DETAILED ACTION
Claims 1 – 8, which are currently pending, are fully considered below.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on January 24, 2024 and August 20, 2024 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 – 8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to the judicial exception of an abstract idea without significantly more.
Step 1: Is the claimed invention to a process, machine, manufacture or
composition of matter?
Yes, the claims fall within at least one of the four categories of patent eligible
subject.
Claims 1, 7, and 8 recite:
distinguish, based on a predetermined priority criterion, a high-priority
cluster having a high priority among multiple clusters into which multiple data are
classified;
display the high-priority cluster on a display;
receive an instruction operation for adding, to the high-priority cluster,
distinguishing information for distinguishing the high-priority cluster from a rest of
the multiple clusters; and
add the distinguishing information to the high-priority cluster.
Step 2A Prong One: Does the claim recite an abstract idea, law or nature,
or natural phenomenon?
Yes. Claim 1, 7, and 8 limitations of “distinguish[ing]…” “display[ing]…” “receiv[ing]…” and “add[ing]” recite abstract ideas as mental processes. The limitations may be done as mental processes, in the human mind.
MENTAL PROCESSES MPEP 2106.04(a)(2)(III).
The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions.
The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper").
Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer").
Because both product and process claims may recite a "mental process", the phrase "mental processes" should be understood as referring to the type of abstract idea, and not to the statutory category of the claim. The courts have identified numerous product claims as reciting mental process-type abstract ideas, for instance the product claims to computer systems and computer-readable media in Versata Dev. Group. v. SAP Am., Inc., 793 F.3d 1306, 115 USPQ2d 1681 (Fed. Cir. 2015).
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No. Claim 1 does not recite additional elements that integrate the judicial exception into a practical application of the exception. The claim limitations of “distinguish, based on a predetermined priority criterion, a high-priority
cluster having a high priority among multiple clusters into which multiple data are
classified,” “display the high-priority cluster on a display,” “receive an instruction operation for adding, to the high-priority cluster,” “distinguishing information for distinguishing the high-priority cluster from a rest of the multiple clusters,” and “add the distinguishing information to the high-priority cluster” fail to recite additional elements that integrate the judicial exception into a practical application. Distinguishing is similar to determining, together with receiving, is drawn to collecting and analyzing data. Similarly, a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016). Applicant has failed to show how “distinguishing” is different from determining. “Adding” is merely performing a generic computer function.
Integration of a Judicial Exception Into A Practical Application 2106.04(d)
The Supreme Court has long distinguished between principles themselves (which are not patent eligible) and the integration of those principles into practical applications (which are patent eligible). See, e.g., Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 80, 84, 101 USPQ2d 1961, 1968-69, 1970 (2012) (noting that the Court in Diamond v. Diehr found ‘‘the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole,’’ but the Court in Gottschalk v. Benson ‘‘held that simply implementing a mathematical principle on a physical machine, namely a computer, was not a patentable application of that principle’’). Similarly, in a growing body of decisions, the Federal Circuit has distinguished between claims that are ‘‘directed to’’ a judicial exception (which require further analysis to determine their eligibility) and those that are not (which are therefore patent eligible), e.g., claims that improve the functioning of a computer or other technology or technological field. See Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981); Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972). See, e.g., MPEP § 2106.06(b) (summarizing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016), McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 120 USPQ2d 1091 (Fed. Cir. 2016), and other cases that were eligible as improvements to technology or computer functionality instead of being directed to abstract ideas).
The Supreme Court and Federal Circuit have identified a number of considerations as relevant to the evaluation of whether the claimed additional elements demonstrate that a claim is directed to patent-eligible subject matter. The list of considerations here is not intended to be exclusive or limiting. Additional elements can often be analyzed based on more than one type of consideration and the type of consideration is of no import to the eligibility analysis. Additional discussion of these considerations, and how they were applied in particular judicial decisions, is provided in MPEP § 2106.05(a) through (c) and MPEP § 2106.05(e) through (h).
Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2); [AltContent: rect]
Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
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, as discussed in MPEP § 2106.05(e).
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
Step 2B: Does the claim recite additional elements that amount to
significantly more than the abstract idea?
No. The claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea.
THE SEARCH FOR AN INVENTIVE CONCEPT MPEP 2106.05(I)
The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72, 101 USPQ2d 1961, 1966 (2012)).
An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016). See also Alice Corp., 573 U.S. at 21-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 78, 101 USPQ2d at 1968 (after determining that a claim is directed to a judicial exception, "we then ask, ‘[w]hat else is there in the claims before us?") (emphasis added)); RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"). Instead, an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966).
Claims 2 recites:
wherein the circuitry is configured to perform, on the high-priority cluster to which the distinguishing information is added, processing different from processing performed on the rest of the multiple clusters
Step 2A Prong One: Does the claim recite an abstract idea, law or nature,
or natural phenomenon?
Yes. Claim 2 limitation of “perform[ing]…” and “processing…” recite abstract ideas as mental processes. The limitations may be done as mental processes, in the human mind.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No. Claim 2 does not recite additional elements that integrate the judicial exception into a practical application of the exception.
Step 2B: Does the claim recite additional elements that amount to
significantly more than the abstract idea?
No. The claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea.
Claim 3 discloses:
wherein the circuitry is configured to store, in a memory, the high-priority cluster to which the distinguishing information is added as learning data
Step 2A Prong One: Does the claim recite an abstract idea, law or nature,
or natural phenomenon?
Yes. Claim 3 limitation of “stor[ing]…” recite abstract ideas as mental processes. The limitations may be done as mental processes, in the human mind.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No. Claim 3 does not recite additional elements that integrate the judicial exception into a practical application of the exception.
Step 2B: Does the claim recite additional elements that amount to
significantly more than the abstract idea?
No. The claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea.
Claim 4 disloses:
wherein the multiple data include multiple measurement data obtained by measuring a subject, and wherein the priority is determined based on likelihood information indicating likelihood of abnormality of the subject determined based on the multiple measurement data.
Step 2A Prong One: Does the claim recite an abstract idea, law or nature,
or natural phenomenon?
Yes. Claim 4 limitation of “measuring…” recite abstract ideas as mental processes. The limitations may be done as mental processes, in the human mind.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No. Claim 4 does not recite additional elements that integrate the judicial exception into a practical application of the exception.
Step 2B: Does the claim recite additional elements that amount to
significantly more than the abstract idea?
No. The claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea.
Claim 5 discloses:
wherein the predetermined priority criterion includes multiple criteria including a
first priority criterion and a second priority criterion, and the distinguishing information
includes first distinguishing information for distinguishing a first high-priority cluster having a high priority based on the first priority criterion, and second distinguishing information for distinguishing a second high-priority cluster having a high priority based on the second priority criterion, and wherein circuitry is configured to:
distinguish the first high-priority cluster and the second high-priority cluster from among the multiple clusters;
display, on the display, the first high-priority cluster and the second high-
priority cluster;
receive a first instruction operation for adding the first distinguishing information to the first high-priority cluster, and a second instruction operation for adding the second distinguishing information to the second high-priority cluster; and
add the first distinguishing information to the first high-priority cluster and add the second distinguishing information to the second high-priority cluster.
Step 2A Prong One: Does the claim recite an abstract idea, law or nature,
or natural phenomenon?
Yes. Claim 5 limitations recite abstract ideas as mental processes. The limitations may be done as mental processes, in the human mind.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No. Claim 5 does not recite additional elements that integrate the judicial exception into a practical application of the exception.
Step 2B: Does the claim recite additional elements that amount to
significantly more than the abstract idea?
No. The claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea.
Claim 6 discloses:
wherein the multiple data include multiple measurement data obtained by measuring a subject, wherein the first priority criterion indicates that likelihood of abnormality of the subject determined based on the multiple measurement data is high, and wherein the second priority criterion indicates that the likelihood of abnormality of the subject determined based on the multiple measurement data is low.
Step 2A Prong One: Does the claim recite an abstract idea, law or nature,
or natural phenomenon?
Yes. Claim 6 wherein limitation recites abstract ideas as mental processes. The limitations may be done as mental processes, in the human mind.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No. Claim 6 does not recite additional elements that integrate the judicial exception into a practical application of the exception.
Step 2B: Does the claim recite additional elements that amount to
significantly more than the abstract idea?
No. The claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea.
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.
Claims 1, 2, 7, and 8 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Luke Tomlin (U.S. Patent 10,489,391).
With respect to claims 1, 7, and 8, Tomlin teaches:
distinguish, based on a predetermined priority criterion, a high-priority
cluster having a high priority among multiple clusters into which multiple data are
classified (see column 3, lines 23 – 50, where high priority clusters may be classified);
display the high-priority cluster on a display (see column 5, lines 22 – 50, where the clusters may be displayed);
receive an instruction operation for adding, to the high-priority cluster, distinguishing information for distinguishing the high-priority cluster from a rest of
the multiple clusters (see column 5, lines 50 – 67, where distinguishing data is added); and
add the distinguishing information to the high-priority cluster (see column 5, lines 50 – 67, where distinguishing data is added).
With respect to claim 2, Tomlin teaches:
wherein the circuitry is configured to perform, on the high-priority cluster to which
the distinguishing information is added, processing different from processing performed on the rest of the multiple clusters (see column 5, lines 50 – 67, where distinguishing data is added, and processing, scoring, and analysis is performed).
Conclusion/Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXANDRIA Y BROMELL whose telephone number is (571)270-3034. The examiner can normally be reached M-F 8-4.
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/ALEXANDRIA Y BROMELL/Primary Examiner, Art Unit 2156 June 17, 2026
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