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 the claims filed on 17 September 2025. Claims 1, 6, 11, and 16 were amended. Claims 1-20 are currently pending and have been examined.
Terminal Disclaimer
The terminal disclaimer filed on 17 September 2025 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Patent No. 11,600,394 has been reviewed and is NOT accepted.
The terminal disclaimer does not comply with 37 CFR 1.321 because: This application was filed on or after September 16, 2012. The person who signed the terminal disclaimer is not the applicant, the patentee or an attorney or agent of record. See 37 CFR 1.321(a) and (b). Please file a Power of Attorney that gives power to the attorney signing the terminal disclaimer, along with another copy of the terminal disclaimer, or file a terminal disclaimer that is signed by the applicant. No new fee 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 1-20 are rejected under 35 USC § 101
Step 1: Is the claim to a process, machine, manufacture, or composition of matter?
Claims 1-20 fall within one or more statutory categories. Claims 1-11 fall within the category of a process. Claims 11-15 fall within the category of a manufacture. Claims 16-20 fall within the category of a machine.
Step 2A Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claims 1-20 recite an abstract idea. Representative claim 1 recites:
…during a chat session, … requesting information on a patient…;
forwarding the [request for] information on the patient to [another party];
retrieving, in response to receipt of the [request] …, an electronic medical record, EMR, of the patient when [the request is valid]; and
sending … the electronic medical record to participants of the chat session in the response to receipt of the command in real time and when [the request is valid]; and
wherein the healthcare system is configured to facilitate collaboration among healthcare providers via the healthcare system.
Therefore, the claim as a whole is directed to “sharing patient records,” which is an abstract idea because it is a method of organizing human activity. “Sharing patient records” is considered to be a method of organizing human activity because it is an example of managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The broadest reasonable interpretation of the claims include one person requesting patient records from another person.
Step 2A Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application?
This judicial exception is not integrated into a practical application. In particular, claim 1 recites the following additional element(s):
a healthcare system;
a first authentication token;
an integration system;
automatically determining, via the integration system, that the first authentication token is valid and requesting a second authentication token when the first authentication token is expired;
[retrieving and sharing the information] when one of the first authentication token and the second authentication token is valid;
wherein the healthcare system comprises one or more processors and is configured to facilitate authenticated, real-time collaboration among healthcare providers via a secure communication interface.
The additional elements individually or in combination do not integrate the exception into a practical application. These additional element amount to merely reciting the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Claim 1 is directed to an abstract idea.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Claim 1 does not include additional elements, considered individually or in combination, 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 element(s), individually and in combination, amount to merely reciting the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). Accordingly, claim 1 is ineligible.
Dependent claim 2 recites the method of claim 1, wherein:
forming, via the healthcare system, a visit summary by mapping doctor with patient, wherein doctor to patient mapping is updated automatically based on examination of data from external electronic medical record system;
receiving, via the healthcare system, a request to initiate the chat session in relation to the patient;
identifying, via the healthcare system, a plurality of healthcare providers having responsibility for the patient from the visit summary; and
providing, via the healthcare system, the chat session with the plurality of healthcare providers as the participants using corresponding client system.
The additional elements present in this claim merely recites the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). These types of additional elements are not enough to integrate the abstract idea into a practical application, nor do they amount to significantly more than the judicial exception. Accordingly, claim 2 is ineligible.
Dependent claim 3 recites the method of claim 2, wherein:
the method is configured to form a consolidated electronic medical record of the patient from retrieved data of the electronic medical record.
This merely further limits the abstract idea of claim 1 discussed above and does not provide further additional elements. Therefore, claim 3 is considered to be ineligible.
Dependent claim 4 recites the method of claim 3, wherein:
performing predictive analytics using predictive algorithms on at least one of a chat, a collaboration history, a chat context, commands given by the participants during the chat session, and the consolidated electronic medical record of the patient to render treatment suggestions and insights to the participants.
The additional elements present in this claim merely recites the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). These types of additional elements are not enough to integrate the abstract idea into a practical application, nor do they amount to significantly more than the judicial exception. Accordingly, claim 4 is ineligible.
Dependent claim 5 recites the method of claim 4, wherein:
performing the predictive analytics using the predictive algorithms further comprises: searching for symptoms in at least one of the chat, and the collaboration history; and
arriving at the treatment suggestions and insights regarding at least one of a diagnosis and medications for the diagnosis, based on a message by the participants in the chat session.
The additional elements present in this claim merely recites the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). These types of additional elements are not enough to integrate the abstract idea into a practical application, nor do they amount to significantly more than the judicial exception. Accordingly, claim 5 is ineligible.
Dependent claim 6 recites the method of claim 2, wherein:
the chat session is automatically integrated with an identity number of the patient.
This merely further limits the abstract idea of claim 1 discussed above and does not provide further additional elements. Therefore, claim 6 is considered to be ineligible.
Dependent claim 7 recites the method of claim 2, wherein:
the command need not specify an identifier of the patient in the chat session.
This merely further limits the abstract idea of claim 1 discussed above and does not provide further additional elements. Therefore, claim 7 is considered to be ineligible.
Dependent claim 8 recites the method of claim 2, wherein:
the external electronic medical record system maintains the electronic medical record of the patient, the command being received from a first participant, the method further comprising retrieving, via the healthcare system, the electronic medical record of the patient from the external electronic medical record system without requiring the first participant to manually authenticate after specifying the command.
The additional elements present in this claim merely recites the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). These types of additional elements are not enough to integrate the abstract idea into a practical application, nor do they amount to significantly more than the judicial exception. Accordingly, claim 8 is ineligible.
Dependent claim 9 recites the method of claim 5, wherein:
the sending, via the healthcare system, comprises including the electronic medical record of the patient as the message of the chat session; and
wherein the electronic medical record of the patient is enabled to be stored as part of a chat history of the chat session in a non-volatile storage.
The additional elements present in this claim merely recites the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). These types of additional elements are not enough to integrate the abstract idea into a practical application, nor do they amount to significantly more than the judicial exception. Accordingly, claim 9 is ineligible.
Dependent claim 10 recites the method of claim 5, wherein:
receiving, via the healthcare system, an indication to save the chat session;
enabling, via the healthcare system, the participants to edit the message of the chat session to form an edited text; and
storing, via the healthcare system, the edited text in a non-volatile storage.
The additional elements present in this claim merely recites the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). These types of additional elements are not enough to integrate the abstract idea into a practical application, nor do they amount to significantly more than the judicial exception. Accordingly, claim 10 is ineligible.
Claims 11-15 are parallel in nature to claims 1-4 and 8-9. Accordingly claims 11-15 are rejected as being directed towards ineligible subject matter based upon the same analysis above.
Claims 16-17 are parallel in nature to claims 1, 3, and 7-8. Accordingly claims 16-17 are rejected as being directed towards ineligible subject matter based upon the same analysis above.
Dependent claim 18 recites the method of claim 16, wherein:
the electronic medical record of the patient is displayed as part of the chat session for a pre-configured time period.
The additional elements present in this claim merely recites the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). These types of additional elements are not enough to integrate the abstract idea into a practical application, nor do they amount to significantly more than the judicial exception. Accordingly, claim 18 is ineligible.
Dependent claim 19 recites the method of claim 16, wherein:
the digital processing system is an insurance server belonging to an insurance carrier, the insurance server maintaining information on patients having insurance coverage with the insurance carrier.
The additional elements present in this claim merely recites the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). These types of additional elements are not enough to integrate the abstract idea into a practical application, nor do they amount to significantly more than the judicial exception. Accordingly, claim 19 is ineligible. It’s also pointed out that insurance is a fundamental economic practice in the area of mitigating financial risk, therefore, abstract.
Dependent claim 20 recites the method of claim 16, wherein:
the digital processing system is an enterprise server belonging to a third-party enterprise.
The additional elements present in this claim merely recites the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely includes instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). These types of additional elements are not enough to integrate the abstract idea into a practical application, nor do they amount to significantly more than the judicial exception. Accordingly, claim 20 is ineligible.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries 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 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Kolowitz et al. (U.S. 2016/0147971), hereinafter “Kolowitz,” in view of Raduchel et al. (U.S. 2017/0161439), hereinafter “Raduchel.”
Regarding Claim 1, Kolowitz discloses a method comprising:
receiving, via a healthcare system, a command (See Kolowitz [0053] the system can include a web-based portal may be used to facilitate access to information, patient care and/or practice management.) during a chat session (See Kolowitz [0139] the system can be used for an electronic collaboration for a multi-party conversation to allow two or more participants to discuss a clinical scenario.), the command requesting information on a patient (See Kolowitz [0061] in response to a request from a physician, the system can present a patient medical history. Fig. 12G and [0138] the user interface can allow for a user to select a note/item on the UI to have more information about that note/item to display to the collaboration. See also [0145].) along with [authentication information] (See Kolowitz [0091] once a user is authenticated, the data can be accessed. See also [0092]. Further Applicant teaches token as a key, and Kolowitz teaches key [0050]-[0051]);
forwarding the command requesting information on the patient to an integration system (See Kolowitz [0038] the system can include a centralized capability including a data repository, reporting, discreet data exchange/connectivity, “smart” algorithms, personalization/consumer decision support, etc. Fig. 2 and [0059] the system includes the use of an interface unit that facilitates communication between the various systems. [0062] the system can also store information in a centralized data center.);
retrieving, in response to receipt of the command via the healthcare system, an electronic medical record, EMR, of the patient (See Kolowitz [0061] in response to a request from a physician, the system can present a patient medical history. Fig. 12G and [0138] the user interface can allow for a user to select a note/item on the UI to have more information about that note/item to display to the collaboration. See also [0145].) when [the authentication information] is valid (See Kolowitz [0091] once a user is authenticated, the data can be accessed. See also [0092]. Further Applicant teaches token as a key, and Kolowitz teaches key [0050]-[0051]); and
sending, via the healthcare system, the electronic medical record (See Kolowitz [0061] in response to a request from a physician, the system can present a patient medical history. Fig. 12G and [0138] the user interface can allow for a user to select a note/item on the UI to have more information about that note/item to display to the collaboration. See also [0145].) to participants of the chat session (See Kolowitz [0139] the system can be used for an electronic collaboration for a multi-party conversation to allow two or more participants to discuss a clinical scenario.) in the response to receipt of the command in real time (See Kolowitz [0027] the conversation is analyzed in near real-time. [0042] the system provides real-time patient data from one or more information technology (IT) systems and facilitate comparison(s) against evidence-based best practices.) and when [the authentication information] is valid (See Kolowitz [0091] once a user is authenticated, the data can be accessed. See also [0092]. Further Applicant teaches token as a key, and Kolowitz teaches key [0050]-[0051]); and
wherein the healthcare system is configured to facilitate collaboration among healthcare providers via the healthcare system (See Kolowitz [0026] the system can be used to enable collaboration in healthcare setting.);
wherein the healthcare system comprises one or more processors (See Kolowitz [0045] the system includes the use of at least one processor.) and is configured to facilitate authenticated, real-time collaboration among healthcare providers via a secure communication interface (See Kolowitz [0064] the cloud-based clinical information system may enable a first clinician to securely upload information into the cloud-based clinical information system to allow a second clinician to view and/or download the information via a web application.)(Further, examiner notes that this claim language is considered to be intended use language, and is not given patentable weight.).
Kolowitz does not disclose:
[the authentication information includes] a first authentication token;
automatically determining, via the integration system, that the first authentication token is valid and requesting a second authentication token when the first authentication token is expired;
[retrieving and sending the patient information] when one of the first authentication token and the second authentication token is valid.
Raduchel teaches:
[the authentication information includes] a first authentication token (See Raduchel [0060] the authentication may be based on a combination of hardware and software tokens of the medical service professional. [0061] the system can access a storage containing electronic medical records included in the request and generates a request for the electronic medical records stored by the first storage system based on the accessed information and the accessed authentication token.);
automatically determining, via the integration system, that the first authentication token is valid (See Raduchel [0060] the authentication may be based on a combination of hardware and software tokens of the medical service professional. [0061] the system can access a storage containing electronic medical records included in the request and generates a request for the electronic medical records stored by the first storage system based on the accessed information and the accessed authentication token.) and requesting for a second authentication token when the first authentication token is expired (See Raduchel [0094] The authorization code may timeout after an expiration date. After the expiration date, a new authorization code may be needed to obtain access the electronic medical record.);
[retrieving and sending the patient information] when one of the first authentication token and the second authentication token is valid (See Raduchel [0060] the authentication may be based on a combination of hardware and software tokens of the medical service professional. [0061] the system can access a storage containing electronic medical records included in the request and generates a request for the electronic medical records stored by the first storage system based on the accessed information and the accessed authentication token.).
The system of Raduchel is applicable to the disclosure of Kolowitz as they both share characteristics and capabilities, namely, they are directed to providing patient records to healthcare practitioners. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kolowitz to include authentication tokens and insurance servers as taught by Raduchel. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Kolowitz because transferring or gathering medical records from multiple medical service providers may be difficult and time consuming (see Raduchel [0003]).
Regarding claim 2, Kolowitz in view of Raduchel discloses the method of claim 1 as discussed above. Kolowitz further discloses a method, comprising:
forming, via the healthcare system, a visit summary (See Kolowitz [0115] the system can provide a summary of prior exams on foot pain, for example.) by mapping doctor with patient (See Kolowitz [0051] data can be stored based on patient/provider association. This meets the broadest reasonable interpretation of “mapping doctor with patient.”), wherein doctor to patient mapping is updated automatically based on examination of data from external electronic medical record system (See Kolowitz [0110] the system can perform the summarization automatically.);
receiving, via the healthcare system, a request to initiate the chat session in relation to the patient (See Kolowitz [0139] the system can be used for an electronic collaboration for a multi-party conversation to allow two or more participants to discuss a clinical scenario. This includes the initiating the collaboration. [0132] this collaboration is characterized as “chat.”);
identifying, via the healthcare system, a plurality of healthcare providers having responsibility for the patient from the visit summary (See Kolowitz [0051] data can be stored based on patient/provider association. Therefore, the patient provider relationship is identified in this storage method.); and
providing, via the healthcare system, the chat session with the plurality of healthcare providers as the participants using corresponding client system (See Kolowitz [0139] the system can be used for an electronic collaboration for a multi-party conversation to allow two or more participants to discuss a clinical scenario. This includes the initiating the collaboration. [0132] this collaboration is characterized as “chat.”).
Regarding claim 3, Kolowitz in view of Raduchel discloses the method of claim 2 as discussed above. Kolowitz further discloses a method, wherein:
the method is configured to form a consolidated electronic medical record of the patient from retrieved data of the electronic medical record (See Kolowitz [0029] the system enables information aggregation and information filtering. [0039] interconnecting the patient's electronic medical record and/or other medical data can help improve patient care and management of patient information [0048] the system can process updated patient information that is obtained to provide an updated patient record to an EMR via the communication interface.).
Regarding claim 4, Kolowitz in view of Raduchel discloses the method of claim 3 as discussed above. Kolowitz further discloses a method, wherein:
performing predictive analytics using predictive algorithms on at least one of a chat, a collaboration history, a chat context, commands given by the participants during the chat session, and the consolidated electronic medical record of the patient (See Kolowitz [0070] the system can use predictive analytics. [0072] data mining can be used to provide clinical decision support. [0141] additional content is identified and provided based on an analysis of the conversation and shared clinical content. See also [0032] and [0133].) to render treatment suggestions and insights to the participants (See Kolowitz [0030] the system provides intelligent recommendations that automatically displays medical information determined to be relevant to end user(s) for a particular clinical scenario. [0098] clinical documents and data can then be provided based on relevancy, to provide diagnostic decision support in context.).
Regarding claim 5, Kolowitz in view of Raduchel discloses the method of claim 4 as discussed above. Kolowitz further discloses a method, wherein:
performing the predictive analytics using the predictive algorithms further comprises: searching for symptoms in at least one of the chat, and the collaboration history (See Kolowitz [0070] the system can use predictive analytics. [0141] additional content is identified and provided based on an analysis of the conversation and shared clinical content. [0112] one example given includes patient foot pain. Therefore, the system is understood to include looking for symptoms in the chat or collaboration history.); and
arriving at the treatment suggestions and insights regarding at least one of a diagnosis and medications for the diagnosis (See Kolowitz [0030] the system provides intelligent recommendations that automatically displays medical information determined to be relevant to end user(s) for a particular clinical scenario. [0098] clinical documents and data can then be provided based on relevancy, to provide diagnostic decision support in context. [0036] health information can include diagnosis and treatment (medications are considered to be part of treatment).), based on a message by the participants in the chat session (See Kolowitz [0070] the system can use predictive analytics. [0072] data mining can be used to provide clinical decision support. [0141] additional content is identified and provided based on an analysis of the conversation and shared clinical content. See also [0032] and [0133].).
Regarding claim 6, Kolowitz in view of Raduchel discloses the method of claim 2 as discussed above. Kolowitz further discloses a method, wherein:
the chat session is automatically integrated with an identity number of the patient (See Kolowitz [0139] the chat session can be initiated to discuss a specific patient. This is understood to include some form of identification for the patient. See also [0112].).
Regarding claim 7, Kolowitz in view of Raduchel discloses the method of claim 2 as discussed above. Kolowitz further discloses a method, wherein:
the command need not specify an identifier of the patient in the chat session (See Kolowitz Fig. 12G and [0138] the user interface can allow for a user to select a note/item on the UI to have more information about that note/item to display to the collaboration. This example does not include specifying the identifier, but just selecting a note/item for further review.).
Regarding claim 8, Kolowitz in view of Raduchel discloses the method of claim 2 as discussed above. Kolowitz further discloses a method, wherein:
the external electronic medical record system maintains the electronic medical record of the patient (See Kolowitz [0038] the system can include a centralized capability including a data repository, reporting, discreet data exchange/connectivity, “smart” algorithms, personalization/consumer decision support, etc. Fig. 2 and [0059] the system includes the use of an interface unit that facilitates communication between the various systems. [0062] the system can also store information in a centralized data center.), the command being received from a first participant, the method further comprising retrieving, via the healthcare system, the electronic medical record of the patient from the external electronic medical record system without requiring the first participant to manually authenticate after specifying the command (See Kolowitz [0061] in response to a request from a physician, the system can present a patient medical history. Fig. 12G and [0138] the user interface can allow for a user to select a note/item on the UI to have more information about that note/item to display to the collaboration. See also [0145]. Noting in these paragraphs states that the user must manually authenticate.).
Regarding claim 9, Kolowitz in view of Raduchel discloses the method of claim 5 as discussed above. Kolowitz further discloses a method, wherein:
the sending, via the healthcare system, comprises including the electronic medical record of the patient as the message of the chat session (See Kolowitz [0140] clinical content is shared via the electronic collaboration. For example, lab results, exam notes, images, family history, EMR/PHR link(s), knowledge base information, etc., can be shared as part of the electronic collaboration.); and
wherein the electronic medical record of the patient is enabled to be stored as part of a chat history of the chat session in a non-volatile storage (See Kolowitz [0144] information associated with the conversation is saved in a data store. [0149] the system can store data in non-volatile memory.).
Regarding claim 10, Kolowitz in view of Raduchel discloses the method of claim 5 as discussed above. Kolowitz further discloses a method, wherein:
receiving, via the healthcare system, an indication to save the chat session (See Kolowitz [0144] information associated with the conversation is saved in a data store.);
enabling, via the healthcare system, the participants to edit the message of the chat session to form an edited text (See Kolowitz [0132] the system can include the use of a message editor for the message pane. See also Fig. 12A.); and
storing, via the healthcare system, the edited text in a non-volatile storage (See Kolowitz [0144] information associated with the conversation is saved in a data store. [0149] the system can store data in non-volatile memory.).
Regarding claim 11-15, Kolowitz in view of Raduchel discloses the method of claims 1-4 and 8-9. Claims 11-15 recite a medium storing instructions to perform a method substantially similar to the method of claims 1-4 and 8-9. Accordingly, claims 11-15 are rejected based on the same analysis.
Regarding claim 16-17, in view of Raduchel discloses the method of claims 1, 3, and 7-8. Claims 16-17 recite a system that performs a method substantially similar to the method of claims 1, 3, and 7-8. Accordingly, claims 11-15 are rejected based on the same analysis.
Regarding claim 18, Kolowitz in view of Raduchel discloses the system of claim 16 as discussed above. Kolowitz further discloses a method, wherein:
the electronic medical record of the patient is displayed as part of the chat session for a pre-configured time period (See Kolowitz Fig. 12B and [0133] the context pane or window t provides one or more notes relevant to the conversation including link(s) to a personal health record. Content of the context pane can update as the conversation in the transcript pane is ongoing. Therefore, the display of information is understood to occur while the information is relevant to the conversation. This is a preconfigured time period.).
Regarding claim 19, Kolowitz in view of Raduchel discloses the system of claim 16 as discussed above. Kolowitz does not further disclose a method, wherein:
the digital processing system is an insurance server belonging to an insurance carrier, the insurance server maintaining information on patients having insurance coverage with the insurance carrier.
Raduchel teaches:
the digital processing system is an insurance server belonging to an insurance carrier, the insurance server maintaining information on patients having insurance coverage with the insurance carrier (See Raduchel [0051] systems storing the medical records can include those associated with an insurance company and can be a server. [02983] the system can be used to display health insurance information. Therefore, it is understood that the insurance system stores insurance coverage information with the insurance carrier. See also [0142].).
The system of Raduchel is applicable to the disclosure of Kolowitz as they both share characteristics and capabilities, namely, they are directed to providing patient records to healthcare practitioners. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify Kolowitz to include authentication tokens and insurance servers as taught by Raduchel. One of ordinary skill in the art before the effective filing date of the claimed invention would have been motivated to modify Kolowitz because transferring or gathering medical records from multiple medical service providers may be difficult and time consuming (see Raduchel [0003]).
Regarding claim 20, Kolowitz in view of Raduchel discloses the system of claim 16 as discussed above. Kolowitz further discloses a method, wherein:
the digital processing system is an enterprise server belonging to a third-party enterprise (See Kolowitz [0131] the system can connect with third party applications.).
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 11,600,394. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim in the ‘394 anticipate the present claims.
The elements of claims 1-6, 11-12, and 15-16 of the present application are substantially similar to claim 1 (and the other independent claims) of the ‘394 patent.
The elements of claims 7-10, 13-14, and 17 of the present application are substantially similar to claims 2-5 (and the other independent claims) of the ‘394 patent.
The elements of claim 18 of the present application are substantially similar to claim 9 (and the other independent claims) of the ‘394 patent.
The elements of claim 19 of the present application are substantially similar to claim 19 (and the other independent claims) of the ‘394 patent.
The elements of claim 20 of the present application are substantially similar to claims 20 (and the other independent claims) of the ‘394 patent.
Response to Arguments
Applicant's arguments filed 17 September 2025, with respect to the 35 U.S.C. §101 rejection of the claims, have been fully considered but they are not persuasive. First, Applicant appears to argue that the claims are not directed to an abstract idea under Prong One of the analysis because they recite a “technical improvement to healthcare information systems” (see Applicant Remarks pages 7-8). This is not persuasive. The claims do not recite a technical solution to a technical problem, but merely recite additional elements in the form of general purpose computing functions and hardware. These additional element amount to merely reciting the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). That is not enough to amount to a technical solution to a technical problem.
Next, Applicant argues that the claims recite an inventive concept, and therefore amount to significantly more than the judicial exception (see Applicant Remarks pages 9). Similar to the discussion of the technical solution to a technical problem, the additional elements present in the claims, whether considered individually or in combination, do no more than merely reciting the words ‘‘apply it’’ (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (see MPEP 2106.05(f)). This is not enough to amount to significantly more than the judicial exception. Accordingly, the claims remain rejected as being directed to ineligible subject matter under 35 U.S.C. §101.
Applicant's arguments filed 17 September 2025, with respect to the 35 U.S.C. §103 rejection of the claims, have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new grounds of rejection is made in view of previously uncited portions of the Kolowitz reference.
Further, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). Kolowitz discloses the use of chat and sharing patient records between healthcare providers (see Kolowitz [0138-0139]). Raduchel teaches the use of authentication tokens for securing data transfer in connection with patient information (see Raduchel [0060-0061]). Together they teach the broadest reasonable interpretation of the claims as currently presented.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Gedala (U.S. 2013/0124226) discloses a system and method for coordination the collaboration of healthcare providers in the treatment of patients.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/B.L.H./Examiner, Art Unit 3684
/Shahid Merchant/Supervisory Patent Examiner, Art Unit 3684