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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 08/04/2026 has been entered.
Notice to Applicant
This communication is in response to the amendment filed 08/04/2026. Claims 1, 5-6, 8-13, 18 have been amended. Claim 7 has been canceled. Claims 21-23 have been added. Claims 1-3, 5-6, 8-15, 17-23 are presented for examination.
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 limitation(s) is/are:
“an operation part” in claim 1; and
“an operation part” in claim 8.
Because this/these claim limitation(s) is/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.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/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 it/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 1-3, 5-6, 8-15, 17-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Based upon consideration of all of the relevant factors with respect to the claims as a whole, the claims are directed to non-statutory subject matter which do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the following analysis:
Claim 1 is drawn to an apparatus which is within the four statutory categories (i.e., machine). Claim 8 is drawn to a system which is within the four statutory categories (i.e., machine). Claim 12 is drawn to a method which is within the four statutory categories (i.e., method). Claim 13 is drawn to a non-transitory, computer-readable recording medium which is within the four statutory categories (i.e., manufacture).
Independent claim 1 (which is representative of independent claims 8, 12-13) recites… the person identifying information being generated at the plurality of medical facilities; and…[provide] a medical image of a first patient from among the plurality of patients; setting, in response to an input operation…a name identification condition for searching the patient databases for a related patient whose person identifying information is similar to the person identifying information of the first patient whose medical image is being displayed…, the name identification condition including a plurality of items; determining whether or not a second patient whose person identifying information satisfies the name identification condition is recorded in any of the patient databases and is thus a related patient by determining a similarity value of the second patient to the first patient, the similarity value being obtained by analyzing each of the plurality of items of the name identification condition associated with the first patient to same items associated with patients in the patient databases, assigning a penalty value only to items of patients in the patient databases that do not match the same item of the first patient, and calculating the similarity value based on the penalty value; and [provide] existence information indicating existence of the related patient, in response to a determination in the determining that the second patient is recorded in any of the patient databases, such that both the existence information and the medical image of the first patient are simultaneously displayed...
Under its broadest reasonable interpretation, the limitations noted above, as drafted, covers certain methods of organizing human activity (i.e., managing personal behavior or relationships or interactions between people…following rules or instructions), but for the recitation of generic computer components. The claims encompass a series of rules or instructions for a person or persons to follow, with or without the aid of a computer, to search for and provide data of a related patient in the manner described in the identified abstract idea, supra. The rules or instructions are the claimed steps as indicated supra. That is, other than reciting generic computer components (discussed infra), the claim amounts to managing personal behavior or relationships or interactions between people following rules or instructions. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or relationships or interactions between people, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
Claim 1 recites additional elements (i.e., A medical image display apparatus comprising: a display; an operation part; a communication interface; a plurality of patient databases each at a respective one of a plurality of medical facilities, each of the patient databases storing person identifying information on each of a plurality of patients; a GUI). Claim 8 recites additional elements (i.e., A medical image display system, comprising: a data management apparatus comprising a plurality of patient databases each at a respective one of a plurality of medical facilities and each storing person identifying information on each of a plurality of patients; and a medical image display apparatus operably coupled to the data management apparatus via a network comprising: a display; an operation part; a communication interface; and a hardware processor; a GUI). Claim 12 recites additional elements (i.e., a medical image display system including a data management apparatus and a medical image display apparatus operably coupled to the data management apparatus via a network, the medical image display apparatus comprising a display and an operation part; a GUI; a plurality of patient database each at a respective one of a plurality of medical facilities, each of the plurality of patient databases being included in the data management apparatus and storing person identifying information on each of a plurality of patients). Claim 13 recites additional elements (i.e., A non-transitory computer-readable recording medium storing a program thereon; a hardware processor of a medical image display apparatus operably coupled to a data management apparatus via a network, the medical image display apparatus further including a display and an operation part; a GUI; a plurality of patient database each at a respective one of a plurality of medical facilities, each of the plurality of patient databases being included in the data management apparatus and storing person identifying information on each of a plurality of patients). Looking to the specifications, a medical image display apparatus having a display with a GUI, an operation part, a communication interface, a hardware processor, a non-transitory computer-readable recording medium storing a program thereon on a network is described at a high level of generality (¶ 0016-0022; ¶ 0062), such that it amounts to no more than mere instructions to apply the exception using generic computer components. Also, “a data management apparatus comprising a plurality of patient databases each at a respective one of a plurality of medical facilities and each storing person identifying information on each of a plurality of patients” is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., storing, providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. The additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Accordingly, the claims are directed to an abstract idea.
Reevaluated under step 2B, the additional elements noted above do not provide “significantly more” when taken either individually or as an ordered combination. The use of a general purpose computer or computers (i.e., a medical image display apparatus having a display with a GUI, an operation part, a communication interface, a hardware processor, a non-transitory computer-readable recording medium storing a program thereon on a network) amounts to no more than mere instructions to apply the exception using generic computer components and does not impose any meaningful limitation on the computer implementation of the abstract idea, so it does not amount to significantly more than the abstract idea. Also, “a data management apparatus comprising a plurality of patient databases each at a respective one of a plurality of medical facilities and each storing person identifying information on each of a plurality of patients” is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., storing, providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. The combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology and their collective functions merely provide a conventional computer implementation of the abstract idea. Furthermore, the additional elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than a recitation of generally linking the abstract idea to a particular technological environment or field of use, as the courts have found in Parker v. Flook; similarly, the current invention merely limits the claimed calculations to the healthcare industry which does not impose meaningful limits on the scope of the claim. Therefore, there are no limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception.
Dependent claims 2-3, 5-6, 9-11, 14-15, 17-23 include all the limitations of the parent claims and further elaborate on the abstract idea discussed above and incorporated herein.
Claims 2-3, 5-6, 9-11, 14-15, 17-23 further define the analysis and organization of data for the performance of the abstract idea and do not recite any additional elements. Thus, the claims do not integrate the abstract idea into a practical application and do not provide “significantly more.”
Although the dependent claims add additional limitations, they only serve to further limit the abstract idea by reciting limitations on what the information is and how it is received and used. These information characteristics do not change the fundamental analogy to the abstract idea grouping of “Certain Methods of Organizing Human Activity,” and, when viewed individually or as a whole, they do not add anything substantial beyond the abstract idea. Furthermore, the combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology. Therefore, the claims when taken as a whole are ineligible for the same reasons as the independent claims.
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 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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-3, 5-15, 17-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. US 2020/0043167 A1 (hereinafter referred to as "Murayama") in view of U.S. Patent App. Pub. No. US 2019/0295724 A1 (hereinafter referred to as "KANADA") and Japanese Patent Pub. No. JP 6696305 B2 (hereinafter referred to as "SUZUKI").
Regarding (currently amended) claim 1, Murayama teaches a medical image display apparatus comprising:
a display (Murayama: ¶ 0035, i.e., “Graphical display device 220 may be a monitor, computer screen, project device or other hardware device for displaying output capable of displaying graphical user interfaces”; ¶ 0036-0037);
an operation part (Murayama: ¶ 0032; ¶ 0056, i.e., “a button, drop-down menu, etc., which is selected by a cursor, stylus, trackpad, or other cursor control device or by touch (in the case of a touch screen display)”);
a communication interface via which the medical image display apparatus communicates with a plurality of patient databases each at a respective one of a plurality of medical facilities, …the person identifying information being generated at a plurality of medical facilities (Murayama: figure 4, i.e., “Medical Image Management System” 410 receives “Studies” 401, 402; ¶ 0035; ¶ 0037, i.e., “receive healthcare images from multiple sources including databases spread across multiple facilities and/or multiple locations”; ¶ 0047; ¶ 0084, i.e., “one or more of the subjects of the one or more medical images”); and
a hardware processor configured to execute processes (Murayama: ¶ 0036) comprising:
controlling the display to display a GUI including a medical image of a first patient from among the plurality of patients (Murayama: figure 4, i.e., “Display Device” 413 includes “GUI” 430 to display “Image(s) from current study”; ¶ 0052; ¶ 0057, i.e., “display an image series from a current study…of the patient”);
setting, in response to an input operation by a user via the operation part, a name identification condition for searching the patient databases for a related patient whose person identifying information is similar to the person identifying information of the first patient whose medical image is being displayed in the GUI displayed on the display, the name identification condition including a plurality of items (Murayama: ¶ 0047; ¶ 0056, i.e., “the comparison layout is generated automatically when user invokes the auto comparison layout function…When invoked, the image viewer utilizes the calculated similarity to select the images that are to appear in the viewer layout. In one embodiment, the viewer layouts the an image from the current study on the left side of a viewer window, and automatically lines up the one or more most similar images from the one or more prior studies on the right side of the image from the current study”; ¶ 0057, i.e., “the medical image management system may use a patient identifier, or other patient identification information, to start a search of its memory or remotely-located storage (e.g., PACS) for previously-created studies for the patient”);
determining whether or not a second patient whose person identifying information satisfies the name identification condition is recorded in any of the patient database and is thus a related patient by determining a similarity value of the second patient to the first patient (Murayama: ¶ 0056-0058); and
controlling the display to display the GUI to further include existence information indicating existence of the related patient, in response to a determination in the determining that the second patient is recorded in any of the patient databases, such that both the existence information and the medical image of the first patient are simultaneously displayed in the GUI (Murayama: ¶ 0056, i.e., “the viewer layouts the an image from the current study on the left side of a viewer window, and automatically lines up the one or more most similar images from the one or more prior studies on the right side of the image from the current study”; ¶ 0057).
Yet, Murayama does not explicitly teach, but KANADA teaches, in the same field of endeavor,
…each of the patient databases storing person identifying information on each of a plurality of patients (KANADA: ¶ 0048, i.e., “the examination image 20 is created in a data file format based on the digital imaging and communications in medicine (DICOM) standard. The data file based on the DICOM standard is provided with…a region for storing the accessory information. The accessory information includes patient information, such as a patient ID”; ¶ 0050, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood “examination image DB 21 that stores a plurality of examination images 20” of KANADA as one of the “databases spread across multiple facilities and/or multiple locations” of Murayama, which is the claimed patient database)…; and
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include the patient database storing person identifying information on each of a plurality of patients, as taught by KANADA, within the system of Murayama, with the motivation to “provide similar cases suitable for the main reference purpose to the doctor DR and to effectively support the specification of the disease name and the severity by the doctor DR” (KANADA: ¶ 00159).
Yet, Murayama and KANADA do not explicitly teach, but SUZUKI teaches, in the same field of endeavor,
…the similarity value being obtained by analyzing each of the plurality of items of the name identification condition associated with the first patient to same items associated with patients in the patient databases, assigning a penalty value only to items of patients in the patient databases that do not match the same item of the first patient, and calculating the similarity value based on the penalty value (SUZUKI: page 8, 4th-8th ¶);
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include the similarity value being obtained by analyzing each of the plurality of items of the name identification condition associated with the first patient to same items associated with patients in the patient databases, assigning a penalty value only to items of patients in the patient databases that do not match the same item of the first patient, and calculating the similarity value based on the penalty value, as taught by SUZUKI, with the system of Murayama, with the motivation of “determining the same patient from the patient information individually generated in a plurality of medical facilities.” (SUZUKI: page 5, 7th ¶).
Regarding (original) claim 2, Murayama, KANADA, and SUZUKI teach the medical image display apparatus according to claim 1, wherein the related patient is a patient presumed to be the first patient (Murayama: ¶ 0004; ¶ 0056; ¶ 0057, i.e., “the medical image management system searches for other studies of the patient, to determine if there are prior studies available for the patient”).
Regarding (previously presented) claim 3, Murayama, KANADA, and SUZUKI teach the medical image display apparatus according to claim 1, wherein the processes comprise controlling the display to display the existence information before displaying a list of at least one patient including the related patient (Murayama: ¶ 0057, i.e., “the system prompts the user by displaying a message on the display screen that prior studies are available” before “automatically generate and display…similar image series from one or more prior studies”).
Regarding (currently amended) claim 5, Murayama, KANADA, and SUZUKI teach the medical image display apparatus according to claim 1.
Yet, Murayama, KANADA, and SUZUKI do not explicitly teach, but KANADA teaches, in the same field of endeavor, wherein one of the items of the name identification condition is a modality of an imaging apparatus that was used to capture the medical image of the first patient (KANADA: ¶ 0048, i.e., “The accessory information include… the type of medical examination (the type of the modality 13 such as CT or MRI)”; ¶ 0061, i.e., “The request to acquire the target image 20T includes various items of the accessory information of the examination image 20”).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention was made to combine the noted features of KANADA with the teachings of Murayama, KANADA, and SUZUKI since the combination of the references is merely simple substitution of one known element for another producing a predictable result (KSR rationale B). Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself—that is, in the substitution of a modality of an imaging apparatus that was used to capture the medical image of the first patient as taught by KANADA for the patient identification information to start a search as taught by Murayama. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
Regarding (currently amended) claim 6, Murayama, KANADA, and SUZUKI teach the medical image display apparatus according to claim 1.
Yet, Murayama, KANADA, and SUZUKI do not explicitly teach, but KANADA teaches, in the same field of endeavor, wherein one of the items of the name identification condition is an imaging part of the medical image of the first patient (KANADA: ¶ 0048, i.e., “The accessory information include…examination information, such as…an imaging part”; ¶ 0061, i.e., “The request to acquire the target image 20T includes various items of the accessory information of the examination image 20”).
Therefore, it would have been prima facie obvious to one of ordinary skill in the art at the time of the invention was made to combine the noted features of KANADA with the teachings of Murayama, KANADA, and SUZUKI since the combination of the references is merely simple substitution of one known element for another producing a predictable result (KSR rationale B). Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself—that is, in the substitution of an imaging part as taught by KANADA for the patient identification information to start a search as taught by Murayama. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
Regarding (currently amended) claim 8, claim 8 recites substantially similar limitations analogous to those already addressed in claim 1, and thus, claim 8 is similarly analyzed and rejected in a manner consistent with the rejection of claim 1.
Regarding (currently amended) claim 9, Murayama, KANADA, and SUZUKI teach the medical image display system according to claim 8.
Yet, Murayama, KANADA, and SUZUKI do not explicitly teach, but KANADA teaches, in the same field of endeavor, wherein:
the processes further comprise specifying, as one of the items of the name information condition, a modality of an imaging apparatus that was used to capture the medical image of the first patient (KANADA: ¶ 0048, i.e., “The accessory information include… the type of medical examination (the type of the modality 13 such as CT or MRI)”; ¶ 0061, i.e., “The request to acquire the target image 20T includes various items of the accessory information of the examination image 20”), and
the hardware processor controls the display to display the existence information in a case where the modality specified in the specifying is associated with the related patient (KANADA: ¶ 0061, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood “examination image 20 matched with…the acquisition request” of KANADA as the “message on the display screen” of Murayama, which is the claimed existence information).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include the processes further comprise specifying a modality of an imaging apparatus that was used to capture the medical image of the first patient, and the hardware processor controls the display to display the existence information in a case where the modality specified in the specifying is associated with the related patient, as taught by KANADA, with the system of Murayama, KANADA, and SUZUKI, with the motivation to “provide similar cases suitable for the main reference purpose to the doctor DR and to effectively support the specification of the disease name and the severity by the doctor DR” (KANADA: ¶ 00159).
Regarding (currently amended) claim 10, Murayama, KANADA, and SUZUKI teach the medical image display system according to claim 8.
Yet, Murayama, KANADA, and SUZUKI do not explicitly teach, but KANADA teaches, in the same field of endeavor, wherein:
the processes further comprise specifying, as one of the items of the name information condition, an imaging part of the medical image of the first patient (KANADA: ¶ 0048, i.e., “The accessory information include…examination information, such as…an imaging part)”; ¶ 0061, i.e., “The request to acquire the target image 20T includes various items of the accessory information of the examination image 20”), and
the hardware processor controls the display to display the existence information in a case where the imaging part specified in the specifying is associated with the related patient (KANADA: ¶ 0061, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood “examination image 20 matched with…the acquisition request” of KANADA as the “message on the display screen” of Murayama, which is the claimed existence information).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include the processes further comprise specifying an imaging part of the medical image of the first patient, and the hardware processor controls the display to display the existence information in a case where the imaging part specified in the specifying is associated with the related patient, as taught by KANADA, with the system of Murayama, KANADA, and SUZUKI, with the motivation to “provide similar cases suitable for the main reference purpose to the doctor DR and to effectively support the specification of the disease name and the severity by the doctor DR” (KANADA: ¶ 00159).
Regarding (currently amended) claim 11, Murayama, KANADA, and SUZUKI teach the medical image display system according to claim 8, wherein:
the hardware processor controls the display to display the existence information based on the similarity (Murayama: ¶ 0057, i.e., “if an image series from a previously-created study is less than a certain percentage similar (e.g., less than 80% similar, less than 70% similar, etc.), then that image series is not displayed on the screen”).
Regarding (currently amended) claim 12, claim 12 recites substantially similar limitations analogous to those already addressed in claim 1, and thus, claim 12 is similarly analyzed and rejected in a manner consistent with the rejection of claim 1.
Regarding (currently amended) claim 13, claim 13 recites substantially similar limitations analogous to those already addressed in claim 1, and thus, claim 13 is similarly analyzed and rejected in a manner consistent with the rejection of claim 1.
Regarding (original) claim 14, claim 14 recites substantially similar limitations analogous to those already addressed in claim 2, and thus, claim 14 is similarly analyzed and rejected in a manner consistent with the rejection of claim 2.
Regarding (previously presented) claim 15, claim 15 recites substantially similar limitations analogous to those already addressed in claim 3, and thus, claim 15 is similarly analyzed and rejected in a manner consistent with the rejection of claim 3.
Regarding (previously presented) claim 17, claim 17 recites substantially similar limitations analogous to those already addressed in claim 5, and thus, claim 17 is similarly analyzed and rejected in a manner consistent with the rejection of claim 5.
Regarding (currently amended) claim 18, claim 18 recites substantially similar limitations analogous to those already addressed in claim 6, and thus, claim 18 is similarly analyzed and rejected in a manner consistent with the rejection of claim 6.
Regarding (previously presented) claim 19, claim 19 recites substantially similar limitations analogous to those already addressed in claim 7, and thus, claim 19 is similarly analyzed and rejected in a manner consistent with the rejection of claim 7.
Regarding (previously presented) claim 20, Murayama, KANADA, and SUZUKI teach the medical image display apparatus according to claim 1.
Yet, Murayama, KANADA, and SUZUKI do not explicitly teach, but KANADA teaches, in the same field of endeavor, wherein the existence information comprises a button displayed in the GUI and operable by the user to display a list of related patients (KANADA: ¶ 0164, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “first list L1…of the searched similar cases…output from the search unit 67 to the screen output control unit 68” of KANADA as part of the “message on the display screen” of Murayama, which is the claimed existence information; ¶ 0166, i.e., “In a case in which one of the similar cases in the first list L1 is selected, the second list L2 is displayed”).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include wherein the existence information comprises a button displayed in the GUI and operable by the user to display a list of related patients, as taught by KANADA, with the system of Murayama, KANADA, and SUZUKI, with the motivation to “provide similar cases suitable for the main reference purpose to the doctor DR and to effectively support the specification of the disease name and the severity by the doctor DR” (KANADA: ¶ 00159).
Regarding (new) claim 21, Murayama, KANADA, and SUZUKI teach the medical image display apparatus according to claim 1, wherein the hardware processor is further configured to control the display to display an examination list including the related patient and the items of the name identification condition of the related patient (Murayama: figure 6, i.e., list of related patients 602-604 each include identification information in upper lefthand corner; ¶ 0056, i.e., “the viewer…automatically lines up the one or more most similar images from the one or more prior studies on the right side of the image from the current study”; ¶ 0057).
Regarding (new) claim 22, Murayama, KANADA, and SUZUKI teach the medical image display apparatus according to claim 1, wherein the hardware processor is further configured to control the display to display the GUI to further include the medical image of the second patient simultaneously with the medical image of the first patient such that the existence information and the medical image of the first and second patients are simultaneously displayed in the GUI (Murayama: ¶ 0056, i.e., “the viewer layouts the an image from the current study on the left side of a viewer window, and automatically lines up the one or more most similar images from the one or more prior studies on the right side of the image from the current study”; ¶ 0057).
Regarding (new) claim 23, Murayama, KANADA, and SUZUKI teach the medical image display apparatus according to claim 1, wherein the related patient is a patient other than the first patient (SUZUKI: page 12, 6th ¶).
The obviousness of combining the teachings of Murayama, KANADA, and SUZUKI is discussed in the rejection of claim 1, and incorporated herein.
Response to Arguments
Applicant's arguments filed 08/04/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed hereinbelow in the order in which they appear in the response filed 08/04/2026.
In the remarks, Applicant argues in substance that:
Regarding the 101 rejections,
“independent claims 1, 8, 12 and 13 recite additional structural and functional features such that these claims are now even more clearly inextricably linked to computer technology, and the features thereof cannot be interpreted as being "directed to" an abstract idea ("certain methods of organizing human activity"). For example, claims 1, 8, 12 and 13 now involve use of patient databases from a plurality of medical facilities and factor in a similarity value based on items of a name information condition to determine whether any of the patients whose information is in the patient databases may be considered a related patient whose information is retrieved for display and review. These additional elements provide "significantly more" when taken individually or as an ordered combination.”
Regarding the 103 rejections, the cited prior art reference(s) fails to teach the amended claim limitations because “In contrast to the presently claimed invention, Murayama does not perform a search across all patients in a plurality of patient databases (reflected in the presently claimed invention by recitation of "each of the patient databases storing person identifying information on each of a plurality of patients"). Rather, Murayama limits itself to searching only studies associated with the EMR of the patient whose current study is being viewed.”
It is respectfully submitted that Examiner has considered Applicant’s arguments and does not find them persuasive. Examiner has attempted to address all of the arguments presented by Applicant; however, any arguments inadvertently not addressed are not persuasive for at least the following reasons:
In response to Applicant’s argument that (a) regarding the 101 rejections,
“independent claims 1, 8, 12 and 13 recite additional structural and functional features such that these claims are now even more clearly inextricably linked to computer technology, and the features thereof cannot be interpreted as being "directed to" an abstract idea ("certain methods of organizing human activity"). For example, claims 1, 8, 12 and 13 now involve use of patient databases from a plurality of medical facilities and factor in a similarity value based on items of a name information condition to determine whether any of the patients whose information is in the patient databases may be considered a related patient whose information is retrieved for display and review. These additional elements provide "significantly more" when taken individually or as an ordered combination”:
It is respectfully submitted that Applicant argues “additional structural features such that this claim is now even more clearly inextricably linked to computer technology, and such that the features thereof cannot be interpreted as being "directed to" an abstract idea ("certain methods of organizing human activity").” However, the claim limitations to which Applicant seem to refer as “factor in a similarity value based on items of a name information condition to determine whether any of the patients whose information is in the patient databases may be considered a related patient whose information is retrieved for display and review” are interpreted as rules or instructions for a person or persons to follow, with or without the aid of a computer, to search for and provide data of a related patient in the manner described in the identified abstract idea, supra, which covers the sub-grouping of managing personal behavior or relationships or interactions between people in the “Certain Methods of Organizing Human Activity” grouping of abstract ideas, and not interpreted as additional elements to be interpreted in Step 2A, Prong Two or Step 2B. Furthermore, the “patient databases from a plurality of medical facilities” to which Applicant refer is only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., storing, providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), such as mere instructions to implement an abstract idea on a computer, and only generally links the claimed invention to a particular technological environment or field of use, which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Thus, the claims recite an abstract idea and the claim as a whole does not integrate the recited judicial exception into a practical application or amount to significantly more than the judicial exception.
Thus, Examiner maintains the 101 rejections of claims 1-3, 5-6, 8-15, 17-23, which have been updated to address Applicant’s remarks and to comply with the 2019 Revised Patent Subject Matter Eligibility Guidance and the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence in the above Office Action.
In response to Applicant’s argument that (b) regarding the 103 rejections, the cited prior art reference(s) fails to teach the amended claim limitations because “In contrast to the presently claimed invention, Murayama does not perform a search across all patients in a plurality of patient databases (reflected in the presently claimed invention by recitation of "each of the patient databases storing person identifying information on each of a plurality of patients"). Rather, Murayama limits itself to searching only studies associated with the EMR of the patient whose current study is being viewed”:
It is respectfully submitted that Applicant argues “In contrast to the presently claimed invention, Murayama does not perform a search across all patients in a plurality of patient databases (reflected in the presently claimed invention by recitation of "each of the patient databases storing person identifying information on each of a plurality of patients"). Rather, Murayama limits itself to searching only studies associated with the EMR of the patient whose current study is being viewed.” However, it is noted that the features upon which applicant relies (i.e., “perform a search across all patients in a plurality of patient databases”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Regardless, the claim limitations of “each of the patient databases storing person identifying information on each of a plurality of patients” is taught by the combination of Murayama and KANADA, and not just Murayama, as Applicant now seems to argue. Furthermore, Murayama teaches “receive healthcare images from multiple sources including databases spread across multiple facilities and/or multiple locations” (Murayama: ¶ 0037) and does not “[limit] itself to searching only studies associated with the EMR of the patient whose current study is being viewed,” as Applicant now seems to argue.
Examiner has updated passages and citations to the amended claims and applied new passages and citations accordingly, at the present time, as addressed in the above Office Action, and the analogous independent claims and the remaining dependent claims have been taught by the applied/recited passages and citations, as addressed in the above Office Action.
Thus, the cited prior art references teach the aforementioned amended claim limitations.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/EMILY HUYNH/Primary Examiner, Art Unit 3683
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