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 .
Response to Amendment
Amendment received on 7/23/2025 is acknowledged and entered. Claims 1-19 have been amended. Claims 1-19 are currently pending in the application.
Specification
Objections to the Specification have been withdrawn due to the Applicant’s amendment.
Claim Objections
Claims 1 and 10 recite: “catching one or more electronic or digital medical record”, which is confusing. The term “catching” a record is not a formal terminology.
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 1-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
In determining whether a claim falls within an excluded category, the Examiner is guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)); Bilski v. Kappos, 561 U.S. 593, 611 (2010); 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019); the October 2019 Update of the 2019 Revised Guidance (Oct. 17, 2019); 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (July 17, 2024), and the USPTO’s Paten Subject Matter Eligibility Memorandum of August 4, 2025.
Step 1
Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability (i.e., laws of nature, natural phenomena, and abstract ideas). Alice Corp. v. CLS Bank Int'l, 573 U. S. ____ (2014). Claims 1, 10 and 19 are directed to a statutory category, because a non-transitory computer-readable medium comprising computer-readable instructions satisfies the requirements of a product. The broadest reasonable interpretation of claim 14 encompasses a computer system (e.g., hardware such as a processor and memory) that implements the recited functions. If assuming that the system comprises a device or set of devices, then the system is directed to a machine, which is a statutory category of invention. (Step 1: Yes).
Next, the claim is analyzed to determine whether it is directed to a judicial exception.
Step 2A – Prong 1
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more of processing medical records, coordinating an organ donation, and running recycling unused medications campaign. The claim recites:
1. A computer software program product being stored in a non-transitory computer-readable storage medium and executed by one or more processors, wherein the computer software program product is configured to perform a method comprising the steps of:
catching one or more electronic or digital medical record in a blockchain protected healthcare database system;
wherein said one or more electronic medical record(s) comprises at least one of, a healthcare information and an organ-donor information;
forming one or more electronic medical record block(s), wherein each of said one or more electronic medical record block(s) is configured to contain individual medical record;
chaining said one or more electronic medical record block(s) together to form a medical record blockchain;
linking each of said one or more electronic medical record block(s) with a cryptographic hash of previous electronic medical record block to ensure integrity of order of said one or more electronic medical record block(s);
wherein an alteration of an electronic medical record block requires a consensus of a network majority to create a secure or immutable record of one or more medical record block transaction(s);
managing, with a variable-based panel system, at least one of, a doctor’s appointment, said electronic medical record, healthcare insurance, hospital visits, medications, and pharmacy, wherein said variable-based panel system is configured to be locked with at least one of, an assigned ID and a Social Security Number;
entrusting one of more interactive graphical buttons on a graphic user interface for access to the healthcare information in said one or more blockchain protected electronic medical record block;
unveiling at least one of a bank of credits, and the healthcare information in response to activating at least one of said one or more interactive graphical buttons;
administering one or more commands including at least on of, query said blockchain protected healthcare database, receive real-time information from said healthcare database, and present said healthcare information;
coordinating an organ donation based on matching said one or more medical record(s) and organ-donor information with a recipient;
organizing an organ pick-up location and a delivery of a donated organ to a destination location;
facilitating a recycling program for unused medications;
detecting, with one or more wearable devices, at least one of, a sudden fall, out-of-range blood pressure, an out-of-range glucose level and an out-of-range body temperature; and
notifying, with a command, control, and continuous monitoring (C3M) infrastructure, a medical staff or medical professional upon detecting at least one of the sudden fall, out-of-range blood pressure, out-of-range glucose level and out-of-range body temperature.
The limitations of storing electronic medical records and organ-donor information in a blockchain database; managing a doctor’s appointment; accessing and unveiling healthcare information via a GUI; matching organ-donor information with a recipient; coordinating an organ donation; facilitating a recycling program; detecting and notifying out-of-range body temperature, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, and certain methods of organizing human activity but for the recitation of generic computer components. (Note: the Examiner’s language (e.g. “storing electronic medical records and organ-donor information in a blockchain database”; “managing a doctor’s appointment”; etc.”) is an abbreviated reference to the rather detailed claim steps and is not an oversimplification of the claim language; the Examiner employing such shortcuts (that refer to more specific steps) when attempting to explain the rejection). That is, other than reciting “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by a processor” language storing and matching steps in the context of this claim encompasses a practitioner trying to figure out which information about available organs from donors corresponds to patient’s needs based on the patient’s medical records. Similarly, rewarding and creating steps represent pure mental activity, such an administrator or practitioner offers rewards to patients if they return unused medications. And organizing an organ pick-up location and a delivery, conducting advertising, and facilitating a recycling program for unused medications represent basic commercial interactions.
Regarding the use of blockchain technology, the Examiner respectfully points out that the blockchain algorithm is like the algorithm for converting binary-coded decimal numerals into pure binary form in Benson (Gottschalk v. Benson, 409 U.S. 63, 65, 93 S.Ct. 253, 254, 34 L.Ed.2d 273 (1972) (“While said functions are performed by a computer, they are in essence a mathematical algorithm, in that they represent "[a] procedure for solving a given type of mathematical problem."), and the mathematical formula for computing “alarm limits” in a catalytic conversion process in Flook (Parker v. Flook, 437 U.S. 584, 595 (1978)(“if a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is [patent-ineligible subject matter].” (quoting In re Rickman, 563 F.2d 1026, 1030 (CCPA 1977).”). It uses a peer-to-peer network using proof-of-work to record a public history of transactions, and is nothing more than arranging and executing the transfer of some value between parties based on information received from said parties, are strictly enforcing such an arrangement so that it cannot be manipulated. The fact that such an arrangement is implemented as time-stamped series of immutable record of data secured and bound to each other using cryptographic principles and managed by a plurality of computers does not preclude said functions from practically being performed in the mind. Also, the algorithm behind the blockchain technology is already “well known in the art,” which will be addressed in Step 2B below.
As per the use of artificial intelligence and/or machine learning techniques (AI/ML) (e.g. dependent claims 7 and 11), said recitation does not make the claim patent eligible, because said tools are utilized merely for data gathering and comparing, and are not utilized in express manipulation and control of functional aspects and/or hardware components/equipment of real-world processes and systems using output of AI models (e.g., manufacturing processes and equipment, medical treatments, communications processes and systems, logistics systems and hardware, interactive smart phone apps, etc.). There is no indication in the claims or Specification that the claimed invention improves the machine learning technology; the Specification briefly mention said technology without any indication of improving it, or using said technology in innovative way. It is similar to other abstract ideas held to be non-statutory by the courts. See, also, Recentive Analytics, Inc. v. Fox Corp. (Fed. Cir. 2025), wherein the court noted that "iterative training," a claimed feature, was inherent to all machine learning models and thus did not confer eligibility.
Further, regarding comparing data of a user to a database of images limitations, in Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass’n, Nos. 13-1588-1589, 14-1112, -1687 (Fed. Cir. Dec. 23, 2014) the Federal Circuit affirmed that such limitations were generally directed to “the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.” The Court explained that ”[t]he concept of data collection, recognition, and storage is undisputedly well-known,” and noted that “humans have always performed these functions.” Id. The Court then rejected CET’s argument that the claims were patent eligible because they required hardware to perform functions that humans cannot, such as processing and recognizing the stream of bits output by the scanner. Comparing the asserted claims to “the computer-implemented claims in Alice,” the Court concluded that the claims were “drawn to the basic concept of data recognition and storage,” even though they recited a scanner. Id. at 8. Thus, mental processes, e.g., extracting and comparing data, as implied by machine learning technology, remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. CyberSource Corp. at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalkv. Benson, [409 U.S. 63 (1972)].”). Also, see Specification: [0076] “…Colloquially, the term “artificial intelligence” is often used to describe machines (or computers) that mimic “cognitive” functions that humans associate with the human mind, such as “learning” and “problem solving”. [Source: Russell, Stuart J.; Norvig, Peter (2009). Artificial Intelligence: A Modern Approach (3rd ed.). Upper Saddle River, N.J.: Prentice Hall.] Thus, aside from the general technological environment (addressed below), it covers purely mental concepts and/or certain methods of organizing human activity processes. And the mere nominal recitation of a generic network appliance (e.g. an interface for inputting or outputting data, or generic network-based storage devices and displays) does not take the claim limitation out of the mental processes and/or certain methods of organizing human activity grouping.
It is similar to other abstract ideas held to be non-statutory by the courts (see: Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363 (Fed. Cir. 2015)—tailoring sales information presented to a user based on, e.g., user data and time data, similar because at another level of abstraction the claims could be characterized as tailoring organs related information presented to a user based on, e.g., user medical data; Electric Power Grp., LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016)—process of gathering and analyzing information of a specified content, then displaying the results, similar because at another level of abstraction the claims could be characterized as process of gathering and analyzing information of a shared activity, then displaying the results; buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014)—creating a contractual relationship; similar because this also characterizes the invention at another level of abstraction. See, also: Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. __, 134 S. Ct. 2347, 110 U.S.P.Q.2d 1976 (2014), formulation and trading of risk management contracts; In re Maucorps, 609 F.2d 481, 203 U.S.P.Q. 812 (CCPA 1979), Computer Systems for Optimizing Sales Organizations and Activities; diagnosing an abnormal condition by performing clinical tests and thinking about the results in In re Grams, 888 F.2d 835 (Fed. Cir. 1989); optimizing drug therapeutic efficacy for treatment of immune-mediated gastrointestinal disorders in Mayo Collaborative Svcs. v. Prometheus Labs. 566 U.S._, 132 S. Ct. 1289, 101 U.S.P.Q.2d 1961 (2012); assessing the risk of a major adverse cardiac event in patients in Cleveland Clinic Foundation).
As per receiving, storing and outputting data limitations, it has been held that “As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (citation omitted); see also In re Jobin, 811 F. App’x 633, 637 (Fed. Cir. 2020) (claims to collecting, organizing, grouping, and storing data using techniques such as conducting a survey or crowdsourcing recited a method of organizing human activity, which is a hallmark of abstract ideas).
All these cases describe the significant aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) "An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer."
Further, merely combining several abstract ideas does not render the combination any less abstract. See, RecogniCorp, LLC v. Nintendo Co., Ltd., 855 F.3d 1322, 1327 (Fed. Cir. 2017) (“Adding one abstract idea ... to another abstract idea . . . does not render the claim non-abstract.”); see also FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1094 (Fed. Cir. 2016) (determining the pending claims were directed to a combination of abstract ideas). Thus, adding one abstract idea (matching a donated organ to a participant) to another abstract idea (rewarding the participant for watching an advertisement and completion of the survey) does not render the claim non-abstract.”
Therefore, 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”, and/or “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. (Step 2A – Prong 1: Yes).
Step 2A – Prong 2
In Prong Two, the Examiner determines whether claim 1, as a whole, recites additional elements that integrate the judicial exception into a practical application of the exception, i.e., whether the additional elements apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is no more than a drafting effort designed to monopolize the judicial exception. See Guidance, 84 Fed. Reg. at 54-55. If the additional elements do not integrate the judicial exception into a practical application, then the claim is directed to the judicial exception. See id., 84 Fed. Reg. at 54. “An additional element [that] reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” is indicative of integrating a judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 55.
The Examiner determined that this judicial exception is not integrated into a practical application, because there are no meaningful limitations that transform the exception into a patent eligible application. In particular, the claim recites an additional elements – using a processor to perform the steps of storing medical records in a blockchain database; storing the organ-donor and recipient data in a database; managing a doctor’s appointment; accessing and unveiling healthcare information via a GUI; matching organ-donor information with a recipient; coordinating an organ donation; facilitating a recycling program; detecting and notifying out-of-range body temperature.
However, the processor in each step is recited (or implied) at a high level of generality, i.e., as a generic processor performing a generic computer functions of processing data, including receiving, storing, comparing, and outputting data. This generic processor limitation is no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f). The processor that performs the recited steps merely automates these steps which can be done mentally or manually. Thus, while the additional elements have and execute instructions to perform the abstract idea itself, this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." The claim only manipulates abstract data elements into another form, and does not set forth improvements to another technological field or the functioning of the computer itself and, instead, uses computer elements as tools in a conventional way to improve the functioning of the abstract idea identified above.
Also, maintaining a continuously growing list of ordered records that are securely linked together using cryptography does not improve the technology, cause a particular treatment, or implement the abstract idea into a particular machine. As per using machine learning technology for processing the end user input to further produce and communicate suggested care options to said end user, said steps are nothing more than an attempt to recycle preexisting artificial intelligence or machine-learning (AI/ML) technologies to apply for a particular health-care related applications. There are no improvements in said AI/ML techniques, such as advances in the field of computer science itself, or designing a new neural network, and there is no controlling of a technological process using the outcome of said AI/ML operations.
Further, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually; there is no indication that the combination of elements improves the functioning of a computer or improves any other technology including blockchain or AI/ML technologies, - their collective functions merely provide conventional computer implementation. None of the additional elements "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
Also, the recited steps do not control or improve operation of a machine (MPEP 2106.05(a)), do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and do not apply the judicial exception with, or by use a particular machine (MPEP 2106.05(b)), but, instead, require receiving, comparing, storing and outputting data.
As per receiving, storing and/or outputting data limitations, these recitations amount to mere data gathering and/or outputting, is insignificant post-solution or extra-solution component and represents nominal recitation of technology. Insignificant "post-solution” or “extra-solution" activity means activity that is not central to the purpose of the method invented by the applicant. However, “(c) Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility”. See Bilski, 138 S. Ct. at 3230 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, ___ (1978)). Thus, claim drafting strategies that attempt to circumvent the basic exceptions to § 101 using, for example, highly stylized language, hollow field-of-use limitations, or the recitation of token post-solution activity should not be credited. See Bilski, 130 S. Ct. at 3230.
Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to an abstract idea. (Step 2A – Prong 2: No).
Step 2B
If a claim has been determined to be directed to a judicial exception under revised Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether the provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
The Examiner determined, that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the recited steps
amounts to no more than mere instructions to apply the exception using a generic computer component. The claim is now re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field.
The system would require a processor and memory in order to perform basic computer functions of accepting user input, storing information in a database, retrieving information from a database, comparing information and outputting said information. These components are not explicitly recited and therefore must be construed at the highest level of generality. Based on the Specification, the invention utilizes existing, conventional hardware including communication networks, generic processors which can be found in mobile devices or desktop computers, conventional memory and display devices, conventional block-chain and AI/ML techniques, and the functions performed by said generic computer elements are basic functions of a computer - performing a mathematical operation, receiving, storing and outputting data have recognized by the courts as routine and conventional activity.
Here, the Examiner notes, that the use of AI/ML techniques in various fields of research and development is very common, and is “well known in the art” given that Donald Hebb created a model of brain cell interaction and described it in his book titled “The Organization of Behavior” in 1949. Hebb’s model involves altering the relationships between artificial neurons/nodes and the changes to individual neurons, wherein the relationship between two neurons/nodes strengthens if the two neurons/nodes are activated at the same time and weakens if they are activated separately, and wherein nodes/neurons tending to be both positive or both negative are described as having strong positive weights, and those nodes tending to have opposite weights develop strong negative weights. And Markov decision process(s) (MDPs) were known at least as early as the 1950s; a core body of research on Markov decision processes resulted from Ronald Howard's 1960 book, “Dynamic Programming and Markov Processes”. They are used in many disciplines, including robotics, automatic control, economics and manufacturing.
In the instant case, there are no improvements in said AI/ML techniques, such as advances in the field of computer science itself, or designing a new neural network, and there is no controlling of a technological process using the outcome of said AI/ML operations. The claim (claim 19) neither specifies a specific technical purpose for which the method is used, nor the claim defines a specific technical implementation of the method, nor the claimed method is particularly adapted for that implementation in that its design is motivated by technical considerations of the internal functioning of the computer. Said AI/ML algorithms and computations are done inside of a computer, and do not have a real-world impact and are not tied to the functionality of the computer. Further, there is no evidence that the invention lies in the training phase or execution phase or both; said AI/ML recitation represents merely conventionally applying an existing model to an existing data from publicly accessible databases with the result being not technological, but purely entrepreneurial.
Further, the use of the blockchain protocol for verifying and recording a transaction is merely using a well-known proof-of-work algorithm for encrypting and storing data. The blockchain algorithm is already “well known in the art” given that Satoshi Nakamoto published a paper via the Cryptography Mailing List titled “Bitcoin: A Peer-to-Peer Electronic Cash System” in October 31, 2008. In it, he describes blockchain as “[a] purely peer-to-peer version of electronic cash [that] would allow online payments to be sent directly from one party to another without going through a financial institution.” Among the eight references cited in the paper, the oldest dates back to 1957 and references algorithms. And there is no indication in the claims or Specification regarding any improvement in blockchain technology, there is no indication of improvement of a machine or operation of the machine; the claims merely utilize an existing well-known blockchain technology for verifying and recording data. The Court recognized that “‘a novel and useful structure created with the aid of knowledge of scientific truth’” might be patentable. Id., at 67 (quoting Mackay Radio, 306 U. S., at 94). But it held that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle. For the mathematical formula had “no substantial practical application except in connection with a digital computer.” Benson, supra, at 71.
Specifically, regarding the recited functions, MPEP 2106.05(d)(II) defines said functions as routine and conventional, or as insignificant extra-solution activity:
i. 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));
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”); collecting and comparing known information in Classen 659 F.3d 1057, 100 U.S.P.Q.2d 1492 (Fed. Cir. 2011)
iii. Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. 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;
v. Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and
vi. A web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015).
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity:
i. Recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016);
iii. Restricting public access to media by requiring a consumer to view an advertisement, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014);
iv. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93;
v. Determining an estimated outcome and setting a price, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; and
vi. Arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015).
Thus, the background of the invention does not provide any indication that the processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here). Accordingly, a conclusion that the collecting step is well-understood, routine, conventional activity is supported under Berkheimer Option 2. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Similar to In re Grams, 888 F.2d 835 (Fed. Cir. 1989) (Grams), the recited functions require obtaining data or patient information, and analyze that data to ascertain the existence and identity of an abnormality or estimated responses, and possible causes thereof. While said functions are performed by a computer, they are in essence a mathematical algorithm, in that they represent "[a] procedure for solving a given type of mathematical problem." Gottschalk v. Benson, 409 U.S. 63, 65, 93 S.Ct. 253, 254, 34 L.Ed.2d 273 (1972).”
Also, similar to Electric Power Group v Alstom S.A. (Fed Cir, 2015-1778, 8/1/2016) (Power Group), claim’ invocation of computers, networks, and displays does not transform the claimed subject matter into patent-eligible applications. Claim 1 does not require any nonconventional computer, network, or display components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for performance of the claimed information collection, analysis, and display functions on a set of generic computer components and display devices. Nothing in the claim, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information. Analogous to Power Group, claim 1 does not even require a new source or type of information, or new techniques for analyzing it. As a result, the claim does not require an arguably inventive set of components or methods, such as measurement devices or techniques that would generate new data. The claim does not invoke any assertedly inventive programming. Merely requiring the selection and manipulation of information - to provide a “humanly comprehensible” amount of information useful for users - by itself does not transform the otherwise-abstract processes of information collection and analysis into patent eligible subject matter. Merely obtaining and selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas. Therefore, the recited steps represent implementing the abstract idea on a generic computer, or “reciting a commonplace business method aimed at processing business information despite being applied on a general purpose computer” Versata, p. 53; Ultramerical, pp. 11-12.
Further, the recited functions do not improve the functioning of computers itself, including of the processor(s) or the network elements. There are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. Applicant did not invent a new type of computer. Applicant like everyone else programs their computer to perform functions. The Supreme Court in Alice indicated that an abstract claim might be statutory if it improved another technology or the computer processing itself. Using a (programmed) computer to implement a common business practice does neither. The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, retrieving, comparing and transmitting data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these computer functions). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no apparent interconnection of the recited steps; the steps of storing medical records in a blockchain database; managing a doctor’s appointment; matching organ-donor information with a recipient; facilitating a recycling program; and detecting and notifying out-of-range body temperature are not depend on each other, and, as a whole, represent a list of possible applications in which said system can be utilized. Thus, 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 conventional computer implementation.
For example, in comparison to the decision in Enfish, LLC v. Microsoft Corporation, et al. (Enfish), claim 1 of the current application does not provide specific improvements in computer capabilities. In Enfish, Court found that claims are directed to a specific improvement to the way computers operate, - a particular database technique - in how computers could carry out one of their basic functions of storage and retrieval of data. The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. There is no technological improvement described in the current application; the recited steps do not improve the functioning computers itself, including of the processor(s) or the network elements; there are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. The claimed invention merely utilizes conventional computing and network elements for transmitting and storing data. Thus, the current application’ solution to the problem of rewarding participants for the return of unused medications and for completing a survey is not technological, but “business solution”, or “entrepreneurial.” Therefore, claim 1 does not provide a specific means or method that improves the relevant technology, but, instead, is directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.
Therefore, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because, when considered separately and in combination, the claim do not add significantly more to the exception.
Considered separately and as an ordered combination, the claim elements do not provide an improvement to another technology or technical field including a blockchain technology and/or machine learning techniques; do not provide an improvement to the functioning of the computer itself; do not apply the judicial exception by use of a particular machine; do not effect a transformation or reduce a particular article to a different state or thing; and do not add a specific limitation other than what is well-understood, routine and conventional in the operation of a generic computer. None of the hardware recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Id., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). As per “providing a blockchain-based software program, stored in a non-transitory computer-readable storage digital medium and being executed by one or more processors of a computer-based system” recitation, these limitations do not add significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment, that is, implementation via computers." Id., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). Limiting the claims to the particular technological environment of electronic commerce is, without more, insufficient to transform the claim into patent-eligible applications of the abstract idea at their core.
Accordingly, claim 1 is not directed to significantly more than the exception itself, and is not eligible subject matter under § 101. (Step 2B: No).
Further, although the Examiner takes the steps recited in the independent claim as exemplary, the Examiner points out that limitations recited in dependent claims 2-9 further narrow the abstract idea but do not make the claims any less abstract. Dependent claims 2-9 each merely add further details of the abstract steps recited in claim 1 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. These claims "add nothing of practical significance to the underlying idea," and thus do not transform the claimed abstract idea into patentable subject matter. Ultramercial, 772 F.3d at 716. Therefore, dependent claims 2-9 are also directed to non-statutory subject matter.
Because Applicant’s computer-readable storage medium claims 10-13 and 19, and apparatus claims 14-18 add nothing of substance to the underlying abstract idea, they too are patent ineligi-ble under §101.
Allowable Subject Matter
Claims 1-19 would be allowable if rewritten to overcome claim rejections under 35 USC § 101.
Citations of pertinent art
The prior art search has been conducted. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Diaz et al - US 2016/0140315 A1, and Barfield - US 2013/0226600 A1 – disclose a recycle program for unused medications.
Latorre López - US 2020/0135305 A1 – discloses matching a donated organ to a recipient utilizing blockchain techniques;
Conclusion
THIS ACTION IS MADE FINAL. 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 extension fee 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.
/IGOR N BORISSOV/ Primary Examiner, Art Unit 3685 11/10/2025