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 .
DETAILED ACTION
Status of Claims
This Non-Final Office Action is in response to Applicant’s Request for Continued Examination (RCE) filed 08/27/2025.
In accordance with Applicant’s amendment, claims 1, 9, and 16 are amended. Claims 1, 5-6, 8-9, 13-16, and 18-20 are currently pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 submissions filed on 08/27/2025 have been entered.
Response to Amendment
The 35 USC §112(b) rejection of claims 9 and 13-15 is withdrawn in response to applicant’s amendment removing the trademarks from claim 9. However, new grounds of rejection are applied to claims 1, 5-6, 8-9, 13-16, and 18-20 under 35 USC §112(a) and §112(b) in response to the amendment.
Response to Arguments
Response to §101 Arguments - Applicant's arguments with respect to the §101 rejection of claims 1, 5-6, 8-9, 13-16, and 18-20 (Remarks at pgs. 7-8) have been considered, but are not persuasive.
Applicant asserts that the limitation of “performing said cryotherapy treatment by the operator trained on said associated cryotherapy device and said cryotherapy treatment” is meaningful and goes beyond organizing human activity and is “more than ‘managing personal behavior or relationships or interactions between people’” (Remarks at pg. 8) and citation to the CAFC’s Classen Immunotherapies decision and suggestion that the amendment to claims 1/9/16 and in particular the step for “performing said cryotherapy treatment by the operator trained on said associated cryotherapy device and said cryotherapy treatment” is “reasonably analogous to the ‘immunizing a mammalian subject’ as required by the ’139 and ‘739 Patents of Classen” (Remarks at pg. 9).
In response, the Examiner first notes that performing said cryotherapy treatment by the operator trained on said associated cryotherapy device and said cryotherapy treatment falls under the scope of the abstract idea itself by setting forth activity for managing personal behavior or relationships or interactions between people (scheduling patient services), such as by a human operator giving a patient an icepack, though without any requirement for the operator to actually utilize the cryotherapy device that he/she is trained on. Notably, the “performing” step is silent regarding any discernible nexus as between the treatment and the device, or the cryotherapy device and a person/patient, nor any limitation describing “what” the cryotherapy treatment entails, “how” it is administered, to whom it is administered, and how the cryotherapy device is utilized. Accordingly, because there is no limit as to “how” the treatment is to be performed or whether/how a cryotherapy device is used, the “performing” step is nothing more than an abstractly recited step for a human to perform the treatment with no identified or discernible patient, particular type of cryotherapy treatment, or particular outcome or improvement achieved be produced by the claim, in contrast to the immunization in accordance with an optimum in Classen. As such, this step describes activity for managing personal behavior or interactions between people given, and is thus part of the abstract idea itself.
The Examiner further notes that the solution for immunizing a subject to implement the claimed solution in Classen shares virtually no similarities with applicant’s claimed invention, wherein the CAFC further emphasized that the Classen claims “include such transformative steps”, citing the relevance of the Prometheus decision involving drug administration. Prometheus Laboratories, Inc. v. Mayo Collaborative Services, 628 F.3d 1347 (Fed. Cir. 2010), cert. granted, _ S. Ct. _ , 2011 WL 973139 (June 20, 2011). In contrast to the claimed immunization step in Classen, Applicant’s do not require immunization nor require doing so in accordance with an optimum schedule, nor require drug administration or any other discernible treatment introduced into a human organism. Accordingly, Applicant’s attempt to analogize to the eligibility rational of Classen is not persuasive.
For the reasons provided above along with the reasons set forth in the updated §101 rejection below, the amendments and arguments are not sufficient to overcome the §101 rejection.
Response to §103 Arguments - Applicant's arguments with respect to the §103 rejection of claims 1, 5-6, 8-9, 13-16, and 18-20 (Remarks at pgs. 10-13) have been considered, but are primarily raised in support the amendments to independent claims 1/9/16, and the amendments and supporting arguments are believed to be fully addressed via the updated §103 rejection set forth below.
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, 5-6, 8-9, 13-16, and 18-20 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
The first paragraph of 35 U.S.C. 112 requires that the “specification shall contain a written description of the invention.” This requirement is separate and distinct from the enablement requirement. See, e.g., Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991). See also Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920-23, 69 USPQ2d 1886, 1890-93 (Fed. Cir. 2004) (discussing history and purpose of the written description requirement). To satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116. However, a showing of possession alone does not cure the lack of a written description. Enzo Biochem, Inc. v. Gen-Probe, Inc., 323 F.3d 956, 969-70, 63 USPQ2d 1609, 1617 (Fed. Cir. 2002).
In this instance, claims 1/9/16 were amended on 08/27/2025 to include the following new limitation:
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However, the Specification does not mention, teach, suggest, describe, or otherwise show possession of the new claim limitation requiring the sheathing to be “yfsxufwjsyfimjxn(j%nr %iwjxxrsl." The Specification is silent regarding any such sheathing.
Accordingly, there is no evidence of a complete specific application or embodiment to satisfy the requirement that the description is set forth “in such full, clear, concise, and exact terms” to show possession of the claimed invention. See Fields v. Conover, 443 F.2d 1386, 1392, 170 USPQ 276, 280 (CCPA 1971).
Claims 5-6, 8, 13-15, and 18-20 depend from one of claims 1/9/16 and therefore inherit the §112(a) deficiency of their respective parent claims.
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, 5-6, 8-9, 13-16, and 18-20 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 pre-AIA the applicant regards as the invention.
Claims 1, 9, and 16 recite the following new limitation:
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However, the enigmatic character string of “yfsxufwjsyfimjxn(j%nr %iwjxxrsl" used to identify the medical-grade sheathing is incoherent and does not appear to provide any discernible meaning. The Specification is silent regarding any such sheathing, nor has applicant provided an explanation or reference in the Remarks accompanying the amendment. Therefore, the character string lacks any discernible metes and bound, which renders the scope of claimed subject matter as indefinite. Appropriate correction is required.
Claims 5-6, 8, 13-15, and 18-20 depend from one of claims 1/9/16 and fail to cure the deficiency noted above, and therefore inherit the indefiniteness of their respective parent claims.
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, 5-6, 8-9, 13-16, and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-patentable subject matter. The claims are directed to an abstract idea without significantly more.
Claims 1, 5-6, 8-9, 13-16, and 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The judicial exception is not integrated into a practical application. The claims do include additional elements that are sufficient to amount to significantly more than the judicial exception. The eligibility analysis in support of these findings is provided below, in accordance with the subject matter eligibility guidance set forth in MPEP 2106.
With respect to Step 1 of the eligibility inquiry (as explained in MPEP 2106.03), it is first noted that the claimed methods are directed to potentially eligible categories of subject matter (i.e., processes). Accordingly, claims 1, 5-6, 8-9, 13-16, and 18-20 satisfy Step 1 of the eligibility inquiry.
With respect to Step 2A Prong One of the eligibility inquiry (as explained in MPEP 2106.04), it is next noted that the claims recite an abstract idea that falls under the “Certain methods of organizing human activity” grouping within the enumerated groupings of abstract ideas (as set forth in MPEP 2106.04(a)(2)) since the claims describe activities for managing personal behavior or relationships or interactions between people (patient scheduling) such as by following rules or instructions, as well as activities falling under the “Mental Processes” abstract idea grouping by reciting limitations that, but for the generic computer implementation, could be performed in the human mind (including an observation, evaluation, judgment, opinion). With respect to independent claim 1, the limitations reciting the abstract idea are indicated in bold below:
constructing a cryotherapy services system hosted on a server that is accessible via a user electronic device over a network (The “constructing” of a system hosted on a server accessible via a user electronic device over a network is an additional element evaluated under Step 2A Prong Two and Step 2B below);
wherein the user electronic device is a smartphone; wherein the cryotherapy services system is a computer implemented software application installed on the smartphone (These are additional elements evaluated under Step 2A Prong Two and Step 2B below).
accessing a cryotherapy services system by the user of the cryotherapy service (This step describes activity for managing personal behavior or relationships or interactions between people (patient scheduling), and but for the generic computer/website implementation, this step could be performed in the human mind, such as by mental observation. Furthermore, the “accessing” also falls under insignificant extra-solution activity, which is not enough to amount to a practical application (MPEP 2106.05(g)), and such extra-solution activity has also been recognized as well-understood, routine, and conventional, and thus insufficient to add significantly more to the abstract idea. See MPEP 2106.05(d) - 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));
entering a user's information including at least a patient's name, a contact number, an email address, a remote address, and a health status (This step describes activity for managing personal behavior or relationships or interactions between people (patient scheduling), and but for the generic computer implementation, this step could be performed in the human mind, such as by mental judgment with the aid of pen and paper. Furthermore, the “entering” activity also falls under insignificant extra-solution activity, which is not enough to amount to a practical application (MPEP 2106.05(g)), and such extra-solution activity has also been recognized as well-understood, routine, and conventional, and thus insufficient to add significantly more to the abstract idea. See MPEP 2106.05(d) - 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));
allowing the cryotherapy services system to automatically select a cryotherapy treatment based on the health status of the user; wherein said cryotherapy treatment is a pain management treatment (This step describes activity for managing personal behavior or relationships or interactions between people (selection and scheduling of patient services), and but for the generic computer implementation, this step could be performed in the human mind, such as by mental judgment, evaluation or opinion with the aid of pen and paper);
scheduling an associated cryotherapy device for the cryotherapy services system selected said cryotherapy treatment at said remote address, wherein said associated cryotherapy device is scheduled based on said treatment (This step describes activity for managing personal behavior or relationships or interactions between people (scheduling patient services), and but for the generic computer implementation, this step could be performed in the human mind, such as by mental judgment or evaluation with the aid of pen and paper);
scheduling an operator wherein said operator is trained on said associated cryotherapy device and said cryotherapy treatment (This step describes activity for managing personal behavior or relationships or interactions between people (scheduling patient services), and but for the generic computer implementation, this step could be performed in the human mind, such as by mental judgment or evaluation with the aid of pen and paper);
wherein the operator is scheduled based on an automatic matching of a treatment expertise of the operator with a treatment schedule, and wherein the treatment expertise is stored in an operator profile database and the treatment schedule is stored in a patient profile database (This step describes activity for managing personal behavior or relationships or interactions between people (scheduling patient services), and but for the generic computer implementation, this step could be performed in the human mind, such as by mental judgment or evaluation with the aid of pen and paper);
storing a feedback of the operator for updating a profile of the operator, wherein the profile is stored in the operator profile database (This step describes activity for managing personal behavior or relationships or interactions between people (patient feedback related to provision of services), and but for the generic computer implementation, this step could be performed in the human mind or with the aid of pen and paper, such as by mental judgment with the aid of pen and paper (e.g., comment card, written testimonial). Furthermore, the “storing” activity also falls under insignificant extra-solution activity, which is not enough to amount to a practical application (MPEP 2106.05(g)), and such extra-solution activity has also been recognized as well-understood, routine, and conventional, and thus insufficient to add significantly more to the abstract idea. See MPEP 2106.05(d) - 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));
purchasing said cryotherapy treatment (This step describes activity for managing personal behavior or relationships or interactions between people (scheduling patient services), such as by implementing a purchase between a seller and buyer);
delivering said associated cryotherapy device (This step describes activity for managing personal behavior or relationships or interactions between people (scheduling patient services), such as by a human physically delivering a device to a location);
providing a medical-grade sheathing to protect the patient during said cryotherapy treatment, wherein said medical-grade sheathing is a yfsxufwjsyfimjxn(j%nr %iwjxxrsl (The “providing” step describes activity for managing personal behavior or relationships or interactions between people (i.e., the “providing” can be accomplished via the act of offering a patient an insulating sheathe/barrier to protecting the skin)); and
performing said cryotherapy treatment by the operator trained on said associated cryotherapy device and said cryotherapy treatment (This step describes activity for managing personal behavior or relationships or interactions between people (scheduling patient services), such as by a human operator giving a patient an icepack, and without any requirement to actually utilize the cryotherapy device the operator is trained on. Notably, the “performing” step is silent regarding any discernible nexus as between the treatment and the device, or the cryotherapy device and a person/patient, nor any limitation describing “what” the cryotherapy treatment entails, “how” it is administered, to whom it is administered, and how the cryotherapy device is utilized. Accordingly, because there is no limit as to “how” the treatment is to be performed or whether/how a cryotherapy device is used, the “performing” step is nothing more than an abstractly recited step for a human to perform the treatment with no identified or discernible patient, type of treatment, or intended or actual outcome required to be produced by the claim, but instead this step is substantially disembodied. As such, this step describes activity for managing personal behavior or interactions between people given, and is thus part of the abstract idea itself).
Independent claims 9 and 16 recite similar limitations as those discussed above and have therefore been determined to recite the same abstract idea as claim 1. Claims 9/16 recite additional computing elements beyond those recited in claim 1 (a PDA, smartphone, or laptop computer) that are addressed below, and claim 16 is noted as reciting a “storing” step that is subject to substantially the same Step 2A Prong One rationale as applied to the “accessing” and “entering” and “storing” steps above since the “storing” is both part of the abstract idea itself as well as insignificant extra-solution activity even if implemented by the computer.
With respect to Step 2A Prong Two of the eligibility inquiry (as explained in MPEP 2106.04(d)), the judicial exception is not integrated into a practical application. Independent claims 1, 9, and 16 include additional elements of a computer implemented method, constructing a … system hosted on a server that is accessible via a user electronic device over a network, wherein the user electronic device is a smartphone, wherein the cryotherapy services system is a computer implemented software application installed on the smartphone, automatically, website, using a computer implemented software application, wherein said computer implemented software application is installed on an electronic device and further wherein said electronic device is selected from a group consisting of a PDA, a smartphone and a laptop computer. These additional elements have been evaluated, but fail to integrate the abstract idea into a practical application because they amount to using generic computing elements or instructions (software) to perform the abstract idea, or generally linking the abstract idea to a particular technological environment (e.g., the Internet, client/server architecture), similar to adding the words “apply it” (or an equivalent), which merely serves to link the use of the judicial exception to a particular technological environment (generic network computing environment, e.g., using generic computer and the internet). See MPEP 2106.05(f) and 2106.05(h). Furthermore, even if evaluated as an additional element, the steps for accessing, entering, and storing at most amount to insignificant extra-solution activity, which is not indicative of a practical application, as noted in MPEP 2106.05(g). Even if considered as an additional element, the step for performing said cryotherapy treatment using said cryotherapy device via the operator would not be considered a practical application since it merely involves applying the scheduling activity to a particular technological environment (cryotherapy) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h). In addition, these limitations fail to provide an improvement to the functioning of a computer or to any other technology or technical field, fail to apply the exception with a particular machine, fail to apply the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, fail to effect a transformation of a particular article to a different state or thing, and fail to apply/use the abstract idea in a meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Accordingly, because the Step 2A Prong One and Prong Two analysis resulted in the conclusion that the claims are directed to an abstract idea, additional analysis under Step 2B of the eligibility inquiry must be conducted in order to determine whether any claim element or combination of elements amount to significantly more than the judicial exception.
With respect to Step 2B of the eligibility inquiry (as explained in MPEP 2106.05), it has been determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Independent claims 1, 9, and 16 recite the additional elements of a computer implemented method, constructing a … system hosted on a server that is accessible via a user electronic device over a network, wherein the user electronic device is a smartphone, wherein the cryotherapy services system is a computer implemented software application installed on the smartphone, automatically, website, using a computer implemented software application, wherein said computer implemented software application is installed on an electronic device and further wherein said electronic device is selected from a group consisting of a PDA, a smartphone and a laptop computer. These additional elements have been evaluated, but fail to add significantly more to the claims because they amount to using generic computing elements (generic computer, network/internet) or instructions/software, or generally linking the abstract idea to a particular technological environment (e.g., the Internet) to perform the abstract idea, similar to adding the words “apply it” (or an equivalent), which merely serves to link the use of the judicial exception to a particular technological environment (network computing environment, the internet, online, client/server architecture) and does not amount to significantly more than the abstract idea itself. Notably, Applicant’s Specification suggests that virtually any computing device(s) under the sun may be used to implement the invention, including generic computers. See, for example, the applicant’s Specification at paragraph [0027], noting that “the disclosure can be practiced with other computer system configurations as well. Certain aspects of the disclosure can be embodied in a special-purpose computer or data processor that is specifically programmed, configured or constructed to perform one or more of the computer-executable algorithms described below. Accordingly, the term "computer" as generally used herein refers to any data processor and includes Internet appliances, hand-held devices (including tablets, computers, wearable computers, cellular or mobile phones, multi-processor systems, processor-based or programmable consumer electronics, network computers, minicomputers) and the like,” and the Specification at paragraph [0030], noting that “The mobile cryotherapy service system 100 is used for scheduling cryotherapy sessions from a cryotherapy service provider using a computer-implemented software application 104 installed in an electronic device 102 such as a personal digital assistant (PDA), smartphone, laptop or any other such type of electronic handheld device.” Therefore, the additional elements merely describe generic computing elements or computer-executable instructions (software) merely serve to tie the abstract idea to a particular operating environment, which does not add significantly more to the abstract idea. See, e.g., Alice Corp., 134 S. Ct. 2347, 110 USPQ2d 1976; Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015). Moreover, constructing a … system hosted on a server that is accessible via a user electronic device over a network is considered well-understood, routine, and conventional in the art. See, for example, Lipner et al., US 2011/0119072, noting in paragraph [0039] that “…determine whether the particular physician achieved the benchmark. In one aspect, the process of FIG. 2A can be implemented in a client-server environment, as known to one of ordinary skill in the art.” Accordingly, the step for constructing a … system hosted on a server that is accessible via a user electronic device over a network does not add significantly more to the claims. Lastly, even if the step for performing said cryotherapy treatment using said cryotherapy device via the operator is considered as an additional element (which is not conceded), this step would not add significantly more to the claims because this activity is considered well-understood, routine, and conventional in the art. See, e.g., Chin, US Patent Number 5,458,612 at col. 4 lines 25-27, noting that “…treating means 30 are known in the art and can include laser ablation, pharmacological agents, cryotherapy.” See also, Jayaraman, US Patent Number 5,902,299 at col. 1 lines 23-24, noting that “In the prior art, cryotherapy is a known technique.”
Furthermore, even if evaluated as an additional element, the steps for accessing, entering, and storing at most amount to insignificant extra-solution activity, which has been recognized as well-understood, routine, and conventional, and thus insufficient to add significantly more to the abstract idea. See MPEP 2106.05(d) - 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).
In addition, when taken as an ordered combination, the ordered combination adds nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements integrate the abstract idea into a practical application. Their collective functions merely provide generic computer implementation. Therefore, when viewed as a whole, these additional claim elements do not provide meaningful limitations to transform the abstract idea into a practical application of the abstract idea or that, as an ordered combination, amount to significantly more than the abstract idea itself.
Dependent claims 5-6, 8, 13-15, and 18-20 recite the same abstract ideas (“certain methods of organizing human activity” and “mental processes”) as the independent claims along with further steps/details falling under the scope of the abstract idea itself along with the same or substantially same generic computing element addressed above under Step 2A Prong Two and Step 2B, which is incorporated herein. The ordered combination of elements in the dependent claims (including the limitations inherited from the parent claim(s)) add nothing that is not already present as when the elements are taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation. Accordingly, the subject matter encompassed by the dependent claims fails to amount to a practical application or significantly more than the abstract idea itself.
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 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 of this title, 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, 5-6, 8, 16, and 18-20 are rejected under 35 U.S.C. §103 as unpatentable over Prodanovic (US 2012/0197657) in view of Moturu et al. (US 2017/0235912, hereinafter “Moturu”) in view of Spivey et al. (US 2009/0132287, hereinafter “Spivey”) in view of Kowalkiewicz et al. (US 2015/0100326, hereinafter “Kowalkiewicz”) in view of Dong et al. (US 2012/0239122, hereinafter “Dong”).
Claim 1: Prodanovic teaches a computer implemented method for scheduling and performing a cryotherapy service (paragraphs 1, 10, 227, and 333: computer-based application to facilitate medical treatment of a patient; systems and methods; cryosurgery/cryotherapy; schedule appropriate time for the visit), the computer implemented method comprising the steps of:
constructing a cryotherapy services system hosted on a server that is accessible via a user electronic device over a network (paragraphs 9, 226-227, 633, 635, 642-645, and Figs. 1-3: describing/displaying a constructed system including a patient portable and clinical portal accessible by users via user interfaces of their respective devices through a network such as the Internet, and which is used for managing provision of medical services, including cryotherapy service such as cryosurgery/cryotherapy - e.g., FIG. 1 illustrates an exemplary MPS 100, which is comprised of a plurality of portals each directed to a particular aspect of a medical practice; Clinical portal 150 is a web-application used by provider; The computer can operate in a networked environment using logical and/or physical connections to one or more remote computers, such as a remote computer(s). The remote computer(s) can be a workstation, a server computer; networking environments are commonplace in offices, enterprise-wide computer networks, intranets and the Internet; the inventive methods may be practiced with other computer system configurations, including single-processor or multiprocessor computer systems, mini-computing devices, mainframe computers, as well as personal computers, hand-held computing devices, microprocessor-based or programmable consumer electronic; cryosurgery/cryotherapy component 416 an be employed);
accessing the cryotherapy services system by the user of the cryotherapy service (paragraphs 97-105: patient is able to access Patient portal; Clinical portal 150 is a web-based application; access to the pages that can provide a role-centric way to complete necessary information; see also, paragraphs 226-227: cryosurgery/ cryotherapy component 416 an be employed);
entering a user's information including at least a patient's name, a contact number, an email address, a remote address, and a health status (paragraphs 106-124, 130-133, 139, 220, 253, 353, 361-379, 429, 480-481, 506, and 540: e.g., creating new patient record…fill in at least the following information: First, Middle (optional) and Last Name, E-mail, Phone Number, provide additional information such as…contact information: home phone, mobile phone, Email; Clinic Name, Address [i.e., a remote address], Phone; different colors are used to indicate a problem status; codes…Factors Influencing Health Status; types of information that are customizable… system can provide an existing list of Clinics to a user and allow users to add/edit/disable Clinics; Each Practice can have more than one location (i.e., Clinic) at which it accepts patients);
… select a cryotherapy treatment … (paragraph 227 and Fig. 4: cryosurgery/cryotherapy component 416 can be employed; appropriately document a CPT code for the procedure of cryosurgery or cryotherapy; Select appropriate ICD-9 of ICD-10);
scheduling an associated cryotherapy device for the cryotherapy services system selected said cryotherapy treatment at said remote address, wherein said associated cryotherapy device is scheduled based on said treatment (paragraphs 227, 361-364, and 390-403: It is noted that the address of a clinic providing a scheduled treatment is a remote address because it is remote from the patient’s home address and/or from other clinics that may be closer to the patient – e.g., Clinics represent different locations for the Practice; they are not completely separate business entities from the accounting/billing perspective. Each Practice can have more than one location (i.e., Clinic) at which it accepts patients; schedule resources for appointment, at specified time and in specified Clinic [e.g., CT machine]; Resources can be defined as…medical equipment…used for a specific procedure (e.g. laser); Restrictions can also be associated with a resource to limit availability to a particular Clinic, for a CT machine or other immovable resource; A cryosurgery/ cryotherapy component 416 an be employed within the mapping component 152 to appropriately document a CPT code for the procedure of cryosurgery or cryotherapy);
purchasing said cryotherapy treatment (paragraphs 227, 345, and 533: e.g., procedure of cryosurgery or cryotherapy; obtains the payment for the visit and schedules the follow up appointment (if needed); For billing purposes, they are able to access patient medical information in order to properly bill).
Although Prodanovic teaches cryotherapy, cryotherapy services system, and cryotherapy treatment (paragraphs 8-10, 14, 226-227 and Figs. 1-4: systems and methods; system can display a list of therapies that are stored in a therapy database within the system; cryosurgery/cryotherapy component 416 can be employed; appropriately document a CPT code for the procedure of cryosurgery or cryotherapy), Prodanovic does not explicitly teach:
wherein the user electronic device is a smartphone;
wherein the (cryotherapy services) system is a computer implemented software application installed on the smartphone;
allowing the (cryotherapy services) system to automatically select for the user a (cryotherapy) treatment based on the health status of the user; wherein said (cryotherapy) treatment is a pain management treatment;
scheduling an operator wherein said operator is trained on said associated (cryotherapy) device and said (cryotherapy) treatment;
wherein the operator is scheduled based on an automatic matching of a treatment expertise of the operator with a treatment schedule, and wherein the treatment expertise is stored in an operator profile database and the treatment schedule is stored in a patient profile database;
storing a feedback of the operator for updating a profile of the operator, wherein the profile is stored in the operator profile database;
delivering said associated (cryotherapy) device;
providing a medical-grade sheathing to protect the patient during said (cryotherapy) treatment, wherein said medical-grade sheathing is a yfsxufwjsyfimjxn(j%nr %iwjxxrsl (Examiner’s Note: The string of characters corresponding to the sheathing type is not entitled to patentable weight because it has an unascertainable meaning); and
performing said cryotherapy treatment by the operator trained on said associated cryotherapy (device) and said cryotherapy treatment.
Moturu teaches:
wherein the user electronic device is a smartphone (par. 28: Patient digital behavior data is preferably recorded at a mobile computing device associated with a user (e.g., a smartphone, tablet, smartwatch, laptop, etc., of a user));
wherein the (cryotherapy services) system is a computer implemented software application installed on the smartphone (pars: 51 and 56 and Fig. 1C: e.g., application executing on a care provider mobile computing device; provider can input patient data (e.g., patient answers to care provider questions) into a computing device (e.g., an application executing on the smartphone of the care provider); See also, par. 25: The technology can transform entities (e.g., mobile devices, care determination system, treatment system, users, care providers etc.) into different states or things. In an example, the technology can activate applications executing on user devices and/or care provider devices through providing medical status analyses at the applications);
allowing the … system to automatically select for the user a … treatment based on the health status of the user (paragraphs 48, 58, 69, and Fig. 2: Block S130 can include selecting an initial list of potential therapeutic interventions, narrowing the initial list based on patient digital behavior information, symptoms, drug information, and/or other suitable information, and presenting the narrowed list of potential therapies to a care provider for providing decision support; see also, paragraph 48: generating patient medical status analysis includes generating a decision tree model with internal nodes and branches selected based on correlations between digital behavior data and medical statuses.., and identifying a medical status of a patient (e.g., a diagnosis, a treatment recommendation, etc.) based on the decision tree; instructions are preferably executed by computer-executable components) wherein said (cryotherapy) treatment is a pain management treatment (paragraph 16: The method 100 and/or system 200 function to leverage patient digital communication behaviors (e.g., text messaging characteristics, phone calling characteristics, etc.) and/or other behaviors (e.g., mobility behaviors, user-provider interaction behaviors associated with interactions between a user and a care provider, behaviors determined based on user inputs such as survey responses, device event behaviors, etc.) to provide one or more care providers with diagnostic and/or therapeutic intervention information pertaining to the user and/or user condition…pain-related condition (e.g., chronic pain; etc));
scheduling an operator (paragraphs 57 and 59: scheduling care provider appointments; automatically scheduling a future care provider appointment);
wherein the operator is scheduled based on an automatic matching of a treatment expertise of the operator with a treatment schedule, and wherein the treatment expertise is stored in an operator profile database and the treatment schedule is stored in a patient profile database (paragraphs 29, 40, 49, 54, 59, and 62-66: e.g., Automatic selection [i.e., matching] of potential consultants can be based on care provider characteristics (e.g., care provider experience with the platform, care provider experience with given conditions, care provider relationship with the patient, care provider relationship with other care providers, care provider expertise, etc.), patient characteristics (e.g., patient situation, diagnosis, response, digital behavior data, etc.), consultant characteristics (e.g., … consultant expertise, consultant experience, etc.); temporal indicators (e.g., during, before, and/or after the user-provider interactions such as visits; time period associated with a treatment regiment, etc.); provider profiles based on professional experience; guiding care provider decision-making based on medical status analyses (e.g., interactive step-wise decision making tool, etc.); facilitating digital communication (e.g., between a first and a second care provider, such as between a health coach and a licensed therapist; between one or more patients and one or more care providers, etc.); promoting provision of therapeutic interventions from the medical status analyses (e.g., … automatically scheduling a future care provider appointment; medical status analysis can be adjusted for the expertise of the care provider; patient medical report can be provided to a care provider for a patient a week before a scheduled user-provider interaction; system 200 and/or components of the system 200 (e.g., care determination system 210, treatment system 220, etc.) can entirely or partially be executed by, hosted on, communicate with, and/or otherwise include: user databases (e.g., storing patient characteristics, user health records, associated care provider characteristics, patient device information, etc.), analysis databases).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Prodanovic with Moturu because the references are analogous since each is directed to computer-implemented features for managing/scheduling the provision of medical services, which is within applicant’s field of endeavor of computer-implemented features for scheduling cryotherapy services, and because modifying Prodanovic to incorporate Moturu’s features for automatically selecting a treatment such as for pain management based on health status and matching/scheduling an operator, as claimed, would serve the motivation to recommend a treatment based on diagnosis (Prodanovic at pars. 12-13) and to enable a medical professional to provide efficient and productive treatment (Prodanovic at paragraph 34); and further obvious because the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Prodanovic and Moturu do not explicitly teach:
scheduling an operator wherein said operator is trained on said associated (cryotherapy) device and said (cryotherapy) treatment;
storing a feedback of the operator for updating a profile of the operator, wherein the profile is stored in the operator profile database;
delivering said associated (cryotherapy) device;
providing a medical-grade sheathing to protect the patient during said (cryotherapy) treatment, wherein said medical-grade sheathing is a yfsxufwjsyfimjxn(j%nr %iwjxxrsl (Examiner’s Note: The string of characters corresponding to the sheathing type is not entitled to patentable weight because it has an unascertainable meaning);
performing said (cryotherapy) treatment by the operator trained on said associated cryotherapy (device) and said (cryotherapy) treatment.
Spivey teaches:
scheduling an operator wherein said operator is trained on said associated … device and said … treatment (paragraphs 28, 34, 40, 47-48, and 78: e.g., collect initial symptomatic and diagnostic indicia, schedule specialized technicians; technicians trained to perform urodynamic studies on the aforementioned patients and interpreters trained to assess information collected by the technicians during the urodynamic studies; User interface module 213 may be implemented in conjunction with scheduling module 211 to schedule technicians to perform urodynamic studies at offices (location, site or premise) of one or more primary care physicians; scheduling one or more technicians, as well as suitable implements for the technicians);
delivering said associated … device (paragraphs 28, 48, and 53: e.g., suitable implements (e.g., equipment, supplies, etc.) that may be provided by a provider of the managed service of system; provider of the managed service supplies the implements (e.g., equipment, supplies, etc.) for performing the urodynamic studies);
performing said … treatment by the operator trained on said associated … device and said … treatment (paragraphs 28, 53, and 87: e.g., provide PCPs with one or more input mechanisms for conducting general diagnostic procedures; allows PCPs to utilize a specialized UT for conducting urodynamic procedures; the procedures being performed, for example, at an office of the PCPs of the patients).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Prodanovic/Moturu with Spivey because the references are analogous since each is directed to computer-implemented features for managing/scheduling the provision of medical services, which is within applicant’s field of endeavor of computer-implemented features for scheduling cryotherapy services, and because modifying Prodanovic/Moturu to incorporate Spivey’s feature for scheduling a trained operator who performs a treatment, as claimed, would serve the pursuit of ensuring a specially trained individual is scheduled to conduct the patient’s treatment (Spivey at paragraph 28) and would help ensure suitable equipment is provided for patient treatment (Spivey at paragraph 48) and thereby improve the standard of care offered to patients (Spivey at paragraph 28); and further obvious because the claimed inven