DETAILED ACTION
Status of Claims
This is a Final Office Action in response to the arguments and/or amendments filed on 24 February 2026.
Claim(s) 2, 15, and 19 is/are canceled. Claim(s) 1, 3-14, 16-18, and 20 is/are amended. Claim(s) 21-23 is/are new.
Claim(s) 1, 3-14, 16-18, and 20-23 is/are currently pending and have been examined.
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 .
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, 3-14, 16, 17, and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The broadest reasonable interpretation of a claim drawn to a computer readable storage medium typically covers both forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of computer readable media, particularly when the specification is silent. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007). Claim 1 recites a “computer program product … the computer program product comprising a computer readable storage medium having computer readable program code embodied therein” and claim 14 recites “at least one computer readable storage medium.” The disclosure at [0065] notes that “A computer readable storage medium is not comprised solely of transmission signals and includes physical and tangible components.” Based on the definition for “computer readable storage medium” which only excludes interpretations which are exclusively transmission signals, and as a wire is a physical component separate from a transmission signal, the term as defined encompasses a signal propagating through a wire. In re Nuijten specifically contemplated transitory electrical signals propagating through a wire, and indicated that such was outside of the four enumerated statutory categories. As such, the claims are interpreted as being directed to non-statutory subject matter.
Applicant advised to amend the claims to recite “non-transitory computer readable storage medium” to overcome rejection under 35 U.S.C. 101.
Claims 1, 3-14, 16-18, and 20-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 18, which is representative of claims 1 and 14, recites a
processing,
including the extracted information in metadata received with the medical image to provide updated metadata;
processing,
determining, [s] [s]
processing, by the
processing the structured result with the patient data to determine a recommendation to present in a user interface to enable a user to include the recommendation in a report for the patient.
The preceding recitation of the claim has had strikethroughs applied to the additional elements beyond the abstract idea to more clearly demonstrate the limitations setting forth the abstract idea. The remaining limitations describe a concept of evaluating an image to update information associated with the image, evaluating the image and information associated with the image to determine a medical condition, determining an expert to evaluate the image for the condition, the expert evaluating the image to provide an opinion, and processing the opinion for optional inclusion in a report. This concept is a mental process that a radiology processing manager should follow to have medical images evaluated by appropriate experts and to generate possible report findings, similar to the “mental process that a neurologist should follow when testing a patient for nervous system malfunctions” given in MPEP 2106.04(a)(2)(II)(C) as an example of managing personal behavior in the methods of organizing human activity sub-grouping. As such, these limitations set forth both a mental of organizing human activity and a mental process. Therefore the claims are determined to recite an abstract idea.
MPEP 2106, reflecting the 2019 PEG, directs examiners at Step 2B Prong Two to consider whether the additional elements of the claims integrate a recited abstract idea into a practical application.
Claim 1 recites the additional element of a computer program product, the computer program product comprising a computer readable storage medium having computer readable program code embodied therein that is executable to perform operations. Claim 14 recites the additional element of a system comprising at least one computer readable storage medium having computer readable program code. Claim 18 describes the method as “computer implemented.” These additional elements are all recited at an extremely high level of generality and encompass generic computing devices used to implement the abstract idea. Per MPEP 2106.05(f), implementing an abstract idea on a generic computing device does not integrate an abstract idea into a practical application in Step 2A Prong Two, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea on a generic computer. As such, these additional elements do not integrate the abstract idea into a practical application.
The claims further recite the additional elements of a first artificial intelligence program, an orchestrator engine, and a second artificial intelligence program of a plurality of artificial intelligence programs. These limitations are interpreted as programs used to implement the abstract idea. Thus, similar to the use of a generic computing device to implement an abstract idea, these additional elements do not integrate the abstract idea into a practical application.
There are no further additional elements. When considered as a combination, the additional elements amount to generic computing devices and computer programs which implement the abstract idea. As such, the combination of additional elements does not integrate the abstract idea into a practical application. Thus the additional elements, individually and as a combination, do not integrate the abstract idea into a practical application. Therefore the claims are determined to be directed to an abstract idea.
At Step 2B of the Mayo/Alice analysis, examiners are to consider whether the additional elements amount to significantly more than the abstract idea.
As previously noted, the claims recite additional elements which may be interpreted as generic computing devices or computing programs used to implement the abstract idea. However, per MPEP 2106.05(f), implementing an abstract idea on a generic computing does not add significantly more in Step 2B, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea on a generic computer. As such, these additional elements do not amount to significantly more.
There are no further additional elements. When considered as a combination, the additional elements amount to generic computing devices and computer programs which implement the abstract idea. As such, the combination of additional elements does not amount to significantly more than the abstract idea. Thus the additional elements, when considered individually or as a combination, do not amount to significantly more than the abstract. Thus the independent claims are not patent eligible.
Dependent claims 3-13, 16, 17, 19, and 20-23 further narrow the abstract idea, but these claims continue to recite an abstract idea, albeit a narrowed one. Dependent claims 3-13, 16, 17, 19, and 20-23 recite no further additional elements. The previously identified additional elements, individually and as a combination, do not integrate the narrowed abstract idea into a practical application for the same reasons as explained above. As such, the dependent claims are also directed to an abstract idea. Further, the previously identified additional elements, individually and as a combination, do not amount to significantly more than the abstract idea for the same reasons as explained above. Thus the additional elements of the dependent claims, when considered individually or as a combination, do not amount to significantly more than the narrow abstract ideas. Thus the dependent claims are not patent eligible.
Response to Arguments
Applicant’s Argument Regarding 112(b) Rejections of claims 10 and 17: Applicant amends claims 10 and 17 as discussed with the Examiner.
Examiner’s Response: Applicant's amendments filed 24 February 2026 have been fully considered and resolve the identified rejection. The rejection under 112(b) is withdrawn.
Applicant’s Argument Regarding 101 Rejections of claims 1-13: The specification then states a “computer readable storage medium is not comprises solely of transmission signals and includes physical and tangible components.” This express definition in the Specification excludes the “computer readable storage medium” from covering signals propagating through a medium because the Specification definition requires that the “computer readable storage medium” include “physical and tangible components” and cannot just comprise “transmission signals” without physical and tangible components. A “signal propagating through a wire” comprises the disclaimed transmission signals and does not comprise physical and tangible components.
Examiner’s Response: Applicant's arguments filed 24 February 2026 have been fully considered. Applicant’s argument is unpersuasive. Examiner disagrees that the definition “computer readable storage medium” excludes all signals propagating through a medium. Wires and fiber optic cables are clearly “physical and tangible components” separate from a transmission signal itself. Thus “a signal propagating through a wire” includes both a signal and a physical and tangible component besides the signal. Hence a signal propagating through a wire meets the instant application’s definition of a computer readable storage medium that it “is not comprised solely of transmission signals and includes physical and tangible components.” Further, Examiner notes that the specification describes the computer readable storage medium as “includ[ing] a tangible element, including at least one of … a coating.” Since signal transmission wires are typically coated, the specification is particularly amenable to an interpretation of the computer readable storage medium as being a signal propagating through a wire. In re Nuijten stated that “the claims include physical but transitory forms of signal transmission such as … electrical signals through a wire, and light pulses through a fiber-optic cable… . We hold that such transitory embodiments are not directed to statutory subject matter.” As the computer readable medium may reasonably be interpreted as a “signal propagating through a wire”, and as such signal are expressly ineligible under In re Nuijten, Applicant’s argument is unpersuasive.
Applicant’s Argument Regarding 101 Rejections of claims 14-17: Applicant amends claim 14 to recite “at least one computer readable storage medium having computer readable program code.”
Examiner’s Response: Applicant's arguments filed 24 February 2026 have been fully considered. Applicant’s amendments resolve the prior rejection under 101 for the claims encompassing a computer program per se. The prior rejection is withdrawn. Examiner notes that the claims as amended now raise the same issue of ineligible subject matter as prior claims 1-13.
Applicant’s Argument Regarding 101 Rejections of claims 1, 3-14, 16-18, and 20:
Para. 15 of the filed Specification describes technological improvements of the added limitations of the extraction step and the metadata update step.
Para. 54 of the filed Specification describes the technical benefits of the determining a medical condition step and the determining artificial intelligence program for the medical condition step.
Applicant traverses because a radiologist would not perform the operations of the added limitations of the extraction step and the metadata update step.
Further, the radiologist would not process the updated metadata and medical image to determine a medical condition to then use to determine one of a plurality of artificial intelligence programs optimized to evaluate the determine medical condition and then have that artificial intelligence program process the medical image to provide a structured result.
The Examiner provides no evidence a radiologist would perform such operations.
Applicant submits that the human mind cannot practically perform the independent claim limitations, and no one would.
MPEP 2106.04(a), pg. 28 (Rev. 01.2024, November 2024), enumerates a list of recognized abstract human activities: … The claimed focus is not found in this enumerated list.
Here, the claims recite more than abstract ideas. Instead, as in Finjan, the claims herein recite specific steps.
The claims do not preempt all techniques for processing a medical image with artificial intelligence.
The Patent Office found Example 42, claim 1 patent eligible because it allows remote users to share information in real time in a standardized format. The present claim, as with patent eligible Example 42, recites an improvement to prior art medical processing.
Examiner’s Response: Applicant's arguments filed 24 February 2026 have been fully considered but they are not persuasive. … Here, as in McRO, the claims provide a specific technique to process a medical image.
Per MPEP 2106.05(a), “If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification.” The identified disclosure generically states that the AI “uses computer vision to process the image.” This functional language devoid of details does not constitute a technical explanation as to how to implement the invention. The disclosure at [0039] uses similar language to describe the extraction and updating of metadata, and similarly does not constitute a technical explanation as to how to implement the invention. As such, the identified improvement does not appear to constitute a technical improvement.
One of ordinary skill in the art would not regard selecting a model particularly appropriate for a given set of data to process that set of data to be a technological improvement. Further, the identified disclosure and the remainder of the specification does not appear to provide a technical explanation for how to implement either determining a condition or determining a program for the condition. As such, the identified improvement does not appear to constitute a technical improvement.
Examiner respectfully disagrees. It is not apparent to the examiner why a radiologist could not review a medical image to extract information regarding the medical image and add notes of metadata to the medical image.
Examiner notes that the entirety of the claim is not considered part of the abstract idea. However, it is not apparent to the examiner why a radiologist could not review the medical image and additional metadata notes to determine a condition and then select an expert to in the condition to further process the medical image and metadata notes.
First, Examiner notes that current eligibility guidance does not require any evidentiary showing at Prong One. Further, the matter of “would” someone perform the steps does not appear relevant to the Prong One analysis. The “managing personal behavior” subgrouping does not require that the subgrouping pre-exist. A claim to a novel mental process that a person should follow in the performance of their job would fall in this subgrouping despite its novelty because it describes the managing of personal behavior.
MPEP 2106.04(a)(2)(III)(C) notes that “Claims can recite a mental process even if they are claimed as being performed on a computer.” As a claim to a computer performing a mental process may be understood to recite a mental process, it should be clear that the “practical performance” consideration of the mental processes grouping does not apply to the claim as a whole. Applicant’s argument fails to articulate why the specific limitations identified as setting forth the abstract idea cannot be practically performed in the human mind.
The cited portion of the MPEP specifically indicates that certain methods of organizing human activity include “managing personal behavior.” The current and prior rejection indicate that the concept set forth by the independent claims is “’similar to the mental process that a neurologist should follow when testing a patient for nervous system malfunctions’, given in MPEP 2106.04(a)(2)(II)(C) as an example of managing personal behavior”.
Examiner respectfully disagrees. The steps identified as specific do not appear to be specific steps, and instead simply describe desired results achieved by unspecified programs. As such, Applicant’s analogy is unpersuasive.
Per MPEP 2106.04, “[w]hile preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility.”
Examiner notes that it is unclear what applicant considers the technical improvement of the claim. However, as explained above, there does not appear to be a technical explanation for how to implement the functionality of the claimed invention. As such, there does not appear to be any technological improvement provided by the claim.
Applicant’s Argument Regarding 102 Rejections of claims 1-5, 7-9, 13-16, and 18-20: Mathur does not disclose that the orchestration engine process updated metadata to determine a medical condition and then use that medical condition to select a second artificial intelligence program to process the medical image.
Examiner’s Response: Applicant's arguments filed 24 February 2026 have been fully considered and they are persuasive. The rejection under 103 is withdrawn.
Additional Considerations
The prior art made of record and not relied upon that is considered pertinent to applicant’s disclosure can be found in the PTO-892 of the prior office action dated 18 December 2025.
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Bion A Shelden whose telephone number is (571)270-0515. The examiner can normally be reached M-F, 12pm-10pm EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kambiz Abdi can be reached at (571) 272-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Bion A Shelden/Primary Examiner, Art Unit 3685 2026-06-11
Prosecution Insights