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 05/04/2026.
Claims 1, 2, 4-8, 10, 13-15, 17, 19, and 21 are pending.
Response to Arguments
Applicant’s arguments, see page 8, filed 05/04/2026, with respect to the objection of claims 1, 8, and 21 have been fully considered and are persuasive. The objection of claims 1, 8, and 21 has been withdrawn.
Applicant’s arguments, see pages 8-11, filed 05/04/2026, with respect to the rejection of the claims under 35 U.S.C. 112(a) and 112(b) have been fully considered and are persuasive. The rejection of the claims under 35 U.S.C. 112(a) and 112(b) has been withdrawn.
Applicant’s arguments, see pages 13-16, filed 05/04/2026, with respect to the rejection of claims 1, 2, 4-8, 10, 13-19, and 21 under 35 U.S.C. 103 have been fully considered and are persuasive. Independent claim 1 has been substantially amended, and claims 16 and 18 have been cancelled. Applicant argues that the amended limitations are not taught by the cited references, and specifically that Saenz does not disclose the claimed workflow. Examiner agrees. Therefore, the rejection has been withdrawn. Saenz, the closest prior art of record, discloses an application that can be used for self-guided injury treatment (e.g. Fig. 3: flowchart describing user steps for self-diagnosis of an injury; Pars. [0058], [0062]-[0067]: the steps the application takes to diagnose the user), but does not specifically disclose the amended limitations of providing the user with reference images of graduated severity levels of a symptom, the user selecting a severity level based on a comparison to the reference images, identifying candidate injury conditions based on the comparison, and a decision tree model used for diagnosis determination based on the determined candidate injury conditions.
No prior art was found teaching individually, or suggesting all of the features of the claimed invention, specifically providing the user with reference images of graduated severity levels of a symptom, the user selecting a severity level based on a comparison to the reference images, identifying candidate injury conditions based on the comparison, and a decision tree model used for diagnosis determination based on the determined candidate injury conditions, as recited in clam 1 in combination with the recited steps and elements of the claimed invention.
Applicant’s arguments, see pages 11-13, filed 05/04/2026, with respect to the rejection of the claims under 35 U.S.C. 101 have been fully considered but are not persuasive.
Rejection of claims 1, 2, 4-8, 10, 13-19, and 21 under 35 U.S.C. 101
Independent claim 1 has been substantially amended, and claims 16 and 18 have been cancelled. Applicant argues that the claims are not directed to an abstract idea, that any alleged exception is integrated into a practical application, and that the ordered combination of elements recites significantly more.
First, the argument that the claims are not directed to a mental process is not found to be persuasive. Under its broadest reasonable interpretation, 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, present reference images, receive a user selection, compare the provided image with reference images, and wherein the processor is configured to apply a decision tree 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, wherein when a diagnostic procedure is indicated, generating an order for the diagnostic procedure, 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 invention is directed towards the processing of the received information to provide an output to the user, which is an abstract idea. Any alleged improvement is due to the data processing performed by the invention, which is an abstract idea.
Second, the argument that the claimed limitations amount to significantly more and integrates the abstract idea into a practical application is not found to be persuasive. As recited, the additional elements of the instant claim are the GUI and the processor. 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. 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 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, 13-15, 17, 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, present reference images, receive a user selection, compare the provided image with reference images, and wherein the processor is configured to apply a decision tree 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, wherein when a diagnostic procedure is indicated, generating an order for the diagnostic procedure, 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, computer readable code, and a decision tree algorithm 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, computer readable code, and a decision tree algorithm 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, 13-15, 17, 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 17 and 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.
While there are no prior art rejections for claims 1, 2, 4-8, 10, 13-15, 17, 19, and 21, they are not indicated as allowable due to the rejection of the claims under 35 U.S.C. 101, as explained above.
Conclusion
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.
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
/NIKETA PATEL/Supervisory Patent Examiner, Art Unit 3792
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