DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This action is in reply to the response filed on 06/09/2025.
Claims 1, 6 and 9 have been amended. Claims 2 and 12 were previously cancelled. Claims 1 and 3–11 are pending.
Claim Rejections - 35 USC § 101
The following is a quotation of 35 U.S.C. 101 which forms the basis for all non-statutory subject matter rejections set forth in this Office action:
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 and 3–11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without sufficiently being integrated into a practical application and without significantly more.
STEP 1: CLAIM 1 recites a computer implemented method used by a data integration system. The claims are directed to a system or process, which is a statutory category of invention.
STEP 2A, PRONG ONE: According to MPEP § 2106, the first prong of the first step of the § 101 analysis (STEP 2A-1) is to determine whether the claim recites an abstract idea, laws of nature or natural phenomena.
Claim 1 recites, at least in part a data integration system, comprising:
an integration device, comprising (MPEP §2106.05(f), apply it):
a storage circuit (MPEP §2106.05(g), apply it), configured to store instructions (MPEP § 2106.05(g), insignificant extra-solution activity) of:
receiving a first digital imaging and communications in medicine (DICOM) data object comprising a first attribute item;
searching the integration device or a device connected to the integration device for a second attribute item corresponding to the first attribute item;
determining whether to convert the first attribute item of the first DICOM data object to the second attribute item or a third attribute item, wherein the integration device edits the first DICOM data object to replace the first attribute item with the second attribute items after the second attribute item corresponding to the first attribute item of the first DICOM data object is found, and the integration device generates the third attribute item and replaces the first attribute item of the first DICOM data object with the third attribute item after the integration device fails to find the second attribute item corresponding to the first attribute item of the first DICOM data object, wherein the second attribute item, which is to be found by the integration device, and the third attribute item, which is to be generated by the integration device, are medical record numbers conforming to a second medical institution organizational architecture of a second medical institution, wherein the first attribute item, which is received by the integration device, is a first medical record number conforming to a first medical institution organizational architecture of a first medical institution, and
a processing circuit, coupled to the storage circuit, configured to execute the instructions stored in the storage circuit (MPEP §2106.05(g), apply it),
wherein the first DICOM data object is automatically edited to change the first attribute item to the second attribute item after a first identification number corresponding to the first attribute item is determined to be identical to a second identification number corresponding to the second attribute item and after a first date of birth and a first name corresponding to the first attribute item are determined to be identical to a second date of birth and a second name corresponding to the second attribute item,
wherein the third attribute item is to be generated by the integration device to have a medical record number that follows a numerical-alphabetical order substantially same as a numerical-alphabetical order of the second attribute item, which is to be found by the integration device, such that both the third attribute item and the second attribute item conform to the second medical institution organizational architecture,
wherein the converted first DICOM data object is transmitted to a DICOM server of the second medical institution (MPEP § 2106.05(g), insignificant extra-solution activity), wherein the converted first DICOM data object is parsed and systematically stored by the DICOM server according to the third attribute item or the second attribute item (MPEP § 2106.05(g), insignificant extra-solution activity).
The bolded limitations are steps are directed to methods of organizing human activity, specifically associated with managing personal behavior or relationships or interactions between people (e.g., receiving a first digital imaging and communications in medicine (DICOM) data object comprising a first attribute item, determining whether attributes correspond to one another, editing objects in response to a determination) and are thus an abstract idea consistent with the types of ideas enumerated in MPEP § 2106. The dependent claims 3-11 further narrow the above-recited abstract idea.
STEP 2A, PRONG TWO: The second prong of the first step of the § 101 analysis is to determine whether the claim elements, when viewed individually and as an ordered combination, contain an inventive concept sufficient to integrate the claimed abstract idea into a practical application.
The claims recite additional elements including:
an integration device (MPEP §2106.05(f), apply it):
a storage circuit (MPEP §2106.05(g), apply it), configured to store instructions (MPEP § 2106.05(g), insignificant extra-solution activity) of…; and
a processing circuit, coupled to the storage device, configured to execute the instructions stored in the storage circuit (MPEP §2106.05(g), apply it).
wherein the converted first DICOM data object is transmitted to a DICOM server of the second medical institution (MPEP § 2106.05(g), insignificant extra-solution activity), wherein the converted first DICOM data object is systematically stored by the DICOM server according to the third attribute item or the second attribute item (MPEP § 2106.05(g), insignificant extra-solution activity).
The integration device, merely recites generally links the abstract idea to a particular technological environment or field of use and is recited at an apply it level. Per MPEP 2106.05(h), generally linking the abstract idea to a particular technological environment or field of use cannot provide a practical application and per MPEP 2106.05(f), merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea is not enough to result in a practical application. Per the specification, paragraph [0011], the integration device maybe a computer terminal or mobile device (such as a laptop, mobile phone or tablet) that includes a processing circuit and storage circuit.
The claims also recite transmitting and storing data, which is considered insignificant extra-solution activity per MPEP §2106.05(g), and does not rise to the level of a practical application.
The dependent claims further limit the abstract idea of claim 1. Claim 5 recites a user interface, Claim 6 recites a first mobile device and a second mobile device, Claim 7 recites a medical device, a PACS server, Claim 8 recites a database server, Claim 9 recites a second user interface, a burning and a storage device, Claim 10 recites a storage device. All of these additional elements are recited at an “apply it” level and do not rise the level of a practical application.
STEP 2B: The second step of the § 101 analysis is to determine whether the claim elements, when viewed individually and as an ordered combination, contain “an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application.” Alice, 134 S. Ct. at 2357. The claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea.
As discussed above with respect to integration of the abstract idea into a practical application, the additional elements (integration device, processing circuit and storage circuit and those recited in the dependent claims including a storage device, a user interface, a mobile device, etc.) are recited at an “apply it” level.
These elements are broadly recited in the specification at, for example at paragraph [0011] which describes the integration device. “FIG. I is a schematic diagram of an integration device 10 according to an embodiment of the present invention. The integration device 10 may be (located) in a medical institution Hb and may be remotely-located from another medical institution. In some embodiments, the integration device 10 may be a (computer) terminal (such as a medical instrument or workstation) or a mobile device (such as a laptop, mobile phone, or tablet), and may include a processing circuit 100 and a storage circuit 1 10. The integration device 10 may automatically store/save, receive/aggregate, or consolidate/reorganize data (such as medical data), and may transmit the (received) data to another device (such as a host or a terminal)." This indicates that the integration device and circuits are recited at an apply it level and cannot provide an inventive concept (“significantly more”).
Furthermore, the storing of data, which is considered insignificant-extra-solution activity, does not rise to the level of significantly more than the abstract idea as it is merely receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)); and/or storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93.
CLAIMS 3-11 simply provide details regarding the abstract limitations of claim 1 or additional elements that do not amount to significantly more than the abstract idea itself, and therefore, only serve to further limit the abstract idea of claim 1. The dependent claims inherit all of the limitations of the independent claims and further define the abstract idea identified for the independent claims and/or recite field of use limitations. These steps are consistent with the types of ideas found to be methods of organizing human activity. Therefore, claims 3-11 are abstract.
Claim 1 and 3-11 recite an abstract idea without a practical application or significantly more and are do not recite eligible subject matter.
Response to Arguments
Applicant’s arguments submitted 06/09/2026 gave been fully considered.
35 U.S.C. 101
On pages 7-10 of the Applicant’s remarks, Applicant argues that the claims integrates the recited abstract idea into in a practical application because “the instant application addresses a technical interoperability problem arising when a DICOM data object generated under a first medical institution organizational architecture is imported into, parsed by, and systematically stored in a DICOM server of a15 second medical institution having a different organizational architecture (Remarks, page 7).” Examiner maintains that this is part of the abstract idea apart from the storing of data, which is considered insignificant extra-solution activity. Storing data, per MPEP § 2106, is not indicative of an integration an abstract idea into a practical application. The limitations that are considered part of the abstract idea cannot be used to integrate themselves into a practical application.
The specification [0013] describes that if “the same name and date of birth which corresponds to the medical record number MR2 is found in the existing patient data, the integration device 10 may change the medical record number MRI (in the DICOM data object) to the medical record number MR2…” which is an improvement the abstract idea. If there is no medical record number for the patient, a new one is created (“may automatically generate unused medical record number (also referred to as a third attribute item) to replace the medical record number MRI using algorithms [0013]).” Examiner maintains that the improvement, if any, resulting from the claims, is to the abstract idea itself. The additional elements recited are not improved as a result of the claimed invention, and therefore, the claims do not result in a practical application of the recited abstract idea.
Applicant further submits that “the amended claim 1 as a whole amounts to significantly more than the alleged judicial exception (Step 2A, Prong Two: YES.) (Remarks, page 10).” Examiner maintains that the additional elements do not result in significantly more than the abstract idea itself as the additional elements are either recited at an “apply it” level or recite well-understood, routine and conventional insignificant extra-solution activity per the MPEP. Applicant’s remaining arguments assert that portions of the abstract idea result in significantly more than the abstract idea. This is not persuasive as “Step 2B asks: Does the claim recite additional elements that amount to significantly more than the judicial exception? Examiners should answer this question by first identifying whether there are any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception(s), and then evaluating those additional elements individually and in combination to determine whether they contribute an inventive concept (i.e., amount to significantly more than the judicial exception(s)).” See MPEP § 2106.05.
The claims remain rejected as directed towards ineligible subject matter in accordance with MPEP § 2106 and all applicable guidance.
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 Rachelle Reichert whose telephone number is (303)297-4782. The examiner can normally be reached M-F 9-5 MT.
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/RACHELLE L REICHERT/Primary Examiner, Art Unit 3686
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