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 .
DETAILED ACTION
In the amendment filed on 14 August 2025, the following has occurred: claims 16-19, 23-26 and 32 have been amended.
Now claims 16-32 are pending.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 14 August 2025 has been entered.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
a communication unit in claim 16.
a storage unit in claims 16 and 23
an input unit in claim 16
a controller in claim 16
an output unit in claim 16
an image recognition unit in claim 17
an optical character recognition (OCR) unit in claim 17
a data conversion unit in claim 21
an automatic translation unit in claim 22
The various units are being read form Applicant’s specification Figures 1-3, paragraphs [0140]-[0143], and are interpreted to be software implemented by a processor on a computer (i.e., the server).
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 16-32 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 16, 23 and 30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite server, method and CRM for managing personal health records. The limitations of:
Claim 16
[… obtain …] image data […]; [ … maintain …] a personal health record including patient information and clinical information; [… obtain …] image data; […] recognizing at least one of image information and text information from the received image data, [… organizing …] the recognized text information […], and dividing and [… maintaining …], at least one of the recognized image information and the text information into the patient information and the clinical information in a predetermined data format regardless of a language of the recognized text information, the predetermined data format is different from an original format of the image information and the text information; wherein the controller is further configured to [… organize …] different expressions of equivalent clinical results into standardized expressions […], and to [… organize …] the text information into a predetermined language […]; and [… output …], in the predetermined data format, the personal health record including the patient information and the clinical information [… maintained …], according to a request; wherein the predetermined data format includes[… structure that …], list full scale IQ and a plurality of indexes factoring into the full scale IQ including verbal comprehension, perceptual reasoning, working memory, and processing speed, and […] list results of the full scale IQ and the plurality of indexes; […] generate an input area configured to accept entry of comments regarding the patient information and the clinical information, the input area not included with the image information or the text information; and [… output …] the input area adjacent to the chart; and [… output a display…] for observing time-series changes in the clinical information based on cumulative personal health records.
Claim 23, which is representative of claim 30
[… obtaining …] image data comprising health-related information of a patient; recognizing […] one of image information and text information from the received image data, using an […] algorithm and […] process; classifying the recognized text information into patient information, clinical information, and change trend information based on treatment; [… maintaining …] the classified information […] in a predetermined data format regardless of a language of the recognized text information; wherein the predetermined data format is different from an original format of the image information and the text information and includes [… a structure …] listing full scale IQ and a plurality of indexes factoring into the full scale IQ including verbal comprehension, perceptual reasoning, working memory, and processing speed, and the […] listing results of the full scale IQ and the plurality of indexes; [… organizing …] different expressions of equivalent clinical results into standardized expressions […], and [… organizing …] the text information into a predetermined language […]; [… outputting …] the personal health record including the [… maintained …] patient information, the clinical information, and the change trend information according to treatment according to a request; […] generate an input area configured to accept entry of comments regarding the patient information and the clinical information, the input area not included with the image information or the text information; and [… provide …] the input area adjacent to the chart, and [… outputting …] a visual […] to observe time-series changes in the clinical information based on cumulative personal health records.
, as drafted, is a system, which under its broadest reasonable interpretation, covers a method of organizing human activity (i.e., managing personal behavior including following rules or instructions) via the recitation of generic computer components. That is, by a human user interacting with a controller, various units, various servers/terminals, a module, the claimed invention amounts to managing personal behavior or interaction between people, the Examiner notes as stated in 2106.04(a)(2), “certain activity between a person and a computer… may fall within the “certain methods of organizing human activity” grouping”. For example, via human interaction with the controller, various units, various servers/terminals, a module, the claim encompasses collection of data, organization of the collected data into a format for human user interpretation, and providing an output of the organization to a human user for human user interaction. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or interactions between people but for the recitation of generic computer components, then it falls within the “method of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of a controller, various units, various servers/terminals, a module, which implements the abstract idea. The controller, various units, various servers/terminals, a module are recited at a high-level of generality (i.e., a general-purpose computers/ computer components implementing generic computer functions; see Applicant’s Specification Figures 1-3, paragraphs [0140]-[0143]) such that it amounts no more than mere instructions to apply the exception using generic computer components. Accordingly, these additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim recites the additional elements of “communicating with another server or a terminal through a network… receiving…”, “storing…”, “displaying… a visual interface”, “an image recognition algorithm”, “extracting… using an optical character recognition (OCR) process”, “convert… based on a conversion table”, “translate… using an automatic translation module” and “a chart with horizontal columns and vertical rows”. The “communicating with another server or a terminal through a network… receiving…” steps are recited at a high-level of generality (i.e., as a general means of receiving/transmitting data) and amounts to the mere transmission and/or receipt of data, which is a form of extra-solution activity. The “storing…” is recited at a high-level of generality (i.e., as a general means of storing data) and amounts to the mere storage of data, which is a form of extra-solution activity. The “displaying…” is recited at a high-level of generality (i.e., as a generic display interface for presentation of information to a user) and amounts to generally linking the abstract idea to a particular technological environment. The “an image recognition algorithm” is recited at a high-level of generality (i.e., as a generic image analysis algorithm) and amounts to generally linking the abstract idea to a particular technological environment. The “extracting… using an optical character recognition (OCR) process” is recited at a high-level of generality (i.e., as a generic OCR extraction of text) and amounts to generally linking the abstract idea to a particular technological environment. The “convert… based on a conversion table” is recited at a high-level of generality (i.e., as a generic means of mapping data to another format) and amounts to generally linking the abstract idea to a particular technological environment. The “translate… using an automatic translation module” is recited at a high-level of generality (i.e., as a generic means of translating data from one human language to another) and amounts to generally linking the abstract idea to a particular technological environment. The “a chart with horizontal columns and vertical rows” is recited at a high-level of generality (i.e., as a generic table) and amounts to generally linking the abstract idea to a particular technological environment. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
The claim does 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, the additional elements of a controller, various units, various servers/terminals, a module to perform the noted steps amounts to no more than mere instructions to apply the exception using generic hardware components. Mere instructions to apply an exception using a generic hardware component cannot provide an inventive concept (“significantly more”).
Also, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “communicating with another server or a terminal through a network… receiving…”, “storing…”, “displaying… a visual interface”, “an image recognition algorithm”, “extracting… using an optical character recognition (OCR) process”, “convert… based on a conversion table”, “translate… using an automatic translation module” and “a chart with horizontal columns and vertical rows” were considered generally linking the abstract idea to particular technological environment and/or extra-solution activity. The “communicating with another server or a terminal through a network… receiving…” steps have been re-evaluated under the “significantly more” analysis and determined to amount to be well-understood, routine, and conventional elements/functions. As described in MPEP 2106.05(d)(II)(i) “Receiving or transmitting data over a network” is well-understood, routine, and conventional. The “storing…” has been re-evaluated under the “significantly more” analysis and determined to amount to be well-understood, routine, and conventional elements/functions. As described in MPEP 2106.05(d)(II)(iv) “Storing and retrieving information in memory” is well-understood, routine, and conventional. The “displaying… a visual interface” has been re-evaluated under the “significantly more” analysis and determined to amount to be well-understood, routine, and conventional elements/functions. As described in Kim (2022/0051810): see below but at least Figure 3, paragraph [0072]; Olek (20230377697): see below but at least paragraph [0076]; Hirano (20050221856): paragraph [0007]; display of data on a user interface is well-understood, routine, and conventional. The “an image recognition algorithm” has been re-evaluated under the “significantly more” analysis and determined to amount to be well-understood, routine, and conventional elements/functions. As described in Chaki (20110249897): paragraph [0038]; Kim (20150269431): paragraphs [0019]-[0020]; using image analysis algorithms is well-understood, routine, and conventional elements/functions. The “extracting… using an optical character recognition (OCR) process” has been re-evaluated under the “significantly more” analysis and determined to amount to be well-understood, routine, and conventional elements/functions. As described in Chaki (20110249897): paragraph [0038]; Haji (20150269431): paragraph [0004]; extraction of data using OCR is well-understood, routine, and conventional elements/functions. The “convert… based on a conversion table” has been re-evaluated under the “significantly more” analysis and determined to amount to be well-understood, routine, and conventional elements/functions. As described in Cha (2019/0214143): see below but at least paragraphs [0010]-[0011]; Jiang (20210081502): paragraph [0073]; conversion of data using a table is well-understood, routine, and conventional elements/functions. The “translate… using an automatic translation module” has been re-evaluated under the “significantly more” analysis and determined to amount to be well-understood, routine, and conventional elements/functions. As described in Kim (2022/0051810): see below but at least paragraph [0068]; Olek (20230377697): see below but at least paragraph [0045]; translation of data from one language to another is well-understood, routine, and conventional elements/functions. The “a chart with horizontal columns and vertical rows” has been re-evaluated under the “significantly more” analysis and determined to amount to be well-understood, routine, and conventional elements/functions. As described in German (20200293266): paragraph [0103]; Bhatt (20090234635): Figures 6-8, paragraph [0035]; Eberlain (20170286467): Figure 4, paragraph [0049]; storing of data in a chart with vertical rows and horizontal columns is well-understood, routine, and conventional elements/functions. Well-understood, routine, and conventional elements/functions cannot provide “significantly more.” As such the claim is not patent eligible.
Claims 17-22, 24-29 and 31-32 are similarly rejected because either further define the abstract idea and/or do not further limit the claim to a practical application or provide as inventive concept such that the claims are subject matter eligible.
Claims 17 and 21-22 recites additional units, however the various units of the server were considered above and are incorporated herein.
Claims 18 and 24-25 describes the storage of data in a specified format, however this was already considered above and is incorporated herein.
Claim 19 and 26 describes use of a field of a template to make classifications, however does not recite any additional elements are therefore cannot provide a practical application and/or significantly more.
Claim 20 and 27 recite the additional elements of “binarization, word segmentation, and character segmentation”, however these are recited at a high level of generality (i.e., generic off-the shelf OCR techniques) and amounts to generally linking the abstract idea to a particular technological environment. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
Also, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “binarization, word segmentation, and character segmentation” were considered generally linking the abstract idea to particular technological environment. The “binarization, word segmentation, and character segmentation” has been re-evaluated under the “significantly more” analysis and determined to amount to be well-understood, routine, and conventional elements/functions. As described in Chaki (20110249897): see below but at least paragraphs [0031]-[0033]; Haji (20150269431): paragraphs [0123]-[0129]; use of binarization and text/word segmentation for OCR is well-understood, routine, and conventional elements. Well-understood, routine, and conventional elements/functions cannot provide “significantly more.” As such the claim is not patent eligible.
Claim 21 and 28 further describe the conversion of data, however conversion of data was already considered above and is incorporated herein.
Claim 22 and 29 further describe the translation of data, however translation of data was already considered above and is incorporated herein.
Claims 31 and 32 further describe the analysis to determine the IQ, however does not recite any additional elements are therefore cannot provide a practical application and/or significantly more.
Response to Arguments
Applicant's arguments filed on 07 January 2025 have been fully considered but they are not persuasive. Applicant's arguments will be addressed herein below in the order in which they appear in the response filed on 07 January 2025.
Claim interpretation
Regarding the claim interpretation of claims 16-17 and 21-22, is maintained no claim language introducing structure is claimed, the units amount to software implemented by a processor and memory of the server. As the processor and memory is not claimed, the claim interpretation is still necessary. Additionally, a storage unit with no corresponding structure is introduced in independent claim 23, as such the claim interpretation has been added for the storage unit.
Rejection under 35 U.S.C. § 101
Regarding the rejection of claims 16-30, the Examiner has considered the Applicant’s arguments but does not find them persuasive. Any arguments inadvertently not addressed are unpersuasive for at least the following reasons:
Applicant argues:
The amended claims clarify that the claimed invention includes concrete technical implementations that go beyond mere data processing, such as, but not limited to… Applicant's claimed invention calls for "significantly more" than an abstract idea, such as, but not limited to, the following: resolving incompatibility of document formats across institutions through technical structuring; and automatically standardizing and visualizing multilingual, multi-unit clinical data… When all claim elements are considered as a whole, Applicant's invention of amended independent claims 16 and 23, and those claims dependent therefrom, is not directed to an abstract idea… When Applicant's amended claims are considered as a whole, so as to include each and every feature of the claimed invention, it is clear that the only possible conclusion is that Applicant's claimed invention is not directed to merely an abstract idea… Even if claims 16 and 23 are directed to an abstract idea, which Applicant maintains that they are not, the claims satisfy § 101 because they include numerous additional elements that amount to significantly more than the judicial exception… As acknowledged by the Office Action's lack of a 35 USC 102 or 103 prior art rejection, amended independent claims 16 and 23 are not anticipated by, or obvious in view of, the cited art. This application should thus be allowed because as explained above the claims are not directed to a judicial exception, and even if they are they recite elements that amount to significantly more as explained above.
The Examiner respectfully disagrees.
It is respectfully submitted, that the claimed additional elements do not recite a technical solution to a technical problem recited in Applicant’s specification and/or an improvement in the functionality of the computer. First, Applicant does not argue any portions of their specification for any recitations of technical problems, instead looking to Applicant’s specification paragraphs [0002]-[0006], the problem being addressed is a human activity problem of using different human languages at various locations. Instead the claims use generic well-understood, routine and conventional additional elements to organize data into a format for a human user to interact with, and any argued technical improvement is at best application of the abstract idea on generic computer components which are not particular, they are generic off-the shelf hardware (see Applicant’s Specification Figures 1-3, paragraphs [0140]-[0143]), and which as stated in 2106.05(f)(2) “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA). The claims may provide a human activity solutions using generic computer components for a human activity problem, which may improve upon the abstract idea, however an improved abstract idea is still an abstract idea, as the additional elements do not recite a technical solution to a technical problem recited in Applicant’s specification and/or an improvement in the functionality of the computer the claims do not recite a practical application of the abstract idea.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Andrew E Lee whose telephone number is (571)272-8323. The examiner can normally be reached M-Th 9-5:00 PM.
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/A.E.L./Examiner, Art Unit 3684
/Shahid Merchant/Supervisory Patent Examiner, Art Unit 3684