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 .
Claims 1, 11 and 21 are amended. Claims 14, 17, 34-35, 39-40 and 44-45 have been cancelled. Claims 4-6, 8-10, 15-16, 19-20, 25-26 and 28-30 were previously cancelled. Claims 1-3, 7, 11-13, 18, 21-23, 27, 31-33, 36-38 and 41-43 are pending.
Claims 1-3, 7, 11-13, 18, 21-23, 27, 31-33, 36-38 and 41-43 are rejected for the reasons detailed below.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 12/22/2025 has been entered.
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 11-13, 18 and 36-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because Claims 11-13, 18 and 36-38 are drawn to a “computer readable medium,” which does not distinguish Claims 11-13, 18 and 36-38 from a transitory medium or article of manufacture, and hence Claims 11-13, 18 and 36-38 do not fall within the four statutory categories.
Claims 1-3, 7, 11-13, 18, 21-23, 27, 31-33, 36-38 and 41-43 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-3, 7 and 41-43 are drawn to a method for medical intelligence which is within the four statutory categories (i.e. process). Claims 11-13, 18 and 36-38 are drawn to a “computer readable medium,” which does not distinguish Claims 11-13, 18 and 36-38 from a transitory medium or article of manufacture, and hence Claims 11-13, 18 and 36-38 do not fall within the four statutory categories. Assuming Applicant amends to rectify claims 11-13, 18 and 36-38, they would fall under the statutory category of manufacture. Claims 21-23, 27 and 31-33 are drawn to a system for medical intelligence which is within the four statutory categories (i.e. machine).
Claims 1-3, 7 and 41-43 (Group I) recite:
monitoring a telehealth medical encounter between a patient and a medical entity, the telehealth medical encounter being a virtual medical consultation conducted via a telehealth process;
receiving an image of the patient captured during the telehealth medical encounter;
comparing, by a machine learning (ML) model during the telehealth medical encounter without initiation by a human user, the image of the patient to images of known ailments or conditions to identify a visual indication of a potential ailment or condition within the image; and
displaying, via a user interface of the human user, the image of the patient and a transparent overlay of image-based content information (MPEP § 2106.05 (f), apply it and MPEP § 2106.05 (g), insignificant extra-solution activity), wherein the transparent overlay of the image-based on content information identifies the visual indication of the potential ailment of condition within the image; and
automatically inviting, by the ML model, a third-party entity to join the telehealth medical encounter, wherein the image of the patient and the transparent overlay of image-based content information are displayed to the third-party entity via the user interface (MPEP § 2106.05 (f), apply it and MPEP § 2106.05 (g), insignificant extra-solution activity).
The bolded limitations, given the broadest reasonable interpretation, cover mathematical concept and/or a certain method of organizing human activity because it recites mathematical relationships, formulas, equations, and/or mathematical calculations and/or fundamental economic practices, commercial or legal interactions, and/or managing personal behavior or relationships or interactions between people. Any limitations not identified above as part of the mathematical concept/ the method of organizing human activity are underlined and are deemed “additional elements,” and will be discussed in further detail below.
Furthermore, the abstract idea for Claims 11-13, 18, 21-23, 27, 31-33 and 36-38 is identical as the abstract idea for Claims 1-3, 7 and 41-43 (Group I). Claim 11 further recites a “computer program product residing on a computer readable medium having a plurality of instructions stored thereon which, when executed by a processor…” (MPEP § 2106.05 (f), apply it)) and Claim 21 further recites a “computing system including a processor and memory configured to perform operations…” (MPEP § 2106.05 (f), apply it), which are both deemed to be additional elements recited at an apply it level. Examiner notes that claims 11-13, 18 and 36-38 do not fall within one of the four statutory categories as it can be interpreted as software per se.
Dependent Claims 2-3, 7, 12-13, 18, 22-23, 27, 31-33, 36-38 and 41-43 include other limitations, for example Claims 2, 12 and 22 recite wherein the medical entity includes one or more of: a medical professional; and a medical virtual assistant, Claims 3, 13 and 23 recite wherein the telehealth medical encounter includes one or more of: an intake portion; a consultation portion; and a follow-up portion, Claim 7 recites comparing, by the ML model during the telehealth medical encounter, the image of the patient to a previous image of the patient to determine if the potential ailment or condition has changed, wherein the previous image of the patient was captured during a previous telehealth encounter between the patient and the medical entity , Claim 18 recites wherein generating image-based content information via artificial intelligence includes: comparing the image-based content to image-based information associated with one or more ailments / conditions to identify one or more potential ailments / conditions, Claim 22 recites wherein the medical entity includes one or more of: a medical professional; and a medical virtual assistant, Claim 23 recites wherein the telehealth medical encounter includes one or more of: an intake portion; a consultation portion; and a follow-up portion, Claim 27 recites comparing, by the ML model during the telehealth medical encounter, the image of the patient to a previous image of the patient to determine if the potential ailment or condition has changed, wherein the previous image of the patient was captured during a previous telehealth encounter between the patient and the medical entity, Claims 31, 36 and 41 recite wherein the potential ailment or condition is skin cancer, Claims 32, 37 and 42 recite wherein the image of the patient is an image of a mole on the patient, Claims 33, 38 and 43 recite wherein the images of the known ailments or conditions include pictures of known cancerous moles on individuals other than the patient, but these only serve to further limit the abstract idea, and hence are nonetheless directed towards fundamentally the same abstract idea as independent Claims 1, 11 and 21.
Furthermore, Claims 1-3, 7, 11-13, 18, 21-23, 27, 31-33, 36-38 and 41-43 are not integrated into a practical application because the additional elements (i.e. the limitations not identified as part of the abstract idea) amount to no more than limitations which:
amount to mere instructions to apply an exception – for example, the recitation of computer program product, computer readable medium, processor and memory, transparent overlay display, which amounts to merely invoking a computer as a tool to perform the abstract idea, e.g. see paragraphs [0036], [0039] and [0170] of the present Specification, see MPEP 2106.05(f)
add insignificant extra-solution activity to the abstract idea – for example, the recitation of displaying data and a transparent overlay on a user interface, which amounts to an insignificant application, see MPEP 2106.05(g);
generally link the abstract idea to a particular technological environment or field of use (e.g., computers, user interfaces), see MPEP 2106.05(h)
Furthermore, the Claims do not include additional elements that are sufficient to amount to “significantly more” than the judicial exception because, the additional elements (i.e. the elements other than the abstract idea) amount to no more than limitations which:
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, as demonstrated by:
The Specification expressly disclosing that the additional elements are well-understood, routine, and conventional in nature:
paragraphs [0036], [0039] and [0170] of the Specification discloses that the additional elements (i.e. computer program product, computer readable medium, user interface, processor and memory, transparent overlay display) comprise a plurality of different types of generic computing systems that are configured to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry (i.e. healthcare).
Relevant court decisions: The following are examples of court decisions demonstrating well-understood, routine and conventional activities, e.g. see MPEP 2106.05(d)(II):
Outputting data, e.g. see Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc. 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering)– similarly, the current invention merely recites the outputting the results for a virtual medical encounter.
Thus, taken alone, the additional elements do not amount to “significantly more” than the above-identified abstract idea. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually, and there is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and their collective functions merely provide conventional computer implementation.
Therefore, whether taken individually or as an ordered combination, Claims 1-3, 7, 11-13, 18, 21-23, 27, 31-33, 36-38 and 41-43 are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Subject Matter Free from Prior Art
The prior art of record does not disclose or render obvious the subject matter of claims 1, 11 and 21. Specifically, the prior art of record does not disclose or render obvious the limitations of “automatically initiating, by the ML model, a third-party encounter between the patient and a dermatologist or oncologist following the telehealth medical encounter, wherein the image of the patient and the transparent overlay of image-based content information are displayed to the dermatologist or oncologist during the third-party encounter” alone and combination with the limitations of the respective independent claims. The closest prior art of record includes Zhang (U.S. Pub. No. 2021/0142882 A1), Powell (U.S. Pub. No. 2006/0149597 A1) and Yu (U.S. Pub. No. 2014/0019149 A1). Zhang discusses monitoring a telehealth encounter including using images of an ailment or condition. Powell discusses using a semi-transparent overlay window to display patient information. Yu discusses initiating a referral consultation for conditions such as moles, but no in the manner in which is claimed in the instant application. however, the combination of Zhang, Powell and Yu fail to disclose the combination of limitations in the independent claims. Claims 2-3, 7, 12-13, 18, 22-23, 27, 31-33, 36-38 and 41-43 are also free from prior art as they depend from claims 1, 11 and 21.
Response to Arguments
Applicant's arguments filed 12/22/2025 have been fully considered.
Claim Rejections under 35 U.S.C. § 112(b)
As claims 12 and 24 have been cancelled, they are no longer pending and rejected under § 112(b).
Claim Rejections under 35 U.S.C. § 101
Applicant asserts that the “Applicant's position is that the claimed approach results in a technical improvement to the telehealth systems themselves - which are ‘technology-based virtual platforms’ that are necessarily rooted in computer technology (Remarks, page 9).”
MPEP § 2106.04(d)(I) states limitations that the courts have found indicative of an additional element (or combination of elements) may have integrated the exception into a practical application include:
An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
Adding insignificant extra-solution activity to the judicial exception, as discussed
in MPEP § 2106.05(g); and
Generally linking the use of a judicial exception to a particular technological
environment or field of use, as discussed in MPEP § 2106.05(h).
Examiner maintains that, per the MPEP, the claims do not result in a technical solution. First, Examiner maintains that there is not a technical problem present. The problem lies with the coordination of various parties for a virtual encounter about a patient’s ailments or conditions. So even if there was a technical solution, it would not be solving a technical problem and would not overcome the current rejection. The instant specification states “telehealth visits may solve some of these issues by allowing a patient to visit with a doctor without having to actually travel to the doctor's office (Paragraph [0004]).” This is not technical in nature.
MPEP 2106.05(a)(I) provides examples that the courts have indicated may show an improvement in computer-functionality:
i. A modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage, DDR Holdings, 773 F.3d at 1258-59, 113 USPQ2d at 1106-07;
ii. Inventive distribution of functionality within a network to filter Internet content, BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016);
iii. A method of rendering a halftone digital image, Research Corp. Techs. v. Microsoft Corp., 627 F.3d 859, 868-69, 97 USPQ2d 1274, 1380 (Fed. Cir. 2010);
iv. A distributed network architecture operating in an unconventional fashion to reduce network congestion while generating networking accounting data records, Amdocs (Israel), Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1300-01, 120 USPQ2d 1527, 1536-37 (Fed. Cir. 2016);
v. A memory system having programmable operational characteristics that are configurable based on the type of processor, which can be used with different types of processors without a tradeoff in processor performance, Visual Memory, LLC v. NVIDIA Corp., 867 F.3d 1253, 1259-60, 123 USPQ2d 1712, 1717 (Fed. Cir. 2017);
vi. Technical details as to how to transmit images over a cellular network or append classification information to digital image data, TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 614-15, 118 USPQ2d 1744, 1749-50 (Fed. Cir. 2016) (holding the claims ineligible because they fail to provide requisite technical details necessary to carry out the function);
vii. Particular structure of a server that stores organized digital images, TLI Communications, 823 F.3d at 612, 118 USPQ2d at 1747 (finding the use of a generic server insufficient to add inventive concepts to an abstract idea);
viii. A particular way of programming or designing software to create menus, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241, 120 USPQ2d 1844, 1854 (Fed. Cir. 2016);
ix. A method that generates a security profile that identifies both hostile and potentially hostile operations, and can protect the user against both previously unknown viruses and "obfuscated code," which is an improvement over traditional virus scanning. Finjan Inc. v. Blue Coat Systems, 879 F.3d 1299, 1304, 125 USPQ2d 1282, 1286 (Fed. Cir. 2018);
x. An improved user interface for electronic devices that displays an application summary of unlaunched applications, where the particular data in the summary is selectable by a user to launch the respective application. Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc., 880 F.3d 1356, 1362-63, 125 USPQ2d 1436, 1440-41 (Fed. Cir. 2018);
xi. Specific interface and implementation for navigating complex three-dimensional spreadsheets using techniques unique to computers; Data Engine Techs., LLC v. Google LLC, 906 F.3d 999, 1009, 128 USPQ2d 1381, 1387 (Fed. Cir. 2018); and
xii. A specific method of restricting software operation within a license, Ancora Tech., Inc. v. HTC America, Inc., 908 F.3d 1343, 1345-46, 128 USPQ2d 1565, 1567 (Fed. Cir. 2018).
There is nothing analogous to the above examples that results from the instant claims when looking at the additional elements in combination with recited abstract idea. Neither the computer nor the user interface is improved as a result of the claimed invention.
Applicant further argues that “the claimed approach provides a technical solution that is necessarily rooted in computer technology (i.e., telehealth systems) in order to overcome a problem specifically arising within the context of telehealth systems — namely, that diagnosing patients in telehealth is more challenging because the medical professional cannot physically examine the patient (Remarks, page 10).” Examiner maintains this is not technical in accordance with the guidance found in MPEP § 2106.
Applicant further argues that “claim 1 recites automatically initiating a third-party encounter between the patient and a third part entity following the telehealth medical encounter, where the image of the patient and the transparent overlay of image-based content information are displayed to the third-party entity during the third-party encounter” which “further reflects the technical improvement articulated above in the sense that the telehealth system autonomously schedules a medical encounter with a specialist (e.g., oncologist, dermatologist, etc.), thereby making the telehealth system more streamlined (and intuitive) within the context of cancer screenings (Remarks, page 10).” Automatically initiating a third-party encounter is part of the abstract idea. The abstract idea cannot be used to integrate itself into a practical application. The displaying of data via a user interface does not result in a practical application as neither the display or computer are improved as a result as indicated in the above rejection.
Claim Rejections under 35 U.S.C. §§ 103
The prior art rejection has been withdrawn in view of the amendments.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Rachelle Reichert whose telephone number is (303)297-4782. The examiner can normally be reached M-F 9-5 MT.
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/RACHELLE L REICHERT/Primary Examiner, Art Unit 3686