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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 October 27, 2025 has been entered. By this amendment, claims 1, 19, and 20 are amended, claim 15 is cancelled, claim 21 is added, and claims 1-4, 6-10, 12-14, and 17-21 are now pending in the application.
Claim Rejections - 35 USC § 112
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.
Claim 21 is 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 21 recites the limitation "relatively increases" in line 2. The metes and bounds of this recitation are unclear as it is unknown to what the increase is relative. The claim goes on to recite “in a case where the inconsistency is medically valid as compared with a case where the inconsistency is medically invalid”. It is unclear if the claim is requiring the weighting coefficient to only increase when the inconsistency is medically valid, or is requiring the weighting coefficient to increase more or less based on the inconsistency being medically valid. Clarification is requested.
Claim 21 recites the limitation "relatively decreases" in lines 6-7. The metes and bounds of this recitation are unclear as it is unknown to what the decrease is relative. The claim goes on to recite “in a case where the inconsistency is medically valid as compared with a case where the inconsistency is medically invalid when the disease is a mental disease”. It is unclear if the claim is requiring the weighting coefficient to only decrease when the inconsistency is medically valid, or is requiring the weighting coefficient to decrease more or less based on the inconsistency being medically valid. Clarification is requested.
Claim 21 recites that the processing circuitry “relatively increases the weighting coefficient” in line 2 and recites that the processing circuitry “relatively decreases the weighting coefficient” in lines 6-7. It is unclear how these two conditions are simultaneously present or what exactly happens with the weight coefficient, whether it is increased or decreased. If applicant is attempting to require that when the disease is a mental disease, the weighting coefficients are decreased, but when the disease is any other disease except for a mental disease, the weighting coefficients are increased, it is suggested that the claim be amended to require determining a type of disease from which the target patient may suffer, and then making the relative increase or decrease dependent on that type of disease.
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, 6-10, 12-14, and 17-21 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. More specifically, these claims are directed to the mental process (i.e., abstract idea) of collecting and processing health data and presenting results of that processing.
Concerning Revised Step 2A, Prong One (whether the claim recites a judicial exception), please see the following analogous types of data manipulations that courts have found to be abstract ideas (all taken from MPEP § 2106.04):
using an algorithm for determining the optimal number of visits by a business representative to a client, In re Maucorps, 609 F.2d 481, 485, 203 USPQ 812, 816 (CCPA 1979);
collecting information, analyzing it, and displaying certain results of the collection and analysis, Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1351-52, 119 USPQ2d 1739, 1740 (Fed. Cir. 2016);
organizing information through mathematical correlations, Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1349, 111 USPQ2d 1717, 1720 (Fed. Cir. 2014);
Diagnosing an abnormal condition by performing clinical tests and analyzing the results, In re Grams, 888 F.2d 835, 840, 12 USPQ2d 1824, 1828 (Fed. Cir. 1989); see CyberSource, 654 F.3d at 1372 n.2, 99 USPQ2d at 1695 n.2 (describing the abstract idea in Grams).
The steps of data manipulation carried out in Applicant’s claims are akin to a mental process because they are the type of calculations that could theoretically be carried out mentally (e.g., by a doctor), but are merely implemented using generic processing technology (presumably for the benefits of increased processing speed, convenience, accuracy, etc.). The 2019 revised § 101 guidance makes clear that the “mental process” category of abstract ideas does not only apply to steps actually carried out mentally; it also applies to the types of processes that could be carried out mentally, but are instead carried out using generic processing technology (see Footnotes 14 and 15 of the 2019 Revised Patent Subject Matter Eligibility Guidance).
Concerning Revised Step 2A, Prong Two (if the claim recites a judicial exception, evaluate whether the judicial exception is integrated into a practical application) the claims here do not integrate the abstract idea into a practical application because the claims are directed to a particular algorithm which performs comparison on collected data, the algorithm being implemented on generic, already well-known technology. The following are relevant examples of similar limitations which courts have found not to constitute improvements to computers or improvements to other technology or technical field:
Merely using a computer to perform an abstract idea, e.g., applying the functionality of a computer and bar code system in the context of processing returned mail, Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, --, -- USPQ2d --, -- slip op. at 33 (Fed. Cir. August 28, 2017);
Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) or speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application, LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential); and
Gathering and analyzing information using conventional techniques and displaying the result, TLI Communications, 823 F.3d at 612-13, 118 USPQ2d at 1747-48.
It is further noted that merely collecting the necessary data using known, generic sensors (or other data gathering components) only amounts to insignificant extra-solution activity; see MPEP § 2106.05(g) for examples, some of which include:
Performing clinical tests on individuals to obtain input for an equation, In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989);
Testing a system for a response, the response being used to determine system malfunction, In re Meyers, 688 F.2d 789, 794; 215 USPQ 193, 196-97 (CCPA 1982);
Presenting offers to potential customers and gathering statistics generated based on the testing about how potential customers responded to the offers; the statistics are then used to calculate an optimized price, OIP Technologies, 788 F.3d at 1363, 115 USPQ2d at 1092-93;
Obtaining information about transactions using the Internet to verify credit card transactions, CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011);
Consulting and updating an activity log, Ultramercial, 772 F.3d at 715, 112 USPQ2d at 1754; and
Determining the level of a biomarker in blood, Mayo, 566 U.S. at 79, 101 USPQ2d at 1968. See also PerkinElmer, Inc. v. Intema Ltd., 496 Fed. App'x 65, 73, 105 USPQ2d 1960, 1966 (Fed. Cir. 2012) (assessing or measuring data derived from an ultrasound scan, to be used in a diagnosis).
It must be considered that the fundamental data collection and processing steps performed by Applicant’s claimed invention could theoretically be carried out manually by a person. Applicant’s invention is essentially a computer-implemented automation of the standard medical diagnostic or analytical process. There is no “improvement” to the technology being used because, in fact, Applicant’s claimed invention does not affect/change the functionality of the technology being used. Rather, Applicant’s claimed invention uses the claimed technology for its standard, well-known purpose, e.g., known sensors are used to collect data which they are known to be capable of collecting, known generic processing circuitry is used to perform data calculations/comparisons, etc. Applicant’s invention does not result in improved performance of the servers, sensors, the processing circuitry, etc.
Accordingly, the only limitations beyond the abstract idea itself amount to implementing the abstract idea using generic computing technology (which is not sufficient to amount to a practical integration) and collecting and outputting the data required to carry out the abstract idea, which amounts to insignificant extra-solution activity and is also insufficient to amount to a practical application.
Concerning Step 2B, in addition to the relevant discussion in Step 2A, prong two above, please note, as explained in MPEP § 2106.05(I)(A), limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include:
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 134 S. Ct. at 2359-60, 110 USPQ2d at 1984 (see MPEP § 2106.05(d));
Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g));
Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets, as discussed in Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1010 (2010) or a claim limiting the use of a mathematical formula to the petrochemical and oil-refining fields, as discussed in Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (MPEP § 2106.05(h))
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional elements are well-known, routinely-used generic devices. Those devices, as recited in the claims, are:
An information processing system
Processing circuitry
Computer-readable storage medium
User interface
Display
A trained model
A neural network
All of the items listed above are extremely well-known, routine, conventional devices commonly used in the medical diagnostic arts. The examiner further notes that it need not be shown that the claimed elements were well-known specifically for carrying out all of the applicant’s claimed processing steps. Even if a mental process is new, it still merits rejection under 35 USC 101 if it is merely carried out using otherwise generic and well-known technology, e.g., a generic processor operating with a generic server. That it is, it need not be shown that, “a server that carries out these particular features is well known,” rather, it must merely be shown that the “additional” elements beyond the associated mental process are well known. In this case, the elements such as “processing circuitry” and “a storage medium” are clearly well known – see previously cited instances of prior art which teaches servers capable of analyzing medical interview data, using processors with access to memory.
Regarding dependent claims 2-4, 6-10, 12-14, 17, 18, and 21, the limitations of the dependent claims further define the limitations already indicated as being directed to the abstract idea. For instance, new claim 21 further limits the functions of the processing circuitry to relatively increase or decrease the weighting coefficients, cause a display to display a first answer and a second answer in chronological order, and highlight the first and the second answer when the first and second answer are inconsistent. Each of these functions of the processing circuitry are directed to an abstract idea that can be carried out in the human mind or using pen and paper. The displaying and highlighting can be done by a human using pen and paper.
Response to Arguments
Applicant's arguments filed October 27, 2025 have been fully considered and are non-persuasive in part and moot in part. Those arguments which are considered moot will not be answered herein as the rejections to which they apply are no longer pending. Regarding the previous rejection of the claims under 35 USC 101 as being directed to a judicial exception without significantly more, the Applicant argues that the amendments to the claims render the rejection moot because the claimed features cannot practically be performed in the human mind. The Applicant argues that the claims are directed to a medical information processing system that configured to perform specific functions, which include inputting information into a trained model and estimating on the basis of information output from the trained model. Applicant argues that using a neural network to estimate the disease of the target person from two different answers of the target person cannot be a mental process. Although other examples exist within the claim, the Examiner will focus only on those specific arguments the Applicant has made. The Applicant points to the recitation “inputting at least one of the first answer and the second answer for which the weighting coefficient has been decided on with respect to a trained model”. It is respectfully submitted that this is merely extra-solution activity of using the trained model (i.e. a computer) to perform the mental process, as there is nothing more than the inputting of information into a computer, which has been shown to be mere insignificant extra solution activity. MPEP 2106.05(f) provides the following considerations for determining whether a claim simply recites a judicial exception with the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer: (1) whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished; (2) whether the claim invokes computers or other machinery merely as tool to perform an existing process; and (3) the particularity of generality of the application of the judicial exception. The judicial exception of “input[ting] at least one of the first answer and the second answer for which the weight coefficient has been decided on with respect to a trained model” is performed using the trained model. The trained model is used to generally apply the abstract idea without placing any limits on how the trained model functions.
Further, the Applicant points to the recitation “estimating the disease of the target person on the basis of information output according to the trained model”. It is respectfully submitted that this is merely extra-solution activity of using an output from the trained model (i.e. a computer) to perform the mental process, as there is nothing more than receiving an output from a computer, which has been shown to be mere insignificant extra solution activity. MPEP 2106.05(f) provides the following considerations for determining whether a claim simply recites a judicial exception with the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer: (1) whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished; (2) whether the claim invokes computers or other machinery merely as tool to perform an existing process; and (3) the particularity of generality of the application of the judicial exception. The judicial exception of “estimate[ing] a disease of the target person on the basis of information output according to the trained model” is performed using the trained model. The trained model is used to generally apply the abstract idea without placing any limits on how the trained model functions.
Applicant further argues that “[u]sing a neural network to estimate the disease of the target person from two different answers of the target person cannot be a mental process, nor can it fall under any of the other categories of an ‘abstract idea’.” The Examiner respectfully disagrees, as a physician is able to perform the mental process of hearing or seeing a target person’s two different answers, mentally evaluating those answers, and then estimating the disease of the target person based on those answers. The use of a neural network is merely implementing the abstract idea using a generic computer.
Applicant further argues that the features of the invention cannot practically be performed by a human, but fails to elucidate this argument or explain what aspect of the invention is not capable of being performed in the human mind. The Examiner has explained above how a physician is able to perform the mental process of hearing or seeing a target person’s two different answers, mentally evaluating those answers, and then estimating the disease of the target person based on those answers, to explain how the claims are directed to a mental process. Applicant fails to explain how a physician would not be capable of such, merely only concluding that the features cannot practically be performed by a human without further explanation.
Applicant further argues that “even if the claims could be considered as being directed to an abstract idea (which they cannot), the claims are integrated into a practical application and also recite significantly more as they provide a technological improvement and are also not well-known, routine, or conventional”. Applicant argues that the amendment to claim 1 “clarifies that the feature ‘deciding on degrees of reliability of the first answer and the second answer as weighting coefficients on the basis of a result of determining whether or not the inconsistency is medically valid’ can resolve the technical problem that ‘changes (instability) in patients’ answers to medical interview questions may have an unfavorable influence on medical treatment using AI.’” Further Applicant argues that “when using a neural network to estimate diseases that a patient is likely to have or develop in the future based on their answers to a medical interview question, even if there is fluctuation (instability) in the patient’s answers, the weight coefficients of the input data (answer data) that is input into the neural network are adjusted to account for this fluctuation. This results in a technical improvement that reduces the impact of answers fluctuation.” However, Applicant’s arguments amount to an improvement to the abstract idea. An improvement to an abstract idea is still an abstract idea. There is not an improvement in the technology, but rather an improvement in the abstract idea that the technology is used to perform. As discussed above, the claims are not integrated into a practical application and do not recite significant improvement nor offer a technological improvement because the claims merely recite performing the abstract idea using well known, conventional, generic technology. For at least the reasons given above, the rejection stands.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TAMMIE K MARLEN whose telephone number is (571)272-1986. The examiner can normally be reached Monday through Friday from 8 am until 4 pm.
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/TAMMIE K MARLEN/Primary Examiner, Art Unit 3796