DETAILED ACTION
Notice to Applicant
This communication is in response to the amendment submitted December 23, 2025. The present application claims priority to Japanese Patent Application Number JP2021-143063 filed 9/2/2021. Claims 1, 3 – 4, and 11 – 13 are amended. Claim 2 is cancelled (Claims 7 – 9 were previously cancelled). Claims 1, 3 – 6 and 10 – 13 are pending.
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, 3 – 6 and 10 – 13 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.
Step One
Claims 1, 3 – 6 and 10 – 13 are drawn to a search processing device (system), which is/are statutory categories of invention (Step 1: YES).
Step 2A Prong One
Independent claims 1 and 13 recite set disease information of a patient; receive evidence information for the disease name, the evidence information including a rank of medical basis, information on a medical treatment method, and information on the medical basis; extract descriptions corresponding to the disease information from each of search results, append a reliability degree to each search result of the search results based on the extracted descriptions and the evidence information the reliability degree indicating the rank of the medical basis of the search result, and sort each of the search results to which the reliability degree is appended, according to the appended reliability degree.
The recited limitations, as drafted, under their broadest reasonable interpretation, cover mental processes, as reflected in the specification, which states that the invention “relates generally to a search information processing device” (paragraph 2 of published specification). If a claim limitation, under its broadest reasonable interpretation, covers concepts performed in the human mind including an observation, evaluation, judgment or opinion, then it falls within the “Mental Processes” grouping of abstract ideas. The present claims cover certain Mental Processes because they address a need for “respective search results to which the reliability degrees have been appended are sorted according to the reliability” (paragraph 101 of published specification). Accordingly, the claims recite an abstract idea(s) (Step 2A Prong One: YES).”
Step 2A Prong Two
This judicial exception is not integrated into a practical application. The claims are abstract but for the inclusion of the additional elements including:
Claims 1, 13: “a search information processing device comprising processing circuitry”, “set, according to a first operation of a patient in a user interface, a patient ID indicating the patient and a patient terminal ID, and send the patient ID and the patient terminal ID to a management device”, “receive from the management device, as a response to sending the patient ID and the patient terminal ID, an electronic medical record based on the patient ID; according to a second operation of the patient in the user interface”, “electronic”, “access, according to a third operation of the patient in the user interface, a search site on the Internet, and input a search condition including the disease name through a search screen displayed on a display to send the search condition to the search site;” “the processing circuitry is further configured to perform, based on the third operation of the patient, on/off control according to a search target so that processing for extracting the descriptions is placed in an on state if the search target is the disease name of the patient, and the processing for extracting the descriptions is placed in an off state if the search target is a disease name of other people differing from the patient”, “transmit each of the search results to which the reliability degree is appended to a telemedicine system, and receive the search results checked and/or adjusted by a doctor of the telemedicine system”, “control a display to display each of the sorted search results”
Claims 3 – 5, 11 – 12: “a search information processing device”, “processing circuitry”, “Display”
Claim 6: “a search information processing device”
Claim 10: “a search information processing device”, “processing circuitry”
These features are additional elements that are recited at a high level of generality such that they amount to no more than mere instruction to apply the exception using generic computer components. See: MPEP 2106.05(f).
The additional elements are merely incidental or token additions to the claim that do not alter or affect how the process steps or functions in the abstract idea are performed. Therefore, the claimed additional elements do not add meaningful limitations to the indicated claims beyond a general linking to a technological environment. See: MPEP 2106.05(h).
The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Hence, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Accordingly, the claims are directed to an abstract idea (Step 2A Prong Two: NO).
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, using the additional elements to perform the abstract idea amounts to no more than mere instructions to apply the exception using generic components. Mere instructions to apply an exception using a generic components cannot provide an inventive concept. See MPEP 2106.05(f).
Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are not integrated into the claim because they are merely incidental or token additions to the claim that do not alter or affect how the process steps or functions in the abstract idea are performed. Therefore, the claimed additional elements do not add meaningful limitations to the indicated claims beyond a general linking to a technological environment. See: MPEP 2106.05(h).
Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are configured to perform well-understood, routine, and conventional activities previously known to the industry. See: MPEP 2106.05(d). Said additional elements are recited at a high level of generality and provide conventional functions that do not add meaningful limits to practicing the abstract idea. The published specification supports this conclusion as follows:
[0165] The term "processor" used in the above description means, for example, CPU (central processing unit), GPU (Graphics Processing Unit), or a circuit such as an application specific integrated circuit (ASIC), a programmable logic device (for example, simple programmable logic device (SPLD), a complex programmable logic device (CPLD), or a field programmable gate array (FPGA). The processor implements functions by reading and executing programs stored in a memory. Instead of storing the programs in the memory, the programs may be directly installed in the circuit of the processor. In this case, the processor implements the functions by reading and executing the program installed in the circuit. Note that each processor of the present embodiment is not limited to a case where each processor is configured as a single circuit, but a plurality of independent circuits may be combined to form a processor and implement the functions thereof. Further, a plurality of components in FIG. 1, 2 or 4 may be integrated into a processor to implement the function thereof.
Viewing the limitations as an ordered combination, the claims simply instruct the additional elements to implement the concept described above in the identification of abstract idea with routine, conventional activity specified at a high level of generality in a particular technological environment.
Hence, the claims as a whole, considering the additional elements individually and as an ordered combination, do not amount to significantly more than the abstract idea (Step 2B: NO).
Dependent claim(s) 3 – 6 and 10 – 12 when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea without significantly more. These claims fail to remedy the deficiencies of their parent claims above, and are therefore rejected for at least the same rationale as applied to their parent claims above, and incorporated herein.
Claim Rejections - 35 USC § 103
The rejection of Claim(s) 1 and 13 under 35 U.S.C. 103 as being unpatentable over Jones et al., herein after Jones (International Publication Number WO 2007/087473 A2) in view of McNeil et al., herein after McNeil (U.S. Patent Number 11,354,321 B2) are hereby withdrawn based upon the Office Action mailed September 23, 2025.
The rejection of Claim(s) 2 – 7 under 35 U.S.C. 103 as being unpatentable over Jones et al., herein after Jones (International Publication Number WO 2007/087473 A2) in view of McNeil et al., herein after McNeil (U.S. Patent Number 11,354,321 B2) further in view of Luo (Luo, G; “Design and evaluation of the iMed intelligent medical search engine”; 2009 IEEE 25th International Conference on Data Engineering; ICDE 2009; pp. 1379 – 1390; IEEE, 2009) are hereby withdrawn based upon the Office Action mailed September 23, 2025.
The rejection of Claim(s) 10 under 35 U.S.C. 103 as being unpatentable over Jones et al., herein after Jones (International Publication Number WO 2007/087473 A2) in view of McNeil et al., herein after McNeil (U.S. Patent Number 11,354,321 B2) further in view of Kido et al., herein after Kido (U.S. Publication Number 2014/0344274 A1) are hereby withdrawn based upon the Office Action mailed September 23, 2025.
The rejection of Claim(s) 11 – 12 under 35 U.S.C. 103 as being unpatentable over Luo Jones et al., herein after Jones (International Publication Number WO 2007/087473 A2) in view of McNeil et al., herein after McNeil (U.S. Patent Number 11,354,321 B2) further in view of Luo (Luo, G; “Design and evaluation of the iMed intelligent medical search engine”; 2009 IEEE 25th International Conference on Data Engineering; ICDE 2009; pp. 1379 – 1390; IEEE, 2009) and further in view of Kido et al., herein after Kido (U.S. Publication Number 2014/0344274 A1) are hereby withdrawn based upon the Office Action mailed September 23, 2025.
Response to Arguments
Applicant's arguments filed December 23, 2025 have been fully considered but they are not persuasive. The Applicant’s arguments have been addressed in the order in which they were presented.
Claim Rejections - 35 USC § 101
The Applicant argues the invention recited in claim 1 is an improvement over prior searching techniques. The Examiner respectfully disagrees. The Examiner submits in Enfish, for example, the Court found that "the claims at issue focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement in how computer could carry out one of their basic functions of storage and retrieval of data”. Here, the focus of the claims is not on such an improvement in computers as tools, but on abstract ideas that use computers as tools. The claims here do not require any nonconventional computer, network or display components, or even a "non-conventional and non-generic arrangement of known, conventional pieces”. This conclusion is supported by the Applicant’s published specification supports this conclusion as follows:
[0165] The term "processor" used in the above description means, for example, CPU (central processing unit), GPU (Graphics Processing Unit), or a circuit such as an application specific integrated circuit (ASIC), a programmable logic device (for example, simple programmable logic device (SPLD), a complex programmable logic device (CPLD), or a field programmable gate array (FPGA). The processor implements functions by reading and executing programs stored in a memory. Instead of storing the programs in the memory, the programs may be directly installed in the circuit of the processor. In this case, the processor implements the functions by reading and executing the program installed in the circuit. Note that each processor of the present embodiment is not limited to a case where each processor is configured as a single circuit, but a plurality of independent circuits may be combined to form a processor and implement the functions thereof. Further, a plurality of components in FIG. 1, 2 or 4 may be integrated into a processor to implement the function thereof.
Further the claims, unlike Enfish, use existing computers as tools in aid of processes focused on abstract ideas. Thus, Applicant’s argument is not persuasive and the rejection is maintained.
The Applicant argues the steps recited in claim 1 of the present application do not recite a mental process that could be performed in the mind. The Examiner respectfully disagrees. The Examiner respectfully submits that the PEG (Patent Eligibility Guidelines) of January 2019 recite that the test is not that they ARE performed in the mind, but that they CAN be practically performed in the mind or even with a pen and paper. Claim 1 of the present claims recite set disease information of a patient; receive evidence information for the disease name, the evidence information including a rank of medical basis, information on a medical treatment method, and information on the medical basis; extract descriptions corresponding to the disease information from each of search results, and append a reliability degree to each search result of the search results based on the extracted descriptions and the evidence information the reliability degree indicating the rank of the medical basis of the search result.
The claims are abstract but for the inclusion of the additional elements including “a search information processing device comprising processing circuitry”, “set, according to a first operation of a patient in a user interface, a patient ID indicating the patient and a patient terminal ID, and send the patient ID and the patient terminal ID to a management device”, “receive from the management device, as a response to sending the patient ID and the patient terminal ID, an electronic medical record based on the patient ID; according to a second operation of the patient in the user interface”, “electronic”, “access, according to a third operation of the patient in the user interface, a search site on the Internet, and input a search condition including the disease name through a search screen displayed on a display to send the search condition to the search site;” “the processing circuitry is further configured to perform, based on the third operation of the patient, on/off control according to a search target so that processing for extracting the descriptions is placed in an on state if the search target is the disease name of the patient, and the processing for extracting the descriptions is placed in an off state if the search target is a disease name of other people differing from the patient”, “transmit each of the search results to which the reliability degree is appended to a telemedicine system, and receive the search results checked and/or adjusted by a doctor of the telemedicine system”, and “control a display to display each of the sorted search results” which are additional elements that are recited at a high level of generality such that they amount to no more than mere instruction to apply the exception using generic computer components. See: MPEP 2106.05(f). The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components.
Thus, if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic components, then it is still in the mental processes grouping unless the claim limitation cannot practically be performed in the mind.
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 KRISTINE K RAPILLO whose telephone number is (571)270-3325. The examiner can normally be reached Monday - Friday 7:30 - 4 pm.
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/K.K.R/Examiner, Art Unit 3682
/ROBERT A SOREY/Primary Examiner, Art Unit 3682
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