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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/23/2026 has been entered.
Response to Arguments
Rejection Under 112(a):
Applicant's arguments filed 07/23/2026 have been fully considered. Applicant argues that the amendments, which are supported by the specification, resolve the new matter issue. Therefore, the rejection should be withdrawn. In response to the argument and in light of the amendment, the rejection is withdrawn. However, the amendments raise new 112(a) issues. See the updated rejection below for further clarification.
Rejection Under 112(b):
Applicant's arguments filed 07/23/2026 have been fully considered. Applicant argues that the amendments resolve the issue. Therefore, the rejection should be withdrawn. In response to the argument and in light of the amendment, the rejection is withdrawn.
Claim Interpretation Under 112(f):
Applicant's arguments filed 07/23/2026 have been fully considered.
Applicant argues that the amendments regarding “rules engine” recite sufficient structure to perform the claimed function and the interpretation should be withdrawn.
In response the argument and in light of the amendment, the claim interpretation of “rules engine” is withdrawn.
Applicant argues that the “input device” connotes sufficient structure in the art and are not a generic placeholder requiring 112(f) interpretation. The specification provides structural examples for the input device in paragraph 29 such as a touchscreen. Therefore, the rejection should be withdrawn.
In response to Applicant, “The following is a list of non-structural generic placeholders that may invoke 35 U.S.C. 112(f): "mechanism for," "module for," "device for," "unit for," "component for," "element for," "member for," "apparatus for," "machine for," or "system for." Welker Bearing Co., v. PHD, Inc., 550 F.3d 1090, 1096, 89 USPQ2d 1289, 1293-94 (Fed. Cir. 2008)…. Note that there is no fixed list of generic placeholders that always result in 35 U.S.C. 112(f) interpretation.” See MPEP 2181(1)(A). Applicant’s recite “input device” is interpreted to be analogous to placeholders similar to ones provided on this list, but as pointed out, this list is not exhaustive. For example, input device is analogous to the list’s recite “device”. Therefore, the claim interpretation is maintained. Additionally, as discussed in the interpretation, the Examiner agrees that the specification at [0029] describes the input device which discusses a touchscreen as an example input device. See the claim interpretation for clarification.
Rejection Under 112(d):
Applicant's arguments filed 07/23/2026 have been fully considered. Applicant argues that the amendments cancelling the claims resolves the issue. Therefore, the rejection should be withdrawn. In response to the argument and in light of the amendment, the rejection is withdrawn.
Rejection Under 101:
Applicant's arguments filed 07/23/2026 have been fully considered.
Applicant argues that the claims are integrated into a practical application because the claims recite a specific technical solution that improves the functioning of medical information relay systems. The claims recite technical components which cannot be performed in the mind. Due to these recitations, the claim is integrated into a practical application.
In response to Applicant’s argument, the argument appears to be directed toward the amendment and is therefore moot. However, the bolded limitations of the claims do not amount to a practical application since it merely invokes the use of computers to carry out the abstract idea. See the updated rejection for further clarification. Therefore, the claims do not recite a practical application.
Applicant argues that the claimed invention that recites “deterministically traversing the stored decision tree produces” is not the intuitive, experience-based reasoning of a physician. It is a deterministic computational operation performed on a stored decision tree data structure that produces a next question. The specification explains that the algorithmic techniques are chosen to provide visibility and insight to decision making process and to avoid lack of explainability of AI models.
In response to Applicant’s argument, the specification also states that the deterministic techniques are following flowcharts. See spec. at [0009]. This falls in line with the abstract idea below of following rules to triage a patient. See the updated rejection in light of the amendments.
Applicant argues that the claims are analogous to the claims in McRO, by reciting a specific way to achieve a result, namely deterministically traversing a stored decision tree to produce the next question.
In response to Applicant’s argument, the claims are unlike McRo because as discussed above, the claims fall under the abstract idea of management of personal behavior or interactions (i.e., following rules or instructions) by the automation of following rules to organize patient’s correspondences regarding their medical events and determine what additional information the doctor needs in order to triage the patient. Therefore, the claims are directed to the abstract idea of certain methods of organizing human activity. The additional elements recited are well known and recited for their intended purposes and thus do not amount to anything more than applying the abstract idea in a computer environment. See the updated rejection in light of the amendments.
Applicant argues that the claims are analogous to Enfish, by reciting a specific way to achieve a result, namely deterministically traversing a stored decision tree to produce the next question. The claims are directed to a specific implementation of a solution to a problem, not to the addition of generic computer components to an abstract idea.
In response to Applicant’s argument, the claims are unlike Enfish because as discussed above, the claims fall under the abstract idea of management of personal behavior or interactions (i.e., following rules or instructions) by the automation of following rules to organize patient’s correspondences regarding their medical events and determine what additional information the doctor needs in order to triage the patient. Therefore, the claims are directed to the abstract idea of certain methods of organizing human activity. The additional elements recited are well known and recited for their intended purposes and thus do not amount to anything more than applying the abstract idea in a computer environment. See the updated rejection in light of the amendments.
Applicant argues that claims recite an improvement in how the medical relay system processes unstructured message data and selects follow-up questions, thereby improving the accuracy and completeness of the medical information relayed to a practitioner.
In response to Applicant’s argument, the bolded limitations of the claims do not amount to a practical application since it merely invokes the use of computers to carry out the abstract idea. See the updated rejection for further clarification.
Applicant argues that the claims recite significantly more that the abstract idea because of non-conventional and non-generic arrangement of technical elements. The claims recite a specific ordered combination of limitations to determine a medical event. The combination provides a technical solution to the problem of incomplete and unstructured medical messages which is analogous to BASCOM.
In response to Applicant’s argument, the bolded limitations recited are well known and recited for their intended purposes and thus do not amount to significantly more than the abstract idea. See the updated rejection for further clarification.
Applicant argues that the claims are distinguishable for those in Electric Power Group since the claims recite a particular mechanism by which the result is accomplished. The claims recite a particular way of achieving the desired outcome and do not preempt all solutions to the identified problem.
In response the Applicant’s argument, while preemption is the concern underlying the judicial exceptions, it is not a standalone test for determining eligibility. Rapid Litig. Mgmt. v. CellzDirect, Inc., 827 F.3d 1042,1052, 119 USPQ2d 1370,1376 (Fed. Cir. 2016). It is necessary to evaluate eligibility using the Alice/Mayo test, because while a preemptive claim may be ineligible, the absence of complete preemption does not demonstrate that a claim is eligible. Diamond v. Diehr, 450 U.S. 175,191-92 n.14, 209 USPQ 1,10-11 n.14 (1981). See MPEP 2106.04 (I). The bolded limitations recited are well known and recited for their intended purposes and thus do not amount to significantly more than the abstract idea. See the updated rejection for further clarification.
Rejection Under 103:
Applicant's arguments filed 07/23/2026 have been fully considered. Applicant argues that the claims do not recite all of the amended features of the claims and a proper reason for combining the references has not been established.
In response to Applicant’s argument, in light of the withdrawn rejection the argument is moot. See the reasons for the withdrawn rejection below for further clarification.
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.
Claims 1-4, 7-13, 15-19, 21-22 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 claim(s) contains 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. Claim 1 (and similarly with claims 10, 16) recite “wherein the user is the patient or a non-clinical user who is not licensed to independently perform medical triage of the medical event.” After reviewing the specification, there does not appear to be sufficient support for this amendment. The specification at [0024] discusses a prompting a non-clinical user to provide additional information but does not discuss whether that user is licensed or not to perform the medical triage. The specification does not provide a basis in the original disclosure for this negative limitation. Appropriate correction is required. The dependent claims are also rejected for inheriting the issues of the independent claims.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Regarding Claim 1 (and similarly for 10, 16) – The claim recites an input device configured to receive a medical message from a patient... See MPEP 2181. The claim limitation uses the term input device. The “input device” is modified by functional language “configured to receive a medical message….” The input device is not modified by sufficient structure, material or act for performing the claim. Therefore 112(f) is invoked. See Spec. [0029] which describes the input device can be a touch screen. For examination purposes the input device is construed to be hardware such as a touch screen or a display.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 1-4, 7-13, 15-19, 21-22 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
Step 1 of the Alice/Mayo Test
Claims 1-4, 7-9, 21-22 are drawn to a system, which is within the four statutory categories (i.e. apparatus). Claims 10-13, 15 are drawn to a method, which is within the four statutory categories (i.e. process). Claims 16-19 are drawn to a non-transitory machine readable storage medium, which is within the four statutory categories (i.e. apparatus).
Step 2A of the Alice/Mayo Test - Prong One
The independent claims recite an abstract idea. For example, claim 1 (and substantially similar with independent claim 10, 16) recites:
A system for increasing accuracy of medical information relayed to a medical practitioner, the system comprising:
a storage device, the storage device including a medical knowledge base;
an input device configured to receive a medical message from a user, the medical message being regarding about a medical event experienced by a patient, wherein the user is the patient or anon-clinical user who is not licensed to independently perform medical triage of the medical event; and
a processing circuitry configured to:
implement a natural language processing parser configured to automatically parse the received medical message, the medical message comprising unstructured natural language text, to identify a symptom described in the medical message;
identify, based on an analysis of the medical message, additional information needed by a medical practitioner to provide medical care for the medical event;
select, in real time and for each follow-up question, a next question to prompt the user for additional information by deterministically traversing a stored decision tree within the medical knowledge base, wherein a traversal path is dynamically determined based on an immediately preceding answer received from the user, and wherein deterministically traversing the stored decision tree produces, for a given input state, a repeatable and predefined next question;
generate one or more questions prompting the user to provide the additional information; and
implement a rules engine comprising a computerized expert system that applies a rules-based framework to determine the medical event based on the medical message, the additional information, and the medical knowledge base;
provide an indication of the medical event to a medical practitioner;
present a knowledge base editor interface configured to receive a rule modification input from a clinician and, responsive to the rule modification input, generate an updated medical knowledge base: and
present a rules engine editor interface configured to receive a rule modification input from a clinician and, responsive to the rule modification input, generate an updated rules engine.
These underlined elements recite an abstract idea that can be categorized, under its broadest reasonable interpretation, to cover the management of personal behavior or interactions (i.e., following rules or instructions), but for the recitation of generic computer components. For example, but for the system, storage device, input device, processing circuitry, processing parser, editor interface, medical knowledge base, computerized expert system, the limitations in the context of this claim encompass an automation of following rules to organize patient’s correspondences regarding their medical events and determine what additional information the doctor needs in order to triage the patient. If a claim limitation, under its broadest reasonable interpretation, covers management of personal behavior or interactions but for the recitation of generic computer components, then the limitations fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. See MPEP § 2106.04(a).
Dependent claims recite additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claims 2-4, 7-9, 11-13, 15, 17-19, 21-22 reciting particular aspects of the abstract idea).
Step 2A of the Alice/Mayo Test - Prong Two
For example, claim 1 (and substantially similar with independent claim 10, 16) recites:
A system for increasing accuracy of medical information relayed to a medical practitioner, the system comprising: (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f))
a storage device, the storage device including a medical knowledge base; (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f))
an input device configured to (construed as touchscreen or display – see claim interpretation – merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)) receive a medical message from a user, the medical message being regarding about a medical event experienced by a patient, wherein the user is the patient or anon-clinical user who is not licensed to independently perform medical triage of the medical event; and
a processing circuitry configured to: (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f))
implement a natural language processing parser configured to (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)) automatically parse the received medical message, the medical message comprising unstructured natural language text, to identify a symptom described in the medical message;
identify, based on an analysis of the medical message, additional information needed by a medical practitioner to provide medical care for the medical event;
select, in real time and for each follow-up question, a next question to prompt the user for additional information by deterministically traversing a stored decision tree within the medical knowledge base (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)), wherein a traversal path is dynamically determined based on an immediately preceding answer received from the user, and wherein deterministically traversing the stored decision tree produces, for a given input state, a repeatable and predefined next question;
generate one or more questions prompting the user to provide the additional information; and
implement a rules engine comprising a computerized expert system (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)) that applies a rules-based framework to determine the medical event based on the medical message, the additional information, and the medical knowledge base;
provide an indication of the medical event to a medical practitioner;
present a knowledge base editor interface configured to receive a rule modification input from a clinician and, (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)) responsive to the rule modification input, generate an updated medical knowledge base: and
present a rules engine editor interface configured to receive a rule modification input from a clinician and (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)) responsive to the rule modification input, generate an updated rules engine.
The judicial exception is not integrated into a practical application. In particular, the additional elements do not integrate the abstract idea into a practical application, other than the abstract idea per se, because the additional elements amount to no more than limitations, which:
amount to mere instructions to apply an exception (such as recitations of the system, storage device, input device, processing circuitry, processing parser, editor interface, medical knowledge base, computerized expert system, thereby invoking computers as a tool to perform the abstract idea, see applicant’s specification [0012], [0018], [0021], [0029], [0031], [0035], see MPEP 2106.05(f))
Dependent claims recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (such as claim 2, 11, 17 recites identifying urgency information and using the rules engine to predict severity of medical events, which amounts to furthering the abstract idea; claim 3, 12, 18 recites using the algorithmic techniques to identify the additional information, which amounts to furthering the abstract idea; claim 4, 13, 19 recites further defining which algorithmic techniques are used, which amounts to furthering the abstract idea; claim 7, 15 recites further defining the additional information, which amounts to furthering the abstract idea; claim 8 recites further defining the additional information, which amounts to furthering the abstract idea; claim 9 recites further defining the additional information, which amounts to furthering the abstract idea; claim 21 recites the type of user which furthers the abstract idea; claim 22 recites beginning with a general medical inquiry and increasing to specific inquiries which furthers the abstract idea; and claims 2-4, 7-9, 11-13, 15, 17-19, 21-22 additional limitations which generally link the abstract idea to a particular technological environment or field of use). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation and do not impose a meaningful limit to integrate the abstract idea into a practical application.
Step 2B of the Alice/Mayo Test for Claims
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 discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception. Additionally, the additional elements, other than the abstract idea per se, amount to no more than elements which:
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields (such as using the system, storage device, input device, processing circuitry, processing parser, editor interface, medical knowledge base, computerized expert system, e.g., Applicant’s spec describes the computer system with it being well-understood, routine, and conventional because it describes in a manner that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such elements to satisfy 112a. (See Applicant’s Spec. [0012], [0018], [0021], [0029], [0031], [0035]); using the system, storage device, input device, processing circuitry, processing parser, editor interface, medical knowledge base, computerized expert system, e.g., merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2358-59, 110 USPQ2d 1976, 1983-84 (2014).
Dependent claims recite additional subject matter which beyond furthering the abstract idea, as discussed above with respect to integration of the abstract idea into a practical application, amount to invoking computers as a tool to perform the abstract idea and are generally linking the abstract idea to a particular field of environment. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Therefore, the claims are not patent eligible, and are rejected under 35 U.S.C. § 101.
Subject Matter Free of Prior Art
Claims 1-4, 7-13, 15-19, 21-22 are free of prior art over Chen et al. (US 2022/0215957), Sun et al. (US 2021/0027898), and Dew, Sr. et al. (US 2018/0301222). The prior art references, or reasonable combination thereof, could not be found to disclose, or suggest all of the limitations found in the independent claims. The closest prior art is Chen et al. (US 2022/0215957), which teaches a digital nurse for symptom and risk assessment through a machine learning driven digital assistance platform. Sun et al. (US 2021/0027898) teaches a dynamic context-based collaborative medical concept interpreter for automatically generating and presenting summarized explanations of medical concepts. Dew, Sr. et al. (US 2018/0301222) teaches guiding a user’s encounter with a patient and for generating a medical record of the encounter, wherein a knowledge base is accessed and received input from the user interface. The references taken solely, or in combination, fail to provide the required limitations, and modification of any complementary combination of the references of record would be impermissible hindsight and not provide any advantages over their present application. The dependent claims are also free of prior art due to their corresponding dependency of the intendent claims.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. McNair et al. (US 11842816) is a decision support system that teaches presenting and editor interface to receive rule modifications and then updating medical knowledge bases and rule engines. McNair et al. (US 10854334) is an enhanced natural language processing system that teaches altering and updating knowledge bases.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA R COVINGTON whose telephone number is (303)297-4604. The examiner can normally be reached Monday - Friday, 10 - 5 MT.
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/AMANDA R. COVINGTON/Examiner, Art Unit 3686
/RACHELLE L REICHERT/Primary Examiner, Art Unit 3686
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