DETAILED ACTION
Status of Claims
The present application is being examined under the pre-AIA first to invent provisions.
This action is in reply to a request for continued examination (“RCE”) filed 15 September 2025, on an application filed 5 May 2023.
Claims 1-6, 8, 10-17, 19, 21 and 22 have been amended.
Claims 1-8, 10-19, 21 and 22 are currently pending and have been examined.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 15 September 2023 has been entered.
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 1-8, 10-19, 21 and 22 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.
Step 1
Claims 1-8, 10-19, 21 and 22 are within the four statutory categories. Claims 1-8, 10 and 11 are drawn to a method of controlling transmissions of content to users, which is within the four statutory categories (i.e. process). Claims 12-19, 21 and 22 are drawn to a system for controlling transmissions of content to users, which is within the four statutory categories (i.e. machine).
Prong 1 of Step 2A
Claim 1 recites: A method of controlling transmissions of content to users, comprising:
transmitting, by a server, over a first time period of a digital therapeutic session for a user, a plurality of first instructions to a user device associated with the user, each of the plurality of first instructions to present content in at least one of a plurality of variants,
wherein each variant of the plurality of variants for the content comprises at least one of: (i) a type of an action to be performed by the user via the user device, (ii) a theme for content to be presented via the user device, (iii) a type of content to be presented via the user device, (iv) inclusion of user information, (v) a layout for the content, (vi) a personality associated with the user, (v) a tone of the content to be presented via the user device, (vi) content based on a literacy of the user, (vii) content based on a health knowledge of the user, (viii) a learning style associated with the user, (ix) a personal incentive or motivation of the user, (x) a messaging style of the user, (xi) a value of the user, or (xii) a cognitive ability of the user,
wherein transmitting the plurality of first instructions comprises transmitting one or more of the plurality of first instructions at a first time during the first time period and transmitting one or more of the plurality of first instructions at a subsequent time during the first time period;
receiving, by the server, from the user device over the first time period, a plurality of responses identifying one or more interactions by the user or one or more lack of interactions by the user with a respective presentation of the content;
tracking, using a model, by the server, the plurality of responses, wherein the model comprises a statistical or machine learning (ML) model configured to update a probability for at least one of the plurality of variants;
selecting, using the model by the server, for a second time period of the digital therapeutic session, a variant from the plurality of variants of the content based at least on the probability performance measure for the variant; and
transmitting, by the server, during the second time period, a second instruction to the user device to present the content in the selected variant.
The underlined limitations as shown above, given the broadest reasonable interpretation, cover the abstract idea of a certain method of organizing human activity because they recite fundamental e, managing personal behavior or relationships or interactions between people (i.e. social activities, teaching, and following rules or instructions – in this case the receipt of responses to compliance messages sent to patients, wherein the responses are inspected for performance in order to select future messages to send, a process performed in healthcare when encouraging patients to stay compliant with treatment programs.), e.g. see MPEP 2106.04(a)(2). Any limitations not identified above as part of the abstract idea(s) are deemed “additional elements,” and will be discussed in further detail below.
Furthermore, the abstract idea for claim 12 is identical as the abstract idea for claim 1, because the only difference between claims 1 and 12 is that claim 1 recites a method, whereas claim 12 recites a system.
Dependent claims 2-8, 10, 11, 13-19, 21 and 22 include other limitations, for example claims 2, 5, 8, 13, 16 and 19 recite analyzing message performance, selecting message variants, claims 4 and 15 recite establishing and use a messaging model, claims 6, 8, 10, 11, 17, 19, 21 and 22 process and use a patient profile or describe a user, but these only serve to further narrow the abstract idea, and a claim may not preempt abstract ideas, even if the judicial exception is narrow, e.g. see MPEP 2106.04. Additionally, any limitations in dependent claims 2-8, 10, 11, 13-19, 21 and 22 not addressed above are deemed additional elements to the abstract idea, and will be further addressed below. Hence dependent claims 2-8, 10, 11, 13-19, 21 and 22 are nonetheless directed towards fundamentally the same abstract idea as independent claims 1 and 12.
Prong 2 of Step 2A
Claims 1 and 12 are not integrated into a practical application because the additional elements (i.e. any limitations that are not identified as part of the abstract idea) amount to no more than limitations which:
amount to mere instructions to apply an exception – for example, the recitation of the user device and the structural components of the server, which amounts to merely invoking a computer as a tool to perform the abstract idea, see MPEP 2106.05(f); and/or
adding insignificant extrasolution activity to the abstract idea, for example mere data transmission, selecting a particular data source or type of data to be manipulated, and/or insignificant application (e.g. see MPEP 2106.05(g)).
Additionally, dependent claims 2-8, 10, 11, 13-19, 21 and 22 include other limitations, but these limitations also amount to no more than amount to mere instructions to apply the exception (e.g. the recitation of the model of claim 4 and the database of claim 10, which merely amounts to tying the claims to a computerized process), and/or do not include any additional elements beyond those already recited in independent claims 1 and 12, and hence also do not integrate the aforementioned abstract idea into a practical application.
Step 2B
Claims 1 and 12 do not include additional elements that are sufficient to amount to “significantly more” than the judicial exception because the additional elements (i.e. the non-underlined limitations above – in this case, the device and the structural components of the computer), as stated above, are directed towards no more than limitations that amount to mere instructions to apply the exception, generally link the abstract idea to a particular technological environment or field of use, and/or add insignificant extra-solution activity to the abstract idea, wherein the insignificant extra-solution activity comprises limitations which:
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, as demonstrated by:
The Specification expressly disclosing that the additional elements are well-understood, routine, and conventional in nature:
paragraphs [0036]-[0038] and [0099] of the published Specification discloses that the additional elements (i.e. the components of the server and the user device) comprise a plurality of different types of generic computing systems that are configured to perform generic computer functions (i.e. receive and process data ) that are well-understood, routine, and conventional activities previously known to the pertinent industry (i.e. healthcare);
Relevant court decisions: The following are examples of court decisions demonstrating well-understood, routine and conventional activities, e.g. see MPEP 2106.05(d)(II):
Receiving or transmitting data over a network, e.g. see Intellectual Ventures v. Symantec – similarly, the current invention receives data, processes the data, and transmits data.
Dependent claims 2-8, 10, 11, 13-19, 21 and 22 include other limitations, but none of these limitations are deemed significantly more than the abstract idea because, as stated above, the aforementioned dependent claims do not recite any additional elements not already recited in independent claims 1 and 12, and/or the additional elements recited in the aforementioned dependent claims similarly amount to mere instructions to apply the exception (e.g. the recitation of the model of claim 4 and the database of claim 10, which merely amounts to tying the claims to a computerized process), and hence do not amount to “significantly more” than the abstract idea.
Thus, taken alone, the additional elements do not amount to significantly more than the abstract idea identified above. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually, and there is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and their collective functions merely provide conventional computer implementation.
Therefore, whether taken individually or as an ordered combination, claims 1-8, 10-19, 21 and 22 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.
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 of this title, 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, 8, 10, 12-17, 19 and 21 are rejected under 35 U.S.C. 103 as being obvious over Gao et al. (U.S. PG-Pub 2020/0336450 A1), hereinafter Gao, further in view of An et al. (U.S. PG-Pub 2016/0203290 A1), hereinafter An.
As per claims 1 and 12, Gao discloses a system and a method of controlling transmissions of content to users (See Gao, Figs. 1A-3.), comprising:
transmitting, by a server, over a first time period of a digital therapeutic session for a user, a plurality of first instructions to a user device associated with the user, each of the plurality of first instructions to present content in at least one of a plurality of variants (Gao discloses generation of multiple message objects for multiple users towards achieving an objective/behavioral endpoint, which would comprise a digital therapeutic session, wherein candidate messages are generated based on message templates associated with the user profile and then transmitted to user devices, see paragraphs 18, 93, 99, 114 and 180.);
wherein each variant of the plurality of variants for the content comprises at least one of: (i) a type of an action to be performed by the user via the user device, (ii) a theme for content to be presented via the user device, (iii) a type of content to be presented via the user device, (iv) inclusion of user information, (v) a layout for the content, (vi) a personality associated with the user, (v) a tone of the content to be presented via the user device, (vi) content based on a literacy of the user, (vii) content based on a health knowledge of the user, (viii) a learning style associated with the user, (ix) a personal incentive or motivation of the user, (x) a messaging style of the user, (xi) a value of the user, or (xii) a cognitive ability of the user (Message generated includes action type to be performed, such as hydration, see Gao paragraphs 108 and 114.),
wherein transmitting the plurality of first instructions comprises transmitting one or more of the plurality of first instructions at a first time during the first time period and transmitting one or more of the plurality of first instructions at a subsequent time during the first time period (System of Gao selects one or more first messages to send to a user and transmits them at appropriate times, see paragraphs 90-91.);
receiving, by the server, from the user device over the first time period, a plurality of responses corresponding to the plurality of first instructions, each of the plurality of responses identifying one or more interactions by the user or one or more lack of interactions by the user with a respective presentation of the message in at least one of the plurality of variants towards achieving the behavioral endpoint content (User responds to transmitted messages, see Gao paragraph 92, any response would comprise an identification of an interaction by the user.);
tracking, using a model, by the server, the plurality of responses, wherein the model comprises a statistical or machine learning (ML) model configured to update a probability for at least one of the plurality of variants (System tracks actions and responses that occur in response to the messages using a model of the message object and a response evaluator, see paragraphs 109-110 and 126-128, such as success or failure of the message. It is the Office’s position that a confidence value is a probability.);
selecting, using the model, by the server, for a second time period of the digital therapeutic session, a variant from the plurality of variants of the content based at least on the probability for the variant (Candidate future messages are generated based on previous message performance at regular time intervals. See Gao paragraphs 94, 120, 123, 128 and 192.); and
transmitting, by the server, during the second time period, a second instruction to the user device to present the content in the selected variant (Gao, paragraphs 122, 128 and 193.); and
12. at least one server having one or more processors coupled with memory (Gao, Figs. 1A-2.).
Gao discloses wherein transmitting the plurality of first instructions comprises transmitting one or more of the plurality of first instructions at a first time during the first time period and transmitting one or more of the plurality of first instructions at a subsequent time during the first time period, as shown above. However, in the interest of expediting prosecution, a secondary embodiment for planning to send a plurality of instructions subsequently within a time period will be disclosed.
An teaches that it was old and well known in the art of healthcare communications before the effective filing date of the claimed invention to disclose planning to send a plurality of instructions subsequently within a time period, see the disclose of sending reminder messages to a patient of paragraphs 10, 50, 52, 55 and 58, in order to provide patient reminder notifications to perform actions.
Therefore, it would have been obvious to one of ordinary skill in the art of healthcare communications before the effective filing date of the claimed invention to modify the messaging system of Gao to include planning to send a plurality of instructions subsequently within a time period, as taught by An, in order to provide a messaging system that can provide patient reminder notifications to perform actions.
Gao and An are both directed to the electronic processing of patient healthcare data and specifically to increasing patient adherence. Moreover, merely adding a well-known element into a well-known system, to produce a predictable result to one of ordinary skill in the art, does not render the invention patentably distinct over such combination (see MPEP 2141).
As per claims 2-6, 8, 10, 13-17, 20 and 21, Gao/An discloses claims 1 and 12, discussed above. Gao/An also disclose:
2,13. determining, by the server, that a second probability of the content in the selected variant during the second time period is different from the probability during the first time period by a threshold margin; and
selecting, by the server, responsive to determining that the second probability is different, a second variant from the plurality of variants for the content to transmit (System ranks candidate messages by performance score, and restricts potential candidate messages by comparing score to a threshold. Candidate message is selected based on confidence value “satisfying a predetermined threshold.” See paragraphs 32, 122-124 and 218-220. Performance measure can be composed of a confidence value, aka probability, score can also be compared to a threshold composed of a probability, see paragraphs 109-110, 126-128, 135 and 136.);
3,14. selecting, by the server, for a third time period of the digital therapeutic session, a second variant of a plurality of second variants for a second content to transmit based at least on the selection of the variant for the content for the second time period (System ranks candidate messages by performance score, and restricts potential candidate messages by comparing score to a threshold. Candidate message is selected based on confidence value “satisfying a predetermined threshold”; see paragraphs 32, 122-124 and 218-220.);
4,15. establishing, by the server, using the plurality of responses, the model to track, for each variant of the plurality of variants, a variance (All data is incorporated into messaging model, including performance. User attention to messages is tracked and incorporated also. See Gao, paragraphs 8, 20 and 102. It is the Office’s position that if all performance measures are tracked, their variance is inherently or implicitly tracked.);
5,16. determining, by the server, to select one of the plurality of variants of the content for the second time period, responsive to determining that the probability of the variant is below a threshold (System ranks candidate messages by performance score, and restricts potential candidate messages by comparing score to a threshold. Candidate message is selected based on confidence value “satisfying a predetermined threshold.” See paragraphs 32, 122-124, 205, 218-220 and 223. Performance measure can be composed of a confidence value, aka probability, score can also be compared to a threshold composed of a probability, see paragraphs 109-110, 126-128, 135 and 136.);
6,17. determining, by the server, based on a profile of the user, a plurality of prior probabilities of selecting the plurality of variants of the content for transmission during the first time period of the digital therapeutic session (Messages are generated and weighted/ranked based on user profile, see paragraphs 93, 114 and 125.);
8,19. wherein updating the probability for at least one variant further comprises using the plurality of responses and a profile of the user identifying information for the digital therapeutic session (System scores all responses, which are then used to establish a performance model using a training dataset including historical response data from the users, see Gao paragraphs 7, 25, 30, 118 and 203.); and
10,21. maintaining, by the server, on a database, a profile of the user identifying (i) a behavioral endpoint to be achieved, (ii) a log record for the plurality of responses from the user, and (iii) a plurality of performance metrics for the plurality of variants of the content (User profile maintained that incorporates behavioral endpoints, response logs and performance logs, see Gao paragraphs 7, 118 and 120.);
A recitation directed to the manner in which a claimed apparatus is intended to be used does not distinguish the claimed apparatus from the prior art, if the prior art has the capability to so perform, see MPEP 2114 (II) and Ex parte Masham, 2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). “Language that suggest or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation”, see MPEP 2111.04.
The following limitations are interpreted as an intended use of the claimed invention:
2,13. selecting … a second variant from the plurality of variants for the content to transmit;
3,14. selecting … a second variant of a plurality of second variants for a second content to transmit … .
The prior art is capable of performing the intended use recitation, therefore the prior art meets the limitations.
Claims 7, 11, 18 and 22 are rejected under 35 U.S.C. 103 as being obvious over Gao/Jain, further in in view of Jain et al. (U.S. Patent 11,102,304 B1), hereinafter Jain,
As per claims 7, 11, 18 and 22, Gao/An discloses:
7,18. recording one or more statistics for the digital therapeutic session based on the plurality of responses from the user device associated with the user (Gao develops a user profile that incorporates behavioral endpoints, response logs and performance logs, see paragraphs 7, 118 and 120.); and
11,22. wherein the user is on a treatment associated with addressing a behavioral endpoint, at least in partial concurrence with the digital therapeutic session (Gao, paragraph 182.).
Gao fails to explicitly disclose:
7,18. providing, by the server, a dashboard interface for presentation … ; and
11,22. wherein the user is on a medication.
Jain teaches that it was old and well known in the art of healthcare communications before the effective filing date of the claimed invention to provide:
7,18. providing, by the server, a dashboard interface for presentation … (Jain, Figs. 14 and 16.); and
11,22. wherein the user is on a medication (Jain, C17L7-12 and C27L36-58.).
Therefore, it would have been obvious to one of ordinary skill in the art of healthcare communications before the effective filing date of the claimed invention to modify the messaging system of Goa/An to provide a dashboard interface and incorporate wherein the user is on medication, as taught by Jain, in order to provide a messaging system that is enabled to provide data in a convenient form and assist users during medication treatments.
Gao and Jain are both directed to the electronic processing of patient healthcare data and specifically to increasing patient adherence. Moreover, merely adding a well-known element into a well-known system, to produce a predictable result to one of ordinary skill in the art, does not render the invention patentably distinct over such combination (see MPEP 2141).
Response to Arguments
Applicant’s arguments filed 15 September 2025 concerning the rejection of all claims under 35 U.S.C. 101, 112 and 103(a) have been fully considered and they are persuasive in view of the amendments to the claims, as the claims have been amended to no longer contain the identified issue.
Applicant’s arguments filed 15 September 2025 concerning the rejection of all claims under 35 U.S.C. 101 and 103(a) have been fully considered but they are not persuasive.
With regard to the rejection of the claims under 35 USC 101, Applicant argues on page 10 that:
A. the claims are not directed to an abstract idea as they recite computing components and message transmission; and
B. the claims recite additional elements that integrate the judicial exception into a practical application.
The Office respectfully disagrees.
Regarding argument A., please see the statutory rejection of the claims, issued above, where the claims are shown to be directed to an abstract idea without significantly more. The elements cited by the Applicant are either part of the abstract idea or do not amount to significantly more then the abstract idea.
Regarding argument B., The Office notes that the Applicant merely cited an argument without presenting any evidence to support their position. Accordingly, the rejection is upheld.
With regard to the rejection of the claims under 35 USC 103, Applicant argues on pages 10-11 that the amendments to the claims overcome the previously cited prior art.
The Office respectfully disagrees. Gao discloses the contested elements, including the tracking by a model of a probability of the variant, and the selecting of a variant based on the probabilities, as shown above.
In conclusion, all of the limitations which Applicant disputes as missing in the applied references, including the features newly added by amendment, have been fully addressed by the Office as either being fully disclosed or obvious in view of the collective teachings of Gao, Jain and An, based on the logic and sound scientific reasoning of one ordinarily skilled in the art at the time of the invention, as detailed in the remarks and explanations given in the preceding sections of the present Office Action and in the prior Office Actions (16 May 2025 and 16 December 2024), and incorporated herein.
Conclusion
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Mark Holcomb, whose telephone number is 571.270.1382. The Examiner can normally be reached on Monday-Friday (8-5). If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Kambiz Abdi, can be reached at 571.272.6702.
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/MARK HOLCOMB/
Primary Examiner, Art Unit 3685
15 October 2025