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 .
Notice to Applicant
This communication is in response to the amendment filed 06/29/2026. Claim 1 has been labeled “Original,” but is currently amended, and will be addressed as such for purposes of compact prosecution. Claims 1-13 are presented for examination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-13 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/765,255 in view of U.S. Patent App. Pub. No. US 2021/0224624 A1 (hereinafter referred to as "Hill"). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed toward a method for exchanging healthcare information, comprising: using a healthcare informatics system to obtain first medical information that is encoded in accordance with a first coding scheme; providing a first cryptographic key to a patient device after receiving a request from the patient device for keys to be used to encrypt the first medical information; encoding the first medical information and the first cryptographic key in an optical code that is displayed for capture by a clinician device; responsive to a request from the clinician device, using a mapping to translate the first medical information to obtain second medical information that is encoded in accordance with a second coding scheme, wherein the first coding scheme and the second coding scheme correspond to different medical coding standards; and providing the second medical information to the clinician device, wherein the second medical information is provided to the clinician device after the clinician device has captured the optical code and used the first cryptographic key extracted from the optical code to decrypt the first medical information.
The aforementioned claims of copending Application No. 18/765,255 do not explicitly recite “generate first encrypted medical information by encrypting the first medical information using the first cryptographic key; causing the first encrypted medical information to be stored in a network repository” of claim 1 from the present application (App. No. 18/220,754). However, the noted features not present are obvious in view of U.S. Patent App. Pub. No. US 2021/0224624 A1 (hereinafter referred to as "Hill") (Hill: ¶ 0058-0059; ¶ 0079; ¶ 0101). It would have been prima facie obvious to combine the features of the claims of copending Application No. 18/765,255 with generate first encrypted medical information by encrypting the first medical information using the first cryptographic key; causing the first encrypted medical information to be stored in a network repository of Hill, with the motivation of “the potential loss of this information…is reduced or eliminated” (Hill: ¶ 0089).
This is a provisional nonstatutory double patenting rejection.
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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Based upon consideration of all of the relevant factors with respect to the claims as a whole, the claims are directed to non-statutory subject matter which do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the following analysis:
Claim 1 is drawn to a method which is within the four statutory categories (i.e., method).
Independent claim 1 recites…obtain first medical information that is encoded in accordance with a first coding scheme; providing a first cryptographic key…after receiving a request…for keys to be used to encrypt the first medical information; generate first encrypted medical information by encrypting the first medical information using the first cryptographic key; encoding information identifying the network repository and the first cryptographic key in an optical code that is displayed for capture…; responsive to a request…, using a mapping to translate the first medical information to obtain second medical information that is encoded in accordance with a second coding scheme, wherein the first coding scheme and the second coding scheme correspond to different formal medical coding standards; and providing the second medical information…, wherein the second medical information is provided…after the clinician device has captured the optical code and used the first cryptographic key extracted from the optical code to retrieve and decrypt the first medical information from the network repository.
Under its broadest reasonable interpretation, the limitations noted above, as drafted, covers certain methods of organizing human activity (i.e., managing personal behavior or relationships or interactions between people…following rules or instructions). That is, the claim encompasses rules or instructions to access and exchange healthcare information between users. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or relationships or interactions between people, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
Claim 1 recites additional elements (i.e., a healthcare informatics system; a patient device; causing the first encrypted medical information to be stored in a network repository; a clinician device). Looking to the specifications, a computing system having a processor-readable storage medium comprising code; a processing circuit is described at a high level of generality (¶ 0027-0032; ¶ 0165-0169), such that it amounts to no more than mere instructions to apply the exception using generic computer components. Also, “a healthcare informatics system” only invokes the healthcare informatics system merely as a tool in its ordinary capacity to perform an existing process (i.e., providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Also, “a patient device” and “a clinician device” only invokes the devices merely as a tool in its ordinary capacity to perform an existing process (i.e., receiving, transmitting data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Also, “causing the first encrypted medical information to be stored in a network repository” only invokes the network repository merely as a tool in its ordinary capacity to perform an existing process (i.e., storing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only provides the input data for the performance of the abstract idea, and as such, amounts to insignificant extrasolution activity (i.e., mere data gathering), which does not impose meaningful limits on the scope of the claim. See: MPEP § 2106.05(g). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Accordingly, the claims are directed to an abstract idea.
Reevaluated under step 2B, the additional elements noted above do not provide “significantly more” when taken either individually or as an ordered combination. The use of a general purpose computer or computers (i.e., a computing system having a processor-readable storage medium comprising code; a processing circuit) amounts to no more than mere instructions to apply the exception using generic computer components and does not impose any meaningful limitation on the computer implementation of the abstract idea, so it does not amount to significantly more than the abstract idea. Also, “a healthcare informatics system” only invokes the healthcare informatics system merely as a tool in its ordinary capacity to perform an existing process (i.e., providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Also, “a patient device” and “a clinician device” only invokes the devices merely as a tool in its ordinary capacity to perform an existing process (i.e., receiving, transmitting data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Also, “causing the first encrypted medical information to be stored in a network repository” only invokes the network repository merely as a tool in its ordinary capacity to perform an existing process (i.e., storing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, which does not impose meaningful limits on the scope of the claim. Furthermore, receiving or transmitting data over a network, electronic recordkeeping, and storing and retrieving information in memory has been recognized by the courts as well-understood, routine, and conventional elements/functions. See: MPEP § 2106.05(d)(II). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. The combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology and their collective functions merely provide a conventional computer implementation of the abstract idea. Furthermore, the additional elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than a recitation of generally linking the abstract idea to a particular technological environment or field of use, as the courts have found in Parker v. Flook; similarly, the current invention merely limits the claimed calculations to the healthcare industry which does not impose meaningful limits on the scope of the claim. Therefore, there are no limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception.
Dependent claims 2-13 include all the limitations of the parent claims and further elaborate on the abstract idea discussed above and incorporated herein.
Claims 2-13 further define the analysis and organization of data for the performance of the abstract idea and do not recite any additional elements. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Thus, the claims do not integrate the abstract idea into a practical application and do not provide “significantly more.”
Although the dependent claims add additional limitations, they only serve to further limit the abstract idea by reciting limitations on what the information is and how it is received and used. These information characteristics do not change the fundamental analogy to the abstract idea grouping of “Certain Methods of Organizing Human Activity,” and, when viewed individually or as a whole, they do not add anything substantial beyond the abstract idea. Furthermore, the combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology. Therefore, the claims when taken as a whole are ineligible for the same reasons as the independent claims.
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 (i.e., changing from AIA to pre-AIA ) 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-9, 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. US 2021/0224624 A1 (hereinafter referred to as "Hill") in view of U.S. Patent App. Pub. No. US 2017/0068785 A1 (hereinafter referred to as "Experton").
Regarding (currently amended) claim 1, Hill teaches a method for exchanging healthcare information, comprising:
using a healthcare informatics system to obtain first medical information that is encoded in accordance with a first coding scheme (Hill: figure 7k, i.e., “Summary Screen” includes “PMHX,” “FamHX,” “PSHx,” “sOChX,” “Immun.,” “Meds.”; ¶ 0061, i.e., “FIGS. 7A-7N show various examples of user interfaces 131 of the client application 130 used to perform an ingestion process by prompting the user with various types of user input”; ¶ 0072);
providing a first cryptographic key to a patient device after receiving a request from the patient device for keys to be used to encrypt the first medical information (Hill: ¶ 0060, i.e., “the key management service 115 manages the storage and transmission of the IV to the client devices 106…along with the cryptographic key 121”; ¶ 0079, i.e., “a user of the client application 130 can specify…a recipient of the data…the cryptographic key 121 can be pseudo-randomly generated by the client application 130 or the key management application 118. If generated by the client application 130, the cryptographic key 121 is transmitted to the key management application 118 which, in turn, communicates the cryptographic key 121 to…client device 106 as instructed by a user of the client application 130…When “Atlanta Health” is selected, the client application 130 may use the one or more cryptographic keys 121 stored in association with the “Atlanta Health” provider to encrypt information for use in a machine-readable identifier 133”; ¶ 0099, i.e., “the first cryptographic key 121a and the second cryptographic key 121b may be sent to the client device 106 by the key management application 118 or other similar service over the network 112”);
generate first encrypted medical information by encrypting the first medical information using the first cryptographic key (Hill: ¶ 0079; ¶ 0101);
causing the first encrypted medical information to be stored in a network repository (Hill: ¶ 0034; ¶ 0058-0059);
encoding information identifying the network repository and the first cryptographic key in an optical code (Hill: ¶ 0041, i.e., “generate a machine-readable identifier 133 that includes user input data encrypted with the cryptographic key 121 for the reader device 109”; ¶ 0054-0055; ; ¶ 0061) that is displayed for capture by a clinician device (Hill: ¶ 0075, i.e., “Using a reader device 109, the healthcare provider can scan the machine-readable identifier 133”);
Yet, Hill does not explicitly teach, but Experton teaches, in the same field of endeavor,
responsive to a request from the clinician device, using a mapping to translate the first medical information to obtain second medical information that is encoded in accordance with a second coding scheme (Experton: ¶ 0179, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “electronic healthcare records” of Experton as the “various types of user input” including “PMHX,” “FamHX,” “PSHx,” “sOChX,” “Immun.,” “Meds.” of Hill, which Examiner interprets as the claimed first medical information; ¶ 0187; ¶ 0188, i.e., “individual data can be displayed in the spoken language of the healthcare professional making use of that data can be automated based on the GPS location of the individual app user or the GPS location of the health care professional accessing that data… When translated, individual medications and immunization data are matched to the corresponding specific data where the information is being reviewed”), wherein the first coding scheme and the second coding scheme correspond to different formal medical coding standards (Experton: ¶ 0187, i.e., “The code sets [including] the various international or national standardized health data code lists for medications, diagnoses, laboratory tests, procedures, immunizations, individual medical professions, and so on” of the individual data may be different from “Code sets specific to geographic regions or countries…in the language of the user's choice or the health care professional accessing that data”); and
providing the second medical information to the clinician device (Experton: ¶ 0179, i.e., “The electronic healthcare records may be displayed…in a spoken language of a healthcare professional making use of the electronic healthcare records”; ¶ 0187-0188),
wherein the second medical information is provided to the clinician device after the clinician device has captured the optical code and used the first cryptographic key extracted from the optical code to retrieve and decrypt the first medical information from the network repository (Experton: ¶ 0095, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “encryption keys need to decrypt the contents of the container 614” of Experton as including “the cryptographic key 121” of Hill, which Examiner interprets as the claimed first cryptographic key; ¶ 0188, i.e., “individual data can be displayed in the spoken language of the healthcare professional making use of that data can be automated based on the GPS location of the individual app user or the GPS location of the health care professional accessing that data via mobile to mobile communication in various means (QR code scanning…)”).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include responsive to a request from the clinician device, using a mapping to translate the first medical information to obtain second medical information that is encoded in accordance with a second coding scheme, wherein the first coding scheme and the second coding scheme correspond to different formal medical coding standards; and providing the second medical information to the clinician device, wherein the second medical information is provided to the clinician device after the clinician device has captured the optical code and used the first cryptographic key extracted from the optical code to retrieve and decrypt the first medical information from the network repository, as taught by Experton, within the system of Hill, with the motivation “so that the medical information necessary for a patient to communicate or exchange with a healthcare professional is available at all times” (Experton: ¶ 0185).
Regarding (original) claim 2, Hill and Experton teach the method of claim 1, further comprising:
translating text elements indicated by the second medical information from a first language to a second language (Experton: ¶ 0179; ¶ 0188).
The obviousness of combining the teachings of Hill and Experton are discussed in the rejection of claim 1, and incorporated herein.
Regarding (original) claim 3, Hill and Experton teach the method of claim 2, further comprising:
replacing medical terms indicated by the second medical information with corresponding medical terms used by a clinician associated with the clinician device (Experton: ¶ 0179; ¶ 0188-0189).
The obviousness of combining the teachings of Hill and Experton are discussed in the rejection of claim 1, and incorporated herein.
Regarding (original) claim 4, Hill and Experton teach the method of claim 3, wherein the medical terms used by the clinician are consistent with medical terms used in a country in which the clinician device is located (Experton: ¶ 0179; ¶ 0187-0188).
The obviousness of combining the teachings of Hill and Experton are discussed in the rejection of claim 1, and incorporated herein.
Regarding (original) claim 5, Hill and Experton teach the method of claim 1, further comprising:
replacing pharmaceutical names indicated by the second medical information with corresponding pharmaceutical names known to a clinician associated with the clinician device (Experton: ¶ 0179; ¶ 0187-0188).
The obviousness of combining the teachings of Hill and Experton are discussed in the rejection of claim 1, and incorporated herein.
Regarding (original) claim 6, Hill and Experton teach the method of claim 5, wherein the pharmaceutical names known to the clinician are defined for pharmaceutical distribution in a country in which the clinician device is located (Experton: ¶ 0179; ¶ 0187-0188).
The obviousness of combining the teachings of Hill and Experton are discussed in the rejection of claim 1, and incorporated herein.
Regarding (original) claim 7, Hill and Experton teach the method of claim 5, further comprising:
converting a medication name used in a first country to a corresponding medication name used in a second country (Hill: ¶ 0032, i.e., “translate user input from a first language, such as Spanish, to a second language, such as English”; ¶ 0066, i.e., “a user interface 131 illustrating an embodiment of a screen dedicated to obtaining current and past medications is shown which enables the user to provide current and previous medications”; ¶ 0092; ¶ 0128).
Regarding (original) claim 8, Hill and Experton teach the method of claim 5, further comprising:
converting a vaccine name used in a first country to a corresponding vaccine name used in a second country (Hill: ¶ 0032, i.e., “translate user input from a first language, such as Spanish, to a second language, such as English”; ¶ 0070, i.e., “a user interface 131 illustrates one embodiment that obtains immunizations from a user”; ¶ 0092; ¶ 0128).
Regarding (original) claim 9, Hill and Experton teach the method of claim 5, further comprising:
converting a drug allergy name used in a first country to a corresponding drug allergy name used in a second country (Hill: figure 7f, i.e., “Allergies” include “Lasix” as “Name of Medication(s)?”; ¶ 0032, i.e., “translate user input from a first language, such as Spanish, to a second language, such as English”; ¶ 0067, i.e., “a user interface 131 where a user can provide current and past allergies”; ¶ 0092; ¶ 0128).
Regarding (original) claim 12, Hill and Experton teach the method of claim 1, wherein the first medical information corresponds to information provided by a user of the patient device (Hill: ¶ 0061, i.e., “FIGS. 7A-7N show various examples of user interfaces 131 of the client application 130 used to perform an ingestion process by prompting the user with various types of user input”; ¶ 0072).
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. US 2021/0224624 A1 (hereinafter referred to as "Hill") in view of U.S. Patent App. Pub. No. US 2017/0068785 A1 (hereinafter referred to as "Experton"), as applied to claims 1-9, 12, further in view of U.S. Patent App. Pub. No. US 2014/0095882 A1 (hereinafter referred to as "Spalka").
Regarding (original) claim 10, Hill and Experton teach the method of claim 1.
Yet, Hill and Experton do not explicitly teach, but Spalka teaches, in the same field of endeavor, wherein the first cryptographic key is a time-limited key (Spalka: ¶ 0069-0070; ¶ 0128, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “key pairs” of Spalka as including “the cryptographic key 121” of Hill, which Examiner interprets as the claimed first cryptographic key).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include wherein the first cryptographic key is a time-limited key, as taught by Spalka, with the system of Hill and Experton, with the motivation of “If a user attempts to use an “expired” key pair Ki; i.e. the user opens a session on the information system in which he authenticates himself with the key pair then the information system denies him this” (Spalka: ¶ 0070).
Regarding (original) claim 11, Hill and Experton teach the method of claim 1.
Yet, Hill and Experton do not explicitly teach, but Spalka teaches, in the same field of endeavor, wherein the first cryptographic key is a one-time use key (Spalka: ¶ 0069; ¶ 0071; ¶ 0137, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “key pairs” of Spalka as including “the cryptographic key 121” of Hill, which Examiner interprets as the claimed first cryptographic key).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include wherein the first cryptographic key is a one-time use key, as taught by Spalka, with the system of Hill and Experton, with the motivation of “If the number of uses of a key pair Ki which has already taken place has reached its maximum number, the information system denies fresh use of Ki; the session is then thus not set up” (Spalka: ¶ 0071).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. US 2021/0224624 A1 (hereinafter referred to as "Hill") in view of U.S. Patent App. Pub. No. US 2017/0068785 A1 (hereinafter referred to as "Experton"), as applied to claims 1-9, 12, 14, further in view of U.S. Patent App. Pub. No. US 2015/0213195 A1 (hereinafter referred to as "Blechman").
Regarding (original) claim 13, Hill and Experton teach the method of claim 1.
Yet, Hill and Experton do not explicitly teach, but Blechman teaches, in the same field of endeavor, wherein the first medical information corresponds to information extracted from electronic healthcare records stored on the patient device (Blechman: figure 16, i.e., “behavior from PCHR data hub on registered devices” 1632 is used to populate “PCHR patient record” 1642; ¶ 0102, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “behavioral observations and…physiological parameters such as blood glucose, activity, heart rate and blood pressure” of Blechman as the “various types of user input” including “PMHX,” “FamHX,” “PSHx,” “sOChX,” “Immun.,” “Meds.” of Hill, which Examiner interprets as the claimed first medical information).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include wherein the first medical information corresponds to information extracted from electronic healthcare records stored on the patient device, as taught by Blechman, with the system of Hill and Experton, with the motivation of “enables patients and their support teams to collect, visualize and share merged behavioral observations and physiological results as the basis for day to day practical decisions about healthcare self-management and as the basis for evidence-based shared decision making with healthcare providers who can access patient-collected observations and results from their ECHR systems” (Blechman: ¶ 0102).
Response to Arguments
Applicant's arguments filed 06/29/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed hereinbelow in the order in which they appear in the response filed 06/29/2026.
In the remarks, Applicant argues in substance that:
Regarding the 112(a) rejections, the amendments overcome the rejections.
Regarding the double patenting rejections, the amendments overcome the rejections.
Regarding the 101 rejections,
“Amended claim 1 defines a specific, technically-constrained ordered sequence that includes obtaining medical information encoded under a formal first coding scheme, providing a cryptographic key to the patient device in response to an explicit encryption request, and encoding both the encrypted medical information AND the cryptographic key jointly in a single optical code displayed by the patient device. A clinician device captures the optical code, extracts the cryptographic key from the optical code, and uses the optical code key to decrypt the first medical information. A structured mapping is used to translate the decrypted information from the first coding scheme into a second, different formal medical coding standard before delivery. This sequence constitutes a specific technical architecture and is not limited to mere human activity”;
“The inability of healthcare computer systems operating under different formal medical coding standards interoperate without structured mapping and create a technical problem arising from the technological environment. For example, the presently claimed invention provides solutions to incompatibility between distinct, machine-readable coding standards such as ICD-10, SNOMED CT, WHODrug, and MedDRA. The presently-claimed delivery mechanism, which employs a network repository combined with optical-code-controlled cryptographic access and formal coding-scheme mapping, constitutes a technology-rooted solution that imposes meaningful limits on how the abstract idea, if any, is applied”; and
“The ordered combination of (a) network-repository storage of encrypted medical data, (b) optical-code delivery of the repository identifier and key, (c) cryptographic retrieval and decryption, and (d) structured mapping-based translation between formal medical coding standards constitutes an unconventional ordered combination not found in any single prior art reference. The Office Action relies on two separate references to address the limitations of independent claim 1 when rejecting the claim under §103, confirming that the ordered combination is not routine or conventional.”
Regarding the 103 rejections, the cited prior art reference(s) fails to teach the amended claim limitations because “A natural human spoken-language GPS translation does not involve translation between formal, machine-readable medical coding standards such as ICD-10, SNOMED CT, WHODrug, or MedDRA. Accordingly, the references do not belong to the same field of endeavor as the presently-claimed invention and do not teach or suggest the presently-claimed mapping. Applicant respectfully submits that the Office Action has not shown adequate motivation to combine Hill and Experton in the manner proposed… Combining these references to produce a system that stores encrypted medical data in a network repository, encodes a repository pointer and key in an optical code, and then maps between formal medical coding standards would require fundamentally restructuring both references in a manner for which the Office Action provides no reasoned support.”
It is respectfully submitted that Examiner has considered Applicant’s arguments and does not find them persuasive. Examiner has attempted to address all of the arguments presented by Applicant; however, any arguments inadvertently not addressed are not persuasive for at least the following reasons:
In response to Applicant’s argument that (a) regarding the 112(a) rejections, the amendments overcome the rejections:
It is respectfully submitted that Examiner withdraws the aforementioned 112(a) rejections of Office Action dated 11/26/2025 because the amendments have rendered the rejections moot.
In response to Applicant’s argument that (b) regarding the double patenting rejections, the amendments overcome the rejections:
It is respectfully submitted that Examiner maintains the double patenting rejections, which have been updated with an obviousness analysis to address the amendments in the above Office Action.
In response to Applicant’s argument that (c) regarding the 101 rejections,
“Amended claim 1 defines a specific, technically-constrained ordered sequence that includes obtaining medical information encoded under a formal first coding scheme, providing a cryptographic key to the patient device in response to an explicit encryption request, and encoding both the encrypted medical information AND the cryptographic key jointly in a single optical code displayed by the patient device. A clinician device captures the optical code, extracts the cryptographic key from the optical code, and uses the optical code key to decrypt the first medical information. A structured mapping is used to translate the decrypted information from the first coding scheme into a second, different formal medical coding standard before delivery. This sequence constitutes a specific technical architecture and is not limited to mere human activity”:
It is respectfully submitted that per broadest reasonable interpretation of the claim in light of the specification, the claims of the present invention encompass the activity of (to paraphrase) rules or instructions to access and exchange healthcare information between users, which covers the sub-grouping of managing personal behavior or relationships or interactions between people in the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Put another way, the claimed invention amounts to a series of rules or steps that users (i.e., patient, doctor) would follow to collect, convert, and exchange medical data accordingly. This is an abstract idea. That the steps are performed on a well-known, general purpose computer (i.e., a computing system having a processor-readable storage medium comprising code; a processing circuit) does not remove the invention from being directed to an abstract idea.
Applicant argues “a specific, technically-constrained ordered sequence that includes obtaining medical information encoded under a formal first coding scheme, providing a cryptographic key to the patient device in response to an explicit encryption request, and encoding both the encrypted medical information AND the cryptographic key jointly in a single optical code displayed by the patient device. A clinician device captures the optical code, extracts the cryptographic key from the optical code, and uses the optical code key to decrypt the first medical information. A structured mapping is used to translate the decrypted information from the first coding scheme into a second, different formal medical coding standard before delivery. This sequence constitutes a specific technical architecture and is not limited to mere human activity.” However, Applicant fails to specify how the aforementioned “sequence…is not…human activity.” Regardless, the claim limitations to which Applicant seem to refer as “obtaining medical information encoded under a formal first coding scheme, providing a cryptographic key…in response to an explicit encryption request, and encoding both the encrypted medical information AND the cryptographic key jointly in a single optical code displayed...captures the optical code, extracts the cryptographic key from the optical code, and uses the optical code key to decrypt the first medical information. A structured mapping is used to translate the decrypted information from the first coding scheme into a second, different formal medical coding standard before delivery” are interpreted as rules or instructions to access and exchange healthcare information between users. Also, “a patient device” and “a clinician device” are not interpreted as part of the abstract idea, but as additional elements which are only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., receiving, transmitting data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Thus, the claims are directed to an abstract idea.
“The inability of healthcare computer systems operating under different formal medical coding standards interoperate without structured mapping and create a technical problem arising from the technological environment. For example, the presently claimed invention provides solutions to incompatibility between distinct, machine-readable coding standards such as ICD-10, SNOMED CT, WHODrug, and MedDRA. The presently-claimed delivery mechanism, which employs a network repository combined with optical-code-controlled cryptographic access and formal coding-scheme mapping, constitutes a technology-rooted solution that imposes meaningful limits on how the abstract idea, if any, is applied”:
Applicant argues “The inability of healthcare computer systems operating under different formal medical coding standards interoperate without structured mapping and create a technical problem arising from the technological environment.” However, while the specification need not explicitly set forth the improvement, the disclosure does not provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing any technical improvement or any physical improvement to the computer. See MPEP § 2106.04(d)(1) and 2106.05(a).
Applicant argues “For example, the presently claimed invention provides solutions to incompatibility between distinct, machine-readable coding standards such as ICD-10, SNOMED CT, WHODrug, and MedDRA.” However, it is noted that the features upon which applicant relies (i.e., “ICD-10, SNOMED CT, WHODrug, and MedDRA”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues “The presently-claimed delivery mechanism, which employs a network repository combined with optical-code-controlled cryptographic access and formal coding-scheme mapping, constitutes a technology-rooted solution that imposes meaningful limits on how the abstract idea, if any, is applied.” However, Applicant fails to specify the claim limitations to which Applicant refer. Regardless, the “network repository” is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., storing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only provides the input data for the performance of the abstract idea, and as such, amounts to insignificant extrasolution activity (i.e., mere data gathering), which does not impose meaningful limits on the scope of the claim. See: MPEP § 2106.05(g). Furthermore, the claim limitations to which Applicant seem to refer as the “optical-code-controlled cryptographic access and formal coding-scheme mapping” are interpreted as rules or instructions to access and exchange healthcare information between users, which is the abstract idea, and not additional elements to be interpreted in Step 2A, Prong Two. Even if the claims provide the alleged improvements, any alleged benefits of the invention are at best, an improvement to the abstract idea of rules or instructions to access and exchange healthcare information between users. However, an improved abstract idea is still an abstract idea and the claims do not provide a technical improvement.
Thus, the claim as a whole does not integrate the recited judicial exception into a practical application.
“The ordered combination of (a) network-repository storage of encrypted medical data, (b) optical-code delivery of the repository identifier and key, (c) cryptographic retrieval and decryption, and (d) structured mapping-based translation between formal medical coding standards constitutes an unconventional ordered combination not found in any single prior art reference. The Office Action relies on two separate references to address the limitations of independent claim 1 when rejecting the claim under §103, confirming that the ordered combination is not routine or conventional”:
Applicant argues “The ordered combination of (a) network-repository storage of encrypted medical data, (b) optical-code delivery of the repository identifier and key, (c) cryptographic retrieval and decryption, and (d) structured mapping-based translation between formal medical coding standards constitutes an unconventional ordered combination not found in any single prior art reference. The Office Action relies on two separate references to address the limitations of independent claim 1 when rejecting the claim under §103, confirming that the ordered combination is not routine or conventional.” However, per MPEP § 2106.05(I): “the search for an inventive concept should not be confused with a novelty or non-obviousness determination…As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter…a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty…Because [novelty and obviousness] are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101.” Furthermore, per MPEP § 2106.05(I)(A), evaluating whether a claim limitation is “well-understood, routine, conventional activity” is not a standalone test for determining eligibility, but only one consideration “For Evaluating Whether Additional Elements Amount To An Inventive Concept.”
Thus, the claim as a whole does not amount to significantly more than the judicial exception.
Thus, Examiner maintains the 101 rejections of claims 1-13, which have been updated to address Applicant’s remarks and to comply with the 2019 Revised Patent Subject Matter Eligibility Guidance and the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence in the above Office Action.
In response to Applicant’s argument that (d) regarding the 103 rejections, the cited prior art reference(s) fails to teach the amended claim limitations because “A natural human spoken-language GPS translation does not involve translation between formal, machine-readable medical coding standards such as ICD-10, SNOMED CT, WHODrug, or MedDRA. Accordingly, the references do not belong to the same field of endeavor as the presently-claimed invention and do not teach or suggest the presently-claimed mapping. Applicant respectfully submits that the Office Action has not shown adequate motivation to combine Hill and Experton in the manner proposed… Combining these references to produce a system that stores encrypted medical data in a network repository, encodes a repository pointer and key in an optical code, and then maps between formal medical coding standards would require fundamentally restructuring both references in a manner for which the Office Action provides no reasoned support”:
It is respectfully submitted that Applicant argues “A natural human spoken-language GPS translation does not involve translation between formal, machine-readable medical coding standards such as ICD-10, SNOMED CT, WHODrug, or MedDRA.” However, it is noted that the features upon which applicant relies (i.e., “formal, machine-readable medical coding standards such as ICD-10, SNOMED CT, WHODrug, or MedDRA”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Furthermore, Experton teaches translating individual data from the original “code sets [including] the various international or national standardized health data code lists for medications, diagnoses, laboratory tests, procedures, immunizations, individual medical professions, and so on” to “Code sets specific to geographic regions or countries…in the language of the user's choice or the health care professional accessing that data,” which per broadest reasonable interpretation in light of the specification, teaches the aforementioned claim limitations to which Applicant seem to refer.
Applicant argues “the references do not belong to the same field of endeavor as the presently-claimed invention and do not teach or suggest the presently-claimed mapping.” However, Applicant fails to specify how “the references do not belong to the same field of endeavor.” In response to applicant's argument that Hill and Experton is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Hill describes using cryptographic keys to encrypt and encode medical data, which is in the field of the inventor’s endeavor and reasonably pertinent to the particular problem with which the inventor was concerned; and Hill and Experton describes decrypting, translating, and exchanging records between patients and healthcare providers using cryptographic keys, which is in the field of the inventor’s endeavor and reasonably pertinent to the particular problem with which the inventor was concerned.
Applicant argues “the Office Action has not shown adequate motivation to combine Hill and Experton in the manner proposed.” However, In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include responsive to a request from the clinician device, using a mapping to translate the first medical information to obtain second medical information that is encoded in accordance with a second coding scheme, wherein the first coding scheme and the second coding scheme correspond to different formal medical coding standards; and providing the second medical information to the clinician device, wherein the second medical information is provided to the clinician device after the clinician device has captured the optical code and used the first cryptographic key extracted from the optical code to retrieve and decrypt the first medical information from the network repository, as taught by Experton, within the system of Hill, with the motivation “so that the medical information necessary for a patient to communicate or exchange with a healthcare professional is available at all times” (Experton: ¶ 0185).
Applicant argues “Combining these references to produce a system that stores encrypted medical data in a network repository, encodes a repository pointer and key in an optical code, and then maps between formal medical coding standards would require fundamentally restructuring both references in a manner for which the Office Action provides no reasoned support.” In response to applicant's argument, the test for obviousness is not whether the features of a secondary reference may be bodily incorporated into the structure of the primary reference; nor is it that the claimed invention must be expressly suggested in any one or all of the references. Rather, the test is what the combined teachings of the references would have suggested to those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981).
Examiner has updated passages and citations to the amended claims and applied new passages and citations accordingly, at the present time, as addressed in the above Office Action, and the analogous independent claims and the remaining dependent claims have been taught by the applied/recited passages and citations, as addressed in the above Office Action.
Thus, the cited prior art references teach the aforementioned amended claim limitations.
Conclusion
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Emily Huynh whose telephone number is (571)272-8317. The examiner can normally be reached on M-Th 8-5 PM.
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, Robert Morgan can be reached on (571) 272-6773.The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EMILY HUYNH/Primary Examiner, Art Unit 3683
