DETAILED ACTION
Status of Claims
This is a Final Office Action in response to the arguments and/or amendments filed on 18 September 2025 and the arguments filed 22 September 2025.
Claim(s) 1 and 11 is/are amended. Claim(s) 25 is/are new.
Claim(s) 1, 4-11, and 14-25 is/are currently pending and have been examined.
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 .
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, 4-11, and 14-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1, which is representative of claim 11, recites in part: a
generating,
assigning,
receiving, by the remote scribe including a trimmed recorded audio file of the first health care session and a transcript that is automatically generated from the trimmed recorded audio file;
responsive to receiving the first encounter data of the first health care session including the trimmed recorded audio file and the transcript: presenting the first encounter data of the first healthcare session
automatically presenting a template element with a segment of text extracted from the transcript in the working area
receiving,
responsive to receiving the user input selection of the issue
responsive to providing the interference issue notification, receiving by the remote scribe
responsive to receiving the second encounter data of the second healthcare session that is different from the first health care session, presenting the second encounter data
The preceding recitation of the claim has had strikethroughs applied to the additional elements beyond the abstract idea to more clearly demonstrate the limitations setting forth the abstract idea. The remaining limitations set forth a concept of managing the review of transcription data. Managing such personal behavior falls within the methods of organizing human activity subgrouping. As such, the claims are determined to recite an abstract idea.
MPEP 2106, reflecting the 2019 PEG, directs examiners at Step 2A Prong Two to consider whether the additional elements of the claims integrate a recited abstract idea into a practical application.
Claim 1 describes the method as computer-implemented. Claim 11 recites the additional element of a computer system comprising: one or more computers; and one or more computer memory devices. The claims further recite the additional element of a server system. These features are recited at an extremely high level of generality, and are all interpreted as generic computing devices used to implement the abstract idea. Per MPEP 2106.05(f), implementing an abstract idea on a generic computing device does not integrate an abstract idea into a practical application in Step 2A Prong Two, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea on a generic computer. As such, these additional elements do not integrate the abstract idea into a practical application.
The claims further recite the additional element of a remote scribe device. This additional element is also recited at a high level of generality, and is interpreted as a generic computing device used to implement the abstract idea. Thus like the prior computing devices, this additional element does not integrate the abstract idea into a practical application.
The claims further recite the additional element of receiving data from a server system and providing data to the server system. This additional element reflects no technical improvement, no particular device, and does not affect any transformation of an article. Instead, this additional element only generally links the abstract idea to a technological environment of networked computing devices.
The claims further recite the additional element of an interface with various controls, which presents information, the interface further receiving inputs. This additional element reflects no technical improvement, no particular device, and does not affect any transformation of an article. Instead, this additional element only generally links the abstract idea to a technological environment of a user facing computer device.
There are no further additional elements. When considered as a combination, the additional elements only generally link the abstract idea to a technological environment of networked, user-facing computing devices. As such, the combination of additional elements does not integrate the abstract idea into a practical application. Because the additional elements, either individually or as a combination, do not integrate the abstract idea into a practical application, the claims are determined to be directed to the identified abstract idea.
At Step 2B of the Mayo/Alice analysis, examiners are to consider whether the additional elements amount to significantly more than the abstract idea.
As previously noted, the claims recite additional elements which may be interpreted as generic computing devices used to implement the abstract idea. However, per MPEP 2106.05(f), implementing an abstract idea on a generic computing does not add significantly more in Step 2B, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea on a generic computer. As such, these additional elements do not amount to significantly more.
As previously noted, the claims recite an additional element of receiving data from a server system and providing data to the server system. However, per MPEP 2106.05(d), the courts have recognized receiving and transmitting data over a network to be a conventional computer function. As such, this additional element does not amount to significantly more.
As previously noted, the claims recite an additional element of an interface with various controls, which presents information, the interface further receiving inputs. However, Bates (US 2002/0033850 A1) demonstrates (See at least [0205] and [0289]) that interfaces with controls, that present information, and that receive inputs were conventional long before the priority date of the claimed invention. As such, this additional element does not amount to significantly more.
There are no further additional elements. When considered as a combination, the additional elements only generally link the abstract idea to a technological environment of networked, user-facing computing devices. Per MPEP 2106.05, the courts have found generally linking the use of a judicial exception to a particular technological environment to be insufficient to qualify as significantly more. Therefore, when considered individually and as an ordered combination, the additional elements of the independent claims do not amount to significantly more than the judicial exception. Thus the independent claims are not patent eligible.
Dependent claims 4-10 and 14-25 further describe the abstract idea, but the claims continue to set forth an abstract idea, albeit a narrowed one. Dependent claims 4-7, 9, 14-17, 19, 21, 22, and 25 further describe the interface. However, this additional element, individually and in combination with the prior identified additional elements, only generally links the narrowed abstract idea to a technological environment of networked, user-facing computing devices. As such, the additional elements do not integrate the narrowed abstract idea into a practical application. Further, this additional element, individually and in combination with the prior identified additional elements, only generally links the abstract idea to a technological environment of networked, user-facing computing devices. As such, the additional elements do not amount to significantly more than the abstract idea. Dependent claims 8, 10, 18, and 20 further describe the transmission of data. However, this additional element, individually and in combination with the prior identified additional elements, only generally links the narrowed abstract idea to a technological environment of networked, user-facing computing devices. As such, the additional elements do not integrate the narrowed abstract idea into a practical application. Further, this additional element, individually and in combination with the prior identified additional elements, only generally links the abstract idea to a technological environment of networked, user-facing computing devices. As such, the additional elements do not amount to significantly more than the abstract idea. Dependent claims 23 and 24 do not recite further additional elements. The previously identified additional elements, individually and as a combination, only generally link the narrowed abstract idea to a technological environment of networked, user-facing computing devices. As such, the additional elements do not integrate the narrowed abstract idea into a practical application. Further, the previously identified additional elements, individually and as a combination, only generally link the narrowed abstract idea to a technological environment of networked, user-facing computing devices. As such, the additional elements do not amount to significantly more than the abstract idea. Because the dependent claims remain directed to an abstract idea without reciting significantly more, the dependent claims are not patent eligible.
Response to Arguments
Applicant’s Argument Regarding 101 Rejections of claims 1, 4-11, and 14-24:
The Office Action quotes the following step and then baldly assumes it “recited” organizing human activity: responsive to receiving the first encounter data of the first healthcare session including the trimmed recorded audio file and the transcript: presenting the first encounter data of the first healthcare session including a media presentation configured to play the trimmed recorded audio file, a transcript presentation configured to present the transcript generated from the trimmed recorded audio file and a working are configured to receive user input of clinical notes. Surely, nothing in this above-quoted text actually “recites” a step of organizing human activity. There is no human activity at all. Indeed, there can be no dispute that the actual language of claim 1 literally “recites” the remote scribe device responsively acting to the trimmed recorded audio file and other encounter data received from the server system. … Regardless of whether any such elements might somehow “involve” organizing human activity at some imaginative layer of abstraction (divorced from the claim language), none of the elements in the claim 1 literally “recite” organizing human activity.
The PTAB’s decision in Ex Parte Hunnan is both pertinent and controlling here. … Much like the present case, the claims included limitations related to computer generation of elements responsive to each audio file that was received. And much like the present case, the examiner in Hunnan lumped together a large set of claim elements and then baldly assumed, without any underlying explanation, that the audio file claim elements somehow recited “Certain Methods of Organizing Human Activity.”
As an initial matter, the MPEP defines this “subgrouping” in a specific manner based upon the “human” requirement of “organizing human activity” … Nothing in the actual language of claim 1 recites “social activities” between people. And nothing in the actual language of claim 1 recites “teaching” between people. Nor does the actual language of claim 1 recite “following rules or instructions” between people. Simply put, the Office Action quoted elements of claim 1 but then never performed the requisite analysis of which “personal” actions are actually recited in claim 1.
Amended claim 1 recites a “specific implementation of an improved user interface at a remote scribe device. … This is patent eligible subject matter under the law.”
These technical approvements are provided in amended claims 1 and 11 so that the claims recite “a specific implementation of a solution to a problem in the software arts.” This is not an abstract idea under the law.
Amended claim 1 integrates the alleged abstract idea into a practical application by including useful technological improvements as explained throughout the specification. See e.g., Specification, paras. [0037]-[0039] (“an automatic assignment of a task can be based on various factors, including … task complexity … to identify a preferred scribe for performing the task” and “complexity scoring technique can be used that can include determining individual complexity scores for various task factors, weighting the individual complexity scores, and determining an overall task complexity score based on the weighted individual scores” which can “be used to “assign[] the task to a particular medical scribe” based on a comparison of the complexity score to a predefined complexity “threshold value” associated with the scribe”), see also id. Para. [0063], FIG. 3D (illustrating “medical scribes that have been approved to work on clinical notes for encounters of health care providers that are associated with the project,” para [0027).
Here, when the elements in amended claim 1 are fully and fairly considered as required by MPEP 2106.04(d)(I) and 2106.07(a), there can be no dispute that the claimed subject matter, as a whole, amounts to “more than a drafting effort designed to monopolize the judicial exception.”
Nothing in the Office Action fully addresses Applicant’s teachings in the specification expressly identifying technical improvements over prior computing systems.
Much like the present case, the original Prong 2 analysis (integrate into a practical application) erroneously considered only whether the claim limitations “taken individually” involve “generic computer components.” … The shortcomings in the Office Action are remarkably similar to the shortcomings highlighted by the BASCOM court.
The Office Action tersely addressed nearly twenty dependent claims in a single paragraph on page 5. Not only is this a reversible error, but it is also an unfair deprivation of Applicant’s Due Process. Surely, other applicants are normally afforded fulsome examination of each dependent claim on a “claim-by-claim basis” according to the guidelines in MPEP 2106.07, which explains that: … each claim in an application should be considered separately based on the particular elements recited therein. … Here, Applicant has been deprived of such treatment. … The Office Action never separately addressed the actual language in each dependent claim to dispute this fact.
Examiner’s Response: Applicant's arguments filed 22 September 2025 have been fully considered but they are not persuasive.
Applicant appears to be arguing that because a device performs the operations of the claims they do not “recite” a method of organizing human activity. This is contrary to both USPTO guidance and the relevant caselaw. Applicant is referred to the examples of MPEP 2106.04(a)(2)(II) which include cases where a device performing operations is identified as reciting a “method of organizing human activity.” For example, the court determined that the claimed system of BASCOM Global Internet v. AT&T Mobility recited a method of organizing human activity.
The present claims are not meaningfully analogous to those in Hunnan. Note that the board stated “the claims here are directed to a specific implementation including the steps of normalizing an input file, generating a jitter set of audio files, generating a set of spectrogram frames, obtaining predicted character probabilities from a trained neural network and decoding a transcription of the input audio using the predicted character probability outputs.” The determination that the claims in Hunnan did not recite a method of organizing human activity does not shed light on the present claims.
Again, Applicant’s argument is contrary to both USPTO guidance and the relevant caselaw. The examples of MPEP 2106.04(a)(2)(II)(C) identify cases as “managing personal behavior or relationships or interactions between people” which do not expressly recite social activities between people, teaching between people, or following rules or instructions between people. Further, Examiner notes Applicant does not address the analysis actually provided in the rejection, which examiner maintains conforms with the requirements of MPEP 2106.07(a).
Examiner notes that interfaces are not per se eligible subject matter. Note the example of Trading Technologies v. IBG LLC identified in MPEP 2106.05(a)(I) where the courts found an interface “that assists traders in processing information more quickly” to not provide an improvement to computer-functionality and was not directed to eligible subject matter. This example appears especially relevant to the present claims.
Applicant appears to be arguing that because the claims provide a technical improvement they do not recite an abstract idea. Examiner notes that the presence of an improvement to technology may render a claim eligible at Prong Two or Step 2B, but the presence of a technical improvement does not exclude a claim from reciting an abstract idea.
Examiner notes that it is difficult to evaluate applicant’s argument when they do not articulate the supposed improvement provided by the claims. Here it appears that the improvement is considered part of the abstract idea. Note MPEP 2106.05(a): “It is important to note, the judicial exception alone cannot provide the improvement.” As such, what appears to be the suggested improvement does not qualify as a technical improvement for the purposes of the subject matter eligibility analysis.
Examiner respectfully disagrees.
The purported technical improvements described in the specification remain elusive to the examiner. For example, Examiner notes that applicant’s prior argument suggests that [0037]-[0039] provides a technological improvement. However, these disclosures provide a high level description of system functionality. Note MPEP 2106.05(a) which states “a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” Here, the aspirational description of functionality without technical details of implementation would not suggest to one of ordinary skill in the art that there was any technical improvement.
Examiner notes that the current and prior rejection expressly consider the combination of additional elements.
Examiner notes that MPEP 2106.07 states that each dependent claim “should be considered separately.” The MPEP does not require a separate written analysis of each dependent claim. Applicant’s dependent claims were, for both the current and prior office action, considered separately and determined to be directed to an abstract idea without significantly more. Further, the rejection does address each claim and thus it is unclear how applicant can assert that the office action does not address the eligibility of the dependent claims.
Applicant’s Argument Regarding 103 Rejection(s) of claim(s) 1, 4-11, and 14-25: Claim 1 has been amended to recite, in part, “generating, by a server system, a first complexity score for a first task…” None of the cited documents teach or suggest at least this subject matter along with the additional features recited in claim 1.
Examiner’s Response: Applicant's arguments and amendments filed 18 September 2025 have been fully considered and they overcome the prior art. The rejection is withdrawn.
Additional Considerations
The prior art made of record and not relied upon that is considered pertinent to applicant’s disclosure can be found in the PTO-892 of the prior office action dated 18 June 2025.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bion A Shelden whose telephone number is (571)270-0515. The examiner can normally be reached M-F, 12pm-10pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kambiz Abdi can be reached at (571) 272-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Bion A Shelden/Primary Examiner, Art Unit 3685 2025-09-18
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