or the specification, of any particular technology for performing the steps recited in the claim other than generic computer components used in their ordinary capacity as tools to apply the abstract idea. Nor does the claimed invention use a particular, or special, machine. In other words, the claims “are not tied to any particular novel machine or apparatus” capable of rescuing them from the realm of an abstract idea. Further, these components are being used to perform the extra-solution activity of data gathering and analysis (i.e. an insignificant extra-solution activity, see MPEP 2106.05(g)).
Therefore, the claims do not recite any additional elements that: (1) improve the functioning of a computer or other technology, (2) are applied with any particular machine, (3) effect a transformation of a particular article to a different state, and (4) are applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment or field of use. Please See MPEP § 2106.05(a)(c), (e)-(h).
Claim Objections
Claims 1, 8, and 21 are objected to because of the following informalities:
Claim 1 includes additional periods in the claim. Periods are only allowed at the end of the claim and for abbreviations. See MPEP 608.01(m).
Claim 8, line 1, “system of claim1” should read “system of claim 1”.
Claim 21 recites “The method of claim 1” but claim 1 is a system. This should read “The system of claim 1”.
Appropriate correction is required.
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, 2, 4-8, 10, 13-19, and 21 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 the limitation of applying an algorithm to the data to provide an output to the user. While the specification at par. [0051] states “the algorithm is a decision-tree algorithm”, there is no further explanation or description of the algorithm provided, and no further information is provided about the specific inputs necessary. While pars. [0051]-[0052] of the specification say that the algorithm is a decision tree algorithm, it does not explain how this algorithm is used to perform all of the claimed steps. These paragraphs describe an embodiment using a decision tree algorithm, but do not provide details as to how the decision tree algorithm is used to achieve the claimed steps of determining a diagnosis, treatment plan, and an order to seek a diagnostic procedure. It is not known how a generic decision tree algorithm can be used to determine an output for a user including a diagnosis, treatment plan, and a legitimized order to seek a diagnostic procedure.
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, 2, 4-8, 10, 13-19, and 21 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.
Claim 1 recites the limitation “wherein the order is legitimized such that a provider is able to perform the diagnostic procedure without an intervening physician visit”. It is unclear what is meant by this limitation. An order being “legitimized” is not a known term or phrase of art. For examination purposes, an order being legitimized will be understood to mean the user being referred to an in-network provider, since in-network providers usually do not require intervening steps to schedule an appointment.
Claims 2, 4-8, 10, 13-19, and 21 are rejected based on their dependency on claim 1.
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, 2, 4-8, 10, 13-19, and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a system for self-guided injury treatment. To determine whether a claim satisfies the criteria for subject matter eligibility, the claim is evaluated according to a stepwise process as described in MPEP 2106(III) and 2106.03-2106.04. The instant claims are evaluated according to such analysis.
Step 1: Is the claim to a process, machine, manufacture or composition of matter?
Claim 1 is directed towards a system, and thus meet the requirements for step 1.
Step 2A (Prong 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 1 is directed towards a system for self-guided injury treatment comprising a graphical user interface, a processor, memory, and computer readable code, wherein the graphical user interface is configured to receive patient data and transmit the data to a processor, wherein the data from the user comprises selection of an injured body part, injury symptoms, injury duration, injury diagnosis, or an image of the injured body part, wherein the processor is configured to apply an algorithm to provide an output to the user, wherein the output includes a diagnosis of the injury and a treatment plan for the injury or a recommendation that the user seek further diagnostic procedures, and further provides details of medical equipment, such as type of equipment and an image or link to purchase the device, if needed. The limitation of a self-guided injury treatment system as drafted in the claims, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, but for the recitation of a graphical user interface, a processor, and memory (e.g. generic computer elements). For example, determining an output for self-guided injury treatment in the context of this claim encompasses a health care provider analyzing an injury of a patient and determining a diagnosis of the injury, recommending an injury treatment plan or appropriate medical equipment and showing the patient how to use it, or recommending diagnostic imaging.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
Step 2A (Prong 2): Does the claim recite additional elements that integrate the judicial exception into a practical application?
The additional elements of a graphical user interface, a processor, memory, and computer readable code are recited at a high level of generality (i.e., as generic computer components performing the basic steps of data gathering, analysis, and output) such that they amount to no more than mere instructions to apply the exception using a generic computer component.
Accordingly, these additional elements do no integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.04(a)(2)(III)(C).
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
The additional elements when considered individually and in combination are not enough to qualify as significantly more than the abstract idea. As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements of a graphical user interface, a processor, memory, and computer readable code amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Furthermore, the additional elements do not amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use. See MPEP 2106.05(h). Therefore, the claims are not patent eligible.
Claims 2, 4-8, 10, 13-19, and 21 depend on claim 1 and recite the same abstract idea as claim 1 from which they depend. Further, these claims only contain recitations that further limit the abstract idea (that is, the claims only recite limitations that further limit the mental proves). For example, the additional limitation recited in claim 2 (i.e. specifying the graphical user interface comprises a touch screen interface) is simply describing a feature of the generic graphical user interface. The additional limitations of claims 4-8 and 13 (i.e. specifying what data is collected) is a further data gathering step. The limitations of claims 10, 14, 15, and 21 (i.e. specifying the data that is stored and that can be selected) is a further explaining the data. The limitations of claims 16-19 (i.e. describing a memory, computer code, and accessibility of the system) are listing generic computer components. The additional elements individually do not amount to significantly more than the judicial exception explained above (the abstract idea). Looking at the limitations as a whole adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves any technology or includes a particular solution to a computer-based problem or a particular way to achieve a computer-based outcome.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1, 2, 4-8, 10, 13, 15-19, and 21 are rejected under 35 U.S.C. 103 as being unpatentable over Saenz (US Patent Application Publication 2018/0160904, of record), in view of Sharma (US Patent 9,875,340, of record).
Regarding claim 1, Saenz discloses a system for computer-implemented self-guided injury treatment (e.g. Abstract; claim 12: computer application), comprising:
a. a user interface (e.g. Par. [0008]: user inputs information about the injury into the app);
b. a processor (e.g. claim 12: computer application, a computer inherently contains a processor);
wherein the user interface is configured to receive data regarding an injury from a user and transmit the data to the processor (e.g. Par. [0008]: user inputs information about the injury into the app; Fig. 1: inputting information about the injury such as the mechanism, where the injury is, the pain level; Par. [0042]: describing Fig. 1), wherein the data from the user comprises selection of an injured body part, one or more injury symptoms, injury duration, a known injury diagnosis, an image of an injured body part, or a combination thereof (e.g. Par. [0058]: selecting injured body part and indicating pain level (i.e. injury symptom) and duration of pain); and
wherein the processor is configured to apply an algorithm to the data to provide an output to the user on the user interface (e.g. Par. [0058]: the application performs analysis on the input data to determine next steps), wherein the output provided to the user is provided in real-time (e.g. Fig. 3: after pain is described in step 3 an output of potential injuries are provided in step 5) and comprises:
an order that the user seek a diagnostic procedure, wherein the order is legitimized such that a provider is able to perform the diagnostic procedure without an intervening physician visit (e.g. Pars. [0057]-[0058]: if the symptoms do not get better, the user is referred to an in-network medical professional; Fig. 2: step 8, refer to in network medical professional; Fig. 3: step 10, refer to in-network specialists; NOTE: under its broadest reasonable interpretation, this claim has alternative limitations i and ii. Therefore, the claim does not require both items i and ii, and all of the medical equipment falls under i. Therefore, the medical equipment and description of the treatment plan is not required.).
Saenz further discloses the use of applications and websites that assist medical professionals in the diagnosis of injuries (e.g. Par. [0003]), but does not specifically disclose a graphical user interface.
Sharma, in a similar field of endeavor, is directed towards personalized pain management treatments. Sharma discloses wherein the input is specifically a graphical user interface (e.g. Col. 6, lines 50-53; Claim 1: touch screen display).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Saenz to include the graphical user interface as taught by Sharma because a graphical user interface is a well-known means of inputting data to provide personalized pain management therapy.
Claim 1 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 2, Saenz fails to disclose wherein the graphical user interface comprises a touch screen interface. Sharma, in a similar field of endeavor, is directed towards personalized pain management treatments. Sharma discloses wherein the graphical user interface comprises a touch screen interface (e.g. Claim 1: touch screen display).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Saenz in view of Sharma with the graphical user interface being touch screen as taught by Sharma because doing so would result in a device that is easy to use.
Claim 1 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 4, Saenz further discloses wherein the data from the user comprises selection of an injured body part (e.g. Par. [0058]: selecting injured body part from a list; Par. [0062]: selecting from body image).
Claim 4 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 5, Saenz further discloses wherein the user selects an injured body part from an image of the human body or from a list of body parts (e.g. Par. [0058]: selecting injured body part from a list; Par. [0062]: selecting from body image).
Claim 4 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 6, Saenz further discloses wherein the data from the user further comprises selection of one or more injury symptoms selected from pain, inflammation, deformity, inflexibility, discoloration, and combinations thereof (e.g. Fig. 3: step 3, describing the type of a pain).
Claim 1 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 7, Saenz further discloses wherein the data from the user comprises selection of one or more joint-specific injury symptoms selected from pain, inflammation, deformity, inflexibility, discoloration, and combinations thereof in a toe, ankle, knee, hip, finger, wrist, elbow, shoulder, or neck of the user (e.g. Fig. 4: ankle injury; Fig. 5: wrist injury).
Claim 1 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 8, Saenz further discloses wherein the data from the user further comprises injury duration (e.g. Par. [0058]: selecting injured body part and indicating pain level (i.e. injury symptom) and duration of pain, “how long the pain has affected the user”).
Claim 1 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 10, Saenz further discloses wherein the injury treatment plan comprises an at home treatment regimen, a visit to a physician, physical therapy sessions, or a combination thereof (e.g. Par. [0064]: multiple treatment options available to the user).
Claim 1 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 13, Saenz fails to disclose wherein the system is further configured to receive background information from the user, wherein the background information comprises the user's name, e-mail address, mailing address, phone number, height, weight, age, gender, or a combination thereof. Sharma, in a similar field of endeavor, is directed towards personalized pain management treatments. Sharma discloses wherein the system is further configured to receive background information from the user, wherein the background information comprises the user's name, e-mail address, mailing address, phone number, height, weight, age, gender, or a combination thereof (e.g. Col. 27, lines 30-36: contact information of the patient is stored; Col. 27, lines 15-21: age, sex, and BMI of the patient is stored).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Saenz in view of Sharma to include the background information comprising patient contact information and age, sex, and BMI of the patient as taught by Sharma because doing so would result in improved data collection of patient information.
Claim 1 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 15, Saenz further discloses wherein the system further comprises a database of service providers, wherein the system is configured to apply the data provided by the user recommend a local service provider or a list of local service providers to the user (e.g. Par. [0008]: based on the information provided by the user, a list of medical professionals may be provided, “If the user's inputs are consistent with a more serious injury, inappropriate for mobile diagnosis and treatment, the user will be referred to a network of approved medical professionals comprised of chiropractors, physical therapists, and medical doctors”).
Claim 1 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 16, Saenz further discloses a memory component (e.g. Par. [0020]: history of patients is saved; Par. [0064]: “RRA will maintain the user's history of injuries, treatments and medical providers within RRA for future reference.”).
Claim 1 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 17, Saenz fails to disclose a computer-readable code, wherein the computer-code is configured to instruct the processor to apply the algorithm to the data to provide the output to the user on the graphical user interface. Sharma, in a similar field of endeavor, is directed towards personalized pain management treatments. Sharma discloses a computer-readable code, wherein the computer-code is configured to instruct the processor to apply the algorithm to the data to provide the output to the user on the graphical user interface (e.g. Col. 8, lines 25-27).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Sharma to include a computer-readable code, wherein the computer-code is configured to instruct the processor to apply the algorithm to the data to provide the output to the user on the graphical user interface as taught by Sharma because doing so would result in a device that is capable of performing the required method.
Claim 17 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 18, Saenz further discloses wherein the system is configured to be accessible by one or more users, wherein the memory component stores the data regarding the injury for each of the one or more users and stores the output provided by the system to each of the one or more users (e.g. Par. [0020]: history of each patient who used the app is saved).
Claim 17 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 19, Saenz fails to disclose wherein the system is configured to be accessible by one or more service providers, wherein the memory component stores additional data provided to the system by each of the one or more service providers. Sharma, in a similar field of endeavor, is directed towards personalized pain management treatments. Sharma discloses wherein the system is configured to be accessible by one or more service providers, wherein the memory component stores additional data provided to the system by each of the one or more service providers (e.g. Col. 8, lines 34-64: the physician interface is accessible to service providers; Col. 7, lines 27-33: data is stored).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Saenz in view of Sharma to include the system being configured to be accessible by one or more service providers, wherein the memory component stores additional data provided to the system by each of the one or more service providers as taught by Sharma because doing so would provide access to multiple health care providers as needed and storing the data for future reference.
Claim 1 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 21, Saenz further discloses wherein the diagnosis of the injury additionally includes a list of one or more alternative potential injuries (e.g. Fig. 3: step 5: a list of possible injuries is provided; Par. [0058]: “The user inputs will be processed through RRA and evaluated by the application's parameters to develop and provide a list of possible injuries 5 to the user.”).
Claim 14 is rejected under 35 U.S.C. 103 as being unpatentable over Saenz (US Patent Application Publication 2018/0160904, of record), further in view of Sharma (US Patent 9,875,340, of record), as applied to claim 1 above, and further in view of Perlin et al. (US Patent 10,970,635, of record), hereinafter Perlin.
Claim 1 is obvious over Saenz in view of Sharma, as indicated above. Regarding claim 14, Saenz fails to disclose wherein the diagnostic procedure is selected from a magnetic resonance imaging (MRI) scan, a computerized tomography (CT) scan, an X-ray, an ultrasound, and an electromyogram (EMG). Perlin, in a similar field of endeavor, is directed towards making predictive determinations. Perlin discloses wherein the recommendation for an alternative user action comprises a recommendation that the user receive an X-ray (e.g. Col. 45, lines 22-32: determining the recommended action, such as an X-ray).
It would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the invention of Saenz in view of Sharma to include the recommendation being the user receiving an X-ray as taught by Perlin because doing so would provide the user with the recommendation for the necessary treatment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SHREYA P ANJARIA whose telephone number is (571)272-9083. The examiner can normally be reached M-F: 8:00-5:00 EST.
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/SHREYA ANJARIA/Examiner, Art Unit 3796
/Jennifer Pitrak McDonald/Supervisory Patent Examiner, Art Unit 3796