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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 6, 2026 has been entered.
Response to Arguments
Applicant’s remarks concerning the previous § 101 rejections have been fully considered but are not persuasive.
Applicant first argues that the human mind is not equipped to perform the various “particular processing operations” claimed here, specifically steps such as calculating risk, generating notifications and modifying notifications. The Examiner respectfully disagrees. The human mind is fully capable of performing risk calculations and making determinations as to whether to generate and/or modify a notification. While the human mind may not itself send/transmit a notification, it may nevertheless generate the content of such a notification, and make decisions on whether to send it, whether to modify it, etc. The actual step of delivering the notification, even if it were positively recited in the claims, would be considered insignificant post-solution activity as previously noted in the rejection. Furthermore, in the § 101 analysis, additional elements (i.e. other than the mental process) such as insignificant post-solution activity need not necessarily be performable mentally for the claim as a whole to be rejected as a mental process.
Applicant next argues that the claims provide improvements in computer technology due to the alleged benefits discussed in e.g. Paras. 262-297 of the specification. The Examiner respectfully disagrees. Carrying out a mental process using conventional technology may yield advantageous results without necessarily resulting in an improvement to the technology itself. The claims here do not result in any change of the functionality of the conventional elements such as the processor(s). Rather, the alleged benefits result exclusively from the performance of the data analysis steps which could be performed mentally, i.e. the alleged benefits could be realized even if the analysis was carried out entirely mentally, demonstrating that any improvement is not an improvement to technology.
Finally, Applicant argues that the newly added limitation of “to control deployment of medical resources …” renders the § 101 analysis moot. The Examiner respectfully disagrees. This amounts to merely insignificant post-solution activity, similar to the limitations concerning the notification. Some of the factors contributing to this being considered insignificant post-solution activity include (1) the limitation is specified at a high level of generality, since there is no detail as to how deployment is “controlled” or what qualifies under the very broad term “medical resources,” (2) the specification appears to describe that this limitation is in fact controlled by third parties, e.g. “third party networks” as discussed in the new § 112 rejections below, i.e. not actually performed as part of the claimed invention, and (3) the limitation is merely a nominal or tangential addition to the primary process and/or merely applies or links the mental process to a specific field of use, namely resource allocation/deployment in disease outbreaks.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Specifically, concerning the limitation “to control deployment of medical resources …” in each of the independent claims, Applicant has pointed to the Specification at Paras. 5, 46-47, 51, 184, 221-226, 237, and 253-254 as allegedly providing support. After having reviewed these portions, the Examiner has only been able to find support for this limitation possibly being controlled by third parties, e.g. “third party networks” such as first responder network 370. For instance, in Para. 253, it states that once the individual user health risk is determined, “disease progression data can be made wirelessly available to one or more of the third-party networks 368 to amplify the decision-making capabilities of small care teams, enabling them to manage and direct critical care resources to a large number of dispersed patients at once” (emphasis added). This does not state that the invention here performs the actual control of resource deployment/allocation. Rather, this states that the invention here makes a determination which is then forwarded to other parties/networks who may then theoretically use it for that purpose. As another example, Para. 254 similarly states “such analysis may include providing one or more of the third-party networks 368 the capability of determining the allocation of resources to serve the needs of outlier patients” (emphasis added). One skilled in the art would have understood these disclosures to mean that Applicant’s invention produces data that could be sent to and used by others (third parties) for resource allocation/deployment purposes, but that the actual control of that deployment is not possessed by Applicant as part of the invention. As such, the limitation is rejected as new matter.
The dependent claims are rejected by virtue of depending on a rejected 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a mental process without significantly more.
Step 1: All of claims 1-20 are directed either to a method/process (claim 20) or to a system/machine (claims 1-19).
Step 2A, Prong One: The claims recite a mental process including steps such as “to calculate, for one or more of the plurality of users, a user-specific risk of at least one of contracting and spreading the disease based at least in part on analysis of the received physiological monitoring data and the health data characterizing the outbreak of the disease” and “to identify at least a given one of the plurality of users that is associated with at least one of a first responder network and a local caregiver network” which are steps that could be performed by the human mind and/or by a human with a physical aid such as pen and paper. For example, a doctor could mentally make these determinations. Furthermore, the steps of generating and modifying a notification can be done mentally; for example, a doctor could mentally determine a message or other notification to be delivered to an at-risk patient, and could mentally modify that message based on whether the patient is associated with a particular network of caregivers or responders. The step of modifying the calculation by lowering the threshold based on risk factors for other users in the same network can similarly be done mentally.
Step 2A, Prong Two: This judicial exception is not integrated into a practical application because the claims merely implement the mental process using generic processing technology and add insignificant extra-solution activity. Specifically: the step of receiving data (e.g. in claim 1: “to receive health data characterizing outbreak of a disease and physiological monitoring data from a plurality of wearable devices associated with a plurality of users”) is considered insignificant pre-solution activity of mere data gathering, since it merely collects the data necessary to carry out the mental process using generic data collection modalities; the “delivery” output step (although the claims do not affirmatively recite the actual delivery) is considered insignificant post-solution activity since it merely outputs the result of the mental process using a generic output modality. Similarly, the “control deployment of medical resources …” limitation is considered insignificant post-solution activity because (1) the limitation is specified at a high level of generality, since there is no detail as to how deployment is “controlled” or what qualifies under the very broad term “medical resources,” (2) the specification appears to describe that this limitation is in fact controlled only by third parties, e.g. “third party networks,” i.e. not actually performed as part of the claimed invention, and (3) the limitation is merely a nominal or tangential addition to the primary process and/or merely applies or links the mental process to a specific field of use, namely resource allocation/deployment in disease outbreaks. Furthermore, merely carrying out mental steps using generic computing technology such as “at least one processing device comprising a processor coupled to a memory” is well established to not amount to an integration into a practical application under the § 101 analysis. See, e.g., MPEP §§ 2106.04(a)(2)(III)(C) and 2106.04(d)(I) and 2106.05(f).
Step 2B: The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional elements recited in the claims are generic processing/computing components and generic data collection and output components. The Examiner previously took official notice that these are basic, generic components which are well-understood, routine and conventional in the medical diagnostic arts, and the claims here merely use them for their well-understood, routine and conventional functions. Applicant’s subsequent reply did not traverse the Examiner's assertion of official notice; therefore, the facts under official notice are now taken to be admitted prior art. See MPEP § 2144.03(C) (“If applicant does not traverse the examiner' s assertion of official notice or applicant' s traverse is not adequate, the examiner should clearly indicate in the next Office action that the common knowledge or well-known in the art statement is taken to be admitted prior art because applicant either failed to traverse the examiner' s assertion of official notice or that the traverse was inadequate.”). Examples of these components can be seen in the prior art documents cited with this action. As such, those additional elements cannot be considered “significantly more” than the judicial exception in Step 2B of the § 101 analysis. The Examiner similarly notes that controlling deployment or allocation of medical resources in a disease outbreak is incredibly well-understood, routine and conventional.
The dependent claims merely further add detail to the mental steps themselves, i.e. they only add further limitations that could be done mentally. As such, the same analysis above applies to those claims as well and yields the same result.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
US 20090276243 A1: see e.g. Para. 49 (notification messages can be sent to some or all of a given provider’s patients);
US 20150134343 A1: see e.g. Paras. 27 and 145 (group notifications can be sent to all members of a certain provider group);
US 20160142894 A1: see e.g. the abstract and Para. 123;
US 10892060 B1: see e.g. the abstract (notifications can be sent based on location, type of healthcare facility nearby, insurance network of the patient, etc.).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN R DOWNEY whose telephone number is (571)270-7247. The examiner can normally be reached Monday-Friday 8:30am-5:00pm ET.
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/JOHN R DOWNEY/Primary Examiner, Art Unit 3792