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 .
Applicant filed a response dated 2/19/2026 in which claims 1, 3, 8, and 17-20 have been amended, claims 2, 4, 6-7, and 9-16 have been canceled. Thus, the claims 1, 3, 5, 8, and 17-20 are pending in the application.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 2/19/2026 has been entered.
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, 5, 8, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of a medical information processing without significantly more.
Examiner has identified claim 8 as the claim that represents the claimed invention presented in independent claims 1, 3, 8, and 17-20.
Claim 1 is directed to an apparatus, which is one of the statutory categories of invention (Step 1: YES).
The claim 1 is directed to a medical information processing apparatus comprising processing circuitry configured to: acquire information about a procedure performed on an examined subject so as to be kept in correspondence with time information; acquire, on a basis of the first information, second information about the procedure so as to be kept in correspondence with time information; as the first information, acquire, by using an optical camera, an optical camera image rendering a medical tool having a plurality of introduction ports and used for administering a drug for the examined subject; and as the second information, acquire information indicating a type of the drug by identifying, in the optical camera image, one of the introduction ports of the medical tool through which the drug is introduced. These limitations (with the exception of italicized limitations) describe the abstract idea of a medical information processing, which correspond to a certain methods of organizing human activity. The additional limitations of a processing circuitry and an optical camera do not restrict the claim from reciting an abstract idea. Thus, the claim 1 recites an abstract idea (Step 2A, Prong One: YES).
This judicial exception is not integrated into a practical application because the additional element of a processing circuitry results in no more than simply applying the abstract idea using generic computer elements. The additional element of a processing circuitry is recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than to implement the claimed invention by applying the exception using a generic computer element (MPEP 2106.05(f)). The additional element of an optical camera is also recited at a high level of generality in that it amounts to an insignificant extra-solution activity (i.e., data gathering step) and does not transform the abstract idea into a practical application. Therefore, the recitation of additional elements does not meaningfully apply the abstract idea and hence does not integrate the abstract idea into a practical application. Thus, the claim 1 is directed to an abstract idea (Step 2A-Prong 2: NO).
The claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claim recites the additional elements of a processing circuitry is recited at a high level of generality in that it results in no more than simply applying the abstract idea using generic computer elements. The additional elements when considered separately and as an ordered combination do not amount to add significantly more as these elements provide nothing more than to simply apply the exception in a generic computer environment. The additional element of an optical camera is also recited at a high level of generality in that it amounts to an insignificant extra-solution activity (i.e., data gathering step) and does not amount to add significantly more (Step 2B: NO). Thus, the claim 1 is not patent eligible.
Claim 3 is directed to an apparatus, which is one of the statutory categories of invention (Step 1: YES).
The claim 3 is directed to a medical information processing apparatus comprising processing circuitry configured to: acquire information about a procedure performed on an examined subject so as to be kept in correspondence with time information; display the information on a display in accordance with the time information; display first output information that is a medical image and is kept in correspondence with the time information indicating a first point in time, and second output information that is biological information data related to the examined subject acquired in the procedure and is kept in correspondence with the time information indicating the first point in time, and at a time of displaying third output information, according to an instruction from a user, that is the medical image and is kept in correspondence with the time information indicating a second point in time different from the first point in time, automatically display fourth output information that is the biological information data related to the examined subject acquired in the procedure and is kept in correspondence with the time information indicating the second point in time.
These limitations (with the exception of italicized limitations) describe the abstract idea of a medical information processing, which correspond to a certain methods of organizing human activity. The additional limitations of a processing circuitry, a display, and automatically feature do not restrict the claim from reciting an abstract idea. Thus, the claim 3 recites an abstract idea (Step 2A, Prong One: YES).
This judicial exception is not integrated into a practical application because the additional elements of a processing circuitry, a display, and automatically feature result in no more than simply applying the abstract idea using generic computer elements. The additional elements of a processing circuitry, a display, and automatically feature are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than to implement the claimed invention by applying the exception using a generic computer element (MPEP 2106.05(f)). Therefore, the recitations of additional elements do not meaningfully apply the abstract idea and hence do not integrate the abstract idea into a practical application. Thus, the claim 3 is directed to an abstract idea (Step 2A-Prong 2: NO).
The claim 3 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claim recites the additional elements of a processing circuitry, a display, and automatically feature are recited at a high level of generality in that it results in no more than simply applying the abstract idea using generic computer elements. The additional elements when considered separately and as an ordered combination do not amount to add significantly more as these elements provide nothing more than to simply apply the exception in a generic computer environment (Step 2B: NO). Thus, the claim 3 is not patent eligible.
Similar arguments can be presented for other independent claims 17 and 19 and thus claims 17 and 19 are rejected on similar grounds as claim 3.
Claim 8 is directed to an apparatus, which is one of the statutory categories of invention (Step 1: YES).
The claim 8 is directed to a medical information processing apparatus comprising processing circuitry configured to: acquire information about a procedure performed on an examined subject so as to be kept in correspondence with time information; perform an analysis based on the information; display a result of the analysis on the display; as the information, acquire an optical camera image by using an optical camera or an audio by using an audio recorder, and acquire information indicating a type of a drug to be administered for the examined subject based on the optical image or the audio; and on a basis of the information indicating the type of the drug and examined subject information that is at least one of information about a disease which the examined subject is suffering from, records of the diseases which the examined subject suffered from and the treatment which the examined subject received in the part, and information about his/her constitution, analyze suitability of the drug for the examined subject. These limitations (with the exception of italicized limitations) describe the abstract idea of a medical information processing, which correspond to a certain methods of organizing human activity. The additional limitation of a processing circuitry, a display, an optical camera, and an audio recorder do not restrict the claim from reciting an abstract idea. Thus, the claim 8 recites an abstract idea (Step 2A, Prong One: YES).
This judicial exception is not integrated into a practical application because the additional elements of a processing circuitry and a display result in no more than simply applying the abstract idea using generic computer elements. The additional elements of a processing circuitry and a display are recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than to implement the claimed invention by applying the exception using a generic computer element (MPEP 2106.05(f)). The additional elements of an optical camera and an audio recorder are also recited at a high level of generality in that it amount to an insignificant extra-solution activity (i.e., data gathering step) and do not transform the abstract idea into a practical application. Therefore, the recitations of additional elements do not meaningfully apply the abstract idea and hence do not integrate the abstract idea into a practical application. Thus, the claim 8 is directed to an abstract idea (Step 2A-Prong 2: NO).
The claim 8 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claim recites the additional elements of a processing circuitry, and a display are recited at a high level of generality in that it results in no more than simply applying the abstract idea using generic computer elements. The additional elements when considered separately and as an ordered combination do not amount to add significantly more as these elements provide nothing more than to simply apply the exception in a generic computer environment. The additional elements of an optical camera and an audio recorder are also recited at a high level of generality in that it amount to an insignificant extra-solution activity (i.e., data gathering step) and do not transform the abstract idea into a practical application (Step 2B: NO). Thus, the claim 8 is not patent eligible.
Similar arguments can be presented for other independent claim 18, and thus the claim 18 is rejected on similar grounds as claim 8.
Claim 20 is directed to a method, which is one of the statutory categories of invention (Step 1: YES).
The claim 20 is directed to a medical information processing method comprising acquiring an optical camera image by using an optical camera or an audio by using an audio recorder, and acquiring information indicating a type of a drug to be administered for the examined subject, based on the optical camera image or the audio, as information about a procedure performed on an examined subject so as to be kept in correspondence with time information; on a basis of the information indicating the type of the drug and examined subject information that is at least one of information about a disease which the examined subject is suffering from, records of the disease which the examined subject suffered from and the treatment which the examined subject received in the past, and information about his/her constitution, analyzing suitability of the drug for the examined subject; and displaying a result of the analysis on a display. These limitations (with the exception of italicized limitations) describe the abstract idea of a medical information processing, which correspond to a certain methods of organizing human activity. The additional limitations of an optical camera, an audio recorder, and a display do not restrict the claim from reciting an abstract idea. Thus, the claim 20 recites an abstract idea (Step 2A, Prong One: YES).
This judicial exception is not integrated into a practical application because the additional element of a display results in no more than simply applying the abstract idea using generic computer elements. The additional element of a display is recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computer arrangement. The presence of a generic computer arrangement is nothing more than to implement the claimed invention by applying the exception using a generic computer element (MPEP 2106.05(f)). The additional elements of an optical camera and an audio recorder are also recited at a high level of generality in that it amount to an insignificant extra-solution activity (i.e., data gathering step) and do not transform the abstract idea into a practical application. Therefore, the recitations of additional elements do not meaningfully apply the abstract idea and hence do not integrate the abstract idea into a practical application. Thus, the claim 20 is directed to an abstract idea (Step 2A-Prong 2: NO).
The claim 20 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claim recites the additional elements of a display is recited at a high level of generality in that it results in no more than simply applying the abstract idea using generic computer elements. The additional element when considered separately and as an ordered combination does not amount to add significantly more as these elements provide nothing more than to simply apply the exception in a generic computer environment. The additional elements of an optical camera and an audio recorder are also recited at a high level of generality in that it amount to an insignificant extra-solution activity (i.e., data gathering step) and do not transform the abstract idea into a practical application (Step 2B: NO). Thus, the claim 20 is not patent eligible.
Dependent claim 5 further define the abstract idea that is present in their respective independent claim 3 thus correspond to a certain method of organizing human activity, and hence is abstract in nature for the reason presented above. Dependent claim do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the claims 1, 3, 5, 8, and 17-20 are not patent-eligible.
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.
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.
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.
Claims 1, 3, 5, 17, and 19 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda, US Patent Application No. 2007/0225574 in view of Radojicic, US Patent No. 9,770,180.
Regarding claim 1, Ueda discloses a medical information processing apparatus comprising processing circuitry configured to:
acquire first information about a procedure performed on an examined subject so as to be kept in correspondence with time information ([0084], surgical microscopes; [0089] time; [0120], surgical knife are used; [0121], brain surgery, [0152] time when a medical process is carried out, information about when medicines are administered, when “the surgeon A sprayed 50 mL of physiological saline around the incision site” is added to the medical movie as the index information; [0153] time information);
acquire, on a basis of the first information, second information about the procedure so as to be kept in correspondence with time information ([0084], surgical microscope; [0089] time; [0120], surgical knife are used; [0121], brain surgery, [0152] time when a medical process is carried out, information about when medicines are administered, when “the surgeon A sprayed 50 mL of physiological saline around the incision site” is added to the medical movie as the index information; [0152] time information);
as the first information, acquire, by using an optical camera, an optical camera image rendering a medical tool having a plurality of introduction ports and used for administering a drug for the examined subject; and
as the second information, acquire information indicating a type of the drug by identifying, in the optical camera image ([0152]-[0153], physiological saline serves as type of drug; [0154]-[0165]), one of the introduction ports of the medical tool through which the drug is introduced.
Ueda does not specifically disclose
as the first information, acquire, by using an optical camera, an optical camera image rendering a medical tool having a plurality of introduction ports and used for administering a drug for the examined subject and
one of the introduction ports of the medical tool through which the drug is introduced.
However, Radojicic discloses
as the first information, acquire, by using an optical camera, an optical camera image rendering a medical tool having a plurality of introduction ports and used for administering a drug for the examined subject (col. 5, lines 29-33) and
one of the introduction ports of the medical tool through which the drug is introduced (col. 5, lines 29-33).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine above-noted disclosure of Ueda with the above-noted disclosure of Radojicic. The motivation for combining these references would have been to perform medical treatment on a patient.
Regarding claim 3, Ueda discloses a medical information processing apparatus comprising processing circuitry configured to:
acquire information about a procedure performed on an examined subject so as to be kept in correspondence with time information ([0084], surgical microscopes; [0089] time; [0120], surgical knife are used; [0121], brain surgery, [0152] time when a medical process is carried out, information about when medicines are administered, when “the surgeon A sprayed 50 mL of physiological saline around the incision site” is added to the medical movie as the index information; [0153] time information);
display the information on a display in accordance with the time information ([0026], [0089]);
display first output information that is a medical image and is kept in correspondence with the
time information indicating a first point in time, and second output information that is biological information data related to the examined subject acquired in the procedure and is kept in correspondence with the time information indicating the first point in time (abstract, [0026], [0082], [0089], [0142], [0152]-[0153], verbal instructions, sprayed 50 mL (use of tool to spray serves as medical tool, [0154]-[0165]), and
at a time of displaying third output information, according to an instruction from a user, that is the medical image and is kept in correspondence with the time information indicating a second point in time different from the first point in time, automatically display fourth information that is the biological information data related to the examined subject acquired in the procedure and is kept in correspondence with the time information indicating the second point in time (abstract, [0026], [0032], [0043], [0080], [0082], [0089], [0142], [0152]-[0153], verbal instructions, sprayed 50 mL (use of tool to spray serves as medical tool), [0154]-[0165]).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to combine various disclosures of Ueda in order to perform medical treatment on a patient.
Regarding claim 5, Ueda discloses wherein
as the information, the processing circuitry is further configured to output: a first medical image kept in correspondence with the time information indicating a first point in time, as the first output information; and a second medical image that is a medical image kept in correspondence with the time information indicating a second point in time different from the first point in time and is acquired under an imaging condition similar to that of the first medical image, as the third output information ([0152]-[0165], verbal instructions, sprayed 50 mL (use of tool to spray serves as medical tool); [0026], [0089])).
Claim 19 is substantially similar to claim 3 and hence rejected on similar grounds.
Claims 8, 18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Ueda, US Patent Application No. 2007/0225574 in view of Maestre, US Patent No. 5,347,453.
Regarding claim 8, Ueda discloses a medical information processing apparatus comprising processing circuitry configured to:
acquire information about a procedure performed on an examined subject so as to be kept in correspondence with time information ([0084], surgical microscopes; [0089] time; [0120], surgical knife are used; [0121], brain surgery, [0152] time when a medical process is carried out, information about when medicines are administered, when “the surgeon A sprayed 50 mL of physiological saline around the incision site” is added to the medical movie as the index information; [0153] time information);
perform an analysis based on the information;
display a result of the analysis on a display ([0026], [0089]);
as the information, acquire an optical camera image by using an optical camera or an audio by using an audio recorder, and acquire information indicating a type of a drug to be administered for the examined subject based on the optical camera image or the audio ([0152]-[0153], verbal instructions, sprayed 50 mL (use of tool to spray serves as medical tool, sprayed 50mL of physiological saline serves as type of drug; [0154]-[0165] recording medical movies); and
on a basis of the information indicating the type of the drug and examined subject information that is at least one of information about a disease which the examined subject is suffering from, records of the diseases which the examined subject suffered from and the treatment which the examined subject received in the past, and information about his-her constitution ([0082], [0141], viewing the important scenes occurring in the medical treatment, [0142], physiological condition of patient serves as constitution of patient, [0152]-[0165], analyze suitability of the drug for the examined subject.
Ueda does not specifically disclose
to perform an analysis based on the information.
analyze suitability of the drug for the examined subject.
However, Maestre discloses
to perform an analysis based on the information (col. 1, lines 14-25);
analyze suitability of the drug for the examined subject (col. 1, lines 14-25).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the above-noted disclosure of Ueda to include the above-noted disclosure of Maestre. The motivation for combining these references would have been to make sure the drug administered has no interaction with other drugs the patient is taking.
Claim 18 is substantially similar to claim 8 and hence rejected on similar grounds.
Regarding claim 20, Ueda discloses a medical information processing method comprising:
acquiring an optical camera image by using an optical camera or an audio by using an audio recorder, and acquiring information indicating a type of a drug to be administered for the examined subject, based on the optical camera image or the audio, as information about a procedure performed on an examined subject so as to be kept in correspondence with time information ([0152]-[0153], verbal instructions, sprayed 50 mL (use of tool to spray serves as medical tool, sprayed 50mL of physiological saline serves as type of drug; [0154]-[0165] recording medical movies);
on a basis of the information indicating the type of the drug and examined subject information that is at least one of information about a disease which the examined subject is suffering from, records of the diseases which the examined subject suffered from and the treatment which the examined subject received in the past, and information about his/her constitution ([0082], [0141], viewing the important scenes occurring in the medical treatment, [0142], physiological condition of patient serves as constitution of patient, [0152]-[0165]), analyzing suitability of the drug for the examined subject; and
displaying a result of the analysis on a display ([0026], [0089]).
Ueda does not specifically disclose
analyzing suitability of the drug for the examined subject.
However, Maestre discloses
analyzing suitability of the drug for the examined subject (col. 1, lines 14-25).
Therefore, it would have been obvious to a person having ordinary skill in the art before the effective filing date of the claimed invention to modify the above-noted disclosure of Ueda to include the above-noted disclosure of Maestre. The motivation for combining these references would have been to make sure the drug administered has no interaction with other drugs the patient is taking.
Response to Arguments
Applicant's arguments filed dated 2/19/2026 have been fully considered but they are not persuasive due to the following reasons:
With respect to the rejection of claims 1, 3, 5-8, and 17-20 under 35 U.S.C. 101, Applicant states that claim 8 requires acquisition of physical world sensor data during a medical procedure, automatic derivation of drug type information from image or audio data, and machine-based suitability analysis using defined patient data categories. Extracting drug type from optical image data or audio data cannot reasonably be characterized as a mental process of a method of organizing human activity. Claim 8 is directed to processing of sensor generated data in a clinical environment and is rooted in a specific technological implementation.
Examiner respectfully disagrees and notes that the specific technological implementation is nothing more than applying the abstract idea with the use of technology. It is clearly not rooted in computer technology as these steps can be performed in the absence of technology. Particularly, the method of selecting a drug based on medical procedure and image data can be carried out by a health care professional and thus abstract in nature. Thus, selecting a drug is an abstract concept that corresponds to a certain method of organizing human activity. The technical implementation of an abstract idea does not make the abstract idea rooted in computer technology. Thus, these arguments are not persuasive.
Applicant states that claim 1 requires acquiring an optical camera image rendering a medical tool having a plurality of introduction ports and identifying, in the optical camera image. One of the introduction ports through which a drug is introduced in order to acquire information indicating the type of the drug. This recites image-based recognition of a physical structure of a medical tool and deriving drug type from that identified structure. Such processing of optical image data of a physical device cannot reasonably be characterized as organizing human activity.
Examiner respectfully disagrees and notes that the claim is initially considered in the absence of additional elements to determine if the claim recites an abstract idea. The additional elements are considered under Step 2A, Prong Two and Step 2B to determine if the additional elements integrate the abstract idea into a practical application or amount to add significantly more. In this case, the claim clearly recites an abstract idea and the additional elements do not integrate the abstract idea into a practical application as the additional elements are merely present as a tool to implement the abstract idea without providing any technical improvement. Thus, these arguments are not persuasive.
Applicant states that claim 3, recites displaying a medical image and corresponding biological information data at a first point in time, and automatically displaying corresponding biological information data at a second point in time when a medical image at that second point in time is displayed according to a user instruction. This requires automatic synchronization of heterogeneous medical data based on time information and addresses the technical problem, of inconsistent display of time-correlated medical data.
Examiner respectfully disagrees and notes that displaying data is an abstract idea and the use of automation is merely automating a manual process with the use of generic computer device which does not transform an abstract idea into a patent eligible subject matter. The additional elements are recited at a high level of generality in that it simply applies the abstract idea without providing any technical improvement. If there is an improvement, it is to the abstract idea of displaying data simultaneously and not to technology. The improvement to an abstract idea is not sufficient to integrate the abstract idea into a practical application. Thus, these arguments are not persuasive.
Applicant states that when considered as an ordered combination, the independent claims recite significantly more than any alleged judicial exception.
Examiner respectfully disagrees and notes that the additional elements do not present an inventive concept as limitations are abstract in nature. An inventive concept “cannot be furnished by the unpatentable law of nature or natural phenomenon or abstract idea) itself.” 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. In this case, the additional elements are recited at a high level of generality in that it amounts to applying the abstract idea and do not amount to add significantly more.
Applicant’s arguments with respect to claims 1, 3, 5-8, and 17-20 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAJESH KHATTAR whose telephone number is (571)272-7981. The examiner can normally be reached M-F 8AM-5PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Shahid Merchant can be reached at 571-270-1360. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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RAJESH KHATTAR
Primary Examiner
Art Unit 3684
/RAJESH KHATTAR/Primary Examiner, Art Unit 3684
Prosecution Insights