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 .
Notice to Applicant
This communication is in response to the amendment filed 11/24/2025. Claims 1, 3, 5-13, 15, 17-19 have been amended. Claims 4, 16 have been canceled. Claims 1-3, 5-15, 17-19 have been presented for examination.
Claim Objections
Claim 8 is objected to because of the following informalities:
In claim 8, line(s) 7, “a display” seems to be a grammatical error. Examiner recommends amending it to read -- a display; and --.
Appropriate correction is required.
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, 5-15, 17-19 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 a plurality of medical facilities; and…[provide] a medical image of a first patient from among the plurality of patients; setting a name identification condition for searching the patient database 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 on the display; determining whether or not a second patient whose person identifying information satisfies the name identification condition is recorded in the patient database; 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 the patient database.
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. That is, other than reciting “a hardware processor” (claims 1, 8), “computer” (claim 13), the claim encompasses rules or instructions to search for and provide data of a related patient. 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; a communication interface; a patient database, the patient database storing person identifying information on each of a plurality of patients). Claim 8 recites additional elements (i.e., A medical image display system, comprising: a patient database storing person identifying information on each of a plurality of patients; and a medical image display apparatus comprising: a display; a communication interface; and a hardware processor). Claim 12 recites additional elements (i.e., a display to display; a patient database, the patient database 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 computer of a medical image display apparatus; a display to display; a patient database, the patient database storing person identifying information on each of a plurality of patients). Looking to the specifications, a computer having a display, a communication interface, a hardware processor, a non-transitory computer-readable recording medium storing a program thereon 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 patient database, the patient database 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 computer having a display, a communication interface, a hardware processor, a non-transitory computer-readable recording medium storing a program thereon) 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 patient database, the patient database 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, 5-7, 9-11, 14-15, 17-19 include all the limitations of the parent claims and further elaborate on the abstract idea discussed above and incorporated herein.
Claims 2-3, 5-7, 9-11, 14-15, 17-19 further define the analysis and organization of data for the performance of the abstract idea and do not recite any additional elements. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. 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 (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.
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 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").
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);
a communication interface via which the medical image display apparatus communicates with a patient database, …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 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 a name identification condition for searching the patient database 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 on the display (Murayama: ¶ 0047; ¶ 0057, i.e., “as soon as a user invokes the medical image management system to display an image series from a current study, the medical image management system searches for other studies of the patient, to determine if there are prior studies available for the patient. For example, 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 the patient database (Murayama: ¶ 0057, i.e., “if one or more such previously-created studies are found”); and
controlling the display to display existence information indicating existence of the related patient, in response to a determination in the determining that the second patient is recorded in the patient database (Murayama: ¶ 0057, i.e., “if one or more such previously-created studies are found, the system prompts the user by displaying a message on the display screen that prior studies are available and asks whether the user wishes to use automatically comparison layout generation to automatically generate and display a comparison layout with an image series from the current study and similar image series from one or more prior studies”).
Yet, Murayama does not explicitly teach, but KANADA teaches, in the same field of endeavor,
…the patient database 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).
Regarding (original) claim 2, Murayama and KANADA teach the medical image display apparatus according to claim 1, wherein the related patient is a patient presumed to be the first patient (Murayama: ¶ 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 (currently amended) claim 3, Murayama and KANADA 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 and KANADA teach the medical image display apparatus according to claim 1.
Yet, Murayama and KANADA do not explicitly teach, but KANADA teaches, in the same field of endeavor, wherein the name identification condition includes 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 and KANADA 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 and KANADA teach the medical image display apparatus according to claim 1.
Yet, Murayama and KANADA do not explicitly teach, but KANADA teaches, in the same field of endeavor, wherein the name identification condition includes 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 and KANADA 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 7, Murayama and KANADA teach the medical image display apparatus according to claim 1, wherein the determining comprises determining presence or absence of the related patient based on a degree of similarity to the first patient (Murayama: ¶ 0058, i.e., “the layout generator uses a similarity threshold to determine if a series from a previously-created study is similar enough to be displayed. For example, 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 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 and KANADA teach the medical image display system according to claim 8.
Yet, Murayama and KANADA do not explicitly teach, but KANADA teaches, in the same field of endeavor, wherein:
the processes further comprise specifying 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, 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).
Regarding (currently amended) claim 10, Murayama and KANADA teach the medical image display system according to claim 8, wherein:
the processes further comprise specifying 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, 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).
Regarding (currently amended) claim 11, Murayama and KANADA teach the medical image display system according to claim 8, wherein:
the processes further comprise calculating a similarity between the first patient and the related patient (Murayama: ¶ 0057, i.e., “the layout generator uses a similarity threshold to determine if a series from a previously-created study is similar enough to be displayed”), and
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 (currently amended) 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 (currently amended) 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 (currently amended) 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.
Response to Arguments
Applicant's arguments filed 11/24/2025 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 11/24/2025.
In the remarks, Applicant argues in substance that:
Regarding the 102 and 103 rejections, the cited prior art reference(s) fails to teach the amended claim limitations because “the disclosure of Kanada relates to searching for existence of a specific item of image data based on parameters including patient ID and modality. By contrast, the technique recited in amended independent claim 1 relates to searching for existence of a specific user (e.g., the first user) in a database which includes images of patients acquired from several different medical facilities, based on a specific set name identification condition.”
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 102 and 103 rejections, the cited prior art reference(s) fails to teach the amended claim limitations because “the disclosure of Kanada relates to searching for existence of a specific item of image data based on parameters including patient ID and modality. By contrast, the technique recited in amended independent claim 1 relates to searching for existence of a specific user (e.g., the first user) in a database which includes images of patients acquired from several different medical facilities, based on a specific set name identification condition”:
It is respectfully submitted that Applicant fails to specify how “searching for existence of a specific item of image data based on parameters including patient ID and modality” differs from “searching for existence of a specific user (e.g., the first user) in a database which includes images of patients acquired from several different medical facilities, based on a specific set name identification condition.”
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. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Emily Huynh whose telephone number is (571)272-8317. The examiner can normally be reached on M-Th 8-5 PM.
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/EMILY HUYNH/Primary Examiner, Art Unit 3683