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 .
Status of Claims
Claims 1-14 are pending.
This communication is in response to the communication filed October 12, 2022.
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.
Use of the word “means” (or “step for”) in a claim with functional language creates a rebuttable presumption that the claim element is to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is invoked is rebutted when the function is recited with sufficient structure, material, or acts within the claim itself to entirely perform the recited function.
Absence of the word “means” (or “step for”) in a claim creates a rebuttable presumption that the claim element is not to be treated in accordance with 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph). The presumption that 35 U.S.C. 112(f) (pre-AIA 35 U.S.C. 112, sixth paragraph) is not invoked is rebutted when the claim element recites function but fails to recite sufficiently definite structure, material or acts to perform that function.
Claim elements in this application that use the word “means” (or “step for”) are presumed to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action. Similarly, claim elements that do not use the word “means” (or “step for”) are presumed not to invoke 35 U.S.C. 112(f) except as otherwise indicated in an Office action.
Claim limitations “acquisition unit,” “registration unit,” “storage unit,” “timekeeping unit,” “limitation unit,” “reception unit,” “issuing unit,” “code transmitting unit,” “application transmitting unit,” “suggestion unit,” “storage unit,” “change unit,” “change information transmitting unit,” and “notification unit,” have been interpreted under 35 U.S.C. 112(f), because they use generic placeholders “unit” coupled with functional language without reciting sufficient structure to achieve the function. Furthermore, the generic placeholder is not preceded by a structural modifier.
Since the claim limitation(s) invokes 35 U.S.C. 112(f), claims 1-14 have been interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof.
A review of the specification shows that the following appears to be the corresponding structure described in the specification for the 35 U.S.C. 112(f) limitations: the functions of a plurality of functional units described above in the example may be one integrated circuit (Specification p. 40).
If applicant wishes to provide further explanation or dispute the examiner’s interpretation of the corresponding structure, applicant must identify the corresponding structure with reference to the specification by page and line number, and to the drawing, if any, by reference characters in response to this Office action.
If applicant does not intend to have the claim limitation(s) treated under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112 , sixth paragraph, applicant may amend the claim(s) so that it/they will clearly not invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, or present a sufficient showing that the claim recites/recite sufficient structure, material, or acts for performing the claimed function to preclude application of 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
For more information, see MPEP § 2173 et seq. and Supplementary Examination Guidelines for Determining Compliance With 35 U.S.C. 112 and for Treatment of Related Issues in Patent Applications, 76 FR 7162, 7167 (Feb. 9, 2011).
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claims 3, 5, and 12 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claims 3, 5, and 12 recite the limitation “wherein the use deadline information is information in which the number of days,” for which there is insufficient antecedent basis for bolded limitation in the claim.
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 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite inventions for therapeutic application management, which are statutory categories of inventions.
Specifically, the independent claims, taking claim 13 as exemplary, recite an acquisition step of acquiring an application ID indicating a therapeutic application prescribed for a patient by a medical worker, a patient ID that identifies a patient for whom the therapeutic application is to be prescribed, and use deadline information indicating a deadline to which the therapeutic application is able to be used; a registration step of registering the application ID that identifies the therapeutic application, the patient ID, and the use deadline information…in correlation with each other; a timekeeping step of counting date and time information; and a limitation step of limiting use of the therapeutic application…when the date and time information counted in the timekeeping step has passed beyond a date and time determined by the use deadline information., which is grouped within the “certain methods of organizing human activity” grouping of abstract ideas. The claims involve a series of steps for managing patient information based on various interactions and rules. See MPEP 2106.04. The claims are interpreted to recite concepts relating to tracking or organizing information. Accordingly, the claims recite an abstract idea.
The dependent claims also recite limitations directed towards the abstract idea. The dependent claims recite limitations directed to receiving request information, issuing activation codes, limiting starting of the therapeutic application, suggesting a use deadline of the therapeutic application prescribed for the patient to the medical worker, and suggesting a use deadline obtained by adding a correction number of days estimated. The claims recite additional elements that are not part of the abstract idea, and are addressed below.
The additional elements include: the various units mentioned in the 112f interpretation, a non-transitory computer readable medium storing therein a management program, a computer, and a terminal. This judicial exception is not integrated into a practical application. Integration into a practical application requires an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception.
The claims merely use the additional elements as tools to perform abstract ideas and generally link the use of a judicial exception to a particular technological environment. The use of the additional elements as tools to implement the abstract idea and generally to link the use of the abstract idea to a particular technological environment does not render the claim patent eligible, because it requires no more than a computer performing functions that correspond to acts required to carry out the abstract idea. Specifically, the various units are stated to be implemented by one integrated circuit performing the functions of acquiring, receiving, registering, transmitting, counting, limiting, issuing, suggesting, storing, changing, and notifying. Circuits may be one or more integrated circuits, and the functions of a plurality of functional units described herein may be one integrated circuit. The computer is not specifically described and, using broadest reasonable interpretation, may be any kind of computer (p. 5). The management program may be recorded on a recording medium which can be read by a processor, and a non-transitory tangible medium such as a tape, a disk, a card, a semiconductor memory, or a programmable logic circuit can be used as the recording medium. The management program may be supplied to the processor via an arbitrary transmission medium, such as communication networks or broadcast waves that can transmit the management program. The terminal is interpreted to be a computer or any device receiving, sending, outputting, and displaying information (fig. 1).
The additional elements do not show an improvement to the functioning of a computer or to any other technology, rather the additional elements perform general computing functions and do not indicate how the particular combination improves any technology or provides a technical solution to a technical problem. See Apple v. Ameranth, 842 F.3d 1229, 1240 (Fed. Cir. 2016). The additional elements do not use the exception to affect a particular treatment or prophylaxis for a disease, do not apply the exception using particular machines, and do not effect a transformation or reduction of a particular article to a different state or thing, rather the computer elements are generally stated as to their structure and function and are only used to manage therapeutic application instead of directly providing specific treatment or prophylaxis. Therefore, the additional elements do not impose any meaningful limits on practicing the abstract idea and the additional limitations are not indicative of materializing into a practical application. Accordingly, the claim is directed to an abstract idea.
Generic computer elements recited as performing generic computer functions that are well-understood, routine, or conventional activities amount to no more than implementing the abstract idea with a computerized system (Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network and performing repetitive calculations); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."); See MPEP 2106.05(d) and July 2015 Update: Section IV). Here, the claim limitations are similar to receiving and sending information over a network.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using the various units mentioned in the 112f interpretation, a non-transitory computer readable medium storing therein a management program, a computer, and a terminal to perform the steps of the claim amount to no more than using computer related devices to automate or implement the abstract idea of therapeutic application management.
The use of a computer or processor to merely automate or implement the abstract idea cannot provide significantly more than the abstract idea itself. (See MPEP 2106.05(f) where mere instructions to apply an exception does not render an abstract idea patent eligible). There is no indication that the additional limitations alone or in combination improves the functioning of a computer or any other technology, improves another technology or technical field, or effects a transformation or reduction of a particular article to a different state or thing. Therefore, the claims are not patent eligible.
In conclusion, the claims are directed to the abstract idea for therapeutic application management. The claims do not provide an inventive concept, because the claims do not recite additional elements or a combination of elements that amount to significantly more than the judicial exception of the claims. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and the collective functions merely provide conventional computer implementation. Therefore, whether taken individually or as an order combination, the claims are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-6 and 8-14 are rejected under 35 U.S.C. 103 as being unpatentable over Nikitin et al. US20100293103 in view of Rodammer et al. US20220399108.
As per claim 1, Nikitin teaches
a…ID that identifies a patient for whom the therapeutic application is to be prescribed, and (Nikitin abstract teaches user’s user ID tied to digital license for software licenses for therapeutic applications) use deadline information indicating a deadline to which the therapeutic application is able to be used; (Nikitin par. 44 teaches deadline information is interpreted as an expiration data for the digital license for an application that may be used at a therapeutic application.)
a registration unit configured to register the application ID that identifies the therapeutic application, the patient ID, and the use deadline information in a storage unit in correlation with each other; (Nikitin par. 82, 91 teaches product registration service maintaining records for digital licenses. Product registration information can include various information collected from a user of device, when the user registers the associated software product, expiration data, name describing the license.)
a timekeeping unit configured to count date and time information; and (Nikitin par. 71 teaches count is incremented each time license management service 204 returns a digital license to license client module, and is decremented each time a license client module uninstalls or removes a digital license)
a limitation unit configured to limit use of the therapeutic application transmitted to a terminal of the patient when the date and time information counted by the timekeeping unit has passed beyond a date and time determined by the use deadline information (Nikitin par. 44 teaches a limitation unit to limit the use as time-based licenses with expiration dates in which the rights the user has to the software product, as further identified in digital license, have a limited duration).
Nikitin teaches software licenses for application, but may not specifically teach a prescription application. Rodammer teaches a therapeutic application management system comprising: an acquisition unit configured to acquire an application ID indicating a therapeutic application prescribed for a patient by a medical worker and patients (Rodammer par.43-48 teaches a therapeutic application to treat a patient addicted to smoking, here acquiring an application ID is interpreted as an indication of which application is being prescribed by the clinician for a patient.)
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the systems and methods as taught by Nikitin to license a therapeutic application prescribed by a medical worker for a patient as taught by Rodammer with the motivation of engaging patients prescribed certain software to actively engage and interact with a software application as directed by their medical professional or clinician (par. 2-5). In the substitution of using a software license for an application, it is well within the capabilities of one of ordinary skill in the art to use a prescription medical application.
As per claim 2, Nikitin and Rodammer teach all the limitations of claim 1 and further teach wherein the use deadline information is a deadline determined by the medical worker (Rodammer par. 43-44 teaches a smoking treatment application prescribed by a clinician, the specific application access is opened and closed based on location, smoking urges, and software application license based on Nikitin. Here, the clinician determining deadline information is based on the clinician prescribing an application with a determined end date for the user.).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the systems and methods as taught by Nikitin to use deadline information determined by a medical worker for a patient as taught by Rodammer with the motivation of engaging patients prescribed certain software to actively engage and interact with a software application as directed by their medical professional or clinician (par. 2-5).
As per claim 3, Nikitin and Rodammer teach all the limitations of claim 1 and further teach wherein the use deadline information is information in which the number of days in which the therapeutic application is able to be used after the therapeutic application has been prescribed is defined (Nikitin par. 44 teaches a limitation unit to limit the use as time-based licenses with expiration dates in which the rights the user has to the software product, as further identified in digital license, have a limited duration of days after application has been prescribed as stated in Rodammer).
As per claim 4, Nikitin and Rodammer teach all the limitations of claim 1 and further teach a reception unit configured to receive request information that requests an activation code to validate the therapeutic application downloaded by the patient using the terminal; an issuing unit configured to issue the activation code for the therapeutic application of the patient in response to the request information; and a code transmitting unit configured to transmit the activation code issued by the issuing unit to the terminal of the patient (Nikitin abstract teaches to activate and use the product, the consumer enters the product key at his or her computer, and the computer accesses an activation server to have the product key authenticated and the software product activated. The product key is then associated with a unique computer hardware "signature" of the consumer's computer from which the activation request was received.).
As per claim 5, Nikitin and Rodammer teach all the limitations of claim 1 and further teach wherein the limitation unit is configured to limit use of the therapeutic application by transmitting a use limitation code to limit starting of the therapeutic application to the terminal of the patient when the number of days indicated by the use deadline information has elapsed from the date and time at which the therapeutic application has been prescribed based on the date and time information counted by the timekeeping unit (Nikitin par. 44, 113 teaches user can indicate a request to activate the license for a particular duration, such as an hour, a day, a month, etc. A limitation unit to limit the use as time-based licenses with expiration dates in which the rights the user has to the software product, as further identified in digital license, have a limited duration.).
As per claim 6, Nikitin and Rodammer teach all the limitations of claim 1 and further teach an application transmitting unit configured to transmit a therapeutic application in response to a request from a terminal of a patient (Nikitin par. 67 teaches a module requests obtaining a copy of the digital license from service. A module sends a request for a copy of the digital license associated with the software product for which the request to run is received to license management service. A module also sends the user credentials of the current user of device. These user credentials are the credentials obtained from user ID authentication service. If the user is not already logged into the online service, then license client module prompts the user to login to the online service.).
As per claim 8, Nikitin and Rodammer teach all the limitations of claim 1 and further teach a suggestion unit configured to suggest a use deadline of the therapeutic application prescribed for the patient to the medical worker based on treatment details received from the medical worker using a trained model having learned a relationship between treatment details of the therapeutic application and a use deadline to which the therapeutic application is able to be used (Rodammer par.43-48, 67, 88, 91 teaches a therapeutic application to treat a patient addicted to smoking, here acquiring an application ID is interpreted as an indication of which application is being prescribed by the clinician for a patient. A clinician may prescribe an application that may be a threshold for access and predetermined days for alerting messaging. Here, the suggestions are predetermined in the application, and a threshold may be set.).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the systems and methods as taught by Nikitin to use suggested deadline information as taught by Rodammer with the motivation of engaging patients prescribed certain software to actively engage and interact with a software application as directed by their medical professional or clinician (par. 2-5).
As per claim 9, Nikitin and Rodammer teach all the limitations of claim 8 and further teach wherein the storage unit is configured to store the treatment details and a basic number of days until the use deadline to which the therapeutic application is able to be used in association with the treatment details in correlation, and the suggestion unit is configured to suggest a use deadline obtained by adding a correction number of days estimated using the trained model to the basic number of days corresponding to the treatment details received from the medical worker (Rodammer par. 75, 77 teaches predicted average time spent with the prescribed application. Time stamps of when a particular user first begins using a program aspect are collected and stored in a database, the database may be stored on the electronic device, such as a smartphone, or on a server communicatively coupled to the electronic device. Also, time stamps of when a particular user stops begins using a program aspect are collected and stored in a database.).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the systems and methods as taught by Nikitin to use suggested deadline information as taught by Rodammer with the motivation of engaging patients prescribed certain software to actively engage and interact with a software application as directed by their medical professional or clinician (par. 2-5).
As per claim 10, Nikitin and Rodammer teach all the limitations of claim 1 and further teach a change unit configured to change a use deadline; (Nikitin par. 148 teaches modifying the previous version of the digital license to include the new expiration date) and a change information transmitting unit configured to transmit the changed use deadline and an application ID of the therapeutic application of which the use deadline is changed to the terminal of the patient (Nikitin par. 91, 154 teaches digital licenses can be modified by the user, such as allowing the user to request that service automatically renew the digital license, allowing the user to input a user-friendly name describing the license, add the user ID to the digital license, to change an expiration date of the license. A service or module making the change can communicate with software activation service to have service sign the changed digital license.).
As per claim 11, Nikitin and Rodammer teach all the limitations of claim 1 and further teach a change unit configured to change a use deadline, wherein the limitation unit is configured to limit use of the therapeutic application based on the changed use deadline (Nikitin par. 91, 154 teaches digital licenses can be modified by the user, such as allowing the user to request that service automatically renew the digital license, allowing the user to input a user-friendly name describing the license, add the user ID to the digital license, to change an expiration date of the license. A service or module making the change can communicate with software activation service to have service sign the changed digital license.).
As per claim 12, Nikitin and Rodammer teach all the limitations of claim 1 and further teach a notification unit configured to notify the terminal of the patient using the therapeutic application (Nikitin par. 90 teaches notifying a user based software activation service for the digital license of a therapeutic application.) in which the number of days obtained by subtracting a date indicated by the date and time information from a deadline indicated by the use deadline is equal to or less than a predetermined number of days of information indicating that the use deadline of the therapeutic application is imminent (Nikitin par. 90, 123 teaches notifying a user based software activation service for the digital license of a therapeutic application. The number of days that a license is available is equal to the days that have passed from the license start date. The predetermined number of days is based on the initial license expiration date. A check is made as to whether a digital license permitting access to the software product is available locally. Such a locally available digital license is typically stored in a local store of the device implementing process. A digital license associated with the software product permits access to the software product if the digital license has not expired, e.g., the current date and/or time is not past the expiration date and/or time of the digital license, and any other terms in the digital license are satisfied.).
As per claims 13-14, see claim 1 rejection.
Claims 7 are rejected under 35 U.S.C. 103 as being unpatentable over Nikitin et al. US20100293103 in view of Rodammer et al. US20220399108 in further view of Kosovan US20160232334.
As per claim 7, Nikitin and Rodammer teach all the limitations of claim 1 and further teach wherein the limitation unit is configured to limit use of the therapeutic application by…transmitting the therapeutic application to the terminal of the patient when the use deadline determined by the use deadline information has elapsed (Nikitin par. 44, 113 teaches user can indicate a request to activate the license for a particular duration, such as an hour, a day, a month, etc. A limitation unit to limit the use as time-based licenses with expiration dates in which the rights the user has to the software product, as further identified in digital license, have a limited duration.)
Nikitin and Rodammer do not specifically teach the following limitations met by Kosovan, embedding a user limitation code to disable starting of the therapeutic application in the therapeutic application and (Kosovan par. 109 teaches functionality to disable the license inside the application).
It would have been obvious to one of ordinary skill in the art at the time the invention was filed to modify the systems and methods as taught by Nikitin and Rodammer to embed user limitation code for disable starting the application as taught by Kosovan with the motivation of preventing unauthorized or illegal use of software (par. 5).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAY M. PATEL whose telephone number is (571)272-6793 and email is jay.patel2@uspto.gov. The examiner can normally be reached on Monday-Friday 8AM-4:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Peter H. Choi can be reached on (469)295-9171. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAY M. PATEL/Primary Examiner, Art Unit 3686