DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Status of Claims
Claims 1-15 were previously pending and subject to a non-final office action filed on May 12, 2025 (the “May 12, 2025 Non-Final Office Action”). Following the May 12, 2025 Non-Final Office Action, Applicant amended claims 1 and 11 in an amendment filed on September 5, 2025 (the “September 5, 2025 Amendment”), see Applicant’s amended claims (pp. 2-4 of the September 5, 2025 Amendment). As such, claims 1-15, as recited in the September 5, 2025 Amendment, are currently pending and subject to the final office action below.
Response to Applicant’s Remarks
Response to Applicant’s Remarks Concerning Claim Interpretations under 35 U.S.C. § 112(f)
Applicant’s arguments, see Applicant’s Remarks, p. 5, Claim Interpretation Section, filed September 5, 2025, with respect to the claim interpretations under 35 U.S.C. § 112(f) of the data ingestion module, analysis module, and care decision module, described in claim 11 have been considered, but they are not persuasive. A claim limitation is presumed to invoke 35 U.S.C. 112(f) when it explicitly uses the term “means” or “step” and includes functional language. MPEP § 2181(I). The presumption that 35 U.S.C. 112(f) applies is overcome when the limitation further includes the structure, material or acts necessary to perform the recited function. Id. Instead of using “means” in such cases, a substitute term acts as a generic placeholder for the term “means” and would not be recognized by one of ordinary skill in the art as being sufficiently definite structure for performing the claimed function. Id. The Federal Circuit has held that “[s]ufficient structure exists when the claim language specifies the exact structure that performs the function in question without [the] need to resort to other portions of the specification or extrinsic evidence for an adequate understanding of the structure”. Id.
In the present case, Applicant’s claim 11 recites various modules where the term module is deemed to be a generic placeholder for the term “means” and would not be recognized by one of ordinary skill in the art as being sufficiently defined structure for performing the claimed functions. While Applicant has amended claim 11 to include that the processor comprises the data ingestion module, analysis module, and care decision module, claim 11 still recites the that these various modules perform various steps for receiving, communicating, analyzing, and providing the various data recited in the data. The structure (i.e., hardware or software) for these modules is not specified exactly without the need to resort to portions of the specification to determine that the modules are merely software that are implemented by a processor. Therefore, the modules described in claim 11 are still deemed to require a claim interpretation under § 112(f), where lines 19-28 on page 4 of Applicant’s specification filed on December 12, 2023 is required to show that the modules are merely software that are implemented by a processor. For these reasons, this argument is not persuasive.
Response to Applicant’s Remarks Concerning Rejections under 35 U.S.C. § 101
Applicant’s arguments, see Applicant’s Remarks, pp. 5-6, Claim Rejections – 35 U.S.C. § 101 Section, filed September 5, 2025, with respect to rejections of claim 1-15 under 35 U.S.C. § 101 have been fully considered, but they are not persuasive. Further, in light of the 2019 Revised Patent Subject Matter Eligibility Guidance, provided by the USPTO, effective January 7, 2019 (available at MPEP § 2106) (the “2019 Revised PEG”), the § 101 rejections of claims 1-15 are maintained in this final office action.
Applicant generally argues that that its claims are not directed to an abstract idea, because the amended claims require a processor to “automatically include elements to train a patient based on a technical assessment”, which Applicant argues is an improvement to computer technology. Applicant’s Remarks, at p. 6. Examiner respectfully disagrees. The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation, nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. See MPEP § 2106.04(a)(III). Claims can recite a mental process even if they are claimed as being performed on a computer. Id. The Supreme Court recognized this in Benson, determining that a mathematical algorithm for converting binary coded decimal to pure binary within a computer’s shift register was an abstract idea. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” Id.
Similarly, in the instant case, the claims describe concepts that are performed in the human mind and Applicant is merely claiming that concept be performed on a computer or in a computer environment with processor and software modules. Specifically, the steps of: (1) receiving data pertaining to the patient from various sources, wherein the data includes a technical assessment; (2) receiving and analyzing the data and creating a virtual care readiness profile of the patient; and (3) receiving the virtual care readiness profile and determining therefrom the number of care elements for the patient and providing the number of care elements for carrying out by the patient, wherein the care elements include elements to train the patient based on the technical assessment, described in claims 1 and 11, are steps that are commonly performed by medical professionals when evaluating patients without a computer. Further, these steps are recited at a high level of generality, because the claims do not describe any details for how the data is analyzed or how the care elements are determined. Therefore, the computer devices including the system comprising at least one processor which implements instructions from a non-transitory computer-readable medium are merely used as tools to perform a mental process for assessing virtual care readiness of a patient and providing a number of care elements for a care program for the patient. For these reasons, the argument that the claims do not recite an abstract idea is not persuasive.
Further, Applicant’s arguments that the claims recite an improvement to the conventional approach for analyzing patients for virtual care readiness amounts to a generally allegation of patent eligibility, because Applicant has not provided any analysis as to why the claims should be considered as providing an improvement in technology. When evaluating whether claims recite an improvement to the functioning of a computer or a technical field, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. MPEP § 2106.05(a). The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Id.
Conversely, if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. In the present case, Applicant has not identified a technical problem, nor has Applicant explained the details of an unconventional technical solution expressed in the claims. Accordingly, the claims do not recite additional elements that amount to an improvement in technology. For these reasons, this argument is not persuasive.
As such, the claims are not deemed to be patent eligible under § 101 based on the 2019 Revised PEG. Therefore, the rejections of claims 1-15 under 35 U.S.C. § 101 are maintained in this office action. Please see amended rejections to claims 1-15 under 35 U.S.C. § 101 below, for further clarification and complete analysis of the claims under the 2019 Revised PEG.
Response to Applicant’s Remarks Concerning Rejections under 35 U.S.C. § 102
Applicant’s arguments, see Applicant’s Remarks, pp. 6-7, Claim Rejections – 35 U.S.C. § 102 Section, filed September 5, 2025, with respect to rejections of claim 1-15 under 35 U.S.C. § 102 as being anticipated by Jain et al. (Pub. No. US 2022/0188671) (hereinafter referred to as “Jain”) have been fully considered, but they are not persuasive. Applicant generally argues that the claims have been amend to clarify that the data includes a technical assessment and that from this data, the care elements include elements to train the patient. Examiner notes that in paragraphs [0197]-[0200], Jain discloses that the process includes generating an assessment of whether the subject meets the benchmark readiness criteria and this assessment is provided to the machine learning models. This disclosure is interpreted as anticipating the step for “receiving data, wherein the data includes a technical assessment”. Further, paragraph [0092] in Jain discloses that the provided output that is given to the patient includes a recommendation of an action to improve or accelerate acquisition of readiness of the subject to satisfy the one or more readiness criteria (i.e., the recommendation action(s) for improving or accelerating the subject’s readiness are interpreted to be the equivalent of “elements” used for training the patient based on the technical assessment).
Therefore, Jain discloses the amended limitations. Accordingly, the amended claims are still deemed to be anticipated by Jain. Please see amended rejections to claims 1-15 under 35 U.S.C. § 102 below, for further clarification and complete analysis of the claims under 35 U.S.C. § 102.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
- the "data ingestion module" in claims 11 and 12; and the "data analysis module" and "care decision module" in claim 11.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
- Applicant discloses sufficient structure in the specification for the aforementioned limitations which are deemed to invoke § 112(f). Specifically, Applicant discloses that “each of such modules [referring to the data ingestion module, data analysis module, and care decision module] may comprise an independent processing arrangement or one or more of such modules may share a common processing arrangement depending on the needs of a particular embodiment” and the term “processing arrangement” refers to any suitable electronic arrangement(s) for carrying out the functionality or functionalities indicated, such as, comprising a microprocessor that interfaces with a memory module, which can be any type of internal and/or external storage media. See Applicant’s specification as filed on December 12, 2023, p. 4, lines 19-28. Based on these descriptions, the data ingestion module, data analysis module, and care decision module may collectively be embodied by the same processor that is executing instructions stored in a generic memory device. Therefore, for examination purposes, the data ingestion module, data analysis module, and care decision module are collectively interpreted as software instructions executed by the same processor, or any generic hardware component (e.g., a processor).
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitations to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-15 are rejected under 35 U.S.C. §101 because the claimed invention is directed to an abstract idea without significantly more. See MPEP § 2106 (hereinafter referred to as the “2019 Revised PEG”).
Step 1 of the 2019 Revised PEG
Following Step 1 of the 2019 Revised PEG, claims 1-10 are directed to a method of providing all or portions of a care program for a patient, which is within one of the four statutory categories (i.e., a process). See MPEP § 2106.03. Claims 11-15 are directed to a system for use in assessing virtual care readiness of a patient and providing a number of care elements for a care program, which is also within one of the four statutory categories (i.e., a machine or apparatus). See id.
Step 2A of the 2019 Revised PEG - Prong One
Following Prong One of Step 2A of the 2019 PEG, the claim limitations are to be analyzed to determine whether they “recite” a judicial exception or in other words whether a judicial exception is “set forth” or “described” in the claims. See MPEP §2106.04. An “abstract idea” judicial exception is subject matter that falls within at least one of the following groupings: (1) Mathematical Concepts; (2) Certain Methods of Organizing Human Activity, and (3) Mental Processes. See MPEP § 2106.04(a).
Claims 1-15 are rejected under 35 U.S.C. § 101, because the claimed invention is directed to an abstract idea without significantly more. Representative independent claims 1 and 11 include limitations that recite an abstract idea. Note that independent claim 1 is a method, while claim 11 covers the matching system claim. Specifically, independent claim 11 recites the following limitations:
A system performed by at least one processor reading instructions form a non-transitory computer-readable medium for use in assessing virtual care readiness of a patient and providing a number of care elements for a care program for the patient, the processor comprising:
a data ingestion module;
a data analysis module in communication with the data ingestion module; and
a care decision module in communication with the data analysis module, wherein:
the data ingestion module is structured to receive data pertaining to the patient from various sources and communicate the data, in-whole or in-part, to data the analysis module, wherein the data includes a technical assessment;
the analysis module is structured to receive and analyze the data communicated by the data ingestion module and create a virtual care readiness profile of the patient; and
the care decision module is structured to receive the virtual care readiness profile from the data analysis module and determine therefrom the number of care elements for the patient and providing the number of care elements for carrying out by the patient, wherein the care elements include elements to train the patient based on the technical assessment.
However, the Examiner submits that the foregoing underlined limitations constitute a process that, under its broadest reasonable interpretation, falls within the “Mental Processes” grouping of abstract ideas. See 2019 Revised PEG. The Mental Processes category covers concepts which are capable of being performed in the human mind or encompasses a human performing the step(s) mentally with the aid of a pen and paper (including an observation, evaluation, judgment, or opinion) (i.e., a method for assessing virtual care readiness of a patient and providing a number of care elements for a care program for the patient, comprising: receiving data pertaining to the patient from various sources; receiving and analyzing the communicated data and creating a virtual care readiness profile for the patient; and receiving the virtual care readiness profile for the patient and determining a number of care elements for the patient). See MPEP § 2106.04(a)(2)(III). That is, other than reciting some computer components and functions (the foregoing limitations in claim 11 which are not underlined), the context of claims 1 and 11 encompasses concepts that are capable of being performed in the human mind or encompasses a human performing the step(s) mentally with the aid of a pen and paper (including an observation, evaluation, judgment, and/or opinion) (i.e., a method for assessing virtual care readiness of a patient and providing a number of care elements for a care program for the patient, comprising: receiving data pertaining to the patient from various sources; receiving and analyzing the communicated data and creating a virtual care readiness profile for the patient; and receiving the virtual care readiness profile for the patient and determining a number of care elements for the patient).
The aforementioned claim limitations described in claims 1 and 11 are analogous to claim limitations directed toward concepts which are capable of being performed in the human mind or encompasses a human performing the step(s) mentally with the aid of a pen and paper, because they merely recite limitations which encompass a person mentally and/or manually: (1) receiving data pertaining to the patient from various sources (i.e., a type of observation, evaluation, judgment, and/or opinion where a person could review/evaluate the patient data collected from various sources); (2) receiving and analyzing the communicated data and creating a virtual care readiness profile for the patient (i.e., a type of observation, evaluation, judgment, and/or opinion where a person, such as a medical professional, could manually analyze patient data and determine a care plan for the patient); and (3) receiving the virtual care readiness profile for the patient and determining a number of care elements for the patient (i.e., a type of observation, evaluation, judgment, and/or opinion where a person could review/evaluate the care plan for the patient and manually write down the specific information in the care plan).
Further, Applicant’s claims are similar to claims which have been held to recite an abstract mental process. For example, the Federal Circuit held the a claim directed to “collecting information, analyzing it, and displaying certain results of the collection and analysis”, where the data analysis steps are recited at a high level of generality amounted to steps that could practically be performed in the human mind. See MPEP § 2106.04(a)(2)(III)(A) (citing Electric Power Group g. Alstom, S.A.). Similarly, Applicant’s claims recite steps for collecting information (i.e., receiving the patient data and the virtual care readiness profile); analyzing the data (analyzing the communicated data); and displaying certain results about the collection and analysis (i.e., providing the number of care elements to the patient and/or a caregiver of the patient), at a high level of generality. Therefore, the aforementioned underlined claim limitations may reasonably be interpreted as mental/manual observations, evaluations, judgments, and/or opinions made by a person, such as a healthcare professional. If a claim limitation, under its broadest reasonable interpretation, covers concepts which are capable of being performed in the human mind or encompasses a human performing the step(s) mentally with the aid of a pen and paper, then it falls within the “Mental Processes” grouping of abstract ideas. See 2019 Revised PEG. Accordingly, claims 1 and 11 recite an abstract idea that falls within the Mental Processes category.
Furthermore, Examiner notes that dependent claims 2-10 and 12-15 further define the at least one abstract idea (and thus fail to make the abstract idea any less abstract) as set forth below. Examiner notes that: (1) dependent claims 4, 7-9, and 12 include limitations that are deemed to be additional elements, and require further analysis under Prong Two of Step 2A; and (2) dependent claims 2, 3, 5, 6, 10, and 13-15 do not provide any limitations that are deemed to be additional elements which require further analysis under Prong Two of Step 2A. For example, claims 2, 3, 5, 6, 10, and 13-15 merely recite further steps for type of data that is contained in the virtual care readiness profile (i.e., these steps are deemed to be reasonably performed mentally or manually using a pen and paper, because they modify the data that is used for the observations, evaluations, judgments, and/or opinions).
Step 2A of the 2019 Revised PEG - Prong Two
Regarding Prong Two of Step 2A of the 2019 Revised PEG, it must be determined whether the claim as a whole integrates the abstract idea into a practical application. As noted in the 2019 Revised PEG, it must be determined whether any additional elements in the claims are indicative of integrating the abstract idea into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application.” See MPEP § 2106.05 (f), (g), and (h).
In the present case, for independent claims 1 and 11, the additional limitations beyond the above-noted at least one abstract idea are as follows (where the bolded portions are the “additional limitations” while the underlined portions continue to represent the at least one “abstract idea”):
A system performed by at least one processor reading instructions form a non-transitory computer-readable medium for use in (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)) assessing virtual care readiness of a patient and providing a number of care elements for a care program for the patient, the processor comprising (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)):
a data ingestion module (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f));
a data analysis module in communication with the data ingestion module (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)); and
a care decision module in communication with the data analysis module (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)), wherein:
the data ingestion module is structured to (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)) receive data pertaining to the patient from various sources and communicate the data, in-whole or in-part, to data the analysis module (the Examiner submits that this additional element amounts to adding insignificant extra-solution activity as noted below, see MPEP § 2106.05(g); and the Examiner further submits that such steps are not unconventional as they merely consist of receiving data over a network, as evidenced by the Intellectual Ventures v. Symantec case, as noted below in the Step 2B Analysis Section, see MPEP § 2106.05(d))), wherein the data includes a technical assessment;
the analysis module is structured to (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)) receive and analyze the data communicated by the data ingestion module (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)) and create a virtual care readiness profile of the patient; and
the care decision module is structured to (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)) receive the virtual care readiness profile from the data analysis module (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f)) and determine therefrom the number of care elements for the patient and providing the number of care elements for carrying out by the patient, wherein the care elements include elements to train the patient based on the technical assessment.
However, the recitation of these generic computer components and functions in , such that it amounts to no more than: (1) adding the words “apply it” (or is the equivalent of) with the judicial exception; mere instructions to implement an abstract idea on a computer; or merely uses a computer as a tool to perform an abstract idea; and (2) adding insignificant extra-solution activity to the judicial exception. See MPEP §§ 2106.05(f), (g). For the following reasons, the Examiner submits that the above identified additional limitations do not integrate the above-noted at least one abstract idea into a practical application.
- The following is an example of court decisions that demonstrate merely applying instructions by reciting the computer structure as a tool to implement the claimed limitations (e.g., see MPEP § 2106.05(f)):
- A commonplace business method or mathematical algorithm being applied on a general purpose computer, e.g., see Alice Corp. Pty. Ltd. v. CLS Bank Int’l – similarly, the current invention implements the commonplace medical business method of: (1) assessing the readiness of a patient; and (2) creating and providing a care plan for patient, on a general purpose computer (i.e., the Examiner submits that the system comprising at least one processor; instructions from a non-transitory computer-readable medium; a data ingestion module; a data analysis module; and a care decision module, is merely a generic computer implementing the abstract idea using generic software).
- Requiring the use of software to tailor information and provide it to the user on a generic computer, e.g., see Intellectual Ventures I LLC v. Capital One Bank (USA) – similarly, the current invention requires software components and the system (i.e., the system comprising at least one processor; instructions from a non-transitory computer-readable medium; a data ingestion module; a data analysis module; and a care decision module) to perform the abstract idea.
- The following is an example of an insignificant extra-solution activity (e.g., see MPEP § 2106.05(g)):
- Example of Mere Data Gathering/Mere Data Outputting:
- Obtaining information about transactions using the Internet to verify credit card transactions, e.g., see CyberSource v. Retail Decisions, Inc. – similarly, the initial steps directed to (1) “communicating the data, in-whole or in-part, to the data analysis module”, described in claim 11, is a necessary data gathering step (i.e., communicating (such as transmitting/sending) the patient data to the data analysis module is a necessary data gathering step in order for the system to collect the data that is used to generate the virtual care readiness profile for the patient).
Thus, the additional elements in independent claims 1 and 11 are not indicative of integrating the judicial exception into a practical application. Similarly, dependent claims 2, 3, 5, 6, 10, and 13-15 do not recite any additional elements outside of those identified as being directed to the abstract idea described above. Examiner notes that dependent claims 4, 7-9, and 12 recite the following additional elements (in bold font below with limitations deemed to be part of the above identified abstract idea identified in underlined font):
wherein the plurality of care elements comprises a number of virtual care elements (the Examiner submits that this additional element amounts to adding the words “apply it” (or an equivalent), or mere instructions to implement the abstract idea on a computer, see MPEP § 2106.05(f); and the Examiner further submits that this additional element amounts to generally linking the abstract idea to a particular field of use or technological environment as noted below, see MPEP § 2106.05(h)) (as described in claim 4);
wherein receiving the data regarding the patient from the number of sources comprises receiving the data from a plurality of sources (the Examiner submits that this additional element amounts to adding insignificant extra-solution activity as noted below, see MPEP § 2106.05(g); and the Examiner further submits that such steps are not unconventional as they merely consist of receiving data over a network, as evidenced by the Intellectual Ventures v. Symantec case, as noted below in the Step 2B Analysis Section, see MPEP § 2106.05(d)) (as described in claim 7);
wherein receiving the data regarding the patient from the plurality of sources comprises receiving the data from the patient and a number of caregivers of the patient (the Examiner submits that this additional element amounts to adding insignificant extra-solution activity as noted below, see MPEP § 2106.05(g); and the Examiner further submits that such steps are not unconventional as they merely consist of receiving data over a network, as evidenced by the Intellectual Ventures v. Symantec case, as noted below in the Step 2B Analysis Section, see MPEP § 2106.05(d)) (as described in claim 8);
wherein determining a virtual readiness profile for the patient based on at least some of the data comprises: providing the data to a trained neural network (the Examiner submits that this additional element amounts to adding insignificant extra-solution activity as noted below, see MPEP § 2106.05(g); the Examiner further submits that this additional element amounts to generally linking the abstract idea to a particular field of use or technological environment as noted below, see MPEP § 2106.05(h); and the Examiner further submits that such steps are not unconventional as they merely consist of receiving data over a network, as evidenced by the Intellectual Ventures v. Symantec case, as noted below in the Step 2B Analysis Section, see MPEP § 2106.05(d)); and receiving the virtual readiness profile from the trained neural network (the Examiner submits that this additional element amounts to adding insignificant extra-solution activity as noted below, see MPEP § 2106.05(g); the Examiner further submits that this additional element amounts to generally linking the abstract idea to a particular field of use or technological environment as noted below, see MPEP § 2106.05(h); and the Examiner further submits that such steps are not unconventional as they merely consist of receiving data over a network, as evidenced by the Intellectual Ventures v. Symantec case, as noted below in the Step 2B Analysis Section, see MPEP § 2106.05(d)) (as described in claim 9); and
wherein the data analysis module includes, in-whole or in-part, a trained neural network that has been trained (the Examiner submits that this additional element amounts to generally linking the abstract idea to a particular field of use or technological environment as noted below, see MPEP § 2106.05(h)) to create a virtual care readiness profile of the patient from the data pertaining to the patient (as described in claim 12).
As such, the additional elements in claims 1, 4, 7-9, 11, and 12 are not indicative of integrating the judicial exception into a practical application. Looking at the additional limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. For instance, unlike the claims that have been held as a whole to be directed to an improvement or otherwise directed to something more than the abstract idea, claims 1-15: (1) are not directed to improvements to the functioning of a computer, or to any other technology or technical field similar to the Enfish, LLC v. Microsoft Corp. case (see MPEP § 2106.05(a)); (2) do not apply or use a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition (see MPEP § 2106.04(d)(2)); (3) do not apply the judicial exception with, or by use of, a particular machine (see MPEP § 2106.05(b)); (4) do not effect a transformation or reduction of a particular article to a different state or thing (see MPEP § 2106.05(c)); nor do they (5) apply or use the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as whole is more than a drafting effort designed to monopolize the exception (see MPEP § 2106.05(e) and MPEP § 2106.04(d)(2)). For these reasons, claims 1-15 do not recite additional elements that integrate the judicial exception into a practical application.
Step 2B of the 2019 Revised PEG
Regarding Step 2B of the 2019 Revised PEG, claims 1-15 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, with respect to integration of abstract idea into a practical application, the additional elements of claims 1, 4, 7-9, 11, and 12 amount to no more than: (1) adding the words “apply it” (or is the equivalent of) with the judicial exception; mere instructions to implement an abstract idea on a computer; or merely uses a computer as a tool to perform an abstract idea; (2) adding insignificant extra-solution activity to the judicial exception; and (3) generally linking the use of a judicial exception to a particular technological environment or field of use. See MPEP §§ 2106.05(f)-(h). Further the additional elements, other than the abstract idea per se, when considered both individually and as an ordered combination, amount to no more than limitations consistent with what the courts recognize, or those having ordinary skill in the art would recognize, to be well-understood, routine, and conventional computer components. See MPEP § 2106.05 (d).
Specifically, the Examiner submits that the additional elements of claims 1, 4, 7-9, 11, and 12, as recited, the system; at least one processor; instructions from a non-transitory computer-readable medium; data ingestion module; data analysis module; care decision module; trained neural network; and the steps of: “communicating the data, in-whole or in-part, to the data analysis module”; “wherein the plurality of care elements comprises a number of virtual care elements”; “wherein receiving the data regarding the patient from the number of sources comprises receiving the data from a plurality of sources”; “wherein receiving the data regarding the patient from the plurality of sources comprises receiving the data from the patient and a number of caregivers of the patient”; “wherein determining a virtual readiness profile for the patient based on at least some of the data comprises: providing the data to a trained neural network”; “receiving the virtual readiness profile from the trained neural network”; and “wherein the data analysis module includes, in-whole or in-part, a trained neural network that has been trained”, are generic computer components and functions. See MPEP § 2106.05(d)(II).
- In regard to the system; at least one processor; instructions from a non-transitory computer-readable medium; data ingestion module; data analysis module; care decision module; trained neural network; and the steps of: “wherein the plurality of care elements comprises a number of virtual care elements”; “wherein determining a virtual readiness profile for the patient based on at least some of the data comprises: providing the data to a trained neural network”; “receiving the virtual readiness profile from the trained neural network”; and “wherein the data analysis module includes, in-whole or in-part, a trained neural network that has been trained”, these additional elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than well-understood, routine, and conventional activities previously known to the industry, because:
- Applicant’s disclosure supports this assertion – for example, Applicant discloses that the system comprising the data analysis module, data ingestion module, and care decision module is be embodied by a processing arrangement, which comprises a microprocessor that interfaces with a memory module (which can be any one of a variety of internal and/or external storage media). See Applicant’s specification, filed on December 12, 2023, p. 4, lines 18-25. Further, Applicant discloses that “an example embodiment of the present invention data analysis module 22 utilizes a processing arrangement comprising, in-whole, or in-part, a trainable/trained neural network” and describes these components as a “commonly known architecture”. Applicant’s specification, filed on December 12, 2023, p. 4, lines 28-30. This paragraph demonstrates that the aforementioned system comprising the at least one processor; instructions from a non-transitory computer-readable medium; data analysis module, data ingestion module, care decision module, and trained neural network may be embodied by one or more microprocessors (i.e., a general purpose processing device) which executes software stored on a memory device, because they are claimed at high-level of generality/in a generic manner. Further, Applicant explicitly describes this arrangement as commonly known. Therefore, Applicant’s disclosure provides evidence that the above identified additional elements are well-understood, routine, and conventional devices previously known to the pertinent industry.
- The Examiner submits that these limitations amount to merely using a computer or other machinery as tools for performing their typical functionality in conjunction with performing the above-noted at least one abstract idea (see MPEP § 2106.05(f) and analysis of these limitations under Step 2A, Prong Two above).
- The Examiner submits that these limitations generally link the use of the judicial exception to a particular technological environment or field of use – for example, the limitations directed to: “wherein the plurality of care elements comprises a number of virtual care elements”; “wherein determining a virtual readiness profile for the patient based on at least some of the data comprises: providing the data to a trained neural network”; “receiving the virtual readiness profile from the trained neural network”; and “wherein the data analysis module includes, in-whole or in-part, a trained neural network that has been trained”, amount to limiting the abstract idea to the field of virtual healthcare and neural networks/machine learning (see MPEP § 2106.05(h) and analysis of these limitations under Step 2A, Prong Two above).
Therefore, these limitations are also deemed to be well-understood, routine, and conventional under Step 2B for similar reasons since they are claimed in a generic manner.
- Regarding the steps and features of: “communicating the data, in-whole or in-part, to the data analysis module”; “wherein receiving the data regarding the patient from the number of sources comprises receiving the data from a plurality of sources”; “wherein receiving the data regarding the patient from the plurality of sources comprises receiving the data from the patient and a number of caregivers of the patient”; “wherein determining a virtual readiness profile for the patient based on at least some of the data comprises: providing the data to a trained neural network”; and “receiving the virtual readiness profile from the trained neural network” - The following represents examples that courts have identified to be well-understood, routine, and conventional activities (e.g., see MPEP § 2106.05(d)):
- Receiving or transmitting data over a network, e.g., see Intellectual Ventures v. Symantec – similarly the limitations directed to: “communicating the data, in-whole or in-part, to the data analysis module”; “wherein receiving the data regarding the patient from the number of sources comprises receiving the data from a plurality of sources”; “wherein receiving the data regarding the patient from the plurality of sources comprises receiving the data from the patient and a number of caregivers of the patient”; “wherein determining a virtual readiness profile for the patient based on at least some of the data comprises: providing the data to a trained neural network”; and “receiving the virtual readiness profile from the trained neural network”, are similarly deemed to be well-understood, routine, and conventional activity in the medical field, because they also represent mere collection and transmission of data over a network (i.e., receiving/communicating patient data; providing the data to a trained neural network; and receiving the virtual readiness profile from the trained neural, are each the equivalent of receiving/transmitting data (i.e., the patient data and the virtual readiness profile) over a network).
Therefore, the additional elements described in claims 1, 4, 7-9, 11, and 12 are deemed to be additional elements which do not amount to significantly more than the abstract idea identified above.
Thus, taken alone, the additional elements of claims 1, 4, 7-9, 11, and 12 do not amount to significantly more than the above-identified judicial exception (the abstract idea). Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functionality of a computer or improves any other technology, and their collective functions merely provide conventional computer implementation. Therefore, whether taken individually or as an ordered combination, claims 1, 4, 7-9, 11, and 12 are nonetheless rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Additionally, dependent claims 2, 3, 5, 6, 10, and 13-15 (which depend on claims 1 and 11 due to their respective chains of dependency), do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Examiner notes that 2, 3, 5, 6, 10, and 13-15 do not include any additional elements beyond those identified as well-understood, routine, and conventional components as described above in the subject matter eligibility rejections of independent claims 1 and 11. Dependent claims 2, 3, 5, 6, 10, and 13-15 merely add limitations that further narrow the abstract idea described in independent claims 1 and 11. Therefore, claims 1-15 are nonetheless rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-15 are rejected under 35 U.S.C. 102(a)(1) and (a)(2) as being anticipated by:
- Jain et al