The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Notice to Applicant
This communication is in response to the amendment filed 1/28/2026. Claims 1-7 have been amended. No claims have been canceled or added.
Response to Arguments
A. Applicant's arguments filed 1/28/2026 with respect to the rejection of claims 1-7 under 35 USC 101 have been fully considered but are not persuasive.
Applicant argues starting on page 6 of the response that the claims are not directed to a mental process on the basis that they recite “a specific computer-implemented technique for improving the operation of an automated coding system.” Examiner notes that the claims are now construed as reciting a method of organizing human activity based on the submitted amendments, and maintains that the claims recite an abstract idea on the basis below.
Applicant asserts that the claims recite parsing, by one or more computer processors and using a natural language processing module, to identify an evidence text string and a region of the document and that “this processor-executed NLP extraction cannot be performed as a purely mental step and necessarily roots the claims to the underlying computer technology.” However, as addressed below the use of natural language processing to extract information from a document only amounts to instructions to implement that function of parsing document information using computer software as a tool. The NLP extraction is only recited as “used” in the process of parsing the document, and only disclosed broadly as running on a server. No use of machine learning is presently recited in the claims and is not imported from the specification.
Applicant further asserts that “the claims recite the automatic capture of a granular context as a structured attribute set and storage entries,” and that “the claim requires automatically capturing a granular context as a set of attributes (including at least region and evidence text) in response to a code being assigned and/or removed, and storing that set in a database as a blacklist or whitelist entry, accordingly.” As noted below, the performance of particular functions “automatically” by the one or more processors is construed as constituting the use of computing elements to perform the respective functions, and the use of a database to store the data only amounts to instructions to implement the storage functions using a generic computer database.
This further applies to Applicant’s assertions regarding the “automatic” suppression or assignment of the code during “automated” processing of a second document.
Applicant further argues starting on page 7 that the claims are integrated into a practical application, asserting that the claims “are performed by particular computing components – processors executing NLP on a server with a documents database (3), coding rules database (4), code repository (2), and coding processes (8) over a network (6),” and that “the claims recite storing granular-context entries and rules in a database and then using/applying those stored artifacts in subsequent automated coding runs.” Examiner respectfully disagrees.
As noted above and explained in Step 2A Prong 2 below, the use of natural language processing software executed by a processor to parse document information databases to store information only amount to instructions to implement those functions using computing elements as tools. Examiner notes that the claims do not recite a network and do not recite “coding processes” as requiring hardware components. The storage of “granular context” and rules, and application of those rules in subsequent coding operations falls within the scope of the abstract idea itself.
Applicant lastly argues on page 8 that “as evidenced by the absence of novelty or obviousness-based rejections, the ordered combination of limitations supplies an inventive concept,” and that “this sequence is not a conventional or generic arrangement of components performing routine functions; rather, it is a particular processing pipeline with specific data structures (granular context sets with named fields; a resultant rule entry) that changes the behavior of the automated coding system.” Examiner respectfully disagrees.
MPEP 2106.05(I) states:
“Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101 "). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.")
“Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101.”
As addressed above and in Step 2A Prong 2 and Step 2B of the rejection, the additional elements, recited at a high level of generality, of a natural language processing model used to parse information from a document, processors used to perform data processing functions, databases used to store information, and characterization of computer-implemented functions as “automatic” only amount to instructions to implement respective functions using computing elements as tools. Whether the combination is novel or non-obvious under 35 USC 102/103 does not supersede the analysis under Alice/Mayo.
Examiner therefore maintains that the claims do not recite additional elements which integrate the abstract idea into a practical application or which amount to significantly more.
The rejection under 35 USC 101 is maintained.
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 1-7 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 1-7 are drawn to a method, which is within the four statutory categories.
Step 2A(1)
Claim 1 recites, in part, performing the steps of:
parsing a document to identify an evidence text string and a region of the document from which the evidence was obtained;
providing a code previously assigned to a document based on a plurality of sets of attributes, each attribute in the plurality of sets of attributes previously believed to affect the assignment of the code;
capturing, in response to the code being assigned or removed, a granular context as a set of attributes comprising at least a region of the document and an evidence text string and storing the set of attributes as a blacklist or whitelist entry
eliminating attributes not common to the sets of attributes in the plurality of sets of attributes; and
evaluating the assignment of the code based on the remaining attributes by creating a rule based on the remaining attributes and storing the rule, and using the rule, by the one or more coding processes, to automatically suppress or assign the respective code during subsequent automated processing of a second document.
These steps amount to a form of managing personal behavior, and therefore fall within the scope of an abstract idea in the form of a method of organizing human activity. Fundamentally the process is that of determining whether to assign a respective code to a second document by analyzing a document and identifying a set of attributes including a region of the document and an evidence text string in response to a previously assigned code being assigned or removed, storing the set of attributes as a blacklist or whitelist entry, creating a rule based on the attributes not common to the sets of attributes, and using the rule to determine whether to assign the code during subsequent processing of the second document. These steps could all be performed by an individual performing document coding and who uses determinations of whether particular codes were appropriately assigned to documents in particular contexts to inform whether to assign them to future documents.
Step 2A(2)
This judicial exception is not integrated into a practical application because the additional elements within the claims only amount to:
A. Instructions to Implement the Judicial Exception. MPEP 2106.05(f)
Claim 1 recites additional elements of a) by one or more computer processors used to perform the data processing functions including parsing the document, providing the previously assigned code, capturing the granular context, and evaluating the assignment of the code, b) a natural language processing module used to parse the document, c) a database used to store the rule and the set of attributes as the blacklist or whitelist entry, and d) “automatically” performing the capturing, suppression or assignment, and processing of the second document.
Page 7 lines 23-28 describe a client computing device, such as “a terminal, a portable computer, a handheld device, etc,” and a computer server as implementing the disclosed functions. No other disclosure of “one or more computer processors” is provided beyond these computing elements. The one or more computer processors are construed as encompassing generic computing elements. Additionally, the recitation of the capturing, suppression or assignment of a code, and processing of the second document as performed “automatically” is construed as part of performing these functions using computing elements, which encompass generic computing elements as set out above.
Page 9 lines 14-16 describe a natural language processing module as residing on the server. The natural language processing module is accordingly construed as encompassing software running on generic computing elements.
Page 7 lines 5-6, 17-21, and 32-33 describe a database in terms of its function of storing rules and blacklist/whitelist entries. However, no further disclosure of the database structure is provided. The database is therefore construed as encompassing a generic computer database.
The above elements only amount to mere instructions to implement functions of the abstract idea using generic computing elements. The one or more processors are recited at a high level of generality insofar as each corresponding function is recited as performed “by” the one or more processors and are only disclosed in the form of generic devices such as handheld devices and servers, the database is recited at a high level of generality as used to store the respective types of information, and the natural language processing module is similarly only recited at a high level of generality insofar as the parsing is performed “using a natural language processing module.”
These elements are therefore not sufficient to integrate the abstract idea into a practical application.
The above claims, as a whole, are therefore directed to an abstract idea.
Step 2B
The present claims do not include additional elements that are sufficient to amount to more than the abstract idea because the additional elements or combination of elements amount to no more than a recitation of:
A. Instructions to Implement the Judicial Exception. MPEP 2106.05(f)
As explained above, claim 1 only recites the one or more processors, and by extension “automatic” performance of functions, natural language processing module, and database as tools for performing the steps of the abstract idea, and mere instructions to perform the abstract idea using a computer is not sufficient to amount to significantly more than the abstract idea. MPEP 2106.05(f)
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually.
Depending Claims
Claim 2 recites wherein the step of evaluating the assignment of the code is further based on a new attribute comprising site practice or external information not initially captured in the document. These limitations fall within the scope of the abstract idea as set out above.
Claim 3 recites creating a rule based on the remaining attributes, the rule to be used in a future evaluation of a second assignment of the code to a second document by the one or more coding processes. These limitations fall within the scope of the abstract idea as set out above.
Claim 4 recites saving the rule and applying the rule during subsequent coding to determine whether the code should be assigned to the second document.
Claim 4 further recites additional elements of a) a coding rules database recited as used to save the rule, and b) “automatically” performing the application of the rule and the subsequent coding.
With respect to the recited database, page 7 lines 5-6, 18-20, and 32-33 describe a coding rules database in terms of its function of storing rules. However, no further disclosure of the database structure is provided. The coding rules database is therefore construed as encompassing a generic computer database.
Page 7 lines 23-28 describe a client computing device, such as “a terminal, a portable computer, a handheld device, etc,” and a computer server as implementing the disclosed functions. No other disclosure of “one or more computer processors” is provided beyond these computing elements. The one or more computer processors are construed as encompassing generic computing elements. Additionally, the recitation of the capturing, suppression or assignment of a code, and processing of the second document as performed “automatically” is construed as part of performing these functions using computing elements, which encompass generic computing elements as set out above.
The recited database and “automatic” application of the rule and subsequent coding only amount to mere instructions to implement functions using generic computing elements. The database is only recited at a high level of generality as having the rule saved to it, and is only broadly disclosed, and applying of the rule and the subsequent coding automatically is only recited at a high level of generality. These elements are therefore not sufficient to integrate the abstract idea into a practical application or to amount to significantly more than the abstract idea.
Claim 5 recites wherein each set of attributes in the plurality of sets of attributes comprises a granular context for the document at a time corresponding to an instance when the code was previously assigned to the document and includes information pertaining to one or more of: a region of the document, a section of the document, path, code role, evidence text, specialty, document type, patient age, and patient gender. These limitations fall within the scope of the abstract idea as set out above.
Claim 6 recites receiving information from a user on an appropriateness of a previous assignment of the code, and creating, based on the received information, a blacklist entry or a whitelist entry that includes the granular context.
Claim 6 further recites additional element of a) a graphical user interface used to receive the information.
With respect to the recited graphical user interface, page 8 lines 11-12, page 9 lines 1-2, and page 10 lines 1-4 describe a user interface such as on a client computing device in terms of its function of receiving input from a user. However, no further disclosure of the graphical user interface itself is provided. The graphical user interface is therefore construed as encompassing a generic graphical interface.
The recited graphical user interface only amounts to mere instructions to implement functions using generic computing elements. The graphical user interface is only recited at a high level of generality as used to receive the information from the user, and is only broadly disclosed.
These elements are therefore not sufficient to integrate the abstract idea into a practical application or to amount to significantly more than the abstract idea.
Claim 7 recites wherein each set of attributes in the plurality of sets of attributes is created when the code is added to a blacklist or a whitelist entry and the entry is stored to be used in future evaluations of the code. These limitations fall within the scope of the abstract idea as set out above.
Claim 7 recites the additional element of the database as used to store the blacklist or whitelist entry.
Page 7 lines 5-6 and 17-21 describe a database in terms of its function of storing rules and blacklist/whitelist entries. However, no further disclosure of the database structure is provided. The database is therefore construed as encompassing a generic computer database.
The recited database only amounts to mere instructions to implement functions of the abstract idea using generic computing elements. The database is only recited at a high level of generality as used to store the blacklist or whitelist entry, and is only broadly disclosed. This element is therefore not sufficient to integrate the abstract idea into a practical application or to amount to significantly more than the abstract idea.
Claims 1-7 are therefore rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 112(b)
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 1-7 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation "the document" in lines 10-11. There is insufficient antecedent basis for this limitation in the claim based on the previously recitation of “a document” in each of lines 4 and 6. It is not clear whether these previous recitations are intended to refer to separate documents or to the same document, and if separate documents, which of these is being referenced in lines 10-11.
Claim 1 recites the limitation "the document" in lines 17. There is insufficient antecedent basis for this limitation in the claim based on the previously recitation of “a document” in each of lines 4 and 6. It is not clear whether these previous recitations are intended to refer to separate documents or to the same document, and if separate documents, which of these is being referenced in lines 10-11.
Claims 2-7 inherit the deficiencies of claim 1 through dependency and are likewise rejected.
Claims Not Rejected under 35 USC 102/103
Claims 1-7 are not rejected under 35 USC 102/103 under the current closest prior art of record listed herein.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kavuluru et al, An empirical evaluation of supervised learning approaches in assigning diagnosis codes to electronic medical records;
Perotte et al, Diagnosis code assignment: models and evaluation metrics;
Scheurwegs et al, Assigning clinical codes with data-driven concept representation on Dutch clinical free text;
Scheurwegs et al, Selecting relevant features from the electronic health record for clinical code prediction;
Reiser et al (US Patent Application Publication 2019/0385202);
Cox et al (US Patent Application Publication 2017/0235887);
Knoll et al (US Patent Application Publication 2016/0267232);
Kapit et al (US Patent Application Publication 2008/0004505).
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 WILLIAM G LULTSCHIK whose telephone number is (571)272-3780. The examiner can normally be reached 9am - 5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fonya Long can be reached at (571) 270-5096. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Gregory Lultschik/Examiner, Art Unit 3682
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