DETAILED ACTION
Status of Claims
In the response dated January 20, 2026, Applicant amended claims 1, 15, and 16, and claims 2-8 and 11 were previously canceled. Claims 1, 9, 10, and 12-16 are pending in the current application.
Response to Arguments
Applicant's arguments with respect to the rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive. Under Prong One, Applicant asserts that the claims cannot be mental processes because the claims require storage, retrieval, and reuse of modified ontology data structure across different execution timings, as well as computation of co-occurrence degrees. Examiner respectfully disagrees. The identified limitations, under their broadest reasonable interpretation, cover performance of the limitations in the mind (including observation, evaluation, judgement or opinion) but for the recitation of generic computer components. That is, other than the computer and display device, nothing in the claim elements precludes the steps form practically being performed in the mind. For example, the identified limitations encompass obtaining a list of medical terms (e.g., in a medical book), and writing down medical information including diagnosis related to the medical term and connections between medical terms. Under Prong Two, Applicant asserts that the claims recites a concrete technological improvement of reducing a load of processes of the medical information processing devices in light of Desjardins. Examiner respectfully disagrees. To evaluate technological improvements, the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. If the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. Applicant cites page 46, lines 17-22 of the Specification to explain “that pre-generation and storage of the mapped ontology distributes processing load and reduces the number of processes that must be simultaneously performed at display time.” In this case, the improvement is a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art to show how the distribution of the processing load reduces the load of processes to be performed simultaneously. Thus, the claim does not improve the technology. Under step 2B, Applicant asserts that the withdrawing of the prior art rejection further supports that the claimed combination is not routine or conventional. Examiner respectfully disagrees. Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter. In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103 (see MPEP 2106.05 (I)). In this case, the withdrawal of the prior art rejections is of no relevance in determining subject matter eligibility. Additionally, Applicant asserts that an improvement is described in the specification. As stated above, the improvement is described in a conclusory manner, so there is no technological improvement. The rejection is maintained.
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, 9, 10, and 12-16 are rejected under 35 U.S.C. 101 because the claims are not directed to patent eligible subject matter.
Claims 1, 9, 10, and 12-16 do fall within at least one of the four categories of patent eligible subject matter because the claims recite a machine (i.e., non-transitory computer readable storage medium and device) and process (i.e., a method).
Although claims 1, 9, 10, and 12-16 fall under at least one of the four statutory categories, it should be determined whether the claim wholly embraces a judicially recognized exception, which includes laws of nature, physical phenomena, and abstract ideas, or is it a particular practical application of a judicial exception (See MPEP 2106 I and II).
Claims 1, 9, 10, and 12-16 are directed to a judicial exception (i.e., a law of nature, natural phenomenon, or abstract idea) without significantly more.
Part I: Step 2A, Prong One: Identify the Abstract Idea
Under step 2A, Prong One of the Alice framework, the claims are analyzed to determine if the claims are directed to a judicial exception. MPEP §2106.04(a). The determination consists of a) identifying the specific limitations in the claim that recite an abstract idea; and b) determining whether the identified limitations fall within at least one of the three subject matter groupings of abstract ideas (i.e., mathematical concepts, mental processes, and certain methods of organizing human activity).
The identified limitations of independent claim 15 (representative of independent claims 1 and 16) recite:
reading, by the computer, the medical ontology from the medical ontology storage;
reading, by the computer, the medical data from the medical data storage;
mapping, by the computer, a medical term extracted from text data of the medical data the medical ontology to corresponding medical information, to thereby generate a modified medical ontology in which the medical ontology has been modified;
identifying, by the computer, as specific information one item of the medical information satisfying a specific condition regarding the diagnosis target based on the medical term extracted and the modified medical ontology;
tracing, by the computer, adjacency of the medical information to which the medical term has been mapped, in the modified medical ontology, and forming a cluster in which a label indicating a prescribed connection frequency based on the traced adjacency is connected to target medical information;
causing, by the computer, a display device to display content based on the specific information and the cluster;
obtaining, by the computer, a co-occurrence degree of the medical term included in the text data;
identifying, by the computer, the specific information based on a connection frequency based on the co-occurrence degree of second medical information that is the medical information to which the medical term is mapped for first medical information that is the medical information to which the medical term is not mapped in the modified medical ontology.
Identifying, by the computer, the specific information based on the connection frequency including a new medical term in which the co-occurrence degree is zero in the text data;
causing, by the computer, the display device to display time information in which the new medical term is extracted;
generate the modified medical ontology and store the modified medical ontology into the medical ontology storage in a case where the medical data read has been updated; and
at a timing when the content based on the specific information and the cluster is provided, identify the specific information based on the medical term extracted and the modified medical ontology read from the medical ontology storage, forming the cluster, and cause the display device to display the content based on the specific information and the cluster, thereby, to reduce a load of processes of the medical information processing device.
The identified limitations, under their broadest reasonable interpretation, cover performance of the limitations in the mind (including observation, evaluation, judgement or opinion) but for the recitation of generic computer components. That is, other than the computer and display device, nothing in the claim elements precludes the steps form practically being performed in the mind. For example, the identified limitations encompass obtaining a list of medical terms (e.g., in a medical book), and writing down medical information including diagnosis related to the medical term and connections between medical terms. The claim limitations fall within the Mental Processes groupings of abstract ideas. Thus, the claimed invention recites a judicial exception.
Part I: Step 2A, prong two: additional elements that integrate the judicial exception into a practical application
Under step 2A, Prong Two of the Alice framework, the claims are analyzed to determine whether the claims recite additional elements that integrate the judicial exception into a practical application. In particular, the claims are evaluated to determine if there are additional elements or a combination of elements that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort designed to monopolize the judicial exception.
This judicial exception is not integrated into a practical application. The computer and display device are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Dependent claims 9, 10, and 12-14, when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea. For example, the dependent claims further recite writing down medical information (e.g., diagnosis) related to medical terminology:
claim 9, the medical information processing device according to claim 1, wherein the processing circuitry obtains a probability distribution in which each medical term appears in the text data, and generates a modified medical ontology to which the medical term is mapped based on the probability distribution.
claim 10, the medical information processing device according to claim 1, wherein the processing circuitry generates the modified medical ontology by inputting the medical term to a trained model trained using the medical ontology as a graph structure.
claim 12, the medical information processing device according to claim 11, wherein the display content newly satisfies the specific condition regarding the diagnosis target patient and includes one item of the medical information of interest.
claim 13, the medical information processing device according to claim 1, wherein the specific condition is used to identify the medical information about a disease of the diagnosis target patient.
claim 14, the medical information processing device according to claim 1, wherein the specific condition is used to identify the medical information about a therapeutic method for a disease of the diagnosis target patient.
Since these claims are directed to an abstract idea, the Office must determine whether the remaining limitations “do significantly more” than describe the abstract idea.
Part II. Determine whether any Element, or Combination, Amounts to“Significantly More” than the Abstract Idea itself
Under Part II, the steps of the claims, when considered individually and as an ordered combination, do not improve another technology or technical field, do not improve the functioning of the computer itself, and are not enough to qualify as "significantly more". For example, the steps require no more than a conventional computer to perform generic computer functions. The computer and display device are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Therefore, based on the two-part Mayo analysis, there are no meaningful limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself. Claims 1, 9, 10, and 12-16, when considered individually and as an ordered combination, are rejected as ineligible subject matter under 35 U.S.C. 101.
Dependent claims 9, 10, and 12-14 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional claims do no recite significantly more than an abstract idea.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
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/CHINYERE MPAMUGO/Primary Examiner, Art Unit 3685
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