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
This action is in reply to Applicant’s communication filed on December 26, 2025.
Claims 1, 4, 6-9, 11 and 14 have been amended and are hereby entered.
Claims 5, 10 and 17 have been canceled.
Claims 1, 3-4, 6-9 and 11-15 are currently pending and have been examined.
Priority
Acknowledgment is made of Applicant’s claim for priority under 35 U.S.C. § 371 of International Application No. PCT/JP2021/029165, filed on August 5, 2021, which claims the benefit of Application No. 63/061691, filed in the US on August 5, 2020.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 26, 2025 has been entered.
Claim Objections
Claim 14 is objected to because of the following informalities:
Claim 14 recites “conducting, a terminal device including a plurality of sensors and a display, wherein the plurality of sensors include a motion sensor and an image sensor of a camera, an examination of each of the plurality of examination items by causing at least one of the plurality of sensors to operate, in a descending order of the priority determined;”. As currently recited, this limitation is not grammatically clear. Examiner suggests amending the limitation to recite “conducting, using a terminal device including a plurality of sensors and a display, wherein the plurality of sensors include a motion sensor and an image sensor of a camera, an examination of…” to make it clear that the terminal device is being used to perform the claimed function. Appropriate correction is required.
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, 3-4, 6-9 and 11-15 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1 analysis:
Claims 1 and 14 are directed to a system and a method respectively and therefore all fall into one of the four statutory categories. (Step 1: Yes, the claims fall into one of the four statutory categories).
Step 2A analysis - Prong one:
The substantially similar independent system and method claims, taking claim 14 as exemplary, recite the following limitations: obtaining profile information relating to a medical history of a brain disorder of a subject; determining a priority of each of a plurality of examination items for stroke based on the profile information obtained so as to give a lower priority to an examination item where the subject has already developed a constant symptom than an other examination item; conducting, a terminal device including a plurality of sensors and a display, wherein the plurality of sensors include a motion sensor and an image sensor of a camera, an examination of each of the plurality of examination items, by causing at least one of the plurality of sensors to operate, in a descending order of the priority determined; and outputting diagnostic information relating to a sign of stroke in the subject based on an examination result, wherein the profile information further relates to physical data obtained from at least one of the plurality of sensors, in the determining the priority, a higher priority is given to an examination item where the physical data indicates a specific symptom, and when both the higher priority and the lower priority are to be applied to a same examination item based on the profile information, the lower priority takes precedence over the higher priority so that an examination item associated with the constant symptom is given a lower final priority than the examination item where the physical data indicates the specific symptom, in conducting the examinations, an examination of an examination item with a priority that is lower than or equal to a predetermined value is not performed, and the conducting the examinations includes: identifying whether an operator of the terminal device is the subject; and controlling the plurality of sensors based on the identifying such that: in response to the operator being identified as the subject, the motion sensor is activated to detect a movement of the terminal device held by the subject as the sign of stroke in a first mode; and in response to the operator being identified as a person other than the subject, the camera is activated to capture an image of the subject as the sign of stroke in a second mode.
The examiner is interpreting the above bolded limitations as additional elements as further discussed below. The remaining un-bolded limitations above, as drafted, is a process that, under the broadest reasonable interpretation, covers performance of the limitation in the mind but for recitation of generic computer components. That is, other than reciting the terminal device including a plurality of sensors and a display (claims 1 and 14) and the processor (claim 1), nothing in the claim precludes the step from practically being performed in the mind. For example, but for the identified additional elements, this claim encompasses a person reading patient information, prioritizing examinations to be conducted based on the collected information (e.g., making an ordered “to-do” list), and conducting those examinations in an order based on the prioritized list in the manner described in the identified abstract idea, supra. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Further, the remaining un-bolded limitations above, as drafted, is a process that, under the broadest reasonable interpretation, covers certain methods of organizing human activity (i.e., managing personal behavior including following rules or instructions) but for recitation of generic computer components. That is, other than reciting a system implemented by the terminal device (claims 1 and 14) and processors (computers) (claim 1), the claimed invention amounts to managing personal behavior or interaction between people. For example, but for the identified additional elements, this claim encompasses a person collecting patient information, prioritizing examinations to be conducted based on the collected information, and conducting examinations in an order based on the prioritized list in the manner described in the identified abstract idea, supra. The Examiner notes that certain “method[s] of organizing human activity” includes a person’s interaction with a computer (see MPEP 2106.04(a)(2)(II)). 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 “certain methods of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The types of identified abstract ideas are considered together as a single abstract idea for analysis purposes. (Step 2A – Prong 1: Yes, the claims are abstract).
Step 2A analysis - Prong two:
Claims 1 and 14 recite additional elements beyond the abstract idea. Claims 1 and 14 each recite a terminal device, a plurality of sensors including a motion sensor and an image sensor of a camera and a display. Claim 1 further recites a processor, a memory and a program. The program appears to be purely software and is being interpreted as such.
This judicial exception is not integrated into a practical application. In particular, the claims recite a terminal device, a plurality of sensors including a motion sensor and an image sensor of a camera, a display, a processor, a memory and a program which are recited at a high-level of generality (i.e., as a generic processor performing generic computer functions) such that it amounts to no more than mere instructions to apply the exceptions using a generic computer component. For example, Applicant’s specification explains that the processors receive inputs, read computer programs, analyze data, executes control functions, etc. (see Applicant’s specification paras 55-57, 73). Accordingly, this/these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because it/they does/do not impose any meaningful limits on practicing the abstract idea.
Further, the additional elements of (1) “causing at least one of the plurality of sensors to operate”(claims 1 and 14), and (2) “controlling the plurality of sensors based on the identifying such that: in response to the operator being identified as the subject, the motion sensor is activated to detect a movement of the terminal device held by the subject as the sign of stroke in a first mode; and in response to the operator being identified as a person other than the subject, the camera is activated to capture an image of the subject as the sign of stroke in a second mode.” (claims 1 and 14) are each being interpreted as insignificant extra-solution activity. These causation and controlling steps are recited at a high level of generality and amount to mere data gathering, which is a form of extra-solution activity, and do not add a meaningful limitation to the claimed invention. MPEP 2106.04(d)(I) indicates that extra-solution data gathering activity cannot provide a practical application. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application.
Therefore, Claims 1 and 14 are directed to an abstract idea without practical application. (Step 2A – Prong 2: No, the additional claimed elements are not integrated into a practical application).
Step 2B analysis:
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 using a terminal device, a plurality of sensors including a motion sensor and an image sensor of a camera, a display, a processor, a memory and a program to perform the noted steps amounts to no more than mere instructions to apply the exception using a generic computer component. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The collective functions appear to be implemented using conventional computer systemization. Mere instructions to apply an exception using a generic computer 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 (1) “causing at least one of the plurality of sensors to operate”(claims 1 and 14), and (2) “controlling the plurality of sensors based on the identifying such that: in response to the operator being identified as the subject, the motion sensor is activated to detect a movement of the terminal device held by the subject as the sign of stroke in a first mode; and in response to the operator being identified as a person other than the subject, the camera is activated to capture an image of the subject as the sign of stroke in a second mode.” (claims 1 and 14) were considered extra-solution activity. This has been re-evaluated under the “significantly more” analysis and determined to be well-understood, routine, conventional activity in the field.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: i) receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); 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); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)); iv) storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93. See MPEP §2106.05(d)(II).
This listing is not meant to imply that all computer functions are well‐understood, routine, conventional activities, or that a claim reciting a generic computer component performing a generic computer function is necessarily ineligible. Courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking). On the other hand, courts have held computer-implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic. See MPEP §2106.05(d)(II) – emphasis added.
Here, the steps are receiving or transmitting data over a network; performing repetitive calculations; storing and retrieving information in memory – all of which have been recognized by the courts as well-understood, routine and conventional functions. See MPEP 2106.05(d)(II).
The claims are directed to an abstract idea with additional generic computer elements that do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known in the industry.
For the next step of the analysis, it must be determined whether the limitations present in the claims represent a patent-eligible application of the abstract idea. A claim directed to a judicial exception must be analyzed to determine whether the additional elements of the claim, considered both individually and as an ordered combination are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself.
For the role of a computer in a computer implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of well-understood, routine, and conventional activities previously known to the industry. Further, the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention. See MPEP 2106.05(d).
Applicant’s specification discloses the following:
Applicant describes embodiments of the disclosure at a very high level to include the use of a wide variety of controllers/processors/computers, input/output devices, storage devices, servers, networks, sensors, etc. (See Applicant’s spec paras 54-57, 65-77). The invention, may use any computer via any transmission medium (a communication network or broadcast waves) capable of transmitting the program.
Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The collective functions appear to be implemented using conventional computer systemization.
In summary, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because 1) mere instructions to apply an exception using a generic computer component cannot provide an inventive concept (“significantly more”), and 2) well-understood, routine, conventional activity cannot provide an inventive concept (“significantly more”). The claims do not provide an inventive concept significantly more than the abstract idea. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. (Step 2B: No, the claims do not provide significantly more).
Dependent Claims 3-4, 6-9, 11-13 and 15 further define the abstract idea that is presented in independent Claims 1 and 14, and are further grouped as a mental process and certain methods of organizing human activity and are abstract for the same reasons and basis as presented above. Further, Claim 15 recites additional elements beyond the abstract idea. Claim 15 recites non-transitory computer-readable recording medium, a computer and a computer program. The computer program is interpreted to be purely software. This/these additional element(s) is/are recited at a high level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. For example, as noted above, the Applicant’s specification indicates the use of known processors and storage devices. Accordingly, this/these additional element(s), when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims do not recite additional elements that integrate the judicial exception into a practical application when considered both individually and as an ordered combination. Therefore, the dependent claims are also directed to an abstract idea.
Thus, Claims 1, 3-4, 6-9 and 11-15 are rejected under 35 U.S.C. 101 as being directed to abstract ideas without significantly more.
Relevant Prior Art of Record Not Currently Being Applied
The prior art made of record and not relied upon is considered pertinent to applicant's
disclosure.
Gettings et al. (US 20150367513) Discloses prioritizing robot and/or human tasks, allocating resources, and optimizing robot and/or human routes across the infrastructure of an organization. A priority resolver can rank tasks and compare priority scores of tasks in order to complete the highest priority task first. (see abstract; paras 39-41; claims 1, 5).
Meng (US 20180189099) discloses determining a priority ranking of tasks, executing the task and displaying the task on one of at least a portion of a screen area and in a task menu based on the priority ranking of the task. (see abstract; paras 27, 48, 50).
Yokoi et a. (JP2008117177A) discloses a medical examination information input system allowing automatic selection of a medical examination item from this medical inquiry information and past medical examination information in order of high priority. If the priority value of an examination item does not exceed the setting value of the priority cumulative value display area, the check box is not checked. (see abstract; pages 7-10 of translated copy provided).
Response to Arguments
Regarding rejections under 35 USC § 112(a) to Claims 5-9 and 17, Applicant’s arguments have been fully considered and are persuasive. Examiner has withdrawn the rejection.
Regarding rejections under 35 USC § 112(b) to Claims 1, 3-13 and 17, Applicant’s arguments have been fully considered and are persuasive. Examiner has withdrawn the rejection.
Regarding rejections under 35 USC § 101 to Claims 1, 3-4, 6-9 and 11-15, Applicant’s arguments have been fully considered and are not persuasive. The rejection has been updated in light of latest amendments. Applicant argues:
(a) The claims now explicitly recite a "terminal device" having a "motion sensor" and a "camera." The claims further require the processor to "control" these specific sensors by activating the "motion sensor" in a "first mode" or the "camera" in a "second mode" depending on who is operating the device. This specific control of hardware components cannot be performed in the human mind or with pen and paper. A human cannot "activate" a digital motion sensor or a camera in a terminal device. The claims are focused on the physical configuration and control of the "plurality of sensors" within the system. Therefore, the claims are directed to a non-abstract improvement in device functionality rather than a mathematical concept, method of organizing human activity, or mental process. (p. 10).
Regarding (a), Examiner respectfully disagrees. Examiner notes that the limitations regarding the use of sensor to gather physical data and the controlling of the sensors in a first or a second mode are being interpreted as additional elements and therefore not evaluated as part of the abstract idea. It is only the non-bolded limitations in the updated Step 2A Prong 1 analysis above that have been identified to be part of the abstract idea. See updated rejection above.
MPEP 2106.04(a)(2)(II) states that a claimed invention is directed to certain methods of organizing human activity if the identified claim elements contain limitations that encompass fundamental economic behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The Examiner submits that the identified claim elements represent a series of rules or instructions that a person or persons, with or without the aid of a computer, would follow to determine the order in which to conduct appropriate medical examinations. Applicant has not pointed to anything in the claims that fall outside of this characterization. Because the claim elements fall under a series of rules or instruction that a person or persons would follow to determine the order in which to conduct appropriate medical examinations, the claimed invention is directed to an abstract idea.
MPEP 2106.04(a)(2)(lll)(A) states that a claimed invention is directed to a mental process if the identified claim elements contain limitations that the human mind is equipped to perform. Abstract ideas that have been held to be practically performable in the human mind include collection/analysis of data, collection/comparison of data, and identifying/applying hair designs. The Examiner submits that Applicant's claims fall within the mental process grouping of abstract ideas and the Applicant has not identified anything in the claim invention that cannot be practically performed in the human mind. For instance, the human mind can evaluate patient data in order to determine appropriate examinations to conduct. Because the identified features of the claim can be practically performed in the human mind, the claims are directed to an abstract idea.
(b) Even if the claims were considered to recite an abstract idea, the additional elements integrate the judicial exception into a practical application. The amended claims recite a specific sequence of acts: "identifying" the operator and then "controlling" the sensors based on that identification. This integration directly improves how the device functions. Specifically, the system automatically selects the appropriate hardware sensor (the "motion sensor" for detecting movement held by the subject, or the "camera" for capturing an image by a third party) to ensure reliable data acquisition. This amounts to more than simply applying an abstract idea on a generic computer. The claims impose meaningful limits by requiring the system to mechanically switch between different hardware components ("motion sensor" and "camera") in response to the specific condition of who is holding the device. This is a specific practical application that transforms the general concept of stroke examination into a particular technological implementation that optimizes the use of the terminal's hardware resources. (p. 10).
Regarding (b), Examiner respectfully disagrees. MPEP 2106.04(d)(1) states that a practical application may be present where the claimed invention improves the functioning of a computer. See also MPEP2106.05(a)(I). Here, the implementation of Applicants claimed invention does not lead to the conclusion that the devices themselves are being improved in any way. The claims recite selecting which type of sensor is to be activated based on who the operator is identified to be; the actual sensors themselves are not, e.g., operating more efficiently by implementation of the claimed invention. In fact, the devices may be caused to operate less efficiently through the implementation of Applicant’s claimed invention; we do not know. Because there is no improvement to the functioning of the computer/devices, a practical application is not present.
In regards to the identifying and controlling steps argued, the claim recites the following limitations: “in conducting the examinations, an examination of an examination item with a priority that is lower than or equal to a predetermined value is not performed, and the conducting the examinations includes: identifying whether an operator of the terminal device is the subject; and controlling the plurality of sensors based on the identifying such that: in response to the operator being identified as the subject, the motion sensor is activated to detect a movement of the terminal device held by the subject as the sign of stroke in a first mode; and in response to the operator being identified as a person other than the subject, the camera is activated to capture an image of the subject as the sign of stroke in a second mode.”. Examiner interprets the bolded limitations as additional elements and the remaining un-bolded limitations as part of the abstract idea. The step of identifying the operator is interpreted to be part of the abstract idea and thus cannot provide a practical application under Step 2A Prong 2. The steps of controlling the sensors are additional elements that are interpreted as insignificant extra-solution activity because the steps are recited at a high level of generality and amount to mere data gathering, which is a form of extra-solution activity, and do not add a meaningful limitation to the claimed invention. MPEP 2106.04(d)(I) indicates that extra-solution data gathering activity cannot provide a practical application. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application.
Further, the Examiner notes that the steps of identifying the operator and controlling the sensors is only performed under the condition that the examination item is above a predetermined value because amended claims 1 and 14 recite that “in conducting the examinations, an examination of an examination item with a priority that is lower than or equal to a predetermined value is not performed”; indicating that the examination is only conducted when an examination item is above the predetermined value. Thus, the steps of identifying the operator and controlling the sensors may not always be performed. Therefore, the Examiner points out to Applicant that, even if these limitations did provide a practical application or improvement to the device functionality, it would still not be interpreted as eligible subject matter under 101 because there may be instances where these steps are not performed. See updated rejection above.
(c) The combination of "identifying" the operator and "controlling" the specific sensors provides a specific improvement to the technical field of medical diagnostic devices. This unconventional arrangement of components ensures that the system obtains the most relevant type of physical data for the current situation. Thus, the claims recite significantly more than just the abstract idea and are eligible for patent protection. (p. 11).
Regarding (c), Examiner respectfully disagrees. MPEP 2106.04(d)(1) states "the word 'improvements' in the context of this consideration is limited to improvements to the functioning of a computer or any other technology/technical field, whether in Step 2A Prong Two or in Step 2B." Here there is no improvement to the technical field of medical diagnostic devices because, as discussed in response to argument (b) above, the implementation of the claimed invention does not lead to the conclusion that the devices themselves are being improved. For example, there is no indication that the devices are operating more efficiently or reducing computing resources. The claims recite selecting which type of sensor is to be activated based on who the operator is identified to be; the actual sensors themselves are not being technically improved. Because a technical improvement is not present in the claims, an improvement to technology is not present. Any improvement present is an improvement to the abstract idea of, to paraphrase, determining appropriate examinations.
Further, as discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “controlling the plurality of sensors based on the identifying such that: in response to the operator being identified as the subject, the motion sensor is activated to detect a movement of the terminal device held by the subject as the sign of stroke in a first mode; and in response to the operator being identified as a person other than the subject, the camera is activated to capture an image of the subject as the sign of stroke in a second mode.” (claims 1 and 14) were considered extra-solution activity. This has been re-evaluated under the “significantly more” analysis and determined to be well-understood, routine, conventional activity in the field. See updated rejection above.
Regarding rejections under 35 USC § 103 to Claims 1, 3-4, 6-9 and 11-15, Applicant’s arguments have been fully considered and are persuasive regarding the newly added limitations. Therefore, the rejection has been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KIMBERLY VANDER WOUDE whose telephone number is (703)756-4684. The examiner can normally be reached M-F 9 AM-5 PM.
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/K.E.V./Examiner, Art Unit 3681
/PETER H CHOI/Supervisory Patent Examiner, Art Unit 3681
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