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 .
Election/Restrictions
1. Newly submitted claims 1-20 are directed to an invention that is independent or distinct from the invention originally claimed for the following reasons:
I. Originally filed claims 1-20, drawn to a method for receiving a first plurality of medical images in a first file format; generating a second plurality of medical images in a second format; generating a multimedia file; and linking to each of the plurality of the second medical images in the multimedia file, classified in G06t 07/00.
II. Newly submitted claims 1-20, drawn to a method for generating a single self contained viewer file comprising viewer code and embedded image data for each of the plurality of medical images, wherein the single self contained viewer file displays the plurality of medical images without the external image file; and encrypting the single self contained viewer file, classified in A61b 34/20.
Inventions I and II are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination II has separate utility such as generating a single self contained viewer file comprising viewer code and embedded image data for each of the plurality of medical images , wherein the self contained viewer file displays the plurality of medical images without the external image file; and encrypting the single self contained viewer file. See MPEP § 806.05(d).
Restriction for examination purposes as indicated is proper because all these inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because at least the following reason(s) apply:
a) the inventions have acquired a separate status due to their recognized divergent subject matter in the art in view of their different classification;
b) the inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries).
Since Applicant has received an action on the merits for the originally presented invention, e.g., Invention I, Invention I has been constructively elected by original presentation for prosecution on the merits. Accordingly, newly submitted claims 1-20 are withdrawn from consideration as being directed to a non-elected invention, e.g,, Invention II. See 37 CFR 1.142(b) and MPEP § 821.03.
To preserve a right to petition, the reply to this action must distinctly and specifically point out supposed errors in the restriction requirement. Otherwise, the election shall be treated as a final election without traverse. Traversal must be timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are subsequently added, applicant must indicate which of the subsequently added claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
EXAMINER PROCEEDS AS FOLLOWS WITH ELECTION BY ORIGINAL PRESENTATION
Notice to Applicant
In response to the communication received on 06/24/2026, the following is a Final Office Action.
Claims 1-20 are currently pending and have been examined.
Response to Amendments
Applicant’s amendments have been fully considered, and since Applicant has received an action on the merits for the originally presented invention, the invention has been constructively elected by original presentation for prosecution on the merits (see Election/Restrictions above).
Response to Arguments
Applicant’s arguments with respect to the claims have been considered but are moot in view of the amendments of the independent claims (and dependent claims) being directed to a non-elected invention (see Election/Restrictions above). Examiner maintains original rejection based on election by original presentation.
Detailed Action
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 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.
Step 1:
Claims 1-20 are drawn to a method and system, which is/are statutory categories of invention (Step 1: YES).
Step 2A Prong One:
Independent claim 1 recites generating a second plurality of medical images in a second file format; generating a multimedia file; and linking to each of the plurality of the second medical images in the multimedia file. Claim 7 and 16 recite identifying image type; and identifying the features.
The recited limitations, as drafted, under their broadest reasonable interpretation, cover certain methods of organizing human activity by identifying and reporting events preceding a pattern in a set of user data. 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 (Step 2A Prong One: YES).
Step 2A Prong Two:
This judicial exception is not integrated into a practical application. The claims are abstract but for the inclusion of the additional elements including a computer, which is additional element that is recited at a high level of generality such that it amounts to no more than mere instruction to apply the exception using generic computer components. See: MPEP 2106.05(f).
Claim 1 recites the additional element of receiving a first plurality of medical images and presenting the multimedia file to the user and claim 7 and 11 recite the additional element of inputting a medical image and generating a self contained viewer, which are considered limitations directed to insignificant extra-solution activity that does not amount to an inventive concept because the limitations do not impose meaningful limits on the claim such that is it not nominally or tangentially related to the invention. In the claimed context, the claimed receiving and displaying limitations are incidental to the performance of the recited abstract idea of identifying and reporting events preceding a pattern in a set of user data. See: MPEP 2106.05(g).
The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these 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.
Hence, 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 (Step 2A Prong Two: NO).
Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, using the additional elements to perform the abstract idea amounts to no more than mere instructions to apply the exception using generic components. Mere instructions to apply an exception using a generic components cannot provide an inventive concept. See: MPEP 2106.05(f).
Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are not integrated into the claim because they are merely incidental or token additions to the claim that do not alter or affect how the process steps or functions in the abstract idea are performed. Therefore, the claimed additional elements do not add meaningful limitations to the indicated claims beyond a general linking to a technological environment. See: MPEP 2106.05(h).
Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are configured to perform well-understood, routine, and conventional activities previously known to the industry. See: MPEP 2106.05(d). Said additional elements are recited at a high level of generality and provide conventional functions that do not add meaningful limits to practicing the abstract idea.
The claims recite the additional element of receiving a first plurality of medical images and presenting the multimedia file as seen in claim 1 and inputting a medical image and generating a self contained viewer as seen in claims 7 and 11, which amounts to extra-solution activity concerning mere data gathering and displaying. The specification does not provide any indication that the additional elements are anything other than well‐understood, routine, and conventional functions when claimed in a merely generic manner (as they are here). See: MPEP 2106.05(g).
Viewing the limitations as an ordered combination, the claims simply instruct the additional elements to implement the concept described above in the identification of abstract idea with routine, conventional activity specified at a high level of generality in a particular technological environment.
Hence, the claims as a whole, considering the additional elements individually and as an ordered combination, do not amount to significantly more than the abstract idea (Step 2B: NO).
Dependent claim 2 further define how data is received; Claim 3-6, 8, 17 further define the type of formats used to store information; Claim 9-15 and 18-20 further define how the data is organized/manipulated/saved. These claims fail to remedy the deficiencies of their parent claims above, and are therefore rejected for at least the same rationale as applied to their parent claims above, and incorporated herein.
Claim Rejections - 35 USC § 102
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.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gicovate (US 2013/0305138 A1).
In claim 1, a computer-implemented method for generating a multimedia medical image viewer, the method comprising:
Gicovate teaches:
receiving a first plurality of medical images in a first file format (Para. 5 wherein receiving image data in DICOM format is taught);
generating a second plurality of medical images in a second file format by converting the first plurality of medical images to the second file format (Para. 11 wherein “wherein the primary server is configured to convert a predetermined portion of the high resolution pathology image to a HTML5 image”);
generating a multimedia file (Para. 41 wherein streaming media of digitized forms is communicated/generated);
linking to each of the plurality of the second medical images in the multimedia file (Para. 26 and 41 wherein media files that are associated/linked with images can be shared/communicated) ; and
presenting the multimedia file to the user (Para. 26).
As per claim 2, Gicovate teaches the computer-implemented method of claim 1, further comprising ordering the second plurality of medical images according to special coordinate metadata associated with the first plurality of medical images (Para. 55 wherein “wherein the predetermined portion of the image is based on the display coordinates defined by the remote user).
As per claim 3, Gicovate teaches the computer-implemented method of claim 1, wherein the first plurality of medical images comprise Magnetic Resonance Imaging (MRI), X-Ray, Computerized Tomography (CT), or ultrasound images (Para. 45).
As per claim 4, Gicovate teaches the computer-implemented method of claim 1, wherein the first file format is DICOM (Para. 46).
As per claim 5, Gicovate teaches the computer-implemented method of claim 1, wherein the second file format is DICOM (Para. 46).
As per claim 6, Gicovate teaches the computer-implemented method of claim 1, wherein the multimedia file is a HyperText Markup Language (HTML) file (Para. 46).
As per claim 7, Gicovate teaches the computer-implemented method for generating a self-contained medical image viewer, the method comprising:
inputting a medical image (Para. 45);
identifying the image type (Para. 9);
identifying the features (Para. 9); and
generating a self-contained viewer according to the plurality of the image type and features (Para. 11).
As per claim 8, Gicovate teaches the method of claim 7, wherein the medical image is an MRI, Xray, CT, or ultrasound image (Para. 45).
As per claim 9, Gicovate teaches the method of claim 7, wherein the features include the header information, identifying information, relevant planes, coordinates, and measurements (Para. 46).
As per claim 10, Gicovate teaches the method of claim 7, wherein the imaging data is compressed to an optimal size for its function (Para. 27).
As per claim 11, Gicovate teaches the method of claim 7, wherein the self-contained viewer is anonymized (Para. 24 wherein “To ensure patient privacy, medical discretion and efficient data management the HIPAA standard of data management can be followed (Health Insurance Portability and Accountability Act”, i.e. patient data can be protected).
As per claim 12, Gicovate teaches the method of claim 7, wherein the self-contained viewer includes encoded medical text (Para. 56).
As per claim 13, Gicovate teaches the method of claim 7, wherein the self-contained viewer includes the originally inputted file (Para. 26-27).
As per claim 14, Gicovate teaches the method of claim 7, wherein the self-contained viewer is a multimedia format (Para. 41).
As per claim 15, Gicovate teaches the method of claim 7, wherein the self-contained viewer is an encrypted HTML document (Para. 21).
Claims 16-20 recite substantially similar limitations as seen in claims 7-15 and hence are rejected for similar rationale as noted above.
Conclusion
THIS ACTION IS MADE FINAL. 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 MAROUN P KANAAN whose telephone number is (571)270-1497. The examiner can normally be reached Monday-Friday 8:00-5:00.
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, 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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MAROUN P. KANAAN
Primary Examiner
Art Unit 3687
/MAROUN P KANAAN/Primary Examiner, Art Unit 3687
