DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed September 04, 2026.
Claims 1, 3, 6, 8, 10, 13, 15, 17, and 20-31 are pending
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 .
Request for Continued Examination
Claims 1, 3, 6, 8, 10, 13, 15, 17, and 20-31 are pending
Claim Rejection - 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, 6, 8, 10, 13, 15, 17, and 20-31 are rejected to under 35 U.S.C 101 as not being directed to eligible subject matter the grounds set out in detail below:
Independent Claims 1, 8, and 15:
Eligibility Step 1 (does the subject matter fall within a statutory category?): Independent Claims 1 falls within the statutory category of machine. Independent Claim 8 falls within the statutory category of method. Independent Claim 15 falls within the statutory category of article of manufacture.
Eligibility Step 2A-1 (does the claim recite an abstract idea, law of nature, or natural phenomenon?): Independent claims 1, 8, and 15 claimed invention recites an abstract idea.
The claim elements in the independent claims 1, 8, and 15 (claim 1 being representative) which set forth the abstract idea are:
manipulation of health records associated with a patient;
transmitting, a request in a first format …[…]… immunization records of a patient;
receiving, a first recording agency immunization record of the patient in the first format;
receiving, …[…]…associated with at least one of a lab provider or a healthcare provider, …[…]…health records associated with the patient;
transmitting, the …[…]…health records associated with the patient wherein the …[…]…health records associated with the patient comprise a new immunization record;
in response to transmitting the …[…]…health records comprising the new immunization record…[…]…, initiating, …[…]…a first wait timer process; in response to expiry of the first wait timer process, transmitting,…[…]…, a second Health Level 7 (HL7) formatted request in a second format for the recording agency electronic immunization records of the patient;
transmitting, a second request in a second format for the recording agency …[…]… immunization records of the patient;
receiving, a second recording agency immunization records of the patient in the second format;
in response to receiving the second recording agency immunization records:
pushing the second recording agency immunization records;
and initiating a wait timer that prevents queries;
comparing, …[…]…, the first recording agency immunization records of the patient and the second recording agency immunization records of the patient;
in response to receiving the second recording agency immunization records:
pushing the second recording agency immunization records…[…]…;
comparing, …[…]…the first recording agency immunization record of the patient and the second recording agency immunization records of the patient;
in response to determining, based on the comparing, that the new immunization record is not found in the second recording agency immunization records, starting, …[…]…, a query loop process, wherein the query loop process comprises:
initiating …[..]…while …[…]…is running, periodically querying, …[…]…,for a presence of the new immunization record;
and ending the query loop process in response to receiving the new immunization record
verifying that the new immunization record has propagated…[…]…, or …[…]…exceeding a loop timer threshold;
and verifying, …[…]…and based on the first recording agency immunization record of the patient and the second recording agency immunization records of the patient, acceptance of the new immunization record.
which falls within “certain methods of organizing human activity” as managing personal behavior to compare, verify, and accept immunization records of a patient. See MPEP § 2106.04(a)(2).
Eligibility Step 2A-2 (does the claim recite additional elements that integrate the judicial exception into a practical application?): For Independent Claims 1, 8, and 15 this judicial exception is not integrated into a practical application.
In Claim 1, 8, and 15 the additional elements are:
A networked database system including a software application for operation on a user device, the system comprising: one or more processors; on or more tangible, non-transitory electronic memory in electronic communication with the processor, the tangible, non-transitory memories having instructions stored thereon
electronic immunization registry system of a recording agency
electronic health records
electronic immunization records of a patient
a computer system
one or more external databases
a query loop timer;
Examiner takes the applicable considerations stated in MPEP 2106.04 (d) and analyzes them below in light of the instant applications disclosure and claim elements as a whole.
The additional element, A networked database system including a software application for operation on a user device, the system comprising: a processor; a tangible, non-transitory electronic memory in electronic communication with the processor, the tangible, non-transitory memory having instructions stored thereon, is performing the abstract idea and stated as a general purpose computer tool or equivalent (see instant application spec. [00108]) to apply the abstract idea as “apply-it” to gather and analyze data
The additional elements, electronic immunization registry system of a recording agency, is generally linking the abstract idea to electronic computer implementation
The additional elements, electronic health records and electronic immunization records of a patient, is generally linking the abstract idea to electronic computer implementation
The additional element, a computer system, is merely a generic computer element to apply the abstract idea as “apply-it” to gather and communicate data
The additional element, one or more external databases, is merely a generic computer element to apply the abstract idea as “apply-it” to store data
The additional element, a query loop timer, is merely a generic timing computer mechanism to apply the abstract idea as “apply-it” to run the abstract idea
Accordingly, claims 1, 8, and 15 do not integrate the abstract idea into a practical application.
Eligibility Step 2B (Does the claim amount to significantly more?): The independent claims 1, 8, and 15 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because as analyzed above in step 2A prong 2 above, these additional elements, whether viewed individually or as an ordered combination, amount to no more than applying the abstract idea and/or generally linking the abstract idea thus insufficient to provide “significantly more”. Therefore, the claims do not amount to significantly more and the claims are ineligible.
Dependent Claims 3, 6, 10, 13, 17, and 20-31:
Eligibility Step 1 (does the subject matter fall within a statutory category?): The dependent claims 3, 6, 21-22, and 27-28 fall within the statutory category of machine. The dependent claims 10, 13, 23, 24, 29, and 30 fall within the statutory category of method. The dependent claims 17, 20, 25, 26, and 31 fall within the statutory category of article of manufacture.
Eligibility Step 2A-1 (does the claim recite an abstract idea, law of nature, or natural phenomenon?): Dependent claims 3, 6, 10, 13, 17, and 20-31 claimed invention are directed to a judicial exception.
Dependent claims 3, 6, 10, 13, 17, and 20-31 continue to limit the abstract idea in the independent claim by (1) limiting the verification, (2) limiting propagating the change, (3) the wait time process, (4) further limiting the query of immunization records, (5) further limiting who the immunization records are associated with, and (6) further limiting the format and incorporation of the immunization records, thus, inheriting the same abstract idea which falls within “certain methods of organizing human activity” as managing personal behavior to compare, verify, and accept immunization records of a patient. See MPEP § 2106.04(a)(2).
Eligibility Step 2A-2 (does the claim recite additional elements that integrate the judicial exception into a practical application?): In Claims 3, 6, 10, 13, 17, and 20-31 this judicial exception is not integrated into a practical application.
In Claims 3, 6, 10, 13, 17, and 20-31 contain no additional elements not already recited in the independent claims are therefore purely the abstract idea.
Eligibility Step 2B (Does the claim amount to significantly more?): Dependent claims 3, 6, 10, 13, 17, and 20-31 do not include additional elements not already recited in the independent claims thus are purely the abstract idea and cannot provide “significantly more”. Therefore, the claims do not amount to significantly more and the claims are ineligible.
Subject Matter Free of Prior Art
The cited prior art of record fails to expressly teach or suggest, either alone or in combination, the features found within the independent claims (Claim 1 as representative). In particular, the cited prior art of record fails to expressly teach or suggest the combination of: “in response to determining, based on the comparing, that the new immunization record is not found in the second recording agency immunization records, starting, by the one or more processors, a query loop process, wherein the query loop process comprises: initiating a query loop timer; while the query loop timer is running, periodically querying, by the one or more processors, the electronic immunization registry system of the recording agency for a presence of the new immunization record; and ending the query loop process in response to receiving the new immunization record from the electronic immunization registry system of the recording agency, verifying that the new immunization record has propagated across the one or more external databases, or the query loop timer exceeding a loop timer threshold” For additional reasons see pages 24-27 of remarks dated 09/04/2026
The most remarkable prior art of record is as follows:
Daub et. al (Daub) (US20210158292A1)
A private networked database system utilizing mobile devices offers centralized access , reconciliation , and sharing of data , for example consumer immunization information . The system provides technical features not previously avail able , including bidirectional data transmission and replica tion across government - controlled databases located in mul tiple states
Barsness et. al (hereinafter Barsness) (US8122010B2)
Methods, systems, and computer program products for dynamically adjusting computer resources, as appropriate, in response to predictions of query runtimes as well as for ren dering costs of the computer resources actually utilized, which costs are consistent with consumer demands.
Kutscher et. al (hereinafter Kutscher) (US20160283666A1)
immunization registry server is configured to generate one or more integrated immunization records using healthcare information obtained from different healthcare information Sources. These healthcare information sources include the parents or guardians associated with a student/patient, a stu dent information system, a state immunization registry, and a healthcare provider for the student/patient. In obtaining the healthcare information from these sources, the immunization registry server is configured to determine whether there are any discrepancies in the obtained healthcare information and identify them accordingly. In addition, the immunization registry server is configured with a variety of state-specific adapters that are invoked to obtain the healthcare information from the various state immunization registries. The immuni Zation registry server also implements a data model that facilitates granting access to portions of an integrated immu d depending on the permission On record depending On the permissions atedt iated with shared portions of the integrated immunization record.
Bessette et. al – (US20230385450A1)
A method to manage exposure of confidential user information in a user data record to a third party, the method comprising providing an electronic record system managed by a server arrangement, the server arrangement being configured to interact with a user device associated with the user, implementing with the server arrangement a data privacy configurator including a GUI allowing the user at the user device to specify data access parameters, the data access parameters distinguishing between first data in the user data record that the user is willing to expose to a third party from second data in the user data record that the user is not willing to expose to the third party, in response to a request received at the server arrangement to communicate user data from the user data record to the third party, processing the user data record according to the data access parameters to allow the third party to access the first data while precluding the third party to access the second data.
Gupta et. al – (US20240127933A1)
A system includes a computing device to receive medical information associated with a particular patient, compare immunization records for the particular patient with a recommended immunization schedule for the particular patient and determine that there is at least one immunization to be scheduled for the particular patient, schedule the at least one immunization for the particular patient based on at least one factor comprising a spoken language of the particular patient, a location ofthe particular patient, and acceptance of insurance for the particular patient for a healthcare provider, and generate an alert in realtime for the healthcare provider when the particular patient arrives at the healthcare provider for the at least one immunization scheduled for the particular patient.
Response to Arguments Regarding 35 U.S.C § 101 Rejections
Applicant’s arguments on pages 1-25 of remarks have been considered. Applicant argues that specifically, the Patent Office alleges that the claims relate to a concept that falls within the "certain methods of organizing human activity" grouping of abstract ideas. Id at 4.
Applicant amends independent claims 1, 8, and 15 to overcome the rejection under §101. Amended Independent Claims 1, 8, and 15 do not Recite a Judicial Exception (Step 2A, Prong One) The MPEP divides the first step of the Alice/Mayo test (also known as Step 2A) into a two prong analysis. See MPEP, at @ 2106.04. In the first prong of Step 2A, the Patent Office is required to determine whether the claim recites a judicial exception. See id If a claim does not recite a judicial exception, then the claim is eligible at Prong One. See Applicant respectfully submits that amended independent claims 1, 8, and 15 do not recite a judicial exception. The Abstract Idea Identified by the Patent Office does not Correspond to the Limitations of Amended Independent Claims 1, 8, and 15 The Patent Office asserts that the claims relate to a concept that falls within the "certain methods of organizing human activity" grouping of abstract ideas. Office Action, at 4. The MPEP instructs that "Examiners should determine whether a claim recites an abstract idea by (1) identifying the claimed concept (the specific claim limitation(s) in the claim under examination that the examiner believes may be an abstract idea), and (2) comparing the claimed concept to the concepts previously identified as abstract ideas by the courts to determine if it is similar." MPEP, at @ 2106.04(a).
Applicant respectfully submits that the idea identified by the Patent Office does not correspond to the specific claim limitations in amended independent claims 1, 8, and 15. Specifically, the Patent Office has overgeneralized the claims to an extent that conflicts with clear judicial guidance. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) ("We have previously cautioned that courts must be careful to avoid oversimplifying the claims by looking at them generally and failing to account for the specific requirements of the claims. . . . Whether at step one or step two of the Alice test, in determining the patentability of a method, a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps."). Amended independent claim 1 recites: "in response to transmitting the electronic health records comprising the new immunization record to the electronic immunization registry system of the recording agency, initiating, by the one or more processors, a first wait timer process; in response to expiry of the first wait timer process, transmitting, by the one or more processors and to the electronic immunization registry system of the recording agency, a second Health Level 7 (HL7) formatted request in a second format for the recording agency electronic immunization records of the patient; receiving, by the one or more processors and from the electronic immunization registry system of the recording agency, second recording agency immunization records of the patient in the second format; in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; comparing, by the one or more processors, the first recording agency immunization record of the patient and the second recording agency immunization records of the patient; in response to determining, based on the comparing, that the new immunization record is not found in the second recording agency immunization records, starting, by the one or more processors, a query loop process, wherein the query loop process comprises: initiating a query loop timer; while the query loop timer is running, periodically querying, by the one or more processors, the electronic immunization registry system of the recording agency for a presence of the new immunization record; and ending the query loop process in response to receiving the new immunization record from the electronic immunization registry system of the recording agency, verifying that the new immunization record has propagated across the one or more external databases, or the query loop timer exceeding a loop timer threshold." Amended independent claims 8 and 15 recite similar limitations. The Patent Office's overgeneralization of the claims ignores these important limitations, in violation of clear judicial guidance.
Further, the MPEP instructs that examiners are to determine whether an abstract idea falls into three groupings of subject matter:
a) Mathematical Concepts (e.g., mathematical relationships, mathematical formulas or equations, and/or mathematical calculations);
b) Certain Methods of Organizing Human Activity (e.g. fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)); and
c) Mental Processes (e.g., concepts performed in the human mind (including an observation, evaluation, judgment, opinion)).
In order to determine when a claim recites a judicial exception, examiners are to (a) identify the specific limitation(s) in the claim under examination (individually or in combination) that the examiner believes recites an abstract idea; and (b) determine whether the identified limitation(s) falls within the subject matter groupings of abstract ideas enumerated above.
Applicant respectfully submits that amended independent claims 1, 8, and 15 do not fall within one of the three groupings described in the MPEP. The above-referenced overgeneralization of the claims demonstrates that the amended independent claims do not fall within the "certain methods of organizing human activity" grouping described in the MPEP. Nowhere in the Office Action does the Patent Office specify how a human is supposed to perform "in response to transmitting the electronic health records comprising the new immunization record to the electronic immunization registry system of the recording agency, initiating, by the one or more processors, a first wait timer process; in response to expiry of the first wait timer process, transmitting, by the one or more processors and to the electronic immunization registry system of the recording agency, a second Health Level 7 (HL7) formatted request in a second format for the recording agency electronic immunization records of the patient; receiving, by the one or more processors and from the electronic immunization registry system of the recording agency, second recording agency immunization records of the patient in the second format; in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; comparing, by the one or more processors, the first recording agency immunization record of the patient and the second recording agency immunization records of the patient; in response to determining, based on the comparing, that the new immunization record is not found in the second recording agency immunization records, starting, by the one or more processors, a query loop process, wherein the query loop process comprises: initiating a query loop timer; while the query loop timer is running, periodically querying, by the one or more processors, the electronic immunization registry system of the recording agency for a presence of the new immunization record; and ending the query loop process in response to receiving the new immunization record from the electronic immunization registry system of the recording agency, verifying that the new immunization record has propagated across the one or more external databases, or the query loop timer exceeding a loop timer threshold," and the Office Action is seemingly devoid of anything but conclusory statements and citations to Applicant's claims with little analysis to prove the Patent Office's allegation.
Accordingly, amended independent claims 1, 8, and 15 do not recite a judicial exception. Applicant therefore respectfully requests the allowance of amended independent claims 1, 8, and 15.
2. Amended Independent Claims 1, 8, and 15 are Merely Based on or Involve the Abstract Idea
The MPEP instructs that "[s]ome claims are not directed to an abstract idea because they do not recite anything similar to a judicially-identified abstract idea, although it may be apparent that at some level they are based on or involve an abstract idea." MPEP § 2106.04(a)(1). The MPEP similarly instructs that "software is not automatically an abstract idea, even if performance of a software task involves an underlying mathematical calculation or relationship." MPEP, at § 2106.04(a). Thus, before determining whether a claim is "directed to" an abstract idea, the Office must first identify claim language that recites (i.e., sets forth or describes) the abstract idea. See MPEP § 2106.04, Subsection II(A)(1). This threshold requirement reflects the Supreme Court's caution that, at some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.
Applicant respectfully submits that this distinction controls here. Even if amended independent claims 1, 8, and 15 are based on or involve an abstract idea within the "certain methods of organizing human activity" grouping of abstract ideas, arguendo, amended independent claims 1, 8, and 15 do not recite, set forth, or describe that abstract idea. At most, amended independent claims 1, 8, and 15 are merely based on or involve the abstract idea.
The MPEP puts forth the following example of the difference between reciting and merely being based on a judicial exceptiom: MPEP § 2106.04, Subsection II(A)(1).
Applicant respectfully submits that amended independent claims 1, 8, and 15 are like the eligible claim example and unlike the ineligible claim example in MPEP 2106.04. For example, amended independent claim 1 describes limitations that do not recite, set forth, or describe a judicial exception, such as "in response to transmitting the electronic health records comprising the new immunization record to the electronic immunization registry system of the recording agency, initiating, by the one or more processors, a first wait timer process; in response to expiry of the first wait timer process, transmitting, by the one or more processors and to the electronic immunization registry system of the recording agency, a second Health Level 7 (HL7) formatted request in a second format for the recording agency electronic immunization records of the patient; receiving, by the one or more processors and from the electronic immunization registry system of the recording agency, second recording agency immunization records of the patient in the second format; in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; comparing, by the one or more processors, the first recording agency immunization record of the patient and the second recording agency immunization records of the patient; in response to determining, based on the comparing, that the new immunization record is not found in the second recording agency immunization records, starting, by the one or more processors, a query loop process, wherein the query loop process comprises: initiating a query loop timer; while the query loop timer is running, periodically querying, by the one or more processors, the electronic immunization registry system of the recording agency for a presence of the new immunization record; and ending the query loop process in response to receiving the new immunization record from the electronic immunization registry system of the recording agency, verifying that the new immunization record has propagated across the one or more external databases, or the query loop timer exceeding a loop timer threshold." Amended independent claims 8 and 15 recite similar limitations.
In particular, claims 1, 8, and 15 do not recite any mathematical relationships, formulas, or calculations; mental processes that can be performed in the human mind; or methods of organizing human activity. Rather, claims 1, 8, and 15 recite specific limitations directed to the reconciliation of incomplete or conflicting entries in an asynchronous registry of immunization records. To the extent those limitations rely on, use, or are informed by an underlying abstract idea, that does not establish that the claims recite the abstract idea itself. Instead, claims 1, 8, and 15 contain limitations that are merely based on or involve the abstract idea.
Accordingly, amended independent claims 1, 8, and 15 do not recite a judicial exception and are eligible at Step 2A, Prong One. Applicant therefore respectfully submits that the present rejection has not established that amended independent claims 1, 8, and 15 are directed to a judicial exception.B. Amended Independent Claims 1, 8, and 15 Integrate the Judicial Exception into a Practical Application of the Judicial Exception (Step 2A, Prong Two) Under the second prong of Step 2A, the Patent Office is required to determine whether the claim recites additional elements that integrate the exception into a practical application of that exception. MPEP, at § 2106.04(II). If a claim integrates a judicial exception into a practical application of the exception, then the claim is eligible at Prong Two. Id. Assuming, arguendo, that amended independent claims 1, 8, and 15 recite a judicial exception, Applicant respectfully submits that these claims integrate this judicial exception into a practical application of the judicial exception.
In order to determine whether a claim integrates a judicial exception into a practical application of the judicial exception, the MPEP requires that examiners are to identify whether there are any additional elements recited in the claim beyond the judicial exception(s) and evaluate those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit. These Supreme Court and Federal Circuit considerations are discussed in further detail below.
Amended Independent Claims 1, 8, and 15 Contain Additional Elements that Reflect an Improvement in the Functioning of a Computer
The MPEP states that an element, or combination of elements, that improves the functioning of a computer supports the conclusion that the claim integrates any alleged judicial exception into a practical application. See MPEP, at §§ 2106.04(d)(1), 2106.05(a).
The MPEP provides two helpful points for computer-implemented inventions. First, "some inventions pertaining to improvements in computer functionality or to improvements in other technologies are not abstract when appropriately claimed." MPEP, at § 2106.04(a)(I). Second, examiners should resolve that issue as early as possible in the Alice/Mayo test because the same improvement may be relevant at Step 2A or Step 2B. Id.
For computer-related claims, the key question is whether the claim improves computer capability or merely uses a computer as a tool. See MPEP, at § 2106.05(a)(I) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)). In Enfish, the claims were eligible because they were "directed to a specific improvement to the way computers operate," namely a self-referential table that improved database operation. Enfish, 822 F.3d at 1336-37. The court also emphasized that the claims recited "a specific implementation of a solution to a problem in the software arts." Id. at 1339.
Enfish is particularly applicable where the invention improves speed, memory usage, or database operation. The Federal Circuit explained that the self-referential database improved computer functionality because it enabled "faster search times[] and smaller memory requirements" by allowing the computer to search one database instead of multiple databases in response to a query. Id. at 1337.
The same principle applies beyond databases. The Federal Circuit has found claims directed to specific improvements in computer security, user interfaces, software systems, and computer networks eligible. See Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018); Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018); Ancora Techs., Inc. v. HTC Am., Inc., 908 F.3d 1343 (Fed. Cir. 2018); SRI Int'l, Inc. v. Cisco Sys., Inc., 930 F.3d 1295 (Fed. Cir. 2019).
In Uniloc, the claimed system added a polling data field to an inquiry message so that a primary station in a system could conduct inquiry and polling at the same time. See Uniloc USA, Inc. v. LG Electronics USA, Inc., 957 F.3d 1303, 1305-06 (Fed. Cir. 2020). The Federal Circuit held the claims eligible because they reduced delay in conventional systems and "change[d] the normal operation of the communication system itself." Id. at 1307.
Further, even known components can supply an inventive concept when the claim recites a nonconventional architecture, placement of functionality, data structure, control flow, or interaction among components. See BASCOM Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1350 (Fed. Cir. 2016). Thus, the relevant question is whether the claim as a whole recites a specific technical arrangement that improves computer functionality or otherwise amounts to significantly more than the alleged abstract idea.
Here, amended independent claims 1, 8, and 15 are directed to the same type of specific improvement in computer functionality recognized in Enfish, Uniloc, and BASCOM. For example, amended independent claim 1 recites, in part, "in response to transmitting the electronic health records comprising the new immunization record to the electronic immunization registry system of the recording agency, initiating, by the one or more processors, a first wait timer process; in response to expiry of the first wait timer process, transmitting, by the one or more processors and to the electronic immunization registry system of the recording agency, a second Health Level 7 (HL7) formatted request in a second format for the recording agency electronic immunization records of the patient; receiving, by the one or more processors and from the electronic immunization registry system of the recording agency, second recording agency immunization records of the patient in the second format; in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; comparing, by the one or more processors, the first recording agency immunization record of the patient and the second recording agency immunization records of the patient; in response to determining, based on the comparing, that the new immunization record is not found in the second recording agency immunization records, starting, by the one or more processors, a query loop process, wherein the query loop process comprises: initiating a query loop timer; while the query loop timer is running, periodically querying, by the one or more processors, the electronic immunization registry system of the recording agency for a presence of the new immunization record; and ending the query loop process in response to receiving the new immunization record from the electronic immunization registry system of the recording agency, verifying that the new immunization record has propagated across the one or more external databases, or the query loop timer exceeding a loop timer threshold." Amended independent claims 8 and 15 recite similar limitations. These limitations do more than use a computer as a tool to perform an abstract idea. Instead, they recite a specific technical solution to the reconciliation of incomplete or conflicting entries in an asynchronous registry of immunization records. The Specification identifies a technical problem in "existing software based immunization reporting systems" struggling to verify, in a timely manner, whether reporting-agency information was actually recorded in an electronic registry at the recording agency. Specification at 11. The disclosed system, on the other hand, reduces processing delay by automatically providing positive or negative verification, within a user-definable time horizon, without requiring new functionality from the reporting agencies or recording agencies.
Accordingly, amended independent claims 1, 8, and 15 integrate any alleged judicial exception into a practical application because they recite elements that improve the functioning of a computer and/or another technology or technical field. The claims therefore are not directed to an abstract idea under Step 2A, Prong Two. Alternatively, even if the Office proceeds to Step 2B, the claimed elements, considered individually and as an ordered combination, amount to significantly more than the alleged abstract idea because they recite a specific technical arrangement that improves computer functionality.
Examiner appreciates applicants arguments but does not find them persuasive. The judicial exception (abstract idea) cannot integrate itself into a practical application but identification of any additional elements recited in the claim can be evaluated to determine if the additional elements integrate the exception into a practical application. The claims additional elements are not recited as being an improvement to a technology field or a technology confined to the computer environment ([00108]) in which the claims recite. There is no nexus between Enfish and Unilock and BASCOM as the instant application as it is currently constructed in the claims. The cases argued have clear improvement to a computer element confined to the computer environment. A technical problem must first be identified in instant application specification and recited or at least reflected in the claims. Problems recited in the arguments are abstract problems related efficiency’s and verifications of documentation such as immunizations or rather the field of records management, which is not reasonably understood to be a problem with computer functionality. Rather the computer elements and timer are applied to aid in managing these records more quickly which the MPEP has made clear is not enough to find eligibility. The databases and servers while they may store and receive data are also applied computer elements and are not improved in the claims. The remainder of the claim limitations presented in the aforementioned argument is considered abstract. The abstract idea cannot bring forth the practical application. Examiner maintains the claims are directed to an abstract idea and do not integrate into a practical application. Therefore, they also do not amount to significantly more.
Applicant further argues, Amended Independent Claims 1, 8, and 15 are Similar to Patent-Eligible USPTO Example 42, Claim 1 The Patent Office publishes numbered Subject Matter Eligibility Examples to show how the USPTO applies its eligibility analysis to specific claim language. Those examples are useful here because the USPTO has already identified example claims that are patent eligible when they recite specific limitations that improve computer functionality or another technology. See USPTO Subject Matter Eligibility Examples, Examples 1-49; see also USPTO Subject Matter Eligibility Webpage ("All claims indicated as eligible in these examples are still eligible under current guidance.").
Applicant respectfully submits that amended independent claims 1, 8, and 15 are similar to the patent-eligible claims in Subject Matter Eligibility Example 42, Claim 1. Like those example claims, amended independent claims 1, 8, and 15 recite specific limitations that improve the reconciliation of incomplete or conflicting entries in an asynchronous registry of immunization records, rather than merely applying an abstract idea on a generic computer. The USPTO examples confirm that this type of claimed technical improvement can integrate an alleged abstract idea into a practical application. See, e.g., USPTO Subject Matter Eligibility Example 42, Claim 1. The comparison below shows the similarity between amended independent claims 1, 8, and 15 and the patent-eligible claim in Example 42, Claim 1.
Example 42, claim 1 recites similar limitations to amended independent claims 1, 8, and 15, so the same analysis applies to amended independent claims 1, 8, and 15. Thus, Example 42, claim 1 confirms that amended independent claims 1, 8, and 15 integrate any alleged abstract idea into a practical application.
Accordingly, amended independent claims 1, 8, and 15 are analogous to the USPTO's patent-eligible example claims. Like Example 42, claim 1, amended independent claims 1, 8, and 15 do not merely use a computer as a tool. Instead, they recite specific limitations that achieve the reconciliation of incomplete or conflicting entries in an asynchronous registry of immunization records. Therefore, amended independent claims 1, 8, and 15 integrate any alleged judicial exception into a practical application and are patent eligible under § 101.
Examiner appreciates applicants arguments but does not find them persuasive. The judicial exception (abstract idea) cannot integrate itself into a practical application but identification of any additional elements recited in the claim can be evaluated to determine if the additional elements integrate the exception into a practical application. The recited claims additional elements are not recited as being an improvement to a technology field or a technology confined to the computer environment ([00108]) in which the claims recite. There is no nexus between Example 42 as the instant application as it is currently constructed in the claims. The fact pattern and specification of example 42 are wholly different in scope and fact pattern, examiner cautions that while claim wording can be similar each case turns on its on fact and scope. Further the alleged “reconciliation of incomplete or conflicting entries in an asynchronous registry of immunization records,” as a technical problem does not have a recited or reflected solution in the claims as the claims apply additional computer elements or generally linking to records being stored within a computer implemented environment to compare and verify immunization records, and does not recite or reflect reconciliation technical steps. A technical problem must first be identified in instant application specification and recited or at least reflected in the claims. Problems recited in the arguments are abstract problems related efficiency’s and verifications of documentation such as immunizations or rather the field of records management, which is not reasonably understood to be a problem with computer functionality. Rather the computer elements and timer are applied to aid in managing these records more quickly which the MPEP has made clear is not enough to find eligibility. The databases and servers and query loop timer while they may store, run, and receive data are also applied computer elements and are not improved in the claims. The remainder of the claim limitations presented in the aforementioned argument is considered abstract. The abstract idea cannot bring forth the practical application. Examiner maintains the claims are directed to an abstract idea and do not integrate into a practical application. Therefore, they also do not amount to significantly more.
Applicant further argues, Amended Independent Claims 1, 8, and 15 Contain Additional Elements that Reflect an Improvement to Other Technology or Technical Field
The MPEP provides that a claim integrates a judicial exception into a practical application when the claim, considered as a whole, improves the functioning of a computer or another technology or technical field. See MPEP, at §§ 2106.04(d)(1), 2106.05(a). The MPEP further instructs examiners to confirm that the Specification provides a technical explanation of the asserted improvement and that the claims reflect that improvement. See MPEP, at § 2106.05(a).
The MPEP recognizes that "improvements in technology beyond computer functionality may demonstrate patent eligibility." MPEP, at § 2106.05(a)(II) (discussing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)). In McRO, the Federal Circuit found the claims eligible because they used particular rules to improve the existing technological process of computer animation. The claims did not merely state the desired result of realistic lip synchronization; they recited a specific way to achieve that result. See McRO, 837 F.3d at 1307, 1312; MPEP, at § 2106.05(a)(II).
The MPEP also identifies Diamond v. Diehr as an example of an eligible technological improvement. There, the claims modified a conventional rubber-molding process by using a thermocouple inside the mold to monitor temperature and reduce under- and over-curing problems. See MPEP, at § 2106.05(a)(II) (citing Diamond v. Diehr, 450 U.S. 175, 187, 191-92 (1981)).
In Thales Visionix, the Federal Circuit considered claims directed to an inertial tracking system for tracking the motion of an object relative to a moving reference frame. Thales Visionix v. U.S., 2015-5150 at p. 2 (Fed. Cir. 2017). Claim 22 recited:
A method comprising determining an orientation of an object relative to a moving reference frame based on signals from two inertial sensors mounted respectively on the object and on the moving reference frame. Id. at p. 4. The Federal Circuit held that the claim was not directed to an abstract idea because it recited "a particular configuration of inertial sensors" and a particular use of sensor data to more accurately calculate position and orientation on a moving platform. Id. at p. 11. By contrast, claims are vulnerable under § 101 when they merely invoke generic computer implementation, generic machine learning, or high-level data analysis without reciting the technical mechanism that improves the relevant technology. See, e.g., Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205, 1214-15 (Fed. Cir. 2025). The key question is whether the claims recite a particular technical solution that improves a technological system or technical process, rather than merely using technology to perform an abstract task.
Here, amended independent claims 1, 8, and 15 are like the eligible claims in McRO, Diehr, Thales Visionix, and Trading Technologies. The claims are directed to a specific improvement in another technology or technical field, specifically reconciliation of asynchronous immunization registries, rather than to generic computing or generic data analysis. For example, amended independent claim 1 recites, in part, "in response to transmitting the electronic health records comprising the new immunization record to the electronic immunization registry system of the recording agency, initiating, by the one or more processors, a first wait timer process; in response to expiry of the first wait timer process, transmitting, by the one or more processors and to the electronic immunization registry system of the recording agency, a second Health Level 7 (HL7) formatted request in a second format for the recording agency electronic immunization records of the patient; receiving, by the one or more processors and from the electronic immunization registry system of the recording agency, second recording agency immunization records of the patient in the second format; in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; comparing, by the one or more processors, the first recording agency immunization record of the patient and the second recording agency immunization records of the patient; in response to determining, based on the comparing, that the new immunization record is not found in the second recording agency immunization records, starting, by the one or more processors, a query loop process, wherein the query loop process comprises: initiating a query loop timer; while the query loop timer is running, periodically querying, by the one or more processors, the electronic immunization registry system of the recording agency for a presence of the new immunization record; and ending the query loop process in response to receiving the new immunization record from the electronic immunization registry system of the recording agency, verifying that the new immunization record has propagated across the one or more external databases, or the query loop timer exceeding a loop timer threshold." Amended independent claims 8 and 15 recite similar limitations. These limitations provide the particular technical mechanism that produces the improvement in asynchronous immunization registries.
Amended independent claims 1, 8, and 15 also do more than claim the result of improving reconciliation of asynchronous immunization registries. They recite the particular operations that cause the improvement. For example, amended independent claim 1 recites, in part, "in response to transmitting the electronic health records comprising the new immunization record to the electronic immunization registry system of the recording agency, initiating, by the one or more processors, a first wait timer process; in response to expiry of the first wait timer process, transmitting, by the one or more processors and to the electronic immunization registry system of the recording agency, a second Health Level 7 (HL7) formatted request in a second format for the recording agency electronic immunization records of the patient; receiving, by the one or more processors and from the electronic immunization registry system of the recording agency, second recording agency immunization records of the patient in the second format; in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; comparing, by the one or more processors, the first recording agency immunization record of the patient and the second recording agency immunization records of the patient; in response to determining, based on the comparing, that the new immunization record is not found in the second recording agency immunization records, starting, by the one or more processors, a query loop process, wherein the query loop process comprises: initiating a query loop timer; while the query loop timer is running, periodically querying, by the one or more processors, the electronic immunization registry system of the recording agency for a presence of the new immunization record; and ending the query loop process in response to receiving the new immunization record from the electronic immunization registry system of the recording agency, verifying that the new immunization record has propagated across the one or more external databases, or the query loop timer exceeding a loop timer threshold." Amended independent claims 8 and 15 recite similar limitations. Those limitations change the operation of the relevant technical system and therefore describe a specific method of achieving the improvement. Accordingly, amended independent claims 1, 8, and 15 contain elements that provide specific improvements to other technologies or technical fields. The Specification also provides a technical explanation of those improvements. Therefore, amended independent claims 1, 8, and 15 integrate the judicial exception into a practical application and are patent eligible under 35 U.S.C. § 101.
Examiner appreciates applicants arguments but does not find them persuasive. The judicial exception (abstract idea) cannot integrate itself into a practical application but identification of any additional elements recited in the claim can be evaluated to determine if the additional elements integrate the exception into a practical application. The claims additional elements are not recited as being an improvement to a technology field or a technology confined to the computer environment ([00108]) in which the claims recite. There is no nexus between McRO, Diehr, and Thales Visionix and the instant application as it is currently constructed in the claims. The cases McRO and Thales Visionix argued have clear improvement to elements which are confined to the computer environment the encompass and not reasonably executed outside of this environment. Diehr is wholly on a tangible process with a machine not found to be abstract wholly unlike the instant application in which the claim is certain methods of organizing human activity. A technical problem must first be identified in instant application specification and recited or at least reflected in the claims. Problems recited in the arguments are abstract problems related efficiency’s and verifications of documentation such as immunizations or rather the field of records management, which is not reasonably understood to be a problem with computer functionality or electronic health records. Rather the computer is applied to aid in managing these records more quickly which the MPEP has made clear is not enough to find eligibility. The health record may be electronic but the fundamental electronic computer making health records electronic is not improved while they may store and receive data are also applied computer elements and are not improved in the claims. The remainder of the claim limitations presented in the aforementioned argument is considered abstract. Further the query loop timer is “apply-it” level based on human set threshold to accept or deny records which is not a practical application as the additional element is merely applied to the abstraction to more efficiently execute the abstract idea. The abstract idea cannot bring forth the practical application. Examiner maintains the claims are directed to an abstract idea and do not integrate into a practical application. Therefore, they also do not amount to significantly more.
Applicant further argues, Amended Independent Claims 1, 8, and 15 Apply and/or Use the Judicial Exception in Some Other Meaningful Way
The MPEP explains that a claim may be patent eligible when an additional element, or a combination of additional elements, applies, relies on, or uses the judicial exception in a meaningful way. See MPEP § 2106.05(e). In other words, the additional elements must impose a meaningful limit on the judicial exception, so that the claim is more than an attempt to monopolize the exception itself. Id. The MPEP further instructs that examiners must evaluate the additional elements both individually and as an ordered combination. See MPEP § 2106.05(e). An individual element may be enough if it meaningfully limits the judicial exception. Id. Even if no single element is enough by itself, the combination of elements may still meaningfully limit the exception and amount to significantly more than the exception. Id. The MPEP also recognizes that meaningful limitations may include limitations beyond those specifically addressed in MPEP §§ 2106.05(a)-(d), provided that the claim does more than generally link the judicial exception to a technological environment or field of use. Id.
Amended independent claim 1 recites, in part, "in response to transmitting the electronic health records comprising the new immunization record to the electronic immunization registry system of the recording agency, initiating, by the one or more processors, a first wait timer process; in response to expiry of the first wait timer process, transmitting, by the one or more processors and to the electronic immunization registry system of the recording agency, a second Health Level 7 (HL7) formatted request in a second format for the recording agency electronic immunization records of the patient; receiving, by the one or more processors and from the electronic immunization registry system of the recording agency, second recording agency immunization records of the patient in the second format; in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; comparing, by the one or more processors, the first recording agency immunization record of the patient and the second recording agency immunization records of the patient; in response to determining, based on the comparing, that the new immunization record is not found in the second recording agency immunization records, starting, by the one or more processors, a query loop process, wherein the query loop process comprises: initiating a query loop timer; while the query loop timer is running, periodically querying, by the one or more processors, the electronic immunization registry system of the recording agency for a presence of the new immunization record; and ending the query loop process in response to receiving the new immunization record from the electronic immunization registry system of the recording agency, verifying that the new immunization record has propagated across the one or more external databases, or the query loop timer exceeding a loop timer threshold." Amended independent claims 8 and 15 recite similar limitations. These limitations do not merely instruct a practitioner to apply the alleged judicial exception. Nor do they merely add generic data-gathering, generic display steps, or a nominal field-of-use limitation. Instead, the limitations require the claimed invention to use the alleged judicial exception for reconciliation of asynchronous immunization registries. The limitations therefore confine the alleged exception to a specific practical application. Considered individually and as an ordered combination, these limitations meaningfully limit the claims and provide significantly more than the alleged judicial exception.
This conclusion is consistent with Diamond v. Diehr and Classen Immunotherapies. In Diehr, the claimed process did not merely recite a mathematical equation; it used the equation in an automated rubber-curing process. In Classen, the claims did not merely analyze immunization data; they used the analysis in a specific immunization method. The same reasoning applies here because amended independent claims 1, 8, and 15 use the alleged judicial exception to reconcile asynchronous immunization registries.
This conclusion is also consistent with computer-implemented eligibility decisions such as DDR Holdings and BASCOM. Those decisions recognize that computer-related limitations may be meaningful when the claim specifies how the technology is used to solve a particular problem, rather than merely invoking generic computer implementation. Here, amended independent claims 1, 8, and 15 similarly recite "in response to transmitting the electronic health records comprising the new immunization record to the electronic immunization registry system of the recording agency, initiating, by the one or more processors, a first wait timer process; in response to expiry of the first wait timer process, transmitting, by the one or more processors and to the electronic immunization registry system of the recording agency, a second Health Level 7 (HL7) formatted request in a second format for the recording agency electronic immunization records of the patient; receiving, by the one or more processors and from the electronic immunization registry system of the recording agency, second recording agency immunization records of the patient in the second format; in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; comparing, by the one or more processors, the first recording agency immunization record of the patient and the second recording agency immunization records of the patient; in response to determining, based on the comparing, that the new immunization record is not found in the second recording agency immunization records, starting, by the one or more processors, a query loop process, wherein the query loop process comprises: initiating a query loop timer; while the query loop timer is running, periodically querying, by the one or more processors, the electronic immunization registry system of the recording agency for a presence of the new immunization record; and ending the query loop process in response to receiving the new immunization record from the electronic immunization registry system of the recording agency, verifying that the new immunization record has propagated across the one or more external databases, or the query loop timer exceeding a loop timer threshold," which changes how the alleged judicial exception is applied and confines the claims to a particular practical use. By contrast, the amended independent claims are unlike the claims found ineligible in Alice and OIP Technologies, where the additional elements merely implemented the abstract idea using generic computer components or appended routine data-gathering activity.
Accordingly, amended independent claims 1, 8, and 15 apply and/or use the alleged judicial exception in some other meaningful way. The claims do not merely add field-of-use language, insignificant extra-solution activity, or generic computer implementation. Rather, the additional elements integrate the alleged judicial exception into a practical application and, when considered as an ordered combination, provide significantly more than the alleged judicial exception. For at least these reasons, amended independent claims 1, 8, and 15 are patent eligible under 35 U.S.C. § 101, and withdrawal of the § 101 rejection is respectfully requested. Amended Independent Claims 1, 8, and 15 Provide an Inventive Concept (Step 2B)
Under Step 2B of the Alice/Mayo test, the Patent Office is required to analyze the claims to determine whether the claims provide an inventive concept. Due to the fact that amended independent claims 1, 8, and 15 either (1) do not recite a judicial exception or (2) integrate the judicial exception into a practical application of the judicial exception, the claims are patent eligible under 35 U.S.C. § 101, and it is not necessary to proceed to Step 2B of the Alice/Mayo test. Assuming, arguendo, that amended independent claims 1, 8, and 15 are not eligible under Step 2A of the Alice/Mayo test, Applicant respectfully submits that the claims provide an inventive concept. As discussed in further detail below, amended independent claims 1, 8, and 15 provide an inventive concept that renders the claims patent eligible under 35 U.S.C. § 101. Amended Independent Claims 1, 8, and 15 Recite a Specific, Non- Conventional Ordered Combination that Amounts to Significantly More than Any Alleged Abstract Idea Under Step 2B, a key consideration is whether the claim's additional elements are "well- understood, routine, conventional activities previously known to the industry." MPEP, at § 2106.05(d). Where the additional elements-individually or in combination-include "a specific limitation other than what is well-understood, routine and conventional in the field," that consideration "favors eligibility." Id.
The MPEP also places the burden on the examiner. An element should "only" be treated as well-understood, routine, and conventional "when the examiner can readily conclude, based on their expertise in the art, that the element is widely prevalent or in common use in the relevant industry." Id. If the element "is not widely prevalent or in common use," it "will in most cases favor eligibility." Id. Thus, the § 101 inquiry cannot stop at a limitation-by-limitation assertion that each component is known or generic. The Office must consider the additional elements both individually and as an ordered combination. A combination of known components may still supply the inventive concept.
The Federal Circuit's decision in BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), is directly on point. There, the court held that an inventive concept may be found in "the non-conventional and non-generic arrangement of known, conventional pieces." Id. at 1350. The court agreed that filtering Internet content was an abstract idea and that the individual claim limitations recited generic computer, network, and Internet components. Id. Nevertheless, it found the claims eligible because they recited a specific implementation: individualized filtering performed at a remote ISP server. Id. That arrangement took advantage of the ISP server's ability to associate Internet requests with particular user accounts, providing customized filtering at a remote location while avoiding the disadvantages of both local filtering and one-size-fits-all server-based systems. Id. Accordingly, the Federal Circuit held that the claims did not merely recite the abstract idea of filtering content on the Internet but instead recited a "specific, discrete implementation" that "improved an existing technological process." Id. at 1350-52.
Cellspin Soft, Inc. v. Fitbit, Inc., 927 F.3d 1306 (Fed. Cir. 2019), confirms the same principle. In Cellspin, the court assumed at Step 1 that the claims were directed to the abstract idea of capturing and publishing data but held that the patentee plausibly identified an inventive concept at Step 2. Id. at 1316-19. The inventive concept was not the mere use of a data capture device, mobile device, wireless connection, or website. Instead, it was the claimed arrangement in which a data capture device and a separate mobile device cooperated over a paired wireless connection to transfer captured data and publish it to a website. Id. That arrangement addressed prior systems that required the capture device itself to include built-in mobile wireless Internet capability. Id. Cellspin rejects a generic-component analysis. An Office Action cannot establish ineligibility merely by identifying familiar components such as processors, memory, sensors, wireless links, servers, or network protocols. The Office must address the claimed arrangement as a whole, including the allocation of functions, sequence of operations, and cooperation among components.
As in BASCOM and Cellspin, amended independent claims 1, 8, and 15 are directed to a non-conventional and non-generic arrangement of asynchronous immunization registries that provides a technical improvement over prior systems. Amended independent claim 1 recites, in part, "in response to transmitting the electronic health records comprising the new immunization record to the electronic immunization registry system of the recording agency, initiating, by the one or more processors, a first wait timer process; in response to expiry of the first wait timer process, transmitting, by the one or more processors and to the electronic immunization registry system of the recording agency, a second Health Level 7 (HL7) formatted request in a second format for the recording agency electronic immunization records of the patient; receiving, by the one or more processors and from the electronic immunization registry system of the recording agency, second recording agency immunization records of the patient in the second format; in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; comparing, by the one or more processors, the first recording agency immunization record of the patient and the second recording agency immunization records of the patient; in response to determining, based on the comparing, that the new immunization record is not found in the second recording agency immunization records, starting, by the one or more processors, a query loop process, wherein the query loop process comprises: initiating a query loop timer; while the query loop timer is running, periodically querying, by the one or more processors, the electronic immunization registry system of the recording agency for a presence of the new immunization record; and ending the query loop process in response to receiving the new immunization record from the electronic immunization registry system of the recording agency, verifying that the new immunization record has propagated across the one or more external databases, or the query loop timer exceeding a loop timer threshold." Amended independent claims 8 and 15 recite similar limitations. Those limitations specify which component performs each operation, how the components cooperate, and why the claimed architecture achieves improved reconciliation of asynchronous immunization registries rather than merely using a computer as a tool.
Accordingly, even if the Office maintains that amended independent claims 1, 8, and 15 involve an abstract idea within the "certain methods of organizing human activity" group, the claims are patent-eligible under Step 2B. The ordered combination confines any alleged abstract idea to a specific, practical, and technically improved implementation. As in BASCOM and Cellspin, the claims do not preempt all ways of achieving improved reconciliation of asynchronous immunization registries. They recite a particular implementation that solves the identified technical problem in a specific way, and the Office has not shown that this particular arrangement was widely prevalent, in common use, or otherwise well-understood, routine, and conventional in the relevant field. The Patent Office Has Not Met Its Burden to Show that Amended Independent Claims 1, 8, and 15 Are Well-Understood, Routine, or Conventional
The Federal Circuit has made clear that the Patent Office must support any allegation that claim elements are well-understood, routine, and conventional. See Berkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018); Aatrix Software, Inc. v. Green Shades Software, Inc., 882 F.3d 1121 (Fed. Cir. 2018); Exergen Corp. v. KAZ USA, Inc., No. 2016-2315, 2016-2341 (Fed. Cir. Mar. 8, 2018). In response to these cases, the Patent Office issued a memorandum entitled "Changes in Examination Procedures Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decisions (Berkheimer v. HP, Inc.)" (the "Berkheimer Memo") on April 19, 2018. The Berkheimer Memo states: In a step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following: 1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s)... . 2. A citation to one or more of the court decisions discussed in MPEP § 2 well-understood, routine, conventional nature of the 3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s)... . 4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s)...."
Berkheimer Memo, at 3-4. The Berkheimer Memo further explains that, if an applicant challenges the examiner's position, the examiner must reevaluate whether it is readily apparent that the additional elements actually are well-understood, routine, and conventional to those who work in the relevant field. Id. at 4-5.
Here, the Patent Office has still not provided the analysis required by Berkheimer, Aatrix, and Exergen. The claims at issue in Berkheimer illustrate the required level of specificity: 1. A method of archiving an item comprising in a computer processing system: presenting the item to a parser; parsing the item into a plurality of multi-part object structures wherein portions of the structures have searchable information tags associated therewith; evaluating the object structures in accordance with object structures previously stored in an archive; presenting an evaluated object structure for manual reconciliation at least where there is a predetermined variance between the object and at least one of a predetermined standard and a user defined rule. 4. The method as in claim 1 which includes storing a reconciled object structure in the archive without substantial redundancy. The Federal Circuit noted that "[t]hese claims are similar to claims we held directed to an abstract idea in" TLI Communications and Content Extraction. Even so, the Federal Circuit reversed the district court's § 101 invalidity ruling because the district court had not shown that the specific limitations of dependent claim 4 were well-understood, routine, and conventional. Berkheimer, 881 F.3d at 1366-1370.
The Federal Circuit did not permit the analysis to stop at general characterizations such as "storing information" or "editing data in a straightforward copy-and-paste fashion." Instead, the court required an analysis of the specific elements of the claim. The court also cautioned that "[w]hether a particular technology is well-understood, routine, and conventional goes beyond what was simply known in the prior art," and that "[t]he mere fact that something is disclosed in a piece of prior art . . . does not mean it was well-understood, routine, and conventional." Id. at 1369.
The Patent Office should apply the same level of detail here. It should identify the specific claim elements at issue, consider those elements both individually and as an ordered combination, and support any finding that they were well-understood, routine, and conventional with the evidence required by the Berkheimer Memo. As stated above, the following limitations of amended independent claim 1 are not well- understood, routine, or conventional, either individually or as an ordered combination: "in response to transmitting the electronic health records comprising the new immunization record to the electronic immunization registry system of the recording agency, initiating, by the one or more processors, a first wait timer process; in response to expiry of the first wait timer process, transmitting, by the one or more processors and to the electronic immunization registry system of the recording agency, a second Health Level 7 (HL7) formatted request in a second format for the recording agency electronic immunization records of the patient; receiving, by the one or more processors and from the electronic immunization registry system of the recording agency, second recording agency immunization records of the patient in the second format; in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; comparing, by the one or more processors, the first recording agency immunization record of the patient and the second recording agency immunization records of the patient; in response to determining, based on the comparing, that the new immunization record is not found in the second recording agency immunization records, starting, by the one or more processors, a query loop process, wherein the query loop process comprises: initiating a query loop timer; while the query loop timer is running, periodically querying, by the one or more processors, the electronic immunization registry system of the recording agency for a presence of the new immunization record; and ending the query loop process in response to receiving the new immunization record from the electronic immunization registry system of the recording agency, verifying that the new immunization record has propagated across the one or more external databases, or the query loop timer exceeding a loop timer threshold." Amended independent claims 8 and 15 recite similar limitations.
The Office Action does not cite an express admission in the specification or prosecution history, a court decision identifying the same additional element(s) as well-understood, routine, and conventional, a publication showing that the additional element(s) were widely prevalent or in common use in the relevant field, or properly supported official notice.
Applicant therefore respectfully requests that the Patent Office meet its burden under Berkheimer, Aatrix, and Exergen by showing that the specific limitations recited above, individually and as an ordered combination, were well-understood, routine, and conventional on or before Applicant's filing date. If the Patent Office cannot meet this burden, Applicant respectfully requests withdrawal of the § 101 rejection and allowance of amended independent claims 1, 8, and 15, as well as their respective dependents.
D. Dependent Claims 3, 6, 10, 13, 17, and 20-26 are Allowable
Applicant overcomes the rejection of claims 3, 6, 10, 13, 17, and 20-26 under 35 U.S.C. § 101 as being allegedly drawn to patent ineligible subject matter because claims 3, 6, 10, 13, 17, and 20-26 depend, directly or indirectly, from amended independent claims 1, 8, and 15. Dependent claims must be construed to include all of the limitations of the claims from which they depend, as required by 37 C.F.R. § 1.75(c) and MPEP § 608.01(n). Thus, claims 3, 6, 10, 13, 17, and 20-26 are allowable for at least the same reasons as explained above for amended independent claims 1, 8, and 15.
Accordingly, the Patent Office should allow dependent claims 3, 6, 10, 13, 17, and 20-26 for at least the same reasons as listed earlier for amended independent claims 1, 8, and 15, as well as for their own respective limitations.
Examiner appreciates applicants arguments but does not find them persuasive. Examiner did not allege that claims elements are well understood, routine, and conventional. While no concession is made by examiner in this regard to the claims the MPEP states in 2B that this consideration may assist examiners in determining if there is significantly more it is not required this is considered in each and every application unless elements are identified as extra solution activity which no elements were. The instant application additional elements are apply-it or generally linking and therefore as stated MPEP 2106.05 limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include apply it and generally linking. No further requirement is made that examiner must also review other overlapping considerations for 2B unless this assists examiner in making the rejection as stated in the MPEP. Further the case law stated has no nexus with the scope and fact pattern of the claims for similar reasons already aforementioned in the arguments by examiner.
Examiner maintains the 35 U.S.C 101 rejection.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Ashley Elizabeth Evans whose telephone number is (571) 270-0110. The examiner can normally be reached Monday – Friday 8:00 AM – 5:00 PM.
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/ASHLEY ELIZABETH EVANS/Examiner, Art Unit 3687
/ALAAELDIN M. ELSHAER/Primary Examiner, Art Unit 3687
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