DETAILED ACTION
Acknowledgements
This office action is in response to the claims filed January 15, 2026.
Claims 1, 3, 5, 6-8, 10, 12-15, 17, 19-26 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 .
Response to Amendment(s)
Claims 1, 3, 5, 6-8, 10, 12-15, 17, 19-26 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, 5, 6-8, 10, 12-15, 17, 19-26 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 is directed to a judicial exception.
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 user;
transmitting, the …[…]…health records associated with the patient wherein the …[…]…health records associated with the patient comprise a new immunization record;
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, by the processor, the first recording agency immunization records of the patient and the second recording agency immunization records of the patient;
and verifying, based on the first recording agency immunization records of the patient and the second recording agency immunization records of the patient, acceptance of the new immunization record by the …[…]…immunization registry system of the recording agency.
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 immunization records of a patient
a computer system
one or more external databases
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 immunization records of a patient, is generally linking the abstract idea to electronic computer implementation
The additional element, a computer system, to apply the abstract idea as “apply-it” to gather and communicate data
The additional element, one or more external databases, to apply the abstract idea as “apply-it” to store data
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, 5, 6-7, 10, 12-14, 17, and 19-26:
Eligibility Step 1 (does the subject matter fall within a statutory category?):The dependent claims 3, 5, 6-7, 21-22 fall within the statutory category of machine. The dependent claims 10, 12-14, and 23-24 fall within the statutory category of method. The dependent claims 17, 19-20, and 25-26 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, 5, 6-7, 10, 12-14, 17, and 19-26 claimed invention are directed to a judicial exception.
Dependent claims 3, 5, 6-7, 10, 12-14, 17, and 19-26 continue to limit the abstract idea in the independent claim by (1) limiting the wait time process, (2) further limiting the query of immunization records, (3) further limiting who the immunization records are associated with, and (4) 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, 5, 6-7, 10, 12-14, 17, and 19-26 this judicial exception is not integrated into a practical application.
In Claims 3, 5, 6-7, 10, 12-14, 17, and 19-26 contain no additional elements not already recited in the independent claims are therefore are purely the abstract idea.
Eligibility Step 2B (Does the claim amount to significantly more?): Dependent claims 3, 5, 6-7, 10, 12-14, 17, and 19-26 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.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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, 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.
Independent Claims 1-20 are rejected under 35 U.S.C.103 as being unpatentable over Daub et. al (Daub) (US20210158292A1) in view of Barsness et. al (hereinafter Barsness) (US8122010B2) and in further view of Kutscher et. al (hereinafter Kutscher) (US20160283666A1)
As per claim 1, Daub teaches:
A networked database system including a software application for operation on a user device, the system comprising: one or more processors configured for manipulation of health records associated with a patient; one or more tangible, non-transitory electronic memories in electronic communication with the one or more processors, the one or more tangible, non-transitory memories having instructions stored thereon that, in response to execution by the one or more processors, cause the one or more processors to perform operations comprising: ([0005] discloses, “In an embodiment ,a networked database system includes a software application for operation on a mobile electronic device . The system comprises a mobile device processor configured for manipulation of user immunization records , a tangible , non - transitory electronic memory in electronic communication with the processor , and a micro application operative on the mobile device , the micro application comprising an electronic database resident in the memory and a consumer software mod.”)
transmitting, by the one or more processors and to an electronic immunization registry system of a recording agency, a request in a first format for recording agency electronic immunization records of the patient; ([0006] discloses, “transmit , over the network connection of the mobile electronic device and to an electronic immunization registry system of a first state , a Health Level 7 ( HL7 ) formatted request for the first state's electronic immunization records of the user;” and see [0036] discloses, “User 105 may be , for example , a patient , a medical provider , a state records administrator , a health records provider , and / or the like”)
receiving, by the one or more processors and from the electronic immunization registry system of the recording agency, a first recording agency immunization record of the patient in the first format; ([0006] discloses, “receive , over the network connection of the mobile electronic device and from the electronic immunization registry system of the first state , first state immunization records of the user in an HL7 compatible format ;”)
receiving, by the one or more processors and from a computer based system associated with at least one of a lab provider or a healthcare provider, electronic health records associated with the patient; ([0091] discloses, “In various embodiments and with continued reference to FIG . 2A , passport module 249 is configured to compile consumer health records to generate passport report data and to deliver the passport report data to passport data users . The passport module may compile data from state immunization databases 260 , lab provider systems 262 , and healthcare provider systems 265 to generate the passport report data . The system may store the passport report data in consumer health record access database 250. In various embodiments , the passport report data may comprise a record of immunizations associated with a consumer health record , immunization - related information , lab related information ( e.g. , test results , test dates , etc. ) , and / or the like” and see [0037] discloses, “In various embodiments , a health records management system 115 may provide access to a user 105 interfacing with system 115 by way of a client 110. Health records management system 115 may be a partially or fully integrated system comprised of various subsystems , mod ules and databases . Client 110 comprises any hardware and / or software suitably configured to facilitate entering , accessing , requesting , retrieving , updating , analyzing , and / or modifying data . The data may include health records ( e.g. , patient information , provider information , medical procedure information , clinical information , diagnostic information , immunization records , prescription information , family information , genetic information , and/or the like ) , or any other suitable information discussed herein.” And see [0120] discloses, “If the information is correct , the system may pro ceed to receive external health database targeting data ( step 330 ) . In various embodiments , as shown in FIG . 9 , the system may display a database targeting page 900. The system may prompt to select one or more state immunization databases 260 , lab provider systems 262 , and / or healthcare provider systems 265. For example , page 900 may include a state database menu 902 and a healthcare provider menu 904. For example , user may interact with the menus 902 , 904 and thereby the system may receive external heal database targeting data to configure data handler 244. Step 300 may include extracting and / or ingesting health records from the databases defined by the external health database targeting data . In response to receiving the health records , the system may generate a new account associated with the health records ( step 332 ).” / examiner notes lab results and diagnostic information for example are electronic health records of a user)
transmitting, by the one or more processors and to the electronic immunization registry system of the recording agency, the electronic health records associated with the patient wherein the electronic health records associated with the patient comprise a new immunization record; ([0098] discloses, “Turning now to FIG . 2D , in other exemplary embodiments , consumer registration is initiated and completed during an office visit with a healthcare provider ( step 293 ) . The consumer may thereafter utilize the features of consumer health record access system 215 ( step 294 ).” And see [0099] discloses, “Turning now to FIG . 2E , in other exemplary embodiments , a consumer is pre - authenticated by a health care provider ( step 295 ) . The consumer later completes the registration process ( step 296 ) . The consumer may thereafter utilize the features of consumer health record access system 215 ( step 297 ) .” and see [ 0100 ] “ Registration ” and / or “ pre - registration ” as utilized herein may be via any suitable method or system as known in the art …[…]…” and see [0102] discloses, “Via consumer health record access system 215 , a consumer may also share records among states ; i.e. , a consumer may provide State B immunization information to State A to update the records of State A. Yet further , via consumer health record access system 215 , a consumer may instruct that immunization records be provided , in a standardized format and / or protocol such as BlueButton + , to any external record acceptor ( for example , healthcare providers , Microsoft Health Vault , and / or the like.” / examiner interprets the disclosed providing as transmitting immunization records to be provided from electronic consumer health records where the user was just registered therefore providing a new immunization record as one of ordinary skill in the art would reasonably understand )
transmitting, by the one or more processors and to the electronic immunization registry system of the recording agency, a second request in a second format for the recording agency electronic immunization records of the patient; ([0006] discloses, “transmit , over the network connection of the mobile electronic device and to an electronic immunization registry system of a second state , a Health Level 7 ( HL7 ) formatted request for the second state's electronic immunization records of the user;”)
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; ([0006] discloses, “receive , over the network connection of the mobile electronic device and from the electronic immunization registry system of the second state , the second state immunization records of the consumer in an HL7 compatible format ;”)
in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; (“[0006] discloses, “integrate , in the electronic database of the micro - application , the first state immunization records of the user and the second state immunization records of the user to form an integrated electronic immunization record of the user ;” and see [0102] discloses, “Via consumer health record access system 215 , a consumer may also share records among states ; i.e. , a consumer may provide State B immunization information to State A to update the records of State A. Yet further , via consumer health record access system 215 , a consumer may instruct that immunization records be provided , in a standardized format and / or protocol such as BlueButton + , to any external record acceptor ( for example , healthcare providers , Microsoft Health Vault , and / or the like ).”)
…[…]…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; ([0006] discloses, “integrate , in the electronic database of the micro - application , the first state immunization records of the user and the second state immunization records of the user to form an integrated electronic immunization record of the user ; transmit , over the network connection of the mobile electronic device and to the electronic immunization registry system of the first state , immunization information of the user that is present in the integrated electronic immunization record but not present in the electronic immunization registry system of the first state ; transmit , over the network connection of the mobile electronic device and to the electronic immunization registry system of the second state , immunization information of the consumer that is present in the integrated electronic immunization record but not present in the electronic immunization registry system of the second state ; and display , on a display of the mobile device , the integrated electronic immunization record for the user.” And see fig. 2F / examiner interprets the steps of integration as disclosed above where there is comparison to a first and a second state record prior to integration into the final electronic immunization record as necessarily comparing the records to integrate into a final record.)
However, Daub does not explicitly teach:
and initiating a wait timer that prevents queries to the one or more external databases
and verifying, by the one or more processors 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 by the electronic immunization registry system of the recording agency.
However, Barsness does teach:
and initiating a wait timer that prevents queries to the one or more external databases (Col. 6 lines 1-24 discloses, “A query is a set of commands for retrieving data from a database. For example, a query plan may produce a requested result in which a query is run in the shortest period of time. The query optimizer 144 also enables predictions of running time periods in which the queries will execute, as well as indicates the hardware resources to be utilized for accomplishing the task. The query governor 145 is an application that receives from the query optimizer 144 predicted values as to how long a query is expected to run in order to 10 15 25 30 35 40 45 50 55 60 65 complete. The query governor 145 acts to disallow the running of a query should the query have a predicted running length exceeding a set time frame or predefined query time boundaries value of the query governor. The predefined query time boundaries of the query governor may be set to a mini mum threshold value and a maximum time limit value. The minimum threshold time value (e.g., secs.) is determined to be a value which if the query exceeds, will cause the query governor to prevent the query from running. The maximum time limit value is a maximum value of time (e.g., secs.) which if the predicted query runtime exceeds, will cause the query governor to prevent the query from running. The pre defined query time boundaries boundary values or time set tings of the query governor 145 may be established by system user or system configurations.”)
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Daubs’ teachings of integrating immunization records as previously cited with Barsness’ explicit teachings wait timers as previously cited, the motivation being, Daub is concerned with cost and efficiency’s of systems to improve access and management of immunization data (see Daub para. [0003] and [0004]), therefore it would be obvious to one of ordinary skill that Barsness use of wait timers for accessing data in databases would improve the processing of immunization records reduce the resources as well as cost needed to manage immunization records.
However, Barsness also does not teach:
and verifying, by the one or more processors 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 by the electronic immunization registry system of the recording agency.
However, Kutscher does teach:
and verifying, by the one or more processors 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 by the electronic immunization registry system of the recording agency.([0047] discloses, “With reference to FIG. 2, the modules 208 of the immunization registry server 112 include, but are not limited to…[…]…and integration integrity rule(s) 232 for Verifying the integrity of the obtained student(s) roster data 222 and/or state immunization registry data 224. The result from integrating the student(s) roster data 222 with the state immunization registry data 224 includes the integrated immunization record(s) 226. which are then stored in the integrated immunization registry database 120.” and see [0055] discloses, “As shown in FIG. 3. the immunization registry integration module 220 accepts as input a selected healthcare transaction standard 302 selected from the healthcare trans action standard(s) 228 and a selected State immunization registry adapter 304 selected from the state immunization registry adapter(s) 230. As discussed below, and in one embodiment, the state immunization registry adapter 304 instructs the immunization registry integration module 220 which healthcare transaction standard 302 to select. Similarly, the state immunization registry adapter 304 may be selected according to the initial demographic information provided by the student/patient (or the patient’s parents/ guardians) (e.g., using the patient's home address or other contact information) and/or according to the student(s) roster data 222 associated with the student/patient. Using the selected healthcare transaction standard 302 and the selected state immunization registry adapter 304, the immunization registry integration module 220 obtains the state immunization registry data 224 from a selected State immunization registry 116.” And see [0084] discloses, “ Additionally. or alternatively, the vali dation of Such state immunization registry data 224 may be performed by the immunization registry integration module 220 during the process of integrating the state immunization registry data 224 with the student(s) roster data 222.”)
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Daubs’ teachings of integrating immunization records as previously cited and Barsness’ teachings of wait timers for accessing data from databases with Kutscher’s explicit teachings of verifying and accepting immunization records as previously cited, the motivation being, Daub is concerned with fragmented immunization records across various systems making it difficult or impossible to determine the correct immunization status for an individual (see Daub para. [0003] and [0004]), therefore it would be obvious to one of ordinary skill that Kutscher’s use of general purpose processor to verify and accept immunization records would improve the determination of correct immunization status of an individual and reduce the resources needed to manage immunization records.
As per claim 3, Daub further teaches the underlined portions:
The system of claim 1, wherein the operations further comprise: in response to expiry of the wait timer, starting, by the one or more processors, a query loop process in response to, wherein the query loop process comprises: initiating a query loop timer; and 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. ([0005] discloses, “In an embodiment ,a networked database system includes a software application for operation on a mobile electronic device . The system comprises a mobile device processor configured for manipulation of user immunization records , a tangible , non - transitory electronic memory in electronic communication with the processor , and a micro application operative on the mobile device , the micro application comprising an electronic database resident in the memory and a consumer software mod.”)
However, Daub does not teach the underlined portions:
The system of claim 1, wherein the operations further comprise: in response to expiry of the wait timer, starting, by the one or more processors, a query loop process in response to, wherein the query loop process comprises: initiating a query loop timer; and 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.
However, Barsness does teach the underlined portion:
The system of claim 1, wherein the operations further comprise: in response to expiry of the wait timer, starting, by the one or more processors, a query loop process in response to, wherein the query loop process comprises: initiating a query loop timer; and 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. (Col. 6 lines 1-24 discloses, “A query is a set of commands for retrieving data from a database. For example, a query plan may produce a requested result in which a query is run in the shortest period of time. The query optimizer 144 also enables predictions of running time periods in which the queries will execute, as well as indicates the hardware resources to be utilized for accomplishing the task. The query governor 145 is an application that receives from the query optimizer 144 predicted values as to how long a query is expected to run in order to complete. The query governor 145 acts to disallow the running of a query should the query have a predicted running length exceeding a set time frame or predefined query time boundaries value of the query governor. The predefined query time boundaries of the query governor may be set to a minimum threshold value and a maximum time limit value. The minimum threshold time value (e.g., secs.) is determined to be a value which if the query exceeds, will cause the query governor to prevent the query from running. The maximum time limit value is a maximum value of time (e.g., secs.) which if the predicted query runtime exceeds, will cause the query governor to prevent the query from running. The predefined query time boundaries boundary values or time set tings of the query governor 145 may be established by system user or system configurations.” And see Col. 11 lines 20-42 discloses, “Reference is made back to FIG. 4 for a continuation of the method. In a Can We finish step 420, a decision is made as to whether or not the recalculated query runtime may finish within the predefined time period given the available resources present at the moment. If the decision in step 420 is No, then the resources that were to be dynamically allocated earlier are to be withdrawn or subtracted from the Subtract Resource step 422. Thereafter, the query is aborted in step 424 by the query governor. Alternatively, if the decision in the Can We Finish step 420 for the particular time segment or interval is Yes, then a Wait step 426 is performed for a predefined period of time. The wait is for all the segments created in the Divide into Segments step 410 to complete. After the Wait step 426, then the Did We Finish decision step 428 is per formed. In the Did We Finish decision step 428, a determination is made as to whether the new query estimate is finished within the predefined query time boundary or runtime. If No. then the process loops back to step 412 for a repetition of the process. Alternatively, if Yes is the decision in the Did We Finish decision step 428, then additional resources not needed are removed or subtracted in the Subtract Resources step 430. Following the Subtract Resources step 430, the query man aging method 400 terminates or exits in step 432.”)
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Daubs’ teachings of integrating immunization records as previously cited with Barsness’ explicit teachings of query loop as previously cited for the same reasons given for claim 1.
As per claim 5, Daub teaches:
The system of claim 1, wherein the recording agency electronic immunization records of the patient comprise immunization records for a family of the patient. ([0068] discloses, “Consumer module 245 also provides consumers with a mechanism to “ cohort ” ( group together ) family members under a single consumer account for the purposes of conveniently obtaining copies of their immunization records , for example once each family member is authenticated / approved by a participating health care provider.” And see [0069] discloses, “In certain exemplary embodiments , consumer module 245 provides a consumer with an overview of all recorded immunizations for each approved family member . The source for the recorded immunization data may be any suitable source , but in various embodiments , the data source is the participating state ( s ) immunization information sys tem or “ registry ” .”)
As per claim 6, Daub teaches:
The system of claim 1, wherein the operations further comprise: transmitting, to the second recording agency in the first format and the second format, the new immunization record for incorporation into a second recording agency immunization record of the patient. ([0006] discloses, “integrate , in the electronic database of the micro - application , the first state immunization records of the user and the second state immunization records of the user to form an integrated electronic immunization record of the user ; transmit , over the network connection of the mobile electronic device and to the electronic immunization registry system of the first state , immunization information of the user that is present in the integrated electronic immunization record but not present in the electronic immunization registry system of the first state ; transmit , over the network connection of the mobile electronic device and to the electronic immunization registry system of the second state , immunization information of the consumer that is present in the integrated electronic immunization record but not present in the electronic immunization registry system of the second state ; and display , on a display of the mobile device , the integrated electronic immunization record for the user.” And see fig. 2F / examiner interprets the steps of integration as disclosed above where there is comparison to a first and a second state record prior to integration into the final electronic immunization record as necessarily comparing the records to integrate into a final record.)
As per claim 7, Daub teaches:
The system of claim 1, wherein the first format comprises a Health Level 7 (HL7) compatible format. ([0006] discloses, “transmit , over the network connection of the mobile electronic device and to an electronic immunization registry system of a first state , a Health Level 7 ( HL7 ) formatted request for the first state's electronic immunization records of the user;”)
As per claim 21, Daub further teaches the underlined portion:
The system of claim 3, wherein the operations further comprise, in response to the query loop timer exceeding a predetermined threshold, reporting, to the electronic immunization registry system of the recording agency, that the new immunization record was not found in the or more databases.
However, Daub does not teach the underlined portion:
The system of claim 3, wherein the operations further comprise, in response to the query loop timer exceeding a predetermined threshold, reporting, to the electronic immunization registry system of the recording agency, that the new immunization record was not found in the or more databases.
However, Barsness does teach:
The system of claim 3, wherein the operations further comprise, in response to the query loop timer exceeding a predetermined threshold, reporting, to the electronic immunization registry system of the recording agency, that the new immunization record was not found in the or more databases. (Col. 6 lines 1-24 discloses, “A query is a set of commands for retrieving data from a database. For example, a query plan may produce a requested result in which a query is run in the shortest period of time. The query optimizer 144 also enables predictions of running time periods in which the queries will execute, as well as indicates the hardware resources to be utilized for accomplishing the task. The query governor 145 is an application that receives from the query optimizer 144 predicted values as to how long a query is expected to run in order to complete. The query governor 145 acts to disallow the running of a query should the query have a predicted running length exceeding a set time frame or predefined query time boundaries value of the query governor. The predefined query time boundaries of the query governor may be set to a minimum threshold value and a maximum time limit value. The minimum threshold time value (e.g., secs.) is determined to be a value which if the query exceeds, will cause the query governor to prevent the query from running. The maximum time limit value is a maximum value of time (e.g., secs.) which if the predicted query runtime exceeds, will cause the query governor to prevent the query from running. The predefined query time boundaries boundary values or time set tings of the query governor 145 may be established by system user or system configurations.” And see Col. 11 lines 20-42 discloses, “Reference is made back to FIG. 4 for a continuation of the method. In a Can We finish step 420, a decision is made as to whether or not the recalculated query runtime may finish within the predefined time period given the available resources present at the moment. If the decision in step 420 is No, then the resources that were to be dynamically allocated earlier are to be withdrawn or subtracted from the Subtract Resource step 422. Thereafter, the query is aborted in step 424 by the query governor. Alternatively, if the decision in the Can We Finish step 420 for the particular time segment or interval is Yes, then a Wait step 426 is performed for a predefined period of time. The wait is for all the segments created in the Divide into Segments step 410 to complete. After the Wait step 426, then the Did We Finish decision step 428 is per formed. In the Did We Finish decision step 428, a determination is made as to whether the new query estimate is finished within the predefined query time boundary or runtime. If No. then the process loops back to step 412 for a repetition of the process. Alternatively, if Yes is the decision in the Did We Finish decision step 428, then additional resources not needed are removed or subtracted in the Subtract Resources step 430. Following the Subtract Resources step 430, the query man aging method 400 terminates or exits in step 432.” / examiner notes under BRI the threshold being exceeded and the query stopped running is interpreted as not retrieving the data from the database)
It would be obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine Daubs’ teachings of integrating immunization records as previously cited with Barsness’ for the same reasons given in claim 1.
As per claim 22, Daub teaches:
The system of claim 3, wherein the comparing comprises assigning a confidence metric to the new immunization record. ([0111] discloses, “Consumer health record access system 215 is con figured to provide system performance metrics and analytics . This allows authorized administrative users to monitor system performance , attributes of users , system behavior and usage patterns . Additionally , consumer health record access system 215 is configured with a scalable user inter face , permitting consumer health record access system 215 to be accessed and / or utilized” and see [0121] / examiner notes key field matching necessarily uses confidence metrics to make a match)
As per claims 8 and 10, 12-14, and 23-24 they are method claims which repeat the same limitations of claims 1 and 3, 5-7, and 21-22 the corresponding system claims, as a series of process steps as opposed to a collection of elements. Since the collective teachings and motivations to combine of Daub, Barsness, and Kutscher disclose the structural elements that constitute the system of claims 1 and 3, 5-7, and 21-22 it is respectfully submitted that they perform the underlying process steps, as well. As such, the limitations of claims 8 and 10, 12-14, and 23-24 are rejected for the same reasons given above for claims 1 and 3, 5-7, and 21-22.
As per claims 15, 17, 19-20, and 25-26 they are article of manufacture claims which repeat the same limitations of claims 8, 10, 12-14, and 23-24 the corresponding method claims, as a collection of executable instructions stored on machine readable media as opposed to a series of process steps. Since the teachings and motivations to combine of Daub and Kutscher disclose the underlying process steps that constitute the method of claims 8, 10, 12-14, and 23-24 it is respectfully submitted that they likewise disclose the executable instructions that perform the steps as well. As such, the limitations of claim 15, 17, 19-20, and 25-26 are rejected for the same reasons given above for claims 8, 10, 12-14, and 23-24.
Response to Arguments Regarding 35 U.S.C § 101 Rejections
Applicant’s arguments on pages 1-10 of remarks have been considered. Applicant argues the 35 U.S.C § 101 rejection should be withdrawn for the following reasons. 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 MIPEP 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. "MIPEP, 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, 1332 (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 receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; and initiating a wait timer that prevents queries to the one or more external databases." Amended independent claims 8 and 15 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 proves the fact that amended independent claims do not fall within the "Certain Methods of Organizing Human Activity" grouping as described in the MPEP. Nowhere in the Office Action does the Patent Office specify how a human is supposed to perform "in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; and initiating a wait timer that prevents queries to the one or more external databases," 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.
Examiner appreciates applicant’s arguments but does not find them persuasive. Examiner is required to determine if the claims are within a statutory category, are directed to a judicial exception by identifying the elements which make the claims abstract, place the abstract idea into one of the enumerated categories defined by the MPEP, identify additional elements, analyze if those additional elements provide practical application, and determine if the claim provides significantly more. Just the mere presence of additional elements does not make the claim eligible and integrated into a practical application as the claim is reviewed as a whole and the abstract idea cannot integrate the judicial exception into a practical application. This analysis was clearly completed by examiner as required in previous and current office actions. The positively recited claim 1 (as representative) is directed to a judicial exception (i.e. certain methods of organizing human activity) as managing personal behavior to compare, verify, and accept immunization records of a patient. This is abstract in substance as a humans personal behavior with or without the aid of a computer environment can manipulate health records to determine based on reasoning whether data meets verifiable requirements by comparison and can make personal decision whether to accept this information or share it as required by law or further requirement as it relates to immunization records. This has been completed by humans in the healthcare with paper and aids and even with computers. It’s not would a human do it, it’s could a human do it and having computer elements or being confined to a general purpose computer environment does not make the claims dispositive of being directed to an abstract idea. Furthermore, if following applicant’s logic Alice Corp. would not have been directed to the abstract idea of risk settlement mitigation. Being implemented by a computer environment automatically does not make the recited claim dispositive of being certain methods of organizing human activity. Therefore Step 2A-1 is established and satisfied by examiner and examiner maintains the claims are directed to a judicial exception.
Applicant further argues, Amended Independent Claims 1, 8, and 15 Integrate the Judicial Exception into a Practical Application of the Judicial Exception (Step 2A Prong 2) 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 claim 21 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 which improves the functioning of a computer supports the conclusion that this element (or combination of elements) integrated the judicial exception into a practical application of the judicial exception. See MPEP, at 2106.05(a).
The MPEP instructs that "some inventions pertaining to improvements in computer functionality or to improvements in other technologies are not abstract when appropriately claimed," and that "[a]lthough the question of whether a claim improves computer-functionality or other technology may be considered in either step of the Alice/Mayo test (Step 2A or 2B), examiners are encouraged to resolve this question as early as possible in the eligibility analysis." MPEP, at § 2106.04(a)(I). "In computer-related technologies, the examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool." MPEP, at § 2106.05(a)(I) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)).
In Enfish, the Federal Circuit found that the claims "are directed to a specific improvement to the way computers operate, embodied in the self-referential table."Enfish, 822 F.3d at 1337. Additionally, the Federal Circuit explained that the claims were not directed to an abstract idea because they were "directed to a specific implementation of a solution to a problem in the software arts."Id. at 1339. Additionally, the Federal Circuit explained that the claims were not directed to an abstract idea because they were "directed to a specific implementation of a solution to a problem in the software arts."Id. at 1339. Specifically, the Federal Circuit stated that the claims in Enfish improved the functioning of the computer because the self-referential database enabled "faster search times[] and smaller memory requirements" due to the fact that a computer querying the database would only need to search one database instead of multiple databases in response to a query.
Moreover, in April of 2020, the Federal Circuit held that inventions causing a reduction in system latency are patent-eligible as an improvement in computer functionality. SeeUnilock USA, Inc. v. LG Electronics USA, Inc., 2019-1835 (Fed. Cir. 2020). The patent in Unilock was directed to "a communication system comprising a primary station (e.g., a base station) and at least one secondary station (e.g., a computer mouse or keyboard)."Id. at 2. The base station was configured to send at least two messages: inquiry (a search for new secondary stations) and poll (a data pull from the secondary station). I at 2-3. The invention in Unilock included "a data field for polling as part of the inquiry message, thereby allowing primary stations to send inquiry messages and conduct polling simultaneously."Id. at 3. The Federal Circuit saw this as patent eligible because it "eliminates or reduces the delay present in conventional systems where the primary station alternates between polling and sending inquiry messages."Id. at 7. Therefore, the claims overcame a problem specifically arising in the realm of computer networks because they "change[d] the normal operation of the communication system itself"Id. at 7.
Similar to the claims in Enfish and Unilock, amended independent claims 1, 8, and 15 are directed to a specific improvement in computer functionality. For example, amended independent claim 1 recites, in part, "in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; and initiating a wait timer that prevents queries to the one or more external databases." Amended independent claims 8 and 15 similar limitations, which include a specific improvement in computer capability that is recited in the Specification. For example, the Specification recites:
In light of the renewed global focus on pandemic preparation, it is of increasing importance that the administering agent also be able to show that the immunization record was successfully recorded by the recording agency. Furthermore, the time between reporting and actual recording is of increasing importance. Traditional systems tended to take days, but the need for accurate and timely data demands that immunization records should be updated in hours. [...] The present system reduces the delay and cost of reconciling immunization records between the immunization provider (i.e. the "reporting agency") and the recording agency, thus allowing expectations of timely and verified reporting to be met. Instead of record-by-record comparisons of reports from the two agencies, the present system provides, in an automated manner, positive or negative verification that the reported immunization in fact has been both accepted and recorded by the recording agency's system. Specification, at [0003] and [0011].
Accordingly, amended independent claims 1, 8, and 15 contain elements that reflect an improvement in the functioning of a computer, and, therefore, support a conclusion that amended independent claims 1, 8, and 15 integrate the judicial exception into a practical application of the judicial exception.
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 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 is applied to aid in managing these records more quickly which the MPEP has made clear is not enough to find eligibility. The databases 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 in the broad manner in which the limitations are claimed. 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 states that an element which provides improvements to other technologies or technical fields supports the conclusion that this element (or combination of elements) integrates the judicial exception into a practical application of the judicial exception. See MPEP, at § 2106.05(a)(II). The MPEP instructs 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 considered claims that "automate a 3-D animator's tasks, specifically, determining when to set keyframes and setting those keyframes."McRO, 837 F.3d at 1312. Specifically, "[t]his automation is accomplished through rules that are applied to the time transcript to determine the morph weight outputs."Id. at 1307. The MPEP explains that "[t]he McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that 'improved [the] existing technological process,' unlike cases such as Alice where a computer was merely used as a tool to perform an existing process" and "also noted that the claims at issue described a specific way (use of particular rules to set morph weights and transitions through phonemes) to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters, rather than merely claiming the idea of a solution or outcome." MPEP, at § 2106.05(a)(II).
As another example, a "[p]articular computerized method of operating a rubber molding press, e.g., a modification of conventional rubber-molding processes to utilize a thermocouple inside the mold to constantly monitor the temperature and thus reduce under- and over-curing problems common in the art" was "sufficient to show an improvement in existing technology."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). Specifically, claim 22 at issue in Thales Visionix 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 explained that claim 22 was not directed to an abstract idea because claim 22 specifies "a particular configuration of inertial sensors and a particular method of using the raw data from the sensors in order to more accurately calculate the position and orientation of an object on a moving platform."
Similar to the claims in McRO, Diehr, and Thales Visionix, amended independent claims 1, 8, and 15 are directed to a specific improvement in another technology or technical field, specifically electronic health records. For example, amended independent claim 1 recites, in part, "in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; and initiating a wait timer that prevents queries to the one or more external databases." Amended independent claims 8 and 15 similar limitations, which include a specific improvement in electronic health records that is recited in the Specification. For example, the Specification recites: [0011] In response to the recent COVID pandemic and resulting fast-tracked immunizations, there is increased pressure for entities performing immunizations (i.e. the "reporting agency") to verify that federal and state reporting guidelines are met in an aggressive and timely manner. Existing software based immunization reporting systems struggle to meet this technical challenge. Prior art systems typically include the technical problem of being unable to verify that reporting agency information is in fact recorded accurately at the recording agency tending traditionally to entail a lengthy manually directed verification process. In response to this challenge the present system provides an improvement by not only conveying the immunization record to the appropriate immunization recording agencies (i.e. the "recording agency") but also, in an automated manner, verifying the immunization has been accepted and recorded by the recording agency. The present system reduces the delay and cost of reconciling immunization records between the immunization provider (i.e. the "reporting agency") and the recording agency, thus allowing expectations of timely and verified reporting to be met. Instead of record-by-record comparisons of reports from the two agencies, the present system provides, in an automated manner, positive or negative verification that the reported immunization in fact has been both accepted and recorded by the recording agency's system. In this way, a single report can show the necessary reconciliation and outstanding records yet to be recorded. Importantly, the systems and methods described herein accomplish this technical solution without requiring new functionality from the reporting agencies or from the recording agencies and without requiring any other changes in the immunization ecosystem. In various embodiments, the system may automatically return said verification to the reporting agency (within a user definable time horizon i.e., several minutes to several hours).
Accordingly, amended independent claims 1, 8, and 15 contain elements that provide specific improvements to other technologies or technical fields, and, therefore, support a conclusion that amended independent claims 1, 8, and 15 integrate the judicial exception into a practical application of the judicial exception.
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 in the broad manner in which the limitations are claimed. 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 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.
The Patent Office has not met its Burden to Show that Amended Independent Claims 1 and Are Well-Understood, Routine, or Conventional
Recently, the Federal Circuit issued multiple precedential opinions explaining the burdens placed on the Patent Office when it alleges that claims elements are well understood, routine, and conventional. SeeBerkheimer v. HP, Inc., 881 F.3d 1360 (Fed. Cir. 2018); Aatrix Software, Inc. v. Green Shades Software, Inc., 822 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 promulgated a memorandum to examiners 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, which 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 § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).... 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. Additionally, "[i]f an applicant challenges the examiner's position that the additional element(s) is well-understood, routine, conventional activity, the examiner should reevaluate whether it is readily apparent that the additional elements are in actuality well- understood, routine, conventional activities to those who work in the relevant field."Id. at 4-5.
The Patent Office has cited to zero cases, and it has therefore failed to provide the type of analysis required by Berkheimer,Aatrix, and Exergen. For example, the claims at issue in Berkheimer recited: 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. Even though the Federal Circuit remarked that "[t]hese claims are similar to claims we held directed to an abstract idea in"TLI Communications and Content Extraction, it reversed the district court's holding of invalidity under § 101 because the district court did not show that the specific limitations of dependent claim 4 to be well-understood, routine, and conventional. Berkheimer, 881 F.3d at 1366-1370. Instead of merely holding that claim 4 was directed to "storing information" or "editing data in a straightforward copy-and-paste fashion," the Federal Circuit in Berkheimer required that the district court analyze the specific elements of the claim to determine if they were well-understood, routine, or conventional. It follows, then, that the Patent Office should examine the elements of the claim with the same level of detail.
As stated above, the following limitations of amended independent claim 1 are not well- understood, routine, or conventional elements:" in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; and initiating a wait timer that prevents queries to the one or more external databases." Amended independent claims 8 and 15 similar limitations that are not well- understood, routine, or conventional. Therefore, Applicant respectfully requests that the Patent Office meet its burden under Berkheimer, Aatrix, and Exergen by showing that the specific limitations recited above were well-understood, routine, or conventional on or before Applicant's filing date. If the Patent Office cannot meet this burden, then Applicant respectfully requests the withdrawal of the § 101 rejection and the allowance of amended independent claims 1, 8, and 15, as well as their respective dependents. Dependent Claims 3, 5-7, 10, 12-14, 17, and 19-20 are Allowable Applicant overcomes the rejection of claims 3, 5-7, 10, 12-14, 17, and 19-20 under 35 U.S.C. § 101 as being allegedly drawn to patent ineligible subject matter because claims 3, 5-7, 10, 12-14, 17, and 19-20 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, 5- 7, 10, 12-14, 17, and 19-20 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, 5-7, 10, 12-14, 17, and 19-20 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 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. 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.
Examiner maintains the 35 U.S.C 101 rejection.
Response to Arguments Regarding 35 U.S.C § 102/103 Rejections
Applicant’s arguments on pages 10-12 of remarks have been considered. Applicant argues the 35 U.S.C § 102/103 rejection should be withdrawn for the following reasons:
Amended independent claims 1, 8, and 15 recite, in part, "in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases; and initiating a wait timer that prevents queries to the one or more external databases." Daub does not teach or suggest these limitations.
Examiner appreciates applicant’s argument but does not find it persuasive for a portion of the limitation which recites "in response to receiving the second recording agency immunization records: pushing the second recording agency immunization records to one or more external databases;” Examiner notes Daub teaches in paragraph [0006] which discloses, “integrate , in the electronic database of the micro - application , the first state immunization records of the user and the second state immunization records of the user to form an integrated electronic immunization record of the user ;” and see [0102] discloses, “Via consumer health record access system 215 , a consumer may also share records among states ; i.e. , a consumer may provide State B immunization information to State A to update the records of State A. Yet further , via consumer health record access system 215 , a consumer may instruct that immunization records be provided , in a standardized format and / or protocol such as BlueButton + , to any external record acceptor ( for example , healthcare providers , Microsoft Health Vault , and / or the like ).”. Examiner notes that Daub is teaching that the immunization records of which it is taught there can be a first and a second are shared among states and can be provided in standardized format to any external record acceptor such as Microsoft Health Vault which is a more limiting example of an external database.
The remainder of the limitation argued is moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Examiner maintains the 35 U.S.C 103 rejection.
Prior Art Cited But Not Relied Upon
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.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection 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 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.
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.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mamon Obeid can be reached on (571) 270-1813. The fax phone number for the organization where this application or proceeding is assigned 571-273-8300.
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/ASHLEY ELIZABETH EVANS/Examiner, Art Unit 3687
/MAMON OBEID/Supervisory Patent Examiner, Art Unit 3687