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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06 May 2026 has been entered.
Status of Claims
The action is in reply to the response filed on 06 May 2026 the following changes have been made: amendments to claims 1 and 16. Claim 2 has been canceled.
Claims 1, 3-11, 14, and 16 are currently pending and have been examined.
Notice to Applicant
The use of “optionally” and other “optionally”-related synonyms, etc. in the claims are all interpreted as alternative limitations (MPEP 2173.05(h)(II)).
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-11, 14, and 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
The claim(s) recite(s) subject matter within a statutory category as a process (claims 1, 3-11, 14, and 16).
INDEPENDENT CLAIMS
Step 2A Prong 1
Claim 1 recites steps of
maintaining a set of rules for connecting people with service providers;
receiving, from a first client computing device over a network, a request message comprising personal information identifying at least a personal issue and, optionally, a code associated with a service provider;
determining if the request message includes the code,
and if the request message includes the code, sending an offer message over the network to a client computing device of the service provider associated with the code, else, if the request message does not include the code, or if an acceptance message is not received from the service provider associated with the code,
assessing the personal information against a set of rules to identify a first subset of service providers that can address the personal issue;
for each service provider of the first subset, sending an offer message over the network to a client computing device of the service provider; and
if an acceptance message is received over the network from a given service
provider within a first timeout period, sending a response message to the first client computing device over the network, such that the response message indicates
acceptance, and sending an acknowledgement message over the network to a client computing device of the given service provider indicating that the given service
provider has been selected;
and
if an acceptance message is not received within the first timeout period:
(a) identifying, based on the set of rules, a subsequent subset of service providers that can address the personal issue, such that the subsequent subset includes at least one additional service provider not included in any preceding subset for the request message;
(b) for each additional service provider of the subsequent subset, sending a subsequent offer message over the network to a client computing device of the additional service provider;
(c) if an acceptance message is received within a subsequent timeout period, sending a response message to the first client computing device over the network, such that the response message indicates acceptance.
These steps for connecting people with service providers, as drafted, under the broadest reasonable interpretation, includes methods of organizing human activity but for recitation of generic computer components. That is, nothing in the claim precludes the italicized portions from managing personal behavior or relationships or interactions between people by organizing the activity around connecting people with service providers. This could be analogized to providing information to a person without interfering with the person’s primary activity. If a claim limitation, under its broadest reasonable interpretation, covers performance as organizing human activity but for the recitation of generic computer components, then it falls within the “Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application. In particular, the additional elements non-italicized portions identified above for claim 1, do not integrate the abstract idea into a practical application, other than the abstract idea per se, because the additional elements amount to no more than limitations which:
amount to mere instructions to apply an exception (such as
recitation of from a first client computing device over a network; and, over the network amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f))
add insignificant extra-solution activity to the abstract idea (such as recitation of receiving […] a request message comprising personal information identifying at least a personal issue and, optionally, a code associated with a service provider; sending an offer message […] to a client computing device of the service provider associated with the code; sending an offer message over the network to a client computing device of the service provider; sending a response message to the first client computing device; sending an acknowledgement message […] to a client computing device of the given service provider; sending a subsequent offer message […] to a client computing device of the additional service provider; and, sending a response message to the first client computing device amounts to mere data gathering and output since it does not add meaningful limitations to the receiving and sending actions performed, see MPEP 2106.05(g))
Each of the above additional elements therefore only amounts to mere instructions to implement functions within the abstract idea using generic computer components or other machines within their ordinary capacity, and also add insignificant extra-solution activity to the abstract idea. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. These elements are therefore not sufficient to integrate the abstract idea into a practical application. Therefore, the above claims, as a whole, are directed to an abstract idea.
Step 2B
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception. Additionally, the additional limitations, other than the abstract idea per se, amount to no more than limitations which:
amount to mere instructions to apply an exception in particular fields such as recitation of from a first client computing device over a network; and, over the network, e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f), MPEP 2106.05(f).
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields such as recitation of receiving […] a request message comprising personal information identifying at least a personal issue and, optionally, a code associated with a service provider; sending an offer message […] to a client computing device of the service provider associated with the code; sending an offer message over the network to a client computing device of the service provider; sending a response message to the first client computing device; sending an acknowledgement message […] to a client computing device of the given service provider; sending a subsequent offer message […] to a client computing device of the additional service provider; and, sending a response message to the first client computing device; e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i);
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation.
DEPENDENT CLAIMS
Step 2A Prong 1
Dependent claims recite additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claims 3-11, 14, and 16 reciting particular aspects for connecting people with service providers such as
[Claim 3] if an acceptance message is not received within the subsequent timeout period, repeating steps (a) and (b) until an acceptance message is received within the subsequent timeout period;
[Claim 4] wherein the subsequent subset includes at least one repeat service provider included in any preceding subset, and step (b) comprises sending the subsequent offer message to each service provider of the subsequent subset including each repeat service provider;
[Claim 5] wherein the personal information further identifies a location, and wherein the location is used to identify the first subset of service providers and each subsequent subset of service providers;
[Claim 6] wherein the personal information further identifies timing for service, and wherein the timing for service is used to identify the first subset of service providers and each subsequent subset of service providers;
[Claim 7] wherein each offer message and each acceptance message are text messages;
[Claim 8] wherein if multiple acceptance messages are received in connection with multiple service providers, a first acceptance message of the multiple acceptance messages determines which service providers is selected;
[Claim 9] upon selecting a given service provider, sending, over the network to the client computing device of the given service provider, an acknowledgment message confirming their acceptance of offer;
[Claim 10] wherein the personal information is patient information with the personal issue being a medical issue, and each service provider is a physician or other medical professional;
[Claim 11] wherein the set of rules comprises criteria based on location, age, sex, prior encounter, and medical issue;
[Claim 14] wherein the set of rules comprise settings, and the method further comprises: receiving input for modifying the settings; and updating the settings in accordance with the input;
[Claim 16] wherein the request message is a first request message for an initial appointment and the request message does not include the code, and the method further comprises: receiving a second request message comprising a code for a subsequent appointment; and attempting to connect with a service provider associated with that code;
these italicized portions are methods of organizing human activity since they merely describe types of data and determinations that can be performed by humans).
Step 2A Prong 2
Dependent claims 4, 9, 14, and 16 recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (the additional limitations in claim 9 (over the network) amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f)); and claim 4 (sending the subsequent offer message to each service provider of the subsequent subset including each repeat service provider), claim 9 (sending […] to the client computing device of the given service provider); claim 14 (receiving input for modifying the settings); and, claim 16 (receiving a second request message comprising a code for a subsequent appointment) amounts to mere data gathering and output since it does not add meaningful limitations to the receiving and sending actions performed, see MPEP 2106.05(g))). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B
Dependent claim 9 recites additional subject matter which, as discussed above with respect to integration of the abstract idea into a practical application, amount to invoking computers as a tool to perform the abstract idea, e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f), MPEP 2106.05(f). Also, see [0049] which provides examples of generic processors. There is no indication that these additional elements improve the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation. Dependent claims 4, 9, 14, and 16 recites additional subject matter which amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields such as recitation of receiving the reference image set amounts; e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i).
Therefore, in consideration of all the facts, the present invention is not a patent-eligible invention under USC 101. Additionally, it is evident that the present claims monopolize using a computer to connect service providers with clients, restricting further innovation in this area without offering a specific, technical improvement to how the computer actually operates, essentially monopolizing a "building block of human ingenuity" (MPEP 2106); “monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980 (quoting Myriad, 569 U.S. at 589, 106 USPQ2d at 1978 and Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012)).
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, 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, 3-8, 10, and 14 are rejected under 35 U.S.C. 103 as being unpatentable over Namboodiri et al. (US20170262921A1) in view of Al-Jazaeri at al. (US20220384026A1).
Regarding claim 1, Namboodiri discloses maintaining a set of rules for connecting people with service providers ([0025] “The scheduling and reporting application 107 may include software and/or logic to provide the functionality for determining a service provider to which a consultation request should be routed based on dynamically generated rules and notifying the service provider.”)
receiving, from a first client computing device over a network, a request message comprising personal information identifying at least a personal issue and, optionally, a code associated with a service provider ([0044] “In other embodiments, the request module 205 receives a report associated with a customer and generates a consultation request based on the report. […] The report associated with the customer may be a medical report such as an x-ray, an electrocardiogram (ECG), a mammogram, or the like, a financial report such as a credit card application, a tax report, etc.”)
sending an offer message over the network to a client computing device of the service provider associated with the code, else, if the request message does not include the code, or if an acceptance message is not received from the service provider associated with the code ([0072] “the notification module 215 does not receive an acceptance of the consultation request from the selected service provider within a given time span”)
assessing the personal information against a set of rules to identify a first subset of service providers that can address the personal issue ([0068] “The scheduling module 213 evaluates the information about the plurality of service providers based on a set of rules generated for a consultation request of a customer by the rule engine 211. In some embodiments, the scheduling module 213 applies the set of rules and matches the information about the plurality of service providers to the application of the set of rules.”)
for each service provider of the first subset, sending an offer message over the network to a client computing device of the service provider ([0073] “In some embodiments, when a consultation request is generated based on a report associated with a customer, the notification module 215 forwards the consultation request to the service providers of the recommended list.”)
and if an acceptance message is received over the network from a given service provider within a first timeout period, sending a response message to the first client computing device over the network, such that the response message indicates acceptance, ([0072] “Responsive to the selection of the service provider, the notification module 215 forwards the consultation request to the selected service provider, and receives an acceptance of the consultation request from the selected service provider. The notification module 215 notifies the customer of the acceptance of the consultation request by the selected service provider.[…] receive an acceptance of the consultation request from the selected service provider within a given time span”)
and sending an acknowledgement message over the network to a client computing device of the given service provider indicating that the given service provider has been selected ([0034] “the communication unit 241 may include a wireless transceiver (not shown) for exchanging data with the client device 115” [0072] “The notification module 215 also communicates with the attribute module 207 to modify the availability status of the selected service provider to be unavailable.”)
and if an acceptance message is not received within the first timeout period: (a) identifying, based on the set of rules, a subsequent subset of service providers that can address the personal issue, such that the subsequent subset includes at least one additional service provider not included in any preceding subset for the request message ([0072] “If the notification module 215 does not receive an acceptance of the consultation request from the selected service provider within a given time span, in some embodiments, the notification module 215 notifies the service providers of the recommended list of the consultation request” [0071] “If there is no service provider that satisfies the set of rules, the scheduling module 213 provides multiple options. In some embodiments, the scheduling module 213 may provide an alternative service provider and add the alternative service provider to the recommended list.” […] As described above, the alternative providers could be N providers with top N recommendation scores.”)
(b) for each additional service provider of the subsequent subset, sending a subsequent offer message over the network to a client computing device of the additional service provider ([0072] “If the notification module 215 does not receive an acceptance of the consultation request from the selected service provider within a given time span, in some embodiments, the notification module 215 notifies the service providers of the recommended list of the consultation request, selects the service provider that first responds the consultation request, and uses the first response from the service provider as an acceptance of the consultation request from the selected service provider.”)
(c) if an acceptance message is received within a subsequent timeout period, sending a response message to the first client computing device over the network, such that the response message indicates acceptance.
([0076] “For example, the scheduler 209 may use this handle to […] notify the customer that the service provider has accepted the consultation request.”)
Namboodiri does not explicitly disclose however Al-Jazaeri teaches determining if the request message includes the code ([0093] “In the arrangement shown, as one example, the prescription slip or the instruction slip may be paper or may be electronic in media and nature. The instruction slip or prescription slip may include […] an activated quick response chat code, a chat link, a plurality of quick response codes, a selected quick response code, a quick response code identifier”)
and if the request message includes the code ([0035] “Alternatively, the code can constitute numeric or alpha numeric and/or mixed character entry.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Namboodiri determining if the request message includes the code; and, if the request message includes the code as taught by Al-Jazaeri since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 3, Namboodiri discloses if an acceptance message is not received within the subsequent timeout period, repeating steps (a) and (b) until an acceptance message is received within the subsequent timeout period ([0071] “In some other embodiments, the scheduling module 213 may communicate with the node 109 or hub 111 to notify the customer that no service provider satisfies the rules, […] the entire scheduling may be repeated after a certain time interval.”)
Regarding claim 4, Namboodiri discloses wherein the subsequent subset includes at least one repeat service provider included in any preceding subset, and step (b) comprises sending the subsequent offer message to each service provider of the subsequent subset including each repeat service provider ([0028] “In this scenario, the scheduling and reporting application 107 notifies one or more service providers that meet the criteria without sending the recommendation list back to the customer. When a consultation request is forwarded to more than one service provider based on the set of rules and/or preferences associated with the request, any notified service provider may accept the consultation.”)
Note: the repeat service provider is interpreted to be a part of the recommendation list since they already met the criteria.
Regarding claim 5, Namboodiri discloses wherein the personal information further identifies a location ([0026] “For example, the scheduling and reporting application 107 receives a specialty, a name, a gender, and a location of a doctor.”)
and wherein the location is used to identify the first subset of service providers and each subsequent subset of service providers ([0027] “a second rule that limits the service providers within a 15 mile radius of a given location.” [0056] “For example, a doctor works at a first location on Tuesday and works at a second location on Wednesday. When providing a list of attribute options for selecting by a patient at node 109, the attribute module 207 would remove this specific doctor from a list of doctors that work at the first location on Wednesday.”)
Regarding claim 6, Namboodiri discloses wherein the personal information further identifies timing for service, and wherein the timing for service is used to identify the first subset of service providers and each subsequent subset of service providers ([0059] “Similarly, the rule engine 211 may also define a third rule (e.g., a time-of-day based rule) as including service providers that are available at 9:00-11:00 AM based on another attribute from the customer.” [0064] “Similarly, the rule engine 211 may modify a rule for selecting a primary physician to a selection of other physicians because a time-of-day rule indicates that the primary physician is not on call at a specific time of day.”)
Regarding claim 7, Namboodiri discloses wherein each offer message and each acceptance message are text messages ([0016] “In some embodiments, the network 125 may include Bluetooth communication networks or a cellular communications network for sending and receiving data including via short messaging service (SMS)” [0072] “The notification module 215 notifies the customer of the acceptance of the consultation request by the selected service provider.”)
Regarding claim 8, Namboodiri discloses wherein if multiple acceptance messages are received in connection with multiple service providers, a first acceptance message of the multiple acceptance messages determines which service providers is selected ([0076] “For example, if a plurality of service providers are notified of a consultation request and more than one of the service providers decide to select the patient for consultation the conditional state transition operations only allows one of the service providers accepts the consultation and will be connected.” [0072] “in some embodiments, the notification module 215 notifies the service providers of the recommended list of the consultation request, selects the service provider that first responds the consultation request, and uses the first response from the service provider as an acceptance of the consultation request from the selected service provider.”)
Regarding claim 10, Namboodiri discloses wherein the personal information is patient information with the personal issue being a medical issue, and each service provider is a physician or other medical professional ([0053] “If three doctors have treated the heart disease patient suffers from and a consultation request was generated based on an ECG recently taken for the patient, the attribute module 207 determines an attribute of the consultation request that indicates a selection of doctors from these three doctors.”)
Regarding claim 14, Namboodiri discloses wherein the set of rules comprise settings ([0063] “the rule engine 211 weights the rules based on importance of the attributes”)
and the method further comprises: receiving input for modifying the settings ([0064] “A customer provides the attributes in an encounter, e.g., when arriving the node 109.”)
and updating the settings in accordance with the input ([0064] “The rule engine 211 therefore generates rules on-the-fly based on dynamic attributes.”)
Claim(s) 9 and 11 are rejected under 35 U.S.C. 103 as being unpatentable over Namboodiri et al. (US20170262921A1) in view of Al-Jazaeri et al. (US20220384026A1) and further in view of Sampson at al. (US20150235183A1).
Regarding claim 9, Namboodiri in view of Al-Jazaeri does not explicitly disclose however Sampson teaches upon selecting a given service provider, sending, over the network to the client computing device of the given service provider, an acknowledgment message confirming their acceptance of offer ([0037] “providers (102) may specify that they wish to receive a message from the system whenever a client (101) selects said provider” [0060] “Upon provider registration, a message is sent to the provider (102) informing them that verification by the system administrator (103) is pending (112f). Upon verification (105c), the information is stored in the database (110) and a message is sent to the provider (102) via the messaging module (112), confirming their registration (112a).”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Namboodiri and Al-Jazaeri upon selecting a given service provider, sending, over the network to the client computing device of the given service provider, an acknowledgment message confirming their acceptance of offer as taught by Sampson since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 11, Namboodiri discloses wherein the set of rules comprises criteria based on location, […], sex, prior encounter, and medical issue ([0026] “For example, the scheduling and reporting application 107 receives a specialty, a name, a gender, and a location of a doctor.” [0053] “If three doctors have treated the heart disease patient suffers from and a consultation request was generated based on an ECG recently taken for the patient, the attribute module 207 determines an attribute of the consultation request that indicates a selection of doctors from these three doctors.”)
Namboodiri in view of Al-Jazaeri does not explicitly disclose however Sampson teaches […] age […] ([0008] “demographic factors related to the client (e.g., a patient's age)”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Namboodiri and Al-Jazaeri age as taught by Sampson since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Claim(s) 16 is rejected under 35 U.S.C. 103 as being unpatentable over Namboodiri et al. (US20170262921A1) in view of Al-Jazaeri at al. (US20220384026A1) and further in view of Schlapfer et al. (US20170048323A1).
Regarding claim 16, Namboodiri discloses wherein the request message is a first request message for an initial appointment ([0012] “receiving a consultation request from a customer.”)
Namboodiri does not explicitly disclose however Al-Jazaeri teaches and the method further comprises: receiving a second request message comprising a code for a subsequent appointment ([0112] “a patient requests access to a chat or has questions during ongoing patient care” [0108] “In the arrangement shown, as one example, the patient chat page is locked and/or restricted from use by a patient (as a default setting). […] Furthermore, and in this way, patients obtain access to the chat page by obtaining or using a chat quick response code.” [0107] “use the quick response code to gain access to a patient-doctor chat”)
and attempting to connect with a service provider associated with that code ([0109] “In the arrangement shown, as one example, once the quick response code, which provides access to the chat page, has been entered and/or scanned by the patient, the chat screen is activated and/or the restriction is removed. Furthermore, once a patient scans the quick response code or activates the chat page, the chat page of the doctor user interface is also activated.”)
It would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Namboodiri receiving a second request message comprising a code for a subsequent appointment; and, attempting to connect with a service provider associated with that code as taught by Al-Jazaeri since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Namboodiri in view of Al-Jazaeri does not explicitly disclose however Schlapfer teaches and the request message does not include the code ([0117] “the sync server may determine whether the patient-based care team assignment data of the identified data record is incomplete and/or out-of-date in determination block 532.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the system of Namboodiri and Al-Jazaeri the request message does not include the code as taught by Schlapfer since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Response to Arguments
Applicant’s arguments filed on 06 May 2026 have been considered but are not fully persuasive.
Regarding the claim objections, applicant has amended claims 1 and 16 to cure the informalities. Therefore, the claim objections have been withdrawn.
Regarding the USC 101 rejection, applicant cites multiple court decisions explaining the reasoning behind them and argues that the present USC 101 analysis overlooks technical improvements provided by the claimed invention. Specifically, the invention as recited in independent claim 1 improves the efficiency of connecting people to service providers, and more specifically, efficiently connecting patients to heath care professionals in an on-demand environment. Applicant cites [0004] of the specification which points to inefficiencies in scheduling systems may result in a patient having an initial meeting with a general practitioner, being referred to a dermatologist, and waiting months for the designated dermatologist to be available when another nearby dermatologist has availability. Applicant acknowledges that scheduling service providers is a process that can be performed by humans, but asserts that the presently claimed computer-based system improves upon this human-performed process by eliminating the time and inefficiencies involved in the individual repeatedly contacting different service providers which may or not be suitable for the individual's specific request, may or may not have availability, and may or may not be in the individual's geographic area. Applicant asserts the claims are eligible under Step 2A Prong 2 and requests withdrawal of the USC 101 rejection.
Examiner disagrees with the applicant’s arguments. Applicant makes the assertion that while scheduling service providers is a process that can be
performed by humans, the present invention is a computer-based system. However, the examiner directs the applicant to the USPTO October 2019 Guidance (incorporated in MPEP 2106) which is clear in that the courts have found claims requiring a generic computer or nominally reciting a generic computer may still recite an abstract idea even though the limitations may not be entirely performed by humans. The computers in the claims are not used in a specific, inventive way. The claims are very outcome-focused and do not detail how each of the outcomes are reached. There is no clarity on the actual computer processing or how the computer is programmed to achieve the results in a non-abstract way different from humans. One of ordinary skill in the art would understand that applicant’s invention is directed to judicial exception. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94 (Fed. Cir. 2015) ("Just as Diehr could not save the claims in Alice, which were directed to ‘implement[ing] the abstract idea of intermediated settlement on a generic computer’, it cannot save OIP's claims directed to implementing the abstract idea of price optimization on a generic computer.") (citations omitted). Examiner also asserts, under Step 2A Prong 2, that the present specification provides a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art. The MPEP provides that improvements to the functioning of a computer or to any other technology or technical field can signal eligibility, see MPEP 2106.05(a), and provides examples of improvements to computer functionality, MPEP 2106.05(a)(I), and improvements to any other technology of technical field, MPEP 2106.05(a)(I). “In computer-related technologies, the examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool”. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016). In Enfish, the court evaluated the patent eligibility of claims related to a self-referential database. Id. The court concluded the claims were not directed to an abstract idea, but rather to an improvement to computer functionality. Id. It was the specification' s discussion of the prior art and how the invention improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility. 822 F.3d at 1339, 118 USPQ2d at 1691. The claim was not simply the addition of general-purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at 1691. Unlike Enfish, the instant claimed invention appears to improve upon a judicial exception rather than a problem in the software arts. Rather than improving a computer's algorithm (i.e., solving a technically based problem), the claimed invention purports to solve the non-technological problem of connecting people to service providers in a timely manner being challenging and inefficient ([0004] of specification) by efficiently connecting patients to heath care professionals in an on-demand environment. In other words, applicant needs to understand that one of the main/glaring issues with the present invention is that the problem solved by the applicant is not a technological problem in computer technology. The problem pointed out by the applicant does not fall within any of the considerations set forth by the courts of inventions that integrate a judicial exception into a practical application (MPEP 2106.04). All the applicant is doing is applying existing/generic computer components on new data and calling it an improvement. The applicant is using a computer for its intended benefit.
The examiner asserts the following facts which the applicant has not been able to dispute:
1) the invention does NOT involve a novel algorithm or data structure that significantly improves the computer's functionality,
2) the invention does NOT involve a new hardware component or configuration that works with the computer to achieve a specific technical benefit, and
3) the computer is NOT used in a completely new way demonstrating a significant technical advancement.
It is evident from the specification and claims that the applicant is not improving computer technology, and instead providing an improvement to the abstract idea. This exact and accurate assertion has also been made by the applicant on record: “Applicant's computer-based system improves upon this human-performed process by eliminating the time and inefficiencies involved” (pg. 12 of applicant’s arguments). An improvement to the abstract idea is not an improvement to computer technology. The claimed invention appears similar to the example of improvements that are insufficient to show an improvement in computer-functionality such as arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly, Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019). See MPEP 2106.05(a)(I)(viii). The broad claims are lacking concrete limitations to integrate the abstract idea into a practical application. Examiner points out that the claimed limitations have no indication in the specification that the operations recited invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (fed Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). Most importantly, in DDR Holdings & unlike the present claims, the claims at issue specified how interactions with the Internet were manipulated to yield a desired result—a result that overrode the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. 773 F.3d at 1258; 113 USPQ2d at 1106. The examiner also points out that there is no indication in the specification that the claimed invention affects a transformation or reduction of a particular article to a different state or thing. Furthermore, examiner also points out that improving efficiency ([pg. 11] of the applicant’s arguments of record) is NOT sufficient to show an improvement in computer functionality as set forth by the courts in Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015); claiming the improved speed or efficiency inherent with applying the abstract idea on a computer does not integrate a judicial exception into a practical application or provide an inventive concept. This further supports the examiner’s assertion that the present invention does not integrate the abstract idea into a practical application. To show an involvement of a computer assists in improving technology, the claims must recite details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology (MPEP 2106.05(a)(II)). In Finjan, Inc. v. Blue Coat Systems the courts found that the claims were “directed to a non-abstract improvement in computer functionality…” (MPEP 2106.04(d)). The present invention does not meet the condition set forth by the courts and thus is not integrated into a practical application. Again, as also shown in MPEP 2106, improving upon a human-performed process by elimination time and inefficiencies involved in connecting with different service providers is not a patent eligible invention. The applicant has not demonstrated that their invention is inventive; thus, the present invention is unfortunately not patent-eligible under USC 101. Therefore, the USC 101 rejection is strongly maintained.
Regarding the USC 103 rejection, applicant argues that there is no teaching, suggestion, or motivation to combine AI-Jazaeri with Namboodiri to achieve the claimed invention. As such, applicant submits that no prima facie case of obviousness has been established for the combination of AI-Jazaeri and Namboodiri. Applicant explains the differences between the disclosures of AI-Jazaeri and Namboodiri, asserting that Namboodiri is concerned with what happens before a consultation and teaches a system and method of matching an
Applicant argues that the code in AI-Jazaeri is unrelated to and does not provide the same functionality as the code recited in claim 1. Applicant explains that the recited code in claim 1 is used to determine whether an offer message is directed to the client computing device of the service provider associated with the code or, if the request message does not include a code, an offer message is directed to the client computing device of each service provider of the first subset. unscheduled patient with an appropriate provider though a dynamic rule-based workflow. Applicant asserts that the teachings of Namboodiri and AI-Jazaeri are
directed to opposite ends of the patient care timeline, with Namboodiri directed to the beginning of a patient care timeline, and AI-Jazaeri directed to the end of the patient care timeline. Applicant further asserts that the combination of AI-Jazaeri and Namboodiri fails to teach the amended claim 1 which now includes the limitation “sending an acknowledgement message over the network to a client
computing device of the given service provider indicating that the given service provider has been selected." Applicant requests withdrawal of the USC 103 rejection for claims 3-8, 10 and 14. Applicant also requests withdrawal of the USC 103 rejection for claims 9, 11, and 16 for their dependency on claim 1.
Examiner disagrees with the applicant’s arguments. Examiner asserts that, as indicated in the present rejection, combining Namboodiri and AI-Jazaeri produces predictable results rather than a new or unexpected result. Both the Namboodiri and AI-Jazaeri references are within the same field of endeavor or reasonably pertinent to the particular problem being solved. Examiner points out that the modification or change to Namboodiri is a predictable variation that falls within the normal skill in the art, rather than a fundamental redesign. A modification that merely changes a business process, such as automating a manual activity or reordering steps, does not necessarily constitute a change in the underlying principle of operation of a technology or system. Further, the proposed modification does not change the principle of operation, but merely optimizes the performance by applying a known technique to improve the applicant’s invention, which is a predictable variation within the skill of one of ordinary skill in the art. Applicant tries to cite portions of Namboodiri and AI-Jazaeri to assert non-obviousness, but examiner points out that Namboodiri and AI-Jazaeri merely describe a different approach rather than actively discouraging the approach taken by the applicant. Especially important, which counters the applicant’s arguments, is the fact that the prior art does not contain explicit warnings, criticism, or even negative comments about the applicant’s claimed invention. “A person of ordinary skill in the art is also a person of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421, 82 USPQ2d at 1397. “[I]n many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” Id. at 420, 82 USPQ2d at 1397. Lastly, it is evident that applicant has not presented evidence of secondary considerations, such as long-felt but unsolved need, failure of others, or commercial success, which can overcome an obviousness rejection. New paragraph from Namboodiri has been cited to teach the added limitation with respect to the acknowledgement message. The remaining claims are still rejected under USC 103. Therefore, the USC 103 rejection has been maintained.
Prior Art Cited but Not Relied Upon
Custodio-Chavarría, G., Soldán-Araujo, R. P., & Burga-Durango, D. (2022, October). System to Optimize the Process of Medical Consultations Using QR Codes in the Hospitals of Peru. In 2022 Congreso Internacional de Innovación y Tendencias en Ingeniería (CONIITI) (pp. 1-4). IEEE.
This reference is relevant because it discloses connecting patients to doctors using a QR code.
Conclusion
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/WINSTON R FURTADO/Examiner, Art Unit 3687
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