DETAILED ACTION
Notice of AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
2. Applicant’s remarks received on 12/09/2025 with respect to the amended independent claims have been acknowledged and are moot in view of a new ground of rejection necessitated by the corresponding amendment. Currently claims 1 and 3-10 are rejected; and claim 2 is cancelled.
Response to Amendments
Claim Rejections - 35 USC § 101
3. 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.
Regarding claims 1 and 3-10 under the broadest reasonable interpretation, the terms of the claims are presumed to have their plain meaning consistent with the specification as it would be interpreted by one of ordinary skilled in the art. See MPEP 2111.
The claimed invention receives a medical image, identifies similar lesion regions based on features of the image, draws bounding box around or adds comments to the lesion regions, classifies the lesion regions in degree of interest; highlights high and low degree of interest among the lesion regions, removes the bounding box or the comments from the lesion region having low degree of interest, and displays the highlighted lesion regions reflecting different degrees of interest.
The claims are directed mental process and do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea).
The claims do not have any limitations that are indicative of integration of the judicial exception into a practical application such as improvements to functioning of a computer or a technical field, using any particular machine, effect a transformation of a particular article to a different state or thing, or apply the judicial exception in any meaningful way beyond generally linking the use to a particular technological environment. Therefore, the claims as a whole do not amount to significantly more than the judicial exception.
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof," 35 U.S.C. § 101, but “laws of nature, natural phenomena, and abstract ideas are not patentable.”
Step 1
Claims 1 is directed to one of the four statutory categories of eligible subject matter (process): thus, the claim pass Step 1 of the Subject Matter Eligibility Test.
Step 2A, prong 1 analysis
Claims 1 and 3-10 direct to a judicial exception in terms of mental processes which can be performed by human being with aids of simple tools like pen, ruler and paper. A trained physician looking at a medical image of lesion regions can classify high or low degree of interest of each lesion region based on feature similarities. The physician manually groups lesion regions based on degree of interest by comparing lesion regions to those of different images, highlights the grouped lesion regions in various color or adds comments to reflect different degree of interest, removes highlights or comments from lesion regions with low interest, and displays the image with various highlighted lesion regions.
Step 2A, prong 2 analysis
Other than data acquisition, The claims do not have any limitations that are indicative of integration of the judicial exception into a practical application such as improvements to functioning of a computer or a technical field, using any particular machine, effect a transformation of a particular article to a different state or thing, or apply the judicial exception in any meaningful way beyond generally linking the use to a particular technological environment.
Step 2B
Further, the claims do not include other additional elements that are beyond what is well-understood, routine, conventional activities in the field and sufficient to amount to significantly more than the judicial exception.
Conclusion:
The claims do not include additional elements amount to significantly more in terms of improving functionalities of a computer/device itself, improving another technology or technical field, effecting a transformation or reduction of a particular article to a different state or thing, adding unconventional steps that confine claim to a particular useful application or by use of a particular machine that is unconventional. In conclusion, the claims 1 and 3-10 do not comply with the current standards for patent eligible subject matter under 35 USC § 101.
Claim Rejections - 35 USC § 103
4. 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 of this title, 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.
51066.. Claims 1, 3, 5, 9, and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Soo et al (KR Pub: 20200060129) and in further view of Krishnan (US Pub: 20050102315).
Regarding claim 1 (currently amended), Soo et al teaches: An information processing apparatus comprising at least one processor, wherein the processor is configured to: acquire a first image comprising a medical image including a plurality of lesion regions [page 2: p04, p05]; classify a high or low degree of interest of at least one first lesion region among the plurality of lesion regions; specify at least one second lesion region similar to the first lesion region among the plurality of lesion regions in a case where the degree of interest is low; and make a display method of the first lesion region and the second lesion region classified as having a low degree of interest different from a display method of other lesion regions in a case where the plurality of lesion regions are highlighted and the medical image is displayed on a display [page 7: p02-p04]. Although second lesion similar to the first is not explicitly stated, given Soo et al’s identification on different degrees of interest and assignment of a color to similar degree of interest, it would have been obvious that an ordinary skilled in the art would have recognized the CAM-based highlighting producing multiple similar-interest regions.
Soo et al does not add or remove highlights or bounding boxes. In the same field of endeavor, Krishnan teaches: wherein: a highlight or a bounding box is added to each of the plurality of lesion regions in the first image; or a comment describing each of the plurality of lesion regions is added to the first image; generate a second image by: removing the highlights or the bounding boxes from the first lesion region and the second lesion region classified as having the low degree of interest in the first image; or removing the comments describing the first lesion region and the second lesion region classified as having the low degree of interest from the first image [p0054]; and display the second image on a display [p0040-p0042]. Therefore, given Krishnan’s prescription on adding or removing marks from image, it would have been obvious for an ordinary skilled in the art before the effective filing date of the claimed invention to combine the teaching of the two to add or remove marks/highlight to areas based on their interest level for emphasizing or de-emphasizing purpose.
Regarding claim 3 (original), the rationale applied to the rejection of claim 1 has been incorporated herein. Soo et al further teaches: The information processing apparatus according to claim 1, wherein the processor is configured to specify the second lesion region based on an image feature of the medical image [page 7: p02-p05 (A second lesion region can be specified based on an image feature in terms of its comparison to a predetermined correct answer.)].
Regarding claim 5 (currently amended), the rationale applied to the rejection of claim 1 has been incorporated herein. Soo et al further teaches: The information processing apparatus according to claim 1, wherein the processor is configured to acquire a predetermined degree of interest for a lesion region similar to the first lesion region as the degree of interest of the first lesion region [page 7: p02-p05].
Claim 9 (currently amended) has been analyzed and rejected with regard to claim 1.
Claim 10 (currently amended) has been analyzed and rejected with regard to claim 1 and in accordance with Soo et al’s further teaching on: A non-transitory computer-readable storage medium storing an information processing program for causing a computer to execute a process [page 9: p03].
61066.. Claim 4 is rejected under 35 U.S.C. 103 as being unpatentable over Soo et al (KR Pub: 20200060129) and Krishnan (US Pub: 20050102315); and in further view of Kumiko et al (WO Pub: 2014184887) (Applicant submitted reference).
Regarding claim 4 (original), the rationale applied to the rejection of claim 1 has been incorporated herein. Soo et al discloses assignment of interest levels for received images. In the same field of endeavor, Kumiko et al teaches: The information processing apparatus according to claim 1, wherein the processor is configured to receive an input of the high or low degree of interest [page 5: p03-p05]. Therefore, it would have been obvious for an ordinary skilled in the art before the effective filing date of the claimed invention to combine the teaching of the two to receive input of high or low degree of interest based on user preference.
71066.. Claims 6-8 are rejected under 35 U.S.C. 103 as being unpatentable over Soo et al (KR Pub: 20200060129) and Krishnan (US Pub: 20050102315); and in further view of Lisowska et al (JP Pub: 2019212296).
Regarding claim 6 (currently amended), the rationale applied to the rejection of claim 1 has been incorporated herein. Soo et al in view of Krishnan does not compare images. In the same field of endeavor, Lisowska et al teaches: The information processing apparatus according to claim 1, wherein the processor is configured to estimate the degree of interest of the first lesion region based on whether or not there is a description of a lesion region similar to the first lesion region in an interpretation report describing another medical image including the lesion region [page 1: abstract, page 2: p07]. Therefore, given Lisowska et al’s teaching on comparing lesion regions from different images, it would have been obvious for an ordinary skilled in the art before the effective filing date of the claimed invention to combine the teaching of all to decide a degree of interest by comparing lesion regions of different images for confirmation purpose.
Regarding claim 7 (currently amended), the rationale applied to the rejection of claim 1 has been incorporated herein. Lisowska et al further teaches: The information processing apparatus according to claim 6, wherein the processor is configured to estimate that the degree of interest of the first lesion region is low in a case where there is no description of the lesion region similar to the first lesion region in the interpretation report describing another medical image including the lesion region [page 7: p08; page 8: p01 (When there is no lesion description present in other reports, similarity evaluation will be downgraded.)]. Therefore, given Soo et al’s prescription on high/low prediction interest based on comparison to a predetermined correct answer [page 7: p05] and Lisowska et al’s teaching on lesion feature similarity evaluation, it would have been obvious for an ordinary skilled in the art before the effective filing date of the claimed invention to combine the teaching of the two to estimate degree of interest of a lesion region based on comparison result with other images for confirmation purpose.
Regarding claim 8 (original), the rationale applied to the rejection of claim 1 has been incorporated herein. Soo et al in view of Krishnan does not specify similarity based on distance. In the same field of endeavor, Lisowska et al teaches: The information processing apparatus according to claim 1, wherein the processor is configured to specify, as the second lesion region, a lesion region similar to the first lesion region among lesion regions in which a distance from the first lesion region is within a predetermined range [page 5: p02, p03]. Therefore, given Lisowska et al’s prescription on similarity determination based on distance, it would have been obvious for an ordinary skilled in the art before the effective filing date of the claimed invention to combine the teaching of the two to specify lesion region similarity based on given distance range for grouping purpose.
Conclusion
8. There is a new ground of rejection necessitated by the corresponding amendment presented in this Office Action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP 706.07(a).
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.
Contact
9. Any inquiry concerning this communication or earlier communications from the examiner should be directed to FAN ZHANG whose telephone number is (571)270-3751. The examiner can normally be reached on Mon-Fri 9:00-5:00.
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, Benny Tieu can be reached on 571-272-7490. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Fan Zhang/
Patent Examiner, Art Unit 2682