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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 December 22, 2025 has been entered.
Status of the Claims
The office action is in response to the claim amendments and remarks filed on December 22, 2025 for the application filed December 21, 2022 which claims priority to a provisional application filed on December 21, 2021. Claims 1, 8 and 15 have been amended and claims 5, 12 and 19 have been cancelled. Claims 1-4, 6-11, 13-18 and 20 are currently pending and have been examined.
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 1-4, 6-11, 13-18 and 20 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.
Eligibility Step 1:
Under step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, claims 1-4 and 6-7 are directed towards a method (i.e. a process), which is a statutory category. Claims 8-111 and 13-14 are directed towards a computing system (i.e. a machine), which is a statutory category. Claims 15-18 and 20 are directed towards a non-transitory computer readable medium (i.e. a manufacture), which is a statutory category. Since the claims are directed toward statutory categories, it must be determined if the claims are directed towards a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea). In the instant application, the claims are directed towards an abstract idea.
Eligibility Step 2A, Prong One:
Under step 2A, prong one of the 2019 Revised Patent Subject Matter Eligibility Guidance, independent claims 1, 8 and 15 are determined to be directed to an judicial exception because an abstract idea is recited in the claims which fall within the subject matter groupings of abstract ideas. The abstract idea (identified in bold) recited in the representative claim 8 is identified as:
A computing system, comprising:
a processor; and memory storing an application which, when executed by the processor, performs an operation, the operation comprising:
receiving a medical record for a person;
scanning the medical record to generate tags, the tags providing information about at least one of medical needs or a responsible payer of the person;
assigning visual indicators to the tags to represent a compatibility of the information in the tags with a particular healthcare facility; and
transmitting, for display, a GUI comprising (i) the tags along with their visual indicators and (ii) a portion of the medical record, wherein the portion of medical record is a subset of the medical record;
identifying respective portions of the medical record that has text used to generate each of the tags; and
converting the tags into selectable tags that, when displayed in the GUI and selected by a user, update the GUI to show the respective portion of the medical record corresponding to a selected one of the tags but not the remain portion of medical record.
The identified limitations of the abstract idea of claims 1, 8 and 15 fall within the subject matter grouping of certain methods of organizing human activity and the sub grouping of managing personal behavior or relationships or interactions between people, (including social activities, teaching, and following rules or instructions). The identified limitations in the claim are directed to displaying information (i.e. medical record information, medical needs information or responsible payer information and healthcare facility compatibility to the medical needs or responsible payer information) to a person, which at its core is human activity of providing information to a person. The claims do not recite any limitations as to how to achieve the desired tags or visual indicators or any limitations that be construed as an improvement to graphical user interface. Furthermore, the scanning of medical records for medical needs necessary to generate the tags, the determining of compatibility of a healthcare facility and medical needs necessary to assign the tags and the identifying respective portions of the medical records used to generate tags fall within the subject matter grouping of mental processes, as these steps can be performed in the human mind using observations, evaluations, judgements and opinions.
Accordingly, claims 1, 8 and 15 recite an abstract idea under step 2A, prong one.
Eligibility Step 2A, Prong Two:
Under step 2A, prong two of the 2019 Revised Patent Subject Matter Eligibility Guidance, it must be determined whether the identified abstract ideas are integrated into a practical application. After evaluation, there is no indication that any additional elements or combination of elements integrate the abstract idea into a practical application, such as through: an additional element that reflects an improvement to the functioning of a computer, or an improvements to any other technology or technical field; an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; an additional element that implements the judicial exception with, or uses the judicial exception in connection with, a particular machine or manufacture that is integral to the claim; an additional element that effects a transformation or reduction of a particular article to a different state or thing; or an additional element that applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. As shown below, the additional elements, other than the abstract idea per se, when considered both individually and as an ordered combination, amount to no more than a recitation of: generally linking the abstract idea to a particular technological environment or field of use; insignificant extra-solution activity to the judicial exception; and/or adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea as evidenced below.
The additional elements recited in representative claim 8 are identified in bold as:
A computing system, comprising:
a processor; and memory storing an application which, when executed by the processor, performs an operation, the operation comprising:
receiving a medical record for a person;
scanning the medical record to generate tags, the tags providing information about at least one of medical needs or a responsible payer of the person;
assigning visual indicators to the tags to represent a compatibility of the information in the tags with a particular healthcare facility; and
transmitting, for display, a GUI comprising (i) the tags along with their visual indicators and (ii) a portion of the medical record, wherein the portion of the medical record is a subset of the medical record;
identifying respective portions of the medical record that has text used to generate each of the tags; and
converting the tags into selectable tags that, when displayed in the GUI and selected by a user, update the GUI to show the respective portion of the medical record corresponding to a selected one of the tags but not the remaining portion of the medical record.
The additional limitations of “A computing system, comprising: a processor; and memory storing an application which, when executed by the processor, performs an operation, the operation comprising:” are determined to be mere instructions to apply an abstract idea under MPEP §2106.05(f). The processor and memory are recited at a high level of generality and used in their ordinary capacity to perform the abstract idea. Therefore, these additional elements amount to no more than a recitation of the words "apply it" (or an equivalent) or no more than mere instructions to implement an abstract idea or other exception on a computer or no more than merely using a computer as a tool to perform an abstract idea.
The additional limitations of “transmitting a GUI” are determined to be no more than insignificant extra-solution activity to the judicial exception under MPEP §2106.05(g).Transmitting a GUI is the mere necessary data outputting/transmitting which does not provide meaningful limits to the claims.
Accordingly, claims 1, 8 and 15 do not recite additional elements which integrate the abstract idea into a practical application.
Eligibility Step 2B:
Under step 2B of the 2019 Revised Patent Subject Matter Eligibility Guidance, it must be determined whether provide an inventive concept by determining if the claims include additional elements or a combination of elements that are sufficient to amount to significantly more than the judicial exception. After evaluation, there is no indication that an additional element or combination of elements 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 limitations of “A computing system, comprising: a processor; and memory storing an application which, when executed by the processor, performs an operation, the operation comprising:” are determined to be mere instructions to apply an abstract idea under MPEP §2106.05(f) and the additional limitation of “transmitting a GUI” is determined to be no more than insignificant extra-solution activity to the judicial exception under MPEP §2106.05(g), which is do not amount to significantly more than the abstract idea. Evidence that transmitting a GUI is well-understood, routine and conventional is provided by MPEP §2106.05(d) subsection II (see transmitting data over a network). The additional limitation of “converting the tags into selectable tags that, when displayed in the GUI and selected by a user, update the GUI to show the respective portion of the medical record corresponding to a selected one of the tags but not the remaining portion of the medical record” is determined to well-understood, routine and conventional as evidenced by Flanagan in paragraph [0095] which describes that GUI’s may be configured such that selecting displayed facts (i.e. tags) representing medical information scanned from clinical text (i.e. medical records) shows the respective portion of the clinical text corresponding to a selected fact. Flanagan was filed in 2012 and published in 2014 indicating that such selectable tags in the context of the invention have been around for over a decade and are therefore considered well-understood, routine and conventional.
Furthermore, 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 amounts to an inventive concept.
Dependent Claims:
The dependent claims merely present additional abstract information in tandem with further details regarding the elements from the independent claims and are, therefore, directed to an abstract idea for similar reasons as given above. Claims 2-4, 9-11 and 16-18 recite elements which are encompassed by the abstract idea above and also directed to abstract idea grouping of mental processes, as the limitations can be performed in the human mind using observation, evaluations, judgments and opinions. Claims 6 and 13 recite limitations which limits the selectable tags to selectable tags which show predetermined information and pop-up windows having predetermined information, which are well-understood, routine and conventional GUI techniques, as evidenced by Flanagan et al. (U.S. Pub. No. 2012/0215558) in paragraphs [0095] and [0097]-[0098]. Claims 7, 14 and 20 recite addition abstract limitations in combination with the training of a machine learning model and use thereof. Training a machine learning model is simple a series of mathematical calculations and therefore directed to the mathematical concepts grouping of abstract idea and performing the abstract assigning based on the trained machine learning model is mere instructions to apply an abstract idea under MPEP §2106.05(f) as the trained model is used to achieve the desired result of assigning without any details as to how the assigning is achieved, None of these limitations are deemed to integrate the claims into a practical application or to amount to significantly more than the abstract idea because, as detailed above.
Therefore, whether taken individually or as an ordered combination, 1-4, 6-11, 13-18 and 20 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant's arguments filed December 25, 2025 regarding claims 1-4, 6-11, 13-18 and 20 being rejected under 35 U.S.C. §101 have been fully considered but they are not persuasive.
Applicant directs the Examiner’s attention to the USPTO August Memo and argues that the claims are clearly eligible and that the present claims at least reflect a “close call” such that unpatentability cannot be established by a preponderance of the evidence.
In response, based on a preponderance of the evidence and using the two step test for subject matter eligibility, the claims have been found to be directed to an abstract idea without significantly more and therefore rejected under 35 U.S.C. §101. The rejection was not made based on uncertainty of eligibility and the decision was not a “close call”, as detailed in the previous and instant rejection.
Applicant argues that under step 2A, prong 2, that the claimed selectable tags and visual indicators provide a technical solution to problems arising in the field GUIs, specifically to allowing for the display of relevant medical information while conserving screen space and improves computer technology (i.e. the user interface) by providing a high-level synopsis of the patient’s medical record and a level of compatibility with a healthcare facility relative to a GUI that simply displays the patient’s medical record without performing any analysis. It is argued that the claims are similar to claim 1 of example 37 which were found to be integrated into a practical application be providing a specific user interface improvement for electronic devices over prior art systems.
In response, in evaluating improvements in the function of a computer, or an improvement to any other technology or technical field, the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. If the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. Example 37 explicitly set forth the problem and improvement to GUI icon organizing in a manner that provided sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The Applicant’s specification describes the problem being solved as the significant amount of time it may take an evaluator to determine whether a healthcare facility is suitable and the solution to the problem as performing any textual analysis and compatibility analysis on the records in order to display tags, along with their visual indicator representing if a healthcare facility is suitable. Automatically determining and displaying information to a user instead of a user having to determine the information is not an improvement to GUIs, but merely automating a manual process. The specification provides no details related to conserving screen space, that the selectable tags are improvements to prior art tags, that the scanning to generate tags is an improvement to prior art scanning/tag generation. Conversely, the specification sets forth an improvement but in a conclusory manner by stating the tags and visual indicator improve computer technology relative to a GUI that does not perform text analysis or capability analysis, which does not provide the detail necessary for the asserted improvement to be apparent to a person of ordinary skill in the art.
Applicant further argues that specification does describe the claimed solution with sufficient detail such that the improvement would be apparent to one of ordinary skill in the art. Specifically, it is argued that the claims reflect selectable tag generation which functions to display a portion of the medical records that generated the tag when a given tag is selected as discussed in paragraphs [0070]-[0071] of the specification, allowing for conserving screen space while maintaining availability of relevant medical information and thus improves GUI systems.
In response, the specification does not describe the selectable tag generation which functions to display a portion of the medical records that generated the tag when a given tag is selected as an improvement to technology or technological field, but merely that the claimed invention utilizes these selectable tags. There is nothing in the specification to make it apparent to one of ordinary skill in that art that the applicant has invented or improved these selectable tags to improve GUI’s. Therefore, this element is determined not to integrate the abstract idea into a practicable application under step 2A, prong two and the analysis proceeds to step 2B.
Applicant again argues that under step 2B, the specification provides support that the claimed steps provide a technical improvement to the field of graphical user interfaces.
In response, reducing time an evaluator takes to make a determination of healthcare facility suitability by automatically determining and displaying this information is not an improvement to technology but merely automating a manual process. The claimed steps are recited at a high level of generality and do not reflect an actual improvement to the technology utilized to perform the claimed steps. The added functionality, such as the selectable tags which display portions of data from which the tags where generated is just that, functionality, and not an improvement as these types of selectable tags are determined to be well-understood, routine and conventional.
Applicant’s arguments pertaining to Cosmokey Solutions GMBH & Co. v. Duo Security LLC, No. 20-2043 (Fed. Cir. 2021) are not persuasive. As discussed above, the specification does not describe how the particular arrangement of steps in claim 1 provide a technical improvement to a technical field.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Devin C. Hein whose telephone number is (303)297-4305. The examiner can normally be reached 9:00 AM - 5:00 PM M-F MDT.
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/DEVIN C HEIN/Examiner, Art Unit 3686