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 .
Information Disclosure Statement
The information disclosure statement (“IDS”) filed on 02/25/2026 was reviewed and the listed references were noted, with the exception of the one with strikethrough.
Applicant’s response to the last Office Action dated 10/09/2025, as well as amendment to claims and specification, filed on 02/09/2026 have been entered and made of record.
In light of Applicant’s amendment of the title of the invention, the objection of record with respect to the specification has been withdrawn.
In light of Applicant’s amendment of independent claims, the rejection of record under 35 U.S.C. 112(b) has been withdrawn.
Status of Claims
Claims 1-26 are pending.
Response to Arguments
Applicant's arguments filed on February 9, 2026 with respect to rejections of claims under 35 U.S.C. 103, and 35 U.S.C. 101 have been carefully considered. In light of Applicant amendment of the independent claims, Applicant’s arguments with respect to the rejections of record over prior art, presented in Pages 12-14 of its Reply, have been persuasive; and therefore, the rejections over prior art have been withdrawn. However, with respect to the amended term of “of medical significance”, Applicant has not provided any guidelines as to where in the specification Applicant has support. Accordingly, this term introduces “new matter” in the claims.
In addition, Applicant’s arguments with respect to the rejection of claims under 35 U.S.C. 101, based on Abstract Idea are not persuasive. Examiner respectfully disagrees that the claimed invention, as amended in independent claims, may be considered as enhancement of the technical field of medical processing, or integrates the indicated abstract idea into a practical application, as Applicant argues in Page 15 of its Reply. Accordingly, the rejection of claims 35 U.S.C. 101 is maintained. New analyses with respect to the amended claims based on Abstract Idea are presented below. Consequently, THIS ACTION IS MADE FINAL.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1-26 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The amended claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The addition of the term “of medical significance” to the term “region of interest” does not appear to have a clear and unambiguous support in Applicant’s specification. If Applicant believes that the specification fully supports the addition of this term, it is suggested that Applicant provide the exact location of recitation of this term in the specification
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 1-26 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite an apparatus, a method, and a non-volatile computer-readable recording medium directed to acquiring a medical image, and extracting a region of interest (ROI), which includes a specified point, extract a first and a second extraction region from the region of interest from partial image data. With respect to method Claim 25:
Step 1:
With regard to Step 1, the instant claim is directed to a method; and therefore, the claim is directed to one of the statutory categories of invention.
Step 2A, Prong One:
With regard to 2A, Prong One, the limitation “extracting a first extraction region estimated as the region of interest of medical significance from first partial image data included in a first processing range that includes the specified point of the medical image data” and “extracting a second extraction region estimated as the region of interest of medical significance from second partial image data included in a second processing range that is in contact with an edge portion of the first processing range or that includes at least a part of the edge portion, from the medical image data when the first extraction region is determined as a part of the region of interest” as drafted, recite an abstract idea, such as a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind of a person or by using a pen and paper, i.e., concepts performed in the human mind (including an observation, evaluation, judgement, opinion). That is a medical technician/practician may review a medical image and delineate first and second regions in from the partial images of the region of interest, which includes a specified point, for example, a lesion or tumor, and the regions are in contact with each other. This is the concept that falls under the grouping of abstract ideas mental processes for the decision/determination/calculation (evaluation, judgement, and/or opinion of an analyst).
Step 2A, Prong Two:
The 2019 PEG defines the phrase “evaluate whether the claim recites additional elements that integrate the exception into a practical application of the exception”. Therefore, additional elements, or a combination of additional elements in the claim, are required to apply, rely on, or use the judicial exception. In the instant case, in this instance, the additional element “causing a display to display the first extraction region and the second extraction region” is considered an insignificant extra-solution activity of providing the output on a display, which does not provide a limitation to apply, rely on, or use the judicial exception as an indication of integration of the judicial exception into a practical application. Accordingly, the claim recites an abstract idea.
Step 2B:
Because the claim fails under Step 2A, the claim is further evaluated under Step 2B. The claim herein does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because as discussed above with respect to integration of the abstract idea into practical application, the only additional element recited in considered to be insignificant extra-solution activity of displaying the output. Therefore, the claim fails under Step 2B, as well. Therefore, Claim 25 is not patent eligible.
In addition, the elements of independent Claims 1 and 26 are analyzed in the same manner as Claim 25. The additional elements recited in these claims, i.e., “a processing circuitry” and “computer-readable recording medium” are all regarded as mere generic computer components, and may not provide an inventive concept or significantly more than the identified abstract idea. Therefore, independent Claims of the instant application are not patent eligible.
Further, with regard to dependent claims 2-24 viewed individually, these additional elements, under their broadest reasonable interpretation, cover performance of the limitations as an abstract idea (mental processes, or in the case of Claim 23, mathematical calculations), and do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself.
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 Siamak HARANDI whose telephone number is (571)270-1832. The examiner can normally be reached Monday - Friday 9:30 - 6:00 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Amandeep Saini can be reached on (571)272-3382. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Siamak Harandi/Primary Examiner, Art Unit 2662