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
This Final Office action is responsive to the communication filed under 37 C.F.R. § 1.111 on September 4, 2025 (hereafter “Response”). The amendments to the claims are acknowledged and have been entered.
Claims 1, 4, 6–10, and 13–15 are now amended.
Claims 2, 3, 5, 11, 12 are now canceled.
New claims 16 and 17 are now added.
Claims 1, 4, 6–10, and 13–17 are pending in the application.
Response to Arguments
The Examiner agrees that the present amendment resolves all issues previously raised with respect to priority, claim objections, anticipation, and obviousness. Accordingly, all grounds of objection, and all rejections based on prior art, are hereby withdrawn.
Claims 1, 4, 6, 7–10, and 13–17 stand rejected under 35 U.S.C. § 101 because the claimed invention remains directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The rejection is only withdrawn for any previously rejected claim that is now cancelled, as such claims are no longer pending.
The Applicant’s remarks have been considered in light of the amendment, but are not persuasive.
The Applicant argues that “[a] person cannot perform, as a mental process, interactions with a display and input to a processor such as: control a display to display a list of patients having a specified illness together with a list of device types associated with each patient” and “specify, responsive to receiving a selection from the list of device types, a type of a device that is capable of acquiring previous time series data of the patient with the symptom.” (Response 16).
The Examiner agrees, but only to the extent that a human being cannot manually cause the pixels of the display to output the raw information acquired from the database. “Controlling a display” and “inputting . . . a type of device” are so broadly recited as to cover any and all possible forms of collecting input and displaying an output. As such, they are considered extra-solution activity, and fail to transform the judicial exception into an eligible claim.
The Applicant similarly argues that “[a] person cannot perform, as a mental process, interactions with a database such as: acquire, from a database, time series data collected by one or more other devices of a same type as the type of the device that was specified, the one or more other devices having been used by one or more other persons.” (Response 17). Here, the Examiner respectfully disagrees. The term “database” is broad enough to encompass any kind of collection of data. While an electronic database may be contemplated in the specification, no machine-specific operations are recited or otherwise required by the claim. Data-gathering steps, even if performed over a computer network, are deemed to be part of abstract ideas. MPEP § 2106.04(a)(2)(III.)(B.) (citing Electric Power Group, LLC v. Alstom, S.A., 830 F.3d 1350, 1351, 119 USPQ2d 1739, 1739 (Fed. Cir. 2016)).
The Applicant also argues that “[a] person cannot perform, as a mental process, creation of training data and generation of an inference model” because “[i]n the context of a broadest reasonable interpretation of claim 1, the creation of training data and an inference model is not a process that can practicably be performed in the human mind (even with pen and paper).” (Response 17).
Respectfully, the Examiner does not find this argument persuasive for two reasons. For one, the Applicant did not explain exactly what language in claim 1 makes the broadest reasonable interpretation of the model narrow enough to exclude handmade models. Indeed, there does not appear to be any such limitation recited in the claim. Likewise, the claim language does not say anything about the size or complexity of the time series data—the limitation of “one or more other devices” means that a person could infringe this claim simply by working up a model involving only a couple of patients with only one device. For example, the claim includes a model generated from a simple linear regression of two patients’ pulse data at a given time. A human being with an average level of skill with arithmetic and statistics could create such a model by hand.
Furthermore, even assuming for the sake of argument that the model generating step was very narrowly construed to require an inference model too large or complex for a human mind, generating such a model would still fall under the “mathematical relationships” and/or “mathematical calculations” subgrouping of abstract ideas. See MPEP § 2106.04(a)(2). Mathematical relationships and calculations are patent-ineligible abstract ideas, regardless of whether it can be performed in the mind. See MPEP § 2106.04(a)(2) (quoting Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939) (‘‘a scientific truth, or the mathematical expression of it, is not patentable invention’’)).
Thus, even for a complex model, claim 1 would be directed to the combination of two abstract ideas: the first five steps are the mental process, while the last step is the mathematical calculation. A claim to a combination of two or more abstract ideas is still directed to an abstract idea. See Elec. Power Grp. v. Alstom, 830 F.3d 1350, 1354 (holding that claims “focused on the combination of [multiple] abstract-idea processes,” absent “any particular assertedly inventive technology for performing those functions . . . are therefore directed to an abstract idea”).
Regarding steps 2A prong two and 2B, the Applicant contends that the claims recite “the improvement in creation of training data and generation of an inference model using the training data,” because the Background section of specification “describes a need for using a computer-based system to handle a new event found during daily examination and consultation by a physician,” and that “claim 1 provides a technique implemented by one or more processors to more efficiently collect information indicating a process leading to this new event, creating training data based on the collected information to generate an inference model, and generating an inference model using the training data.” The Examiner respectfully disagrees.
Efficiency achieved by merely automating a human task on a computer, using conventional tools, is not “significantly more,” nor is it a specific technical solution to a technical problem required by the Alice framework. This argument fails to demonstrate that the computer system itself has been improved. Instead, the argument focuses on improving the process of data collection and training model creation, which remains an abstract concept implemented using routine computing steps.
Accordingly, the claims stand rejected under 35 U.S.C. § 101.
Since all of the claims stand rejected, the Applicant’s request for a notice of allowance is respectfully denied.
Information Disclosure Statement
The information disclosure statement filed on August 21, 2025 complies with the provisions of 37 C.F.R. § 1.97, 1.98, and MPEP § 609, and therefore has been placed in the application file. The information referred to therein has been considered as to the merits.
Claim Rejections – 35 U.S.C. § 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, 7–10, and 13–17 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.
The Office applies a four-part test when examining claims for subject-matter eligibility under § 101. First, the claimed invention must be directed to one of the four statutory categories explicitly listed in § 101 (Step 1). MPEP § 2106(I.). Then, the claimed invention is analyzed to determine whether it is directed to one of § 101’s judicial exceptions (Step 2A Prong One) without reciting both a practical application of the judicial exception (Step 2A Prong Two) and significantly more than the judicial exception (Step 2B). MPEP § 2106(I.).
With this framework in mind, the claims will now be analyzed for subject matter eligibility under § 101.
Claim 1
Step 1. Claim 1 is directed to a “training data collection request device,” which is a type of machine. Thus, the claim falls within a statutory category of invention. (Step 1: YES).
Step 2A, Prong One. The claim recites an abstract idea, and abstract ideas are a judicial exception to 35 U.S.C. § 101. Specifically, the claim limitations describe the mental processes of: (1) receiving information relating to patient symptoms (data collection); (2) providing a list of patients who all have the same illness, together with a list of different devices associated with (i.e., owned by) those patients (data gathering and/or data outputting); (3) specifying a device based on its capability to acquire data for that patient (another data collection step, or, at most, a judgment about known device capabilities); (4) acquiring data and consultation information from a similar person using a similar device (another data collection step); (5) using this acquired data and consultation information to create the training data (organizing and structuring information for a specific purpose, which is a mental task); and (6) generating an inference model using the training data, that is capable of receiving information relating to the symptom .
Steps (1)–(5) of collecting, evaluating, correlating, and organizing information to create training data are cognitive tasks that can be practically performed in the human mind. For instance, a medical researcher could mentally perform these steps: receive a patient's symptoms, think about what devices are used for such symptoms, decide to look for data from other patients who used similar devices, and then gather and organize that data to form a dataset for further study (i.e., training data).
Step (6), depending on its broadest reasonable interpretation, is also a cognitive task that can be practically performed in the human mind, because the claim does not say anything about the size or complexity of the inference model generated in step (6). Likewise, the claim language does not say anything about the size or complexity of the time series data—the limitation of “one or more other devices” means that a person could infringe this claim simply by working up a model involving only a couple of patients with only one device. For example, the claim includes a model generated from a simple linear regression of two patients’ pulse data at a given time. A human being with an average level of skill with arithmetic and statistics could create such a model by hand.
Furthermore, even assuming for the sake of argument that step (6) was very narrowly construed to require an inference model too large or complex for a human mind, generating such a model would still fall under the “mathematical relationships” and/or “mathematical calculations” subgrouping of abstract ideas. See MPEP § 2106.04(a)(2). Mathematical relationships and calculations are patent-ineligible abstract ideas, regardless of whether it can be performed in the mind. See MPEP § 2106.04(a)(2) (quoting Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94 (1939) (‘‘a scientific truth, or the mathematical expression of it, is not patentable invention’’)).
Thus, even for a complex model, claim 1 would be directed to the combination of two abstract ideas: (1)–(5) is the mental process, while (6) is the mathematical calculation. A claim to a combination of two or more abstract ideas is still directed to an abstract idea. See Elec. Power Grp. v. Alstom, 830 F.3d 1350, 1354 (holding that claims “focused on the combination of [multiple] abstract-idea processes,” absent “any particular assertedly inventive technology for performing those functions . . . are therefore directed to an abstract idea”).
Therefore, the claim recites an abstract idea (mental process). (Step 2A, Prong One: YES).
Step 2A, Prong Two. The claim as a whole does not integrate the recited abstract idea into a practical application. The additional elements recited in the claim beyond the abstract idea are a “one or more processors comprising hardware” for performing the judicial exception.
These additional elements do not integrate the abstract idea into a practical application, because they describe the bare-minimum general purpose computer components necessary for carrying out the judicial exception. This is equivalent to merely stating the abstract idea and adding the words “apply it” with a generic computer.
Furthermore, the claim does not describe an improvement to the functioning of the computer itself or to any other technology or technical field. It is focused on the abstract process of data collection and organization for creating training data, not on a specific technical improvement in how data is acquired, processed, or used beyond the abstract concept.
Therefore, the claim is directed to the abstract idea (Step 2A, Prong Two: NO, Step 2A: YES).
Step 2B. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the “one or more processors comprising hardware” is a generic computer component that “applies” the bare concept of a computer the abstract mental processes.
When considered individually and in combination, these generic computer components performing their basic functions to implement the abstract idea do not provide an inventive concept. The claim as a whole does not amount to significantly more than the abstract idea itself (Step 2B: NO).
In view of the foregoing, the claim is not patent eligible.
Claim 4
Claim 4 depends from claim 1 and adds the limitation that the inference model is capable of outputting consultation information corresponding to the patient’s symptom.
Step 1. The claim, by depending from claim 1, is directed to a “training data collection request device,” which is a machine. (Step 1: YES).
Step 2A, Prong One. Claim 1, from which claim 4 depends, recites an abstract idea (mental processes of data collection and organization for creating training data). The additional limitation in claim 4 specifies the structure or intended functional relationship within the created training data (i.e., collected device data labeled as input, consultation information labeled as output). This further defines the mental step of organizing information by specifying the data relationships, and/or the mathematical relationship itself. This does not remove the abstract nature of creating training data. Thus, claim 4 recites an abstract idea. (Step 2A, Prong One: YES).
Step 2A, Prong Two. The limitation describing the input-output structure of the training data specifies the nature of the information being organized. While it makes the purpose of the training data clearer, it does not integrate the core abstract idea of collecting and creating training data into a practical application in a technical sense. The claim still describes the processor performing data organization, which is a mental process, and does not add specific technical steps or components that improve computer function or another technology beyond the abstract data manipulation itself. The device remains a generic processor and communication circuit performing these information-based tasks. Therefore, claim 4 is directed to the abstract idea (Step 2A, Prong Two: NO). (Step 2A: YES).
Step 2B. The added limitation concerning the input-output structure of the training data is a further refinement of the abstract mental process of creating and organizing information. It specifies how the information should be structured, which is an intellectual step. When performed by a generic processor (from claim 1), this does not add an inventive concept beyond the abstract idea itself. It is an “apply it” scenario where the abstract organizational rules are applied by a computer. The claim as a whole does not amount to significantly more than the abstract idea (Step 2B: NO).
The claim is not patent eligible.
Claim 6
Claim 6 depends from claim 1 and adds the limitation that the processor inputs time series data of specified specimen information and/or bio-information to a input of the inference model that has been generated using training data, and the inference model outputs diagnosis assisting information.
Step 1. The claim, by depending from claim 1, is directed to a “training data collection request device,” which is a machine. (Step 1: YES).
Step 2A, Prong One. Claim 1, from which claim 6 depends, has been found to recite an abstract idea (mental processes of data collection, organization for creating training data, and requesting learning). The additional limitations in claim 6 describe the underlining meaning of the data input into the model. The inference model itself, being generated from the training data (which is the product of the initial abstract idea), and the process of using it for diagnosis (which often involves mathematical correlations or further mental-type evaluations based on data patterns) are further data processing steps that can also be characterized as part of an abstract idea (e.g., mathematical concepts or mental processes). These steps do not remove the abstract nature of the base claims. Thus, claim 6 recites an abstract idea. (Step 2A, Prong One: YES).
Step 2A, Prong Two. The additional limitations regarding the input to and output from an inference model do not integrate the abstract idea into a practical application. The “inference model” is not specified as a particular machine or structure beyond its functional definition (generated using the training data, inputs data, outputs “diagnosis assisting information”). The steps of inputting data to such a model and the model outputting information are further instances of data manipulation performed by the generic processor. This does not, by itself, improve computer functioning or another specific technology beyond the abstract processing of health-related information. “Diagnosis assisting information” is still information.
Therefore, claim 6 is directed to the abstract idea (Step 2A, Prong Two: NO). (Step 2A: YES).
Step 2B. The added limitations of inputting data to an inference model and the model outputting “diagnosis assisting information” do not add significantly more to the abstract idea, for the same reasons given above for Prong Two of Step 2A. The claim as a whole does not amount to significantly more than the abstract idea itself (Step 2B: NO).
The claim is not patent eligible.
Claim 7
Claim 7 depends from claim 1 and adds the additional steps of searching a database for the information mentioned in claim 1, and displaying that information as a whole.
Step 1. The claim, by depending from claim 1, is directed to a “training data collection request device,” which is a machine. (Step 1: YES).
Step 2A, Prong One. Claim 1, from which claim 7 depends, has been found to recite an abstract idea (mental processes of data collection, correlation, and organization for creating training data). The additional limitation in claim 7—making a display indicate collected information—is a data presentation step. Organizing and presenting information can be a mental process. This limitation does not remove the abstract nature of the underlying data collection and training data creation process. Thus, claim 7 also recites an abstract idea. (Step 2A, Prong One: YES).
Step 2A, Prong Two. The additional element of making a display indicate information does not integrate the abstract idea into a practical application.
Displaying information, even specific types of information like a list of devices or chronological data, is a generic function of a computer system and is also considered insignificant extra-solution activity when it is merely presenting the results of an abstract process. This display function does not improve the functioning of the computer itself or another technology. It is an output of data derived from the abstract process.
Therefore, claim 7 is directed to the abstract idea (Step 2A, Prong Two: NO). (Step 2A: YES).
Step 2B. The added limitation of making a display indicate information does not add significantly more to the abstract idea.
Using a generic processor (from claim 1) to make a generic display indicate information is a generic computer function used to output the results of the abstract data collection and organization process (“apply it” rationale). The specific content being displayed (devices capable of acquiring objects, chronological change) is a direct output or representation of the information processed by the abstract idea. Displaying this information is, at best, an insignificant post-solution activity.
The claim as a whole does not amount to significantly more than the abstract idea itself (Step 2B: NO).
The claim is not patent eligible.
Claim 8
Claim 8 depends from claim 1 and adds the limitation that the processor causes the display to also “display the time series data collected by the one or more other devices of the same type as the type of the device that was specified.”
Step 1. The claim, by depending from claim 1, is directed to a “training data collection request device,” which is a machine. (Step 1: YES).
Step 2A, Prong One. Claim 1, from which claim 8 depends, has been found to recite an abstract idea (mental processes of data collection and organization for creating training data). The additional limitation in claim 8—making a display indicate the time series data collected by the one or more other devices of the same type as the type of the device that was specified—is a data presentation step, similar to that in claim 7. This is a form of organizing information for presentation, which can be a mental process, and does not remove the abstract nature of the underlying process. Thus, claim 8 also recites an abstract idea. (Step 2A, Prong One: YES).
Step 2A, Prong Two. The additional element of making a display indicate chronological information is a generic data output function and is generally considered insignificant extra-solution activity. It does not improve computer functioning or another technology. Therefore, claim 8 is directed to the abstract idea (Step 2A, Prong Two: NO). (Step 2A: YES).
Step 2B. The added limitation of displaying chronological information via a generic processor and display is a generic output of the abstract data processing (“apply it” rationale) and is insignificant post-solution activity. The claim as a whole does not amount to significantly more than the abstract idea itself (Step 2B: NO).
The claim is not patent eligible.
Claim 9
Claim 9 depends from claim 1 and adds the limitation that the model outputs “diagnosis assisting information,” and that this information is subsequently displayed.
Step 1. The claim, by depending from claim 1, is directed to a “training data collection request device,” which is a machine. (Step 1: YES).
Step 2A, Prong One. Claim 1, from which claim 9 depends, recites an abstract idea (mental processes of data collection, organization for creating training data, and requesting learning). Claim 9 focuses on displaying the output of such an inference model. The generation and presentation of “diagnosis assisting information” (which is merely data) through a model is part of the broader abstract idea of processing and presenting information. Thus, claim 9 recites an abstract idea. (Step 2A, Prong One: YES).
Step 2A, Prong Two. The additional step of the processor making a display indicate “diagnosis assisting information” does not integrate the abstract idea into a practical application. Similar to claims 7 and 8, displaying information, even if it’s “diagnosis assisting information” derived from an inference model, is a conventional data output function. This is a generic computer function, or at best, insignificant extra-solution activity, and does not inherently improve computer function or another technology. The nature of the information displayed (“diagnosis assisting”) does not, by itself, confer technical character to the act of displaying it with generic components. Therefore, claim 9 is directed to the abstract idea (Step 2A, Prong Two: NO). (Step 2A: YES).
Step 2B. Displaying “diagnosis assisting information” via a generic processor and display does not add significantly more to the abstract idea. This is a generic computer function for outputting the abstract data processing and inference steps. The activity is an insignificant post-solution activity. The claim as a whole, building upon the abstract ideas of the preceding claims and adding a generic display step, does not amount to significantly more than the abstract idea itself (Step 2B: NO).
The claim is not patent eligible.
Claim 10
The rationale provided in the rejections of claim 1 is hereby reincorporated by reference as applied to claim 10, which, apart from specifying the source of the symptom information, is identical to claim 1. To the extent claim 10 further specifies the source of the symptom information, the content of data does not change its character as information, and thus, does not make the claims any less directed to a judicial exception to 35 U.S.C. § 101.
Claim 13
The rejection of claim 1 is hereby reincorporated by reference, except that at step 1, the Examiner finds the claim to be directed to a process rather than a machine. Since the rest of the steps resolve in the same way, claim 13 is rejected for the same reasons as given above for claim 1.
Claim 14
The rejection of claim 1 is hereby reincorporated by reference, except that at step 1, the Examiner finds the claim to be directed to an article of manufacture rather than a machine. Since the rest of the steps resolve in the same way, claim 13 is rejected for the same reasons as given above for claim 1.
Claim 15
The rejection of claim 10 is hereby reincorporated by reference, except that at step 1, the Examiner finds the claim to be directed to an article of manufacture rather than a machine. Since the rest of the steps resolve in the same way, claim 15 is rejected for the same reasons as given above for claim 10.
Claim 16
Claim 16 depends from claim 1 and specifies that the devices originally responsible for producing the already-recorded data that the training data collection request device analyzes, again, after it has already been produced.
“Claim scope is not limited by claim language that . . . does not limit a claim to a particular structure.” MPEP § 2111.04. One example of claim language that does not limit a claim to a particular structure is claim language that merely provides “a description of the environment in which a claimed invention operates,” which the courts have held are not limitations. Nazomi Communications, Inc., v. Nokia Corp., 739 F.3d 1339, 1345 (Fed Cir. 2014) (citing Silicon Graphics, Inc. v. ATI Technologies, Inc., 607 F.3d 784, 794-95 (Fed. Cir. 2010); Advanced Software Design Corporation v. Fiserv, Inc., 641 F.3d 1368, 1375 (Fed. Cir. 2011)).
In this case, the additional language in claim 16 consists of language describing a device that isn’t an element of the claimed invention. As such, it cannot limit claim 1. And, since claim 16 doesn’t limit claim 1, there are no additional elements in claim 16 to analyze at Step 2A Prong Two or Step 2B. The claim is ineligible for the same reason as its parent claim 1.
Claim 17
Claim 17 depends from claim 16 and adds the additional steps of searching a database for the information mentioned in claim 16 (and claim 1), and displaying that information as a whole.
Step 1. The claim, by depending from claims 1 and 16, is directed to a “training data collection request device,” which is a machine. (Step 1: YES).
Step 2A, Prong One. Claims 1 and 16, from which claim 17 depends, have been found to recite an abstract idea (mental processes of data collection, correlation, and organization for creating training data). The additional limitation in claim 17—making a display indicate collected information—is a data presentation step. Organizing and presenting information can be a mental process. This limitation does not remove the abstract nature of the underlying data collection and training data creation process. Thus, claim 17 also recites an abstract idea. (Step 2A, Prong One: YES).
Step 2A, Prong Two. The additional element of making a display indicate information does not integrate the abstract idea into a practical application.
Displaying information, even specific types of information like a list of devices or chronological data, is a generic function of a computer system and is also considered insignificant extra-solution activity when it is merely presenting the results of an abstract process. This display function does not improve the functioning of the computer itself or another technology. It is an output of data derived from the abstract process.
Therefore, claim 17 is directed to the abstract idea (Step 2A, Prong Two: NO). (Step 2A: YES).
Step 2B. The added limitation of making a display indicate information does not add significantly more to the abstract idea.
Using a generic processor (from claim 1) to make a generic display indicate information is a generic computer function used to output the results of the abstract data collection and organization process (“apply it” rationale). The specific content being displayed (devices capable of acquiring objects, chronological change) is a direct output or representation of the information processed by the abstract idea. Displaying this information is, at best, an insignificant post-solution activity.
The claim as a whole does not amount to significantly more than the abstract idea itself (Step 2B: NO).
The claim is not patent eligible.
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 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 Justin R. Blaufeld whose telephone number is (571)272-4372. The examiner can normally be reached M-F 9:00am - 4:00pm ET.
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Justin R. Blaufeld
Primary Examiner
Art Unit 2151
/Justin R. Blaufeld/Primary Examiner, Art Unit 2151
Prosecution Insights