DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This communication is Final Office Action in response to amendment and remarks filed on 11/12/2025. Claims 1, 3-4, 6-15 have been examined and are pending.
Response to Amendment
The amendment filed on 11/12/2025 cancelled claim 2, 5. No claim was previously cancelled. No new claims are added. Claims 1, 3, 14, 15 have been amended. Claims 1, 3-4, 6-15 are examined and pending.
Applicant’s amendments and arguments filed on 11/12/2025 are Not sufficient to overcome the Alice 101 rejections, set forth in the previous office action. Therefore, Examiner maintains Alice 101 rejections on claims under 35U.S.C.101.
Applicant’s amendments and arguments filed on 11/12/2025 are sufficient to overcome the 102, 103 rejections, set forth in the previous office action. Therefore, Examiner withdraws rejections on claims under 35U.S.C.102, 103.
Response to Arguments
Regarding the 101 rejections, the amendment and argument has been fully considered but is not persuasive.
The rejections are maintained because the claims as amended does not integrate the abstract idea into practical application.
The claim recites an abstract idea(s) as pointed out in the previous Office Action and below. The claim includes no additional element that are sufficient to amount to significantly more than the judicial exception and thus do not add something of substance to the underlying abstract idea; thus, they are not significantly more than the identified abstract idea.
In particular, the newly added features, “calculating feature amounts of the image of a part of a patient affected by the disease”, in amended claim 1, 14, 15, is abstract idea of mathematical concepts. As to the calculating limitations, they are used similarly to computations using math relationship/correlations/algorithm to do so and/or via a computer. The instant image calculates an image’s features involves analyzing data using mathematical operations/algorithm to produce a result. If a claim limitation, under its broadest reasonable interpretation, covers mathematical concepts, then it falls within the "(a) Mathematical concepts" grouping of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes, (a) Mathematical concepts).
The step of “generating a list of disease names from the calculated image features “ is the result of the analysis. Each of the additional limitations is no more than mere instructions to apply the exception using a generic computer component (e.g. a processor). The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer component (e.g. a processor). Therefore, the additional elements do not integrate the abstract ideas into a practical application because it does not impose meaningful limits on practicing the abstract idea. Therefore, the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As stated above, the additional elements of a processor, a memory, are considered generic computer components performing generic computer functions that amount to no more than instructions to implement the judicial exception. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Furthermore, the instant steps are mainly obtaining data, reading data, calculating data, determining data, applying data, displaying data, nothing in the claim element precludes the step from practically being performed in the human mind, and is simply mental tasks, and is part of, or a related, judicial exception and does not meaningfully limit the application of the identified judicial exception, and as such does not constitute significantly more.
Additionally, with regards to the claims’ recitation of obtaining/reading/displaying data, this is a well-understood, routine, and conventional computing activities. See MPEP 2106.05(d)(II) (“Receiving or transmitting data over a network, e.g., using the Internet to gather data”).
Even as an ordered combination, the claims as a whole do not contain any additional elements that amount to significantly more. The claims broadly state that “generating a list of disease names” is performed on the collected and calculated data, and then used to identify the disease names. The rest of the additional limitations provide insignificant field-of-use limitations (describing the context rather than a particular technical manner of achieving the result).
At this level of generality, such limitations do nothing more than attempt to limit the claims to a particular technological field—namely, implementation via computers. More particularly, the claims attempt to limit the claimed invention to a particular technological field by reciting “reading an image and calculating the features amount in the image”, via a computer, and add insignificant extra-solution activities such as receiving data, applying data, displaying data.
As a whole, the claims do not go beyond stating the relevant functions in general terms, without limiting them to a technical means for performing the functions that are arguably an advance over conventional clinical diagnosis technologies.
The dependent claims when analyzed both individually and in combination are also held to be ineligible for the same reason above and the additional recited limitations fail to establish that the claims are not directed to an abstract. The additional limitations of the dependent claims when considered individually and as an ordered combination do not amount to significantly more than the abstract idea.
Looking at these limitations as an ordered combination and individually adds nothing additional that is sufficient to amount to significantly more than the recited abstract idea because they simply provide instructions to use generic computer components, to "apply" the recited abstract idea. Thus, the elements of the claims, considered both individually and as an ordered combination, are not sufficient to ensure that the claim as a whole amount to significantly more than the abstract idea itself. Therefore, claims 1, 3-4, 6-15 are not patent eligible.
Therefore, for at least the aforementioned reasons, the claims are rejected under 35 U.S.C. 101 for being directed to a judicial exception (i.e., an abstract idea) without significantly more. The 101 rejection is maintained.
Secondly, Applicant’s amendment and arguments with respect to the rejection(s) of claim 1, 14, 15 in the Remark dated 11/12/2025 have been fully considered and are persuasive.
Applicant' arguments addressed to the newly amended portion in claim 1, 14, 15, are persuasive. Examiner hereby withdraws the 102,103 rejections.
With respect to dependent claims Applicant argues that claim 3-4, 6-13, dependent from independent claim 1, therefore allowable for at least the same reasons. In response, Examiner respectfully agrees and submits that these dependent claims allowable by virtue of their dependency from the respective base claims and for their own individually recited features. Accordingly claims 1, 3-4, 6-15 are allowable over the recited arts of record.
This rejection has been amended to reflect the changes to the claim language and addresses any arguments submitted by the applicant. Therefore, the Examiner maintains the 101 rejections to the Applicant’s claims.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3-4, 6-15 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.
Alice Corp. also establishes that the same analysis should be used for all categories of claims, regardless of a system/apparatus, a method, or a product claim.
The claimed invention (Claims 1, 3-4, 6-15) is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The claim(s) recite(s) abstract ideas including “Certain Methods of Organizing Human Activity”, “an idea “of itself”, which have been identified/found by the courts as abstract ideas in new 101 memos of the subject matter eligibility in here (https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility) including 2019 Revised Patent Subject Matter Eligibility Guidance. This judicial exception is not integrated into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because it/they is/are recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications:
Independent claim 14 (Step 2A, Prong I): is directed to multiple abstract ideas including “Certain Methods of Organizing Human Activity”, “Mental process”, and “mathematical concepts”.
Claim 14, Steps of,
reading an image of a part of a patient affected by a disease;
calculating feature amounts of the image of a part of a patient affected by the disease;
generating a list of one or more disease names from the feature amount of the image of a part of a patient affected by the disease;
determining a name of the part of the patient in the image that is affected by the disease;
acquiring a previous medical examination record for the part affected by the disease;
detecting an excluded disease name or an examination result excluding a possibility of a specific disease described in a medical examination history;
determining the excluded disease from the detected excluded disease name or an excluded disease name from the examination result;
generating a list of at least one excluded disease name; and
displaying a at least one disease name in the list of the one or more disease names that are not included in the list of the excluded disease name differently from the excluded disease name in the list of the excluded disease name,
determining whether a disease has been previously completely cured when the excluded disease name is determined;
determining an excluded disease name only from a medical examination history of a disease determined to not be completely cured, and
comparing a list of one or more disease names generated from a current medical examination image with a list of one or more disease names generated from a previous medical examination image,
wherein, when an amount of change is greater than or equal to a threshold, a previous medical examination history before the current medical examination is not referred to even when the disease of the previous medical examination is not completely cured and the excluded disease name is determined regardless of the previous medical examination history.
fall within “Certain Methods of Organizing Human Activity” grouping of abstract idea because these steps mainly describe an idea itself.
In addition, claim 14, steps mentioned above also falls within the abstract “Mental Processes” grouping of abstract ideas since these limitation covers performance of the limitations in the human mind or by paper and pen. For example, a person may follow rules or instructions to observe/receive/obtain/record/data, can observe read data, can observe/calculate/use a computer to calculate data, can observe/create/generate disease names or excluded disease names, can evaluate/determine a name/the excluded disease, can observe/display disease names, can evaluate/determine a disease is completely/not completely cured, can evaluate/compare a list of disease names.
In particular, the newly added features, “calculating feature amounts of the image of a part of a patient affected by the disease”, in amended claim 1, 14, 15, is abstract idea of mathematical concepts. As to the calculating limitations, they are used similarly to computations using math relationship/correlations/algorithm to do so and/or via a computer. The instant image calculates an image’s features involves analyzing data using mathematical operations/algorithm to produce a result. If a claim limitation, under its broadest reasonable interpretation, covers mathematical concepts, then it falls within the "(a) Mathematical concepts" grouping of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes, (a) Mathematical concepts).
Independent claim 14, Step 2A (Prong II): Accordingly, the claim recites an abstract idea(s) as pointed out above. This judicial exception(s) is/are not integrated into a practical application. The additional element (an information processing apparatus recited in the preamble) is not significant more than the abstract ideas described above. Other than reciting “an information processing apparatus” recited in the preamble, nothing in the claim element precludes the step from practically being performed in the mind or by paper and pens. There are no hardware/machine/computer to actually perform the steps. There is no specificity regarding any technology, just broadly, executing the programming instructions, couple of databases to store data, to receive/obtain data over internet.
There is no specificity regarding any technology. The steps are mainly collecting data, reading data, calculating data, generating as list of disease names from the captured image, obtaining data from a medical examination record, detecting a list of excluded disease names based on excluding a probability, determining a disease name/excluded disease name, displaying a determined disease name, comparing data. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Accordingly, there is neither improvement to another technology or technical field nor an improvement to the functioning of the computer itself, and does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Independent claim 14 (step 2B):
Accordingly, the claim recites an abstract idea(s) as pointed out above. The claim includes additional element (an information processing apparatus in the preamble) is not sufficient to amount to significantly more than the judicial exception and thus do not add something of substance to the underlying abstract idea; thus, they are not significantly more than the identified abstract idea. The steps are mainly obtaining data, determining data, processing data, nothing in the claim element precludes the step from practically being performed in the human mind, and is simply organized information through human activity or merely mental tasks, and is part of, or a related, judicial exception and does not meaningfully limit the application of the identified judicial exception, and as such does not constitute significantly more.
In light of the specification, [Fig. 1], the components are merely recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. Generic computer/device components recited as performing generic computer functions that are well-understood, routine and convention activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to receive/transmit/display information does not impose any meaningful limit on the computer implementation of the abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 14).
The step of “generating a list of disease names from the calculated image features “ is the result of the analysis. Each of the additional limitations is no more than mere instructions to apply the exception using a generic computer component (e.g. a processor). The combination of these additional elements is no more than mere instructions to apply the exception using a generic computer component (e.g. a processor). Therefore, the additional elements do not integrate the abstract ideas into a practical application because it does not impose meaningful limits on practicing the abstract idea. Therefore, the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As stated above, the additional elements of a processor, a memory, are considered generic computer components performing generic computer functions that amount to no more than instructions to implement the judicial exception. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
Furthermore, the instant steps are mainly obtaining data, reading data, calculating data, determining data, applying data, displaying data, nothing in the claim element precludes the step from practically being performed in the human mind, and is simply mental tasks, and is part of, or a related, judicial exception and does not meaningfully limit the application of the identified judicial exception, and as such does not constitute significantly more.
As a whole, the claims do not go beyond stating the relevant functions in general terms, without limiting them to a technical means for performing the functions that are arguably an advance over conventional clinical diagnosis technologies.
Independent claim 1, 15: Alice Corp. also establishes that the same analysis should be used for all categories of claims. Therefore, independent system/apparatus claim 1, 15, is also rejected as ineligible subject matter under 35 U.S.C. 101 for substantially the same reasons as the method claim 14.
Further, the components (i.e., a system/apparatus, a memory, a processor, a computer-readable storage medium) described in independent claim 1, 15, add nothing of substance to the underlying abstract idea. Similarly, as it relates to the computer system claims, the limitations appear to be performed by a generic computing system/device. These components are merely recited at a high level of generality and/or are recited as performing generic computer functions routinely used in the computer applications; thus, they are not significantly more than the identified abstract idea. Generic computer components recited as performing generic computer functions that are well-understood, routine and convention activities amount to no more than implementing the abstract idea with a computerized system. The use of generic computer components to receive/obtain/identify/update/transmit/display data/information over communication network/internet does not impose any meaningful limit on the computer implementation of the abstract idea. At best, the claim(s) are merely providing an environment to implement the abstract idea. (see analysis in claim 14).
Dependent claims 3-4, 6-13, are merely add further details of the abstract steps/elements recited in claim 1, without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. Therefore, dependent claims 3-4, 6-13 are also non-statutory subject matter.
Viewed as a whole, the claims (1, 3-4, 6-15) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Thus, the claims do NOT recite limitations that are “significantly more” than the abstract idea because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.
Thus, the claimed invention, as a whole, does not provide 'significantly more' than the abstract idea, and is non-statutory subject matter.
Rejections under 35 USC 102, 35 USC 103
The rejections of claims 1, 3-4, 6-15 under 35 USC 103 are withdrawn in view of Applicant’s amendments and argument to the independent claims 1, 14, 15. The closest prior art is understood to be the art of record, but does not expressly teach all of the limitations of the independent claims as amended. A search of publicly available prior art fails to yield a reference or combination of references that would make the claimed combination obvious when considered as a whole.
Allowable Subject Matter
As to the prior art rejections, in interpreting the claims, in light of the specification, upon further search and consideration, and for the reasons presented by the claims, the Examiner finds the claimed invention to be patentably distinct from the prior art of records. It is found that claim 1, 3-4, 6-15 are allowable subject to outstanding Alice 101 rejections.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with, and pending remedy to outstanding 101 issues cited above. See 37 CFR 1.111(b) and MPEP § 707.07(a).
The prior art made of record cited or referenced relied upon is considered pertinent to applicant’s disclosure.
Choi et al. (US 2021/0098089, teaches identifying a disease occurring in a patient from a medical record of the patient, and visualizing, in a body image),
Yamazaki et al. (US 2023/0063218, teaches determining respective medical information pieces as display candidates based on a plurality of support information pieces, and respective weights of a plurality of medical information pieces).
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 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUN M LI whose telephone number is (571)270-5489. Fax is 571-270-6489. The examiner can normally be reached on Mon-Thurs, 8:30am--5pm
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kambiz Abdi, can be reached on 571-270-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/SUN M LI/
Primary Examiner, Art Unit 3685