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 .
Examiner’s Note
Examiner has cited particular paragraphs/columns and line numbers or figures in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant, in preparing the responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner. Applicant is reminded that the Examiner is entitled to give the broadest reasonable interpretation to the language of the claims. Furthermore, the Examiner is not limited to Applicants’ definition which is not specifically set forth in the claims.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 1/8/2026 has been entered.
Response to Amendment
The amendment filed 1/8/2026 has been entered. Claims 1, 3, 4, 6, 8, 9, 11, 13, 14, 16, and 17 remain pending in the application. Claim 18-21 have been added Applicant’s amendments to the Claims have overcome each and every rejection under U.S.C. 112 and 103 previously set forth in the Office Action mailed 11/3/2025, while introducing new issues.
Response to Arguments
Applicant’s arguments, see pages 12-15, filed 1/8/2026, with respect to the rejection under U.S.C 112(a) and under the prior art have been fully considered and are persuasive. The previous rejections of all claims have been withdrawn.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claim 19 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The applicant’s specification is silent regarding any “degradation index”, rendering the claim unsupported by the specification and non-compliant with the written description requirement.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claim recites and defines a “dwell time”, which appears to have the same definition as the “stay time” recited in the specification, making the claim indefinite as it is unclear whether these are separate phenomena or the same thing under a new name.
Claim 21 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. The claim recites the same “dwell time” which is indefinite for the same reason as in Claim 18 rejected above, but further recites “the” dwell time which is indefinite as the claim does not depend from the claim which recites “a” dwell time, instead depending from Claim 1.
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, 4, 6, 8, 9, 11, 12, 13, 14, 16, and 17-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
The determination of whether a claim recites patent ineligible subject matter is a 2 step inquiry.
STEP 1: the claim does not fall within one of the four statutory categories of invention (process, machine, manufacture or composition of matter), see MPEP 2106.03, or
STEP 2: the claim recites a judicial exception, e.g. an abstract idea, without reciting additional elements that amount to significantly more than the judicial exception, as determined using the following analysis: see MPEP 2106.04
STEP 2A (PRONG 1): Does the claim recite an abstract idea, law of nature, or natural phenomenon? see MPEP 2106.04(II)(A)(1)
STEP 2A (PRONG 2): Does the claim recite additional elements that integrate the judicial exception into a practical application? see MPEP 2106.04(II)(A)(2)
STEP 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? see MPEP 2106.05
101 Analysis – Step 1
Claim 1 is directed to a system (i.e., a machine). Therefore, claim 1 is within at least one of the four statutory categories.
101 Analysis – Step 2A, Prong I
Regarding Prong I of the Step 2A analysis, the claims are to be analyzed to determine whether they recite subject matter that falls within one of the follow groups of abstract ideas: a) mathematical concepts, b) certain methods of organizing human activity, and/or c) mental processes. see MPEP 2106(A)(II)(1) and MPEP 2106.04(a)-(c)
Independent claim 1 includes limitations that recite an abstract idea (emphasized below [with the category of abstract idea in brackets]) and will be used as a representative claim for the remainder of the 101 rejection.
Claim 1 recites a transport system for transporting and collecting medical devices by a mobile robot in a device rental system, the transport system comprising:
a first trained model that has been trained, using first training data including:(i) rental performance data representing a use history of a medical device rented in the device rental system and including a record of an end time at which use of the medical device has ended, and (ii) electronic medical record data describing a patient's symptoms, treatment contents, and treatment schedules, [abstract idea – mental process]
to output, based on the electronic medical record data and data indicating the medical device currently loaned out, a predicted end time of use of the medical device; [abstract idea – mental process]
a second trained model that has been trained, using second training data including: (i) collection performance data and a collection- completion time of the medical device collected by the mobile robot, and (ii) route data indicating a collection route executed by the mobile robot, [abstract idea – mental process]
to output a collection route for collecting the medical device as a return item by the mobile robot based on the predicted end time output from the first trained model; [abstract idea – mental process]
a controller configured to: input the electronic medical record data of a respective patient and the data indicating the medical device currently loaned out to the respective patient, into the first trained model to acquire the predicted end time of use of the medical device currently loaned out to the respective patient; [abstract idea – mental process]
input the predicted end time that is output from the first trained model into the second trained model to acquire the collection route for collecting the medical device currently loaned out to the respective patient as the return item; [abstract idea – mental process]
and determine the mobile robot that performs a collection operation for the medical device currently loaned out to the respective patient based on the acquired collection route [abstract idea – mental process]
The examiner submits that the foregoing bolded limitation(s) constitute a “mental process” because under its broadest reasonable interpretation, the claim covers limitations which may be performed in the human mind. Regarding the limitations of this claim, the limitations “that has been trained, using first training data including: (i) rental performance data representing a use history of a medical device rented in the device rental system and including a record of an end time at which use of the medical device has ended, and (ii) electronic medical record data describing a patient's symptoms, treatment contents, and treatment schedules” in the context of this claim encompass a person learning information regarding the rental performance data representing a use history of a medical device rented in the device rental system and including a record of an end time at which use of the medical device has ended, and electronic medical record data describing a patient's symptoms, treatment contents, and treatment schedule. The limitations “to output, based on the electronic medical record data and data indicating the medical device currently loaned out, a predicted end time of use of the medical device” in the context of this claim encompass a person determining, using the learned relevant historical and patient treatment information, a predicted end use time of the medical device. The limitations “that has been trained, using second training data including: (i) collection performance data and a collection- completion time of the medical device collected by the mobile robot, and (ii) route data indicating a collection route executed by the mobile robot,” in the context of this claim encompass a person a person learning information regarding end use and collection times, as well as collection routes. The limitations “to output a collection route for collecting the medical device as a return item by the mobile robot based on the predicted end time output from the first trained model;” in the context of this claim encompass a person determining a collection route based on the learned information regarding end use time, collection time, and traveled routes. The limitations “input the electronic medical record data of a respective patient and the data indicating the medical device currently loaned out to the respective patient, into the first trained model to acquire the predicted end time of use of the medical device currently loaned out to the respective patient” in the context of this claim encompass a person using medical record data and information on the loaned device to determine the time that the device will be done being used. The limitations “input the predicted end time that is output from the first trained model into the second trained model to acquire the collection route for collecting the medical device currently loaned out to the respective patient as the return item” in the context of this claim encompass a person who has just determined an end-use time for a device using this information to decide on a route to . The limitations “and determine the mobile robot that performs a collection operation for the medical device currently loaned out to the respective patient based on the acquired collection route” in the context of this claim encompass a person determining which robot to send based on the determined information. Accordingly, the claim recites at least one abstract idea.
101 Analysis – Step 2A, Prong II
Regarding Prong II of the Step 2A analysis, the claims are to be analyzed to determine whether the claim, as a whole, integrates the abstract into a practical application. see MPEP 2106.04(II)(A)(2) and MPEP 2106.04(d)(2). It must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.”
In the present case, the additional limitations beyond the above-noted abstract idea are as follows (where the underlined portions are the “additional limitations” [with a description of the additional limitations in brackets], while the bolded portions continue to represent the “abstract idea”.):
a first trained model [generally linking to a particular technological environment] that has been trained, using first training data including:(i) rental performance data representing a use history of a medical device rented in the device rental system and including a record of an end time at which use of the medical device has ended, and (ii) electronic medical record data describing a patient's symptoms, treatment contents, and treatment schedules, [abstract idea – mental process]
to output, based on the electronic medical record data and data indicating the medical device currently loaned out, a predicted end time of use of the medical device; [abstract idea – mental process]
a second trained model [generally linking to a particular technological environment] that has been trained, using second training data including: (i) collection performance data and a collection- completion time of the medical device collected by the mobile robot, and (ii) route data indicating a collection route executed by the mobile robot, [abstract idea – mental process]
to output a collection route for collecting the medical device as a return item by the mobile robot based on the predicted end time output from the first trained model; [abstract idea – mental process]
a controller configured to: [performing abstract idea using generic computer] input the electronic medical record data of a respective patient and the data indicating the medical device currently loaned out to the respective patient, into the first trained model to acquire the predicted end time of use of the medical device currently loaned out to the respective patient; [abstract idea – mental process]
input the predicted end time that is output from the first trained model into the second trained model to acquire the collection route for collecting the medical device currently loaned out to the respective patient as the return item; [abstract idea – mental process]
and determine the mobile robot that performs a collection operation for the medical device currently loaned out to the respective patient based on the acquired collection route [abstract idea – mental process]
For the following reason(s), the examiner submits that the above identified additional limitations do not integrate the above-noted abstract idea into a practical application.
Regarding the additional limitations “a controller configured to:” are in the context of this claims recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of determining an end use time of the medical device based on learned data and then determining a route and vehicle to send). The limitation of first and second models in the context of the claims serve merely to generally link the abstract idea to a particular technological environment, in this case generally linking the abstract idea to training computer models- and in this way also serve to merely perform the abstract idea using a generic computer.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Further, looking at the additional limitation(s) as an ordered combination or as a whole, the limitation(s) add nothing that is not already present when looking at the elements taken individually. For instance, there is no indication that the additional elements, when considered as a whole, reflect an improvement in the functioning of a computer or an improvement to another technology or technical field, apply or use the above-noted judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, implement/use the above-noted judicial exception with a particular machine or manufacture that is integral to the claim, effect a transformation or reduction of a particular article to a different state or thing, or apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is not more than a drafting effort designed to monopolize the exception. See MPEP § 2106.05. Accordingly, the additional limitation(s) do/does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
101 Analysis – Step 2B
Regarding Step 2B of the Revised Guidance, representative independent claim 1 does not include additional elements (considered both individually and as an ordered combination) that are sufficient to amount to significantly more than the judicial exception for the same reasons to those discussed above with respect to determining that the claim does not integrate the abstract idea into a practical application. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements “a first trained model” and “a second trained model” the examiner submits that these limitations serve merely to generally link the abstract idea to a particular technological environment. Finally as discussed above, the additional limitations of the to perform the abstract idea using a “processor” are mere instructions to apply the exemption using a generic computer, which cannot provide an inventive concept. In addition, all of these additional limitations (and the combination, thereof) amount to no more than what is well-understood, routine and conventional activity. Hence, the claim is not patent eligible.
Dependent 3, 4, and 16-21 do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Therefore, dependent claims 3 and 4 are not patent eligible under the same rationale as provided for in the rejection of Independent Claim 1.
Claim 6 is rejected for the same reasons as the representative Claim 1 above, as the claim is
substantially identical to the examined claims with only minor changes to the limitations; being a method, changes which do not affect the analysis as demonstrated above.
Dependent claims 8 and 9 do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Therefore, dependent claims 8 and 9 are not patent eligible under the same rationale as provided for in the rejection of Independent Claim 6.
Claim 11 is rejected for the same reasons as the representative Claim 1 above, as the claim is
substantially identical to the examined claims with only minor changes to the limitations; being a non-transitory storage medium storing a program- changes which do not affect the analysis as demonstrated above.
Dependent claims 13 and 14 do not recite any further limitations that cause the claim(s) to be patent eligible. Rather, the limitations of dependent claims are directed toward additional aspects of the judicial exception and/or well-understood, routine and conventional additional elements that do not integrate the judicial exception into a practical application. Therefore, dependent claims 13 and 14 are not patent eligible under the same rationale as provided for in the rejection of Independent Claim 11.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACOB D UNDERBAKKE whose telephone number is (571)272-6657. The examiner can normally be reached Monday-Friday 8:00-5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jelani Smith can be reached at 571-270-3969. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JACOB DANIEL UNDERBAKKE/Examiner, Art Unit 3662
/MAHMOUD S ISMAIL/Primary Examiner, Art Unit 3662