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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. 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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed 12/23/2025 has been entered.
Status of Claims
This action is in reply to the response filed on 06/09/2025.
Claims 1, 4 and 6 has been amended. Claim 12 is cancelled. Claim 2 was 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 device, 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 stored in and to be used by the second medical institution (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 stored in and to be used by the second medical institution (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 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 electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log) 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 12/23/2025 gave been fully considered.
Claim Objections
The previous claim objections have been withdrawn in view of the amendments.
35 U.S.C. 103
Regarding the prior art rejection, the arguments have been fully considered and the rejection has been withdrawn in view of the amendments to the independent claim. Claims 3-11 are also no longer rejected under 103 as they depend from claim 1.
35 U.S.C. 101
On pages 15-17 of the Applicant’s remarks, Applicant argues that the claims do not recite a judicial exception and therefore claim 1 is eligible.
Specifically, Applicant provides no reasoning as to rebut that the claims do not recite an abstract idea. Applicant's arguments fail to comply with 37 CFR 1.111(b) because they amount to a general allegation that the claims define a patentable invention without specifically pointing out how the language of the claims patentably distinguishes them from the references.
Applicant asserts that claim 1 “as a whole integrates the judicial exception into a practical application” because they result in improvements to functioning of a computer of other technology (Remarks, page 16). The additional elements recited in the claims, including an integration device, a storage circuit and, a processing circuit, are recited at an apply it level MPEP §2106.05(g). The devices themselves are not improved. The claims also recite the storing of data, which is considered well-understood, routine and conventional activity per MPEP § 2106.05(g). The instant specification ([0012]) discusses the improvement being to labeling and numbering formats. This is not a technical improvement. The improvement, if any, is to the abstract idea itself.
The additional elements, both alone or in combination, do not result in significantly more than the abstract idea itself as they are recited at the apply it level or recite insignificant extra-solution activity. There is not a technical problem and there is not a technical solution resulting from the claims. Compare attributes to make a standardized record number is not a technical solution to a technical problem. The same problem exists with paper files.
MPEP § 2106.04(d)(I) states limitations that the courts have found indicative of an additional element (or combination of elements) may have integrated the exception into a practical application include:
An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
There is nothing present in the instant claims that rises to the level of a practical application.
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
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, as discussed in MPEP § 2106.05(f);
Adding insignificant extra-solution activity to the judicial exception, as discussed
in MPEP § 2106.05(g); and
Generally linking the use of a judicial exception to a particular technological
environment or field of use, as discussed in MPEP § 2106.05(h).
With respect to Step 2B, Applicant asserts that the claims amount to significant more than the judicial exception because “automatically generating a newly-created medical record number to replace the imported medical record number when no appropriate match is found facilitates the efficient use of medical data (Remarks, page 17).” Examiner maintains that this is part of the abstract idea, which cannot be used in making the “significantly more” analysis. Examiner reiterates the the improvement resulting from the claims if any, is to the abstract idea itself. The additional elements, both individually and as an order combination, do not result in significantly more than the recited abstract idea.
Therefore, the claims remain rejected as being directed towards ineligible subject matter.
Conclusion
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jason Dunham can be reached on (571)272-8109. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/RACHELLE L REICHERT/Primary Examiner, Art Unit 3686