DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
This action is a final rejection
Claims 1-20 are pending
Claims 1 & 11 were amended
Claims 1-20 are rejected under 35 USC § 112
Claims 1-20 are rejected under 35 USC § 101
Priority
Acknowledgement is made of Applicant’s claim for a domestic priority date of 11-3-2023
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 9-25-2024, 9-16-2025 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Independent Claims 1 and 11 are 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 amended limitations specific to the bold addition to claims 1 & 11: “augmenting by at least one processor of at least one server configured to serve a dashboard interface to a computing device of at least one clinician, an electronic health record (EHIR) system with, a software program for providing clinical decision support to the at least one clinician, via the dashboard interface, the software program being configured to dynamically filter a plurality of patients based at least in part on a category of disease associated with mitral regurgitation (MR) each patient so as to recommend treatment prioritization for the plurality of patients wherein the software program for providing clinical decision support is configured, for each patient, to perform steps for”; contains new subject matter which was not properly described in the specification as filed. Nowhere in the specification is there mention regarding “augmenting by at least one processor of at least one server configured to serve a dashboard interface to a computing device of at least one clinician, an electronic health record (EHIR) system”. Therefore, the claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph
The amended limitations specific to the bold addition to claims 1 & 11: “storing, by the software program, the at least one category recommendation in a dedicated in-memory classification data structure associated with the patient”; contains new subject matter which was not properly described in the specification as filed. Nowhere in the specification is there mention regarding “storing, by the software program, the at least one category recommendation in a dedicated in-memory classification data structure associated with the patient”. Therefore, the claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph
The amended limitations specific to the bold addition to claims 1 & 11: “provide clinical decision support for treatment via transcatheter edge-to-edge repair (TEER) of the MR of the plurality of patients”; contains new subject matter which was not properly described in the specification as filed. Nowhere in the specification is there mention regarding “provide clinical decision support for treatment via transcatheter edge-to-edge repair (TEER) of the MR of the plurality of patients”. Therefore, the claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph
The amended limitations specific to the bold addition to claims 1 & 11: “automatically refreshing, by the software program, the dashboard interface in response to the storing of the category recommendation in the in-memory classification data structure, without requiring user interaction or a page reload, so as to update a display of patient records in real-time”; contains new subject matter which was not properly described in the specification as filed. Nowhere in the specification is there mention regarding “automatically refreshing, by the software program, the dashboard interface in response to the storing of the category recommendation in the in-memory classification data structure, without requiring user interaction or a page reload, so as to update a display of patient records in real-time”. Therefore, the claim is rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph
Dependent claims 2-10, 12-20 are also rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, based on their respective dependence on claims 1 & 11 as failing to comply with the written description requirement.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are not patent eligible because the claimed invention is directed to an abstract idea without significantly more.
Analysis
First, claims are directed to one or more of the following statutory categories: a process, a machine, a manufacture, and a composition of matter. Regarding claims 1-20 the claims recite an abstract idea of classification of medical records.
Independent Claims 1 and 11 are rejected under 35 U.S.C 101 based on the following analysis.
-Step 1 (Does the claim fall within a statutory category? YES): claims 1 and 11 recite a method and system, for the classification of medical records.
-Step 2A Prong One (Does the claim fall within at least one of the groupings of abstract ideas?: YES): The claimed invention:
providing clinical decision support to at the least one clinician, .. based at least in part on a category of disease associated with mitral regurgitation (MR) each patient so as to recommend treatment prioritization for the plurality of patients
obtaining, , patient EHR data comprising at least one written report;
accessing, .., a dictionary of terminology associated with (MIR) of a mitral valve of each patient;
wherein the terminology includes a plurality of descriptors;
wherein each descriptor is indicative of at least one category of a plurality of categories associated with the MR;
wherein each descriptor is associated with at least one descriptor-specific score representative of a relevance to the at least one category
inputting, …, the at least one written report into a tokenization function to output a set of tokens, wherein the tokenization function is configured to:
parse, …, at least one word pattern in the at least one written report to generate the set of tokens from the at least one word pattern;
determining, .., at least one identified descriptor, from the plurality of descriptors, that is present in the at least one written report based at least in part on the set of tokens associated with the at least one written report;
utilizing … at least one category-specific rule parameter to determine a category-specific score of a plurality of category-specific scores associated with each category of the plurality of categories based at least in part on: the at least one identified descriptor of the plurality of descriptors and the at least one descriptor-specific score of each descriptor representative of the relevance of each descriptor to the at least one category
utilizing, at least one recommendation rule parameter to determine, … at least one recommended category score indicative of at least one particular category of the disease based at least in part on the category-specific score associated with each category
generating, …, at least one category recommendation representing the at least one particular category for the at least one patient based at least in part on the at least one recommended category score;
filtering for providing clinical decision support the patient EHR data of the plurality of patients based at least in part on at least one category recommendation associated with the at least one category recommendation score associated with each patient of the plurality of patients so as to provide clinical decision support for treatment via transcatheter edge-to-edge repair (TEER) of the MR of the plurality of patients;
refreshing so as to update a display of patient records in real-time wherein …having a plurality of selections associated with the plurality of categories of the MR
wherein each selection of the plurality of selections is configured to cause … to selectively show an associated one of the plurality of categories of the MR
wherein user selection, of a respective selection associated with the at least one category recommendation causes …to present the at least one written report associated with the patient
belong to the grouping of mental processes under concepts performed in the human mind (including an observation, evaluation, judgement, opinion) as it recites classification of medical records. Alternatively, it belongs to certain methods of organizing human activity under managing personal behavior or relationships or interactions between people as it recites classification of medical records. (refer to MPP 2106.04(a)(2)). Accordingly, this claim recites an abstract idea.
-Step 2A Prong Two (Are there additional elements in the claim that imposes a meaningful limit on the abstract idea? NO).
Claims 1 and 11 recite:
augmenting by at least one processor of at least one server configured to serve a dashboard interface to a computing device of at least one clinician, an electronic health record (EHIR) system with, a software program.. via the dashboard interface, the software program being configured to dynamically filter a plurality of patients
wherein the software program for providing clinical decision support is configured, for each patient, to perform steps
the software program
the EHR system;
storing, by the software program, the at least one category recommendation in a dedicated in-memory classification data structure associated with the patient
dynamically filtering.. by the software program, in the dashboard interface.. represented in the dashboard interface
dashboard interface;
automatically refreshing, by the software program, the dashboard interface in response to the storing of the category recommendation in the in-memory classification data structure, without requiring user interaction or a page reload
dashboard interface is rendered with at least one filter user interface (UI) element;
Claim 11 recites:
at least one processor in communication with at least one non-transitory computer readable medium having software instructions stored thereon, wherein, upon execution of the software instructions, the at least one processor is configured;
Amounting to additional elements that are recited at a high-level of generality such that it amounts to no more than mere instructions to implement an abstract idea on a computer, or merely use a computer as a tool to implement the abstract idea. Support for this can be found in the specification, paragraphs [0048-0051] & [0118-0132]. (refer to MPEP 2106.05(f)). Accordingly, the claim as a whole does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
-Step 2B (Does the additional elements of the claim provide an inventive concept?: NO. As discussed previously with respect to Step 2A Prong Two,
Claims 1 and 11 recite:
augmenting by at least one processor of at least one server configured to serve a dashboard interface to a computing device of at least one clinician, an electronic health record (EHIR) system with, a software program.. via the dashboard interface, the software program being configured to dynamically filter a plurality of patients
wherein the software program for providing clinical decision support is configured, for each patient, to perform steps
the software program
the EHR system;
storing, by the software program, the at least one category recommendation in a dedicated in-memory classification data structure associated with the patient
dynamically filtering.. by the software program, in the dashboard interface.. represented in the dashboard interface
dashboard interface;
automatically refreshing, by the software program, the dashboard interface in response to the storing of the category recommendation in the in-memory classification data structure, without requiring user interaction or a page reload
dashboard interface is rendered with at least one filter user interface (UI) element;
Claim 11 recites:
at least one processor in communication with at least one non-transitory computer readable medium having software instructions stored thereon, wherein, upon execution of the software instructions, the at least one processor is configured.
Amounting to additional elements that are recited at a high-level of generality such that it amounts to no more than mere instructions to implement an abstract idea on a computer, or merely use a computer as a tool to implement the abstract idea. Support for this can be found in the specification, (refer to MPEP 2106.05(f)) Accordingly, the claim does not provide an inventive concept (significantly more than the abstract idea) and hence the claim is ineligible.
Dependent Claims:
Step 2A Prong One: The following dependent claims recite additional limitations that further define the abstract idea of “classification of medical records”. These claim limitations include:
Claims 2 & 12:
inputting, … each descriptor of the plurality of descriptors into a tokenization function to output a set of descriptor tokens;
searching, ..the set of tokens with the set of descriptor tokens to identify occurrences of each descriptor based at least in part on a match of at least one descriptor token of each descriptor to at least one token of the written report;
Claims 3 & 13: wherein the plurality of descriptors comprises a plurality of combinations of a plurality of descriptor tokens, wherein each combination of the plurality of combinations represents a particular descriptor of the plurality of descriptors
Claims 4 and 14: wherein the plurality of combinations and the plurality of descriptor tokens are hand-crafted.
Claims 5 and 15: wherein the at least one disease comprises mitral regurgitation.
Claims 6 & 16:
wherein the plurality of categories associated with mitral regurgitation comprises: a primary degenerative mitral regurgitation category indicative of primary degenerative mitral regurgitation, and a secondary mitral regurgitation category indicative of secondary mitral regurgitation.
and wherein the plurality of category-specific scores associated with mitral regurgitation comprises: a primary degenerative mitral regurgitation score associated with the primary degenerative mitral regurgitation category, and a secondary mitral regurgitation score associated with the secondary mitral regurgitation category
Claims 7 & 17: determining the at least one category recommendation as mixed mitral regurgitation indicative of a combination of the primary degenerative mitral regurgitation and the secondary mitral regurgitation based at least in part on the primary degenerative mitral regurgitation score indicating a presence of primary degenerative mitral regurgitation and the secondary mitral regurgitation score indicating a presence of secondary mitral regurgitation;
Claims 8 & 18: determining the at least one category recommendation as unknown mitral regurgitation based at least in part on the at least one set of rules not indicating a presence of primary degenerative mitral regurgitation and not indicating a presence of secondary mitral regurgitation;
Claims 9 & 19: determining, …the at least one category recommendation indicative of the at least one particular category based at least in part on: a category-specific score associated with each category, and at least one medical test result
Claims 10 & 20: determining, the at least one category recommendation indicative of the at least one particular category based at least in part on: a category-specific score associated with each category, and a set of classification parameters for balancing each category-specific score so as to select a particular category of the plurality of categories;
Step 2A Prong Two (Are there additional elements in the claim that imposes a meaningful limit on the abstract idea? NO). The following dependent claims recite mere instructions to implement an abstract idea on a computer, or merely use a computer as a tool to implement the abstract idea. (refer to MPEP 2106.05(f)). Accordingly, the claims as a whole do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims include:
Claims 2 & 12: by the at least one processor
Claims 9 & 19: by the at least one processor
Claims 10 & 20: by the at least one processor;
Step 2B (Does the additional elements of the claim provide an inventive concept?: NO). As discussed previously with respect to Step 2A Prong Two, the following dependent claims recite mere instructions to implement an abstract idea on a computer, or merely use a computer as a tool to implement the abstract idea. (refer to MPEP 2106.05(f)). Accordingly, the claim does not provide an inventive concept (significantly more than the abstract idea) and hence the claim is ineligible. The claims include:
Claims 2 & 12: by the at least one processor
Claims 9 & 19: by the at least one processor
Claims 10 & 20: by the at least one processor.
Prior Art Made of Record
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure, and is listed in the attached form PTO-892 (Notice of References Cited). Unless expressly noted otherwise by the Examiner, all documents listed on form PTO-892 are cited in their entirety.
SHEIDE (WO 2018200274 A1) – SYSTEMS AND METHODS FOR EXTRACTING FORM INFORMATION USING ENHANCED NATURAL LANGUAGE PROCESSING- teaches: systems and methods of extracting medical entry information from medical documentation. A method comprises the steps of: identifying patient information needed for a predefined medical entry; finding the patient information in documents associated with the patient, wherein finding the patient information includes annotating the documents with a natural language processor to detect phrases and words corresponding to the patient information in the patient documents and analyzing the documents with a machine learning processor trained using the annotated documents to detect the patient information in the patient documents; and exporting the patient information found as medical entry fields
Response to Arguments
Applicant's arguments filed 9-16-2025, have been fully considered but not found
persuasive.
Applicant amended independent claims 1, 11 as posted in the above analysis with additions underlined and deletions as .
In response to applicant's arguments regarding claim rejection under 35 U.S.C § 101.
Several steps are taken in the analysis as to whether an invention is rejected under 101. The first step is to determine if the claim falls within a statutory category. In this case it does for claims 1 and 11 since the claims recite a method and system, for the classification of medical records.
The second step under 2A prong one is to determine if the claims recite an abstract idea, which would be the case if the invention can be grouped as either: a) mathematical concepts; (b) mental processes; or (c) certain methods of organizing human activity (encompassing (i) fundamental economic principles, (ii) commercial or legal interactions or (iii) managing personal behavior or relationships or interactions between people). The current invention is classified as an abstract idea since it may be grouped as a mental process. Alternatively the current invention is classified to belong to certain methods of organizing human activity under managing personal behavior or relationships or interactions between people as it recites classification of medical records.
The third step under 2A Prong Two is to determine if additional elements in the claim imposes a meaningful limit on the abstract idea in order to integrate it into a practical idea. The current invention does not represent a practical idea since the additional elements amount to mere instructions to implement an abstract idea on a computer, or merely use a generic computer as a tool to implement the abstract idea.
the fourth step under 2B is to determine if additional elements of the claim provide an inventive concept. An invention may be classified as an inventive concept if a computer-implemented processes is determined to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic, and non-conventional even if generic computer operations on a generic computing device is used to implement the abstract idea. The current invention does not represent an inventive concept since the additional elements amount to mere instructions to implement an abstract idea on a computer, or merely use a generic computer as a tool to implement the abstract idea.
Step 2A Prong ONE
The Applicant argues that independent claims 1 and 11 do not belong to an abstract idea, but does not provide further commentary except to state that the claims do not recite a mental process and or mathematical concept.
The Examiner disagrees since the Applicant’s argument is not persuasive. The method to select the abstract idea is to strip the additional elements from the claims. As seen below the recited boldened words constitute the abstract idea after stripping the un-boldened additional elements of amended limitation of claims 1 and 11:
augmenting by at least one processor of at least one server configured to serve a dashboard interface to a computing device of at least one clinician, an electronic health record (EHIR) system with, a software program for providing clinical decision support to the at least one clinician, via the dashboard interface, the software program being configured to dynamically filter a plurality of patients based at least in part on a category of disease associated with mitral regurgitation (MR) each patient so as to recommend treatment prioritization for the plurality of patients wherein the software program for providing clinical decision support is configured, for each patient, to perform steps for:
obtaining, by the software program from the EHR system, patient EHR data comprising at least one written report;
accessing, by the software program, a dictionary of terminology associated with (MIR) of a mitral valve of each patient;
wherein the terminology comprises a plurality of descriptors;
wherein each descriptor is indicative of at least one category of a plurality of categories associated with the MR
wherein each descriptor is associated with at least one descriptor-specific score representative of a relevance to the at least one category;
inputting, by the software program, the at least one written report into a tokenization function to output a set of tokens, wherein the tokenization function is configured to:
parse at least one word pattern in the at least one written report, and generate the set of tokens from the at least one word pattern;
determining, by the software program, at least one identified descriptor, from the plurality of descriptors, that is present in the at least one written report based at least in part on the set of tokens associated with the at least one written report;
utilizing, by the software program at least one category-specific rule parameter to determine a category-specific score of a plurality of category-specific scores associated with each category of the plurality of categories based at least in part on: the at least one identified descriptor of the plurality of descriptors and the at least one descriptor-specific score of each descriptor representative of the relevance of each descriptor to the at least one category;
utilizing, by the software program at least one recommendation rule parameter to determine, at least one recommended category score indicative of at least one particular category of the disease based at least in part on the category-specific score associated with each category;
generating, by the software program, at least one category recommendation representing the at least one particular category for the at least one patient based at least in part on the at least one recommended category score; and
storing, by the software program, the at least one category recommendation in a dedicated in-memory classification data structure associated with the patient;
dynamically filtering, for providing clinical decision support, by the software program, in the dashboard interface, the patient EHR data of the plurality of patients represented in the dashboard interface based at least in part on at least one category recommendation associated with the at least one category recommendation score associated with each patient of the plurality of patients so as to provide clinical decision support for treatment via transcatheter edge-to-edge repair (TEER) of the MR of the plurality of patients; and.
automatically refreshing, by the software program, the dashboard interface in response to the storing of the category recommendation in the in-memory classification data structure, without requiring user interaction or a page reload, so as to update a display of patient records in real-time wherein the dashboard interface is rendered with at least one filter user interface (UI) element having a plurality of selections associated with the plurality of categories of the MR;
wherein each selection of the plurality of selections is configured to cause the dashboard interface to selectively show an associated one of the plurality of categories of the MR; and
wherein user selection, via the dashboard interface, of a respective selection associated with the at least one category recommendation causes the dashboard interface to present the at least one written report associated with the patient
The selected abstract idea (boldened limitations) of claims 1 and 11 can be implemented by pencil and paper and thus belong to the grouping of mental processes under concepts performed in the human mind (including an observation, evaluation, judgement, opinion) as it recites detecting and monitoring oversedation to prevent harm to patients. Alternatively, the selected abstract idea (boldened limitations) of claims 1 and 11 belong to certain methods of organizing human activity under managing personal behavior or relationships or interactions between people as it recites classification of medical records (refer to MPP 2106.04(a)(2)). Accordingly independent claims 1 and 11 recite an abstract idea.
Step 2A Prong TWO
The Applicant argues that independent claims 1 and 11 as amended recite additional elements that integrate the judicial exception into a practical application. Specifically, the Applicant argues that the specification identifies a particular problem in the technical field of medical intervention administration, including improved user interfaces leveraging natural language processing (NLP)-based medical data analytics. Specifically, the Applicant argues that technical solutions and technical improvements
include aspects of improved hierarchical rule-based language processing using a curated and/or learned dictionary of hierarchical indicator words that enable recommendations and/or predictions with improved resource consumption relative to machine learning models and improved accuracy relative to typical keyword searches. Based on such technical features, further technical benefits become available to users and operators of these systems and methods. The Applicant argues that the Application as filed identifies a particular technical problem in software for clinical support, such as clinical decision support software (CDSS) for clinical decision support in identifying transcatheter edge-to-edge repair (TEER) related to resource-heavy, difficult to train neural networks and inaccurate/incomplete keyword matching resulting in clinical decision support tools having low performance, such as low accuracy and high memory and processing
footprints. Further, the Application as filed identifies a particular solution of hierarchical rule based language processing that more accurately and efficiently classifies diseases for updating of the dashboard of software for clinical decision support, and thus enabling a more efficient real time filter-able user interface using particular filtering elements to enable a provider to provide quicker and more accurate patient treatment via medical interventions associated with the classification. In summary the Applicant argues that the recited steps represent a combination of non-conventional elements that uses multiple rules-based pipelines associated with multiple categories of disease to enable a particular improved dashboard interface in software for clinical decision support in MR classification for decision support in administering TEER, the dashboard having filtering elements for selectively navigating patients based on the categorizations of the disease. Therefore, the method of amended claim 1 further improves the technology of patient navigation GUis leveraging particular improved NLP
techniques.
The Examiner disagrees since the Applicant’s arguments are not persuasive. As argued by the Applicant if the specification sets forth an improvement in technology, which the Examiner does not see, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement, which is not evident in the recitation of claims 1 or 11. The Examiner restates that claims 1 & 11 do not integrate the abstract idea into a practical application. Neither claim 1 or 11 recite additional elements that impose a meaningful limit on the abstract idea:
Claims 1 and 11 recite:
augmenting by at least one processor of at least one server configured to serve a dashboard interface to a computing device of at least one clinician, an electronic health record (EHIR) system with, a software program.. via the dashboard interface, the software program being configured to dynamically filter a plurality of patients
wherein the software program for providing clinical decision support is configured, for each patient, to perform steps
the software program
the EHR system;
storing, by the software program, the at least one category recommendation in a dedicated in-memory classification data structure associated with the patient
dynamically filtering.. by the software program, in the dashboard interface.. represented in the dashboard interface
dashboard interface;
automatically refreshing, by the software program, the dashboard interface in response to the storing of the category recommendation in the in-memory classification data structure, without requiring user interaction or a page reload
dashboard interface is rendered with at least one filter user interface (UI) element;
Claim 11 recites: at least one processor in communication with at least one non-transitory computer readable medium having software instructions stored thereon, wherein, upon execution of the software instructions, the at least one processor is configured
The additional elements as recited above amount to mere instructions to implement an abstract idea on a computer, or merely use a computer as a tool to implement the abstract idea. (refer to MPEP 2106.05(f)). Support for this can be found in the specification, paragraphs [0048-0051] & [0118-0132]. Accordingly, the claim as a whole does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
A specific ordered process that user multiple rules-based NLP pipelines associated with multiple categories of disease to enable a particular improved GUI having filtering elements for selectively navigating patients based on the categorizations of the disease, are all accomplished with the mere use of a generic computer as a tool to implement the abstract idea. Hence, claims 1 and 11 as recited are not enough to classify the claims as integrated into a practical application. In order to integrate the abstract idea into a practical application the additional elements should be shown to impose a meaningful limit on the abstract idea which is not the case in this invention. A colloquial interpretation of a practical application is not enough.
In order to integrate the abstract idea into a practical idea the Applicant could demonstrate at least one of the conditions enumerated below applies:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using 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 more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
The Applicant has not demonstrated any of the above listed conditions. As a result the Examiner restates the rejection of the invention under 35 USC §101.
Step 2B
The Applicant argues that independent claims 1 and 11 as amended amount to significantly more than the judicial exception under step 2B and further asserts that the additional elements in claims 1 and 11 as amended amount to an inventive concept, and thus "significantly more" than any alleged abstract idea recited therein. The Applicant further argues that claims 1 and 11 recite an inventive concept, at least because claims 1 and 11 contain limitation amounting to a non-conventional and non-generic arrangement of process steps.
The Examiner disagrees since the Applicant’s arguments are not persuasive. Similar to the analysis under Step 2A Prong Two, the additional elements amount to mere instructions to implement an abstract idea on a computer, or merely use a computer as a tool to implement the abstract idea. (refer to MPEP 2106.05(f)). Support for this can be found in the specification, paragraphs [0048-0051] & [0118-0132]. The use of generic computer components, in combination, do not perform functions that are not merely generic, and non-conventional even if the generic computer operations on a generic computing device is used to implement the abstract idea. Accordingly, the claim does not provide an inventive concept (significantly more than the abstract idea) and hence the claim is ineligible.
In order evaluate whether the claim recites additional elements that amount to an inventive concept what could be shown is:
Adding a specific limitation (unconventional other than what is well-understood, routine, conventional (WURC) activity in the field - see MPEP 2106.05(d)
The Applicant has not demonstrated the above listed condition.
For reasons of record and as set forth above, the examiner maintains the rejection of claims 1-20 as being directed to a judicial exception without significantly more, and thereby being directed to non-statutory subject matter under 35 USC §101. In addition claims 1-20 are rejected under 35 USC §112(a) as failing to comply with the written description requirement. In reaching this decision, the Examiner considered all evidence presented and all arguments
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 PIERRE L MACCAGNO whose telephone number is (571)270-5408. The examiner can normally be reached M-F 8:00 to 5:00.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mamon Obeid can be reached at (571)270-1813. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PIERRE L MACCAGNO/Examiner, Art Unit 3687
/MAMON OBEID/Supervisory Patent Examiner, Art Unit 3687