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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 22, 2026 has been entered.
Status of Claims
In the response filed May 22, 2026, Applicant amended claims 1 and 13, and added claims 17-19. Claims 1-19 are pending in the current application
Response to Arguments
Applicant’s arguments with respect to the rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive. Examiner thanks Applicant for filing the declaration of the inventor in support of patentability. The declaration has been considered. First, Applicant asserts that the withdrawal of the rejection under 35 U.S.C. 103 demonstrates the claims are non-conventional. Applicant respectfully disagrees. Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter (see MPEP 2106.05(I)). In this case, the prior art rejection was overcome because the claim elements were not found in the art. However, finding an inventive concept within the claims requires evaluating improvements to the functioning of a computer or any other technology or technical field. As shown below, the claims do not improve the functioning of a computer. Examiner notes the Part III discussing the amended claims and technical improvements will be discussed under Step 2A, Prong Two below. Second, Applicant asserts that the session token system with policy identifiers does not constitute a mental process because they represent specific data structures, real-time synchronization of token cannot be performed through mental steps alone and multi-stakeholder verification workflows require computer-implemented processes. Examiner respectfully disagrees. Claims can recite a mental process even if they are claimed as being performed on a computer. The specification should be review to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer (MPEP 2104(a)(2)(III)(C)). In this case, the steps encompass a user receiving a scheduling request for a patient appointment, receiving confirmation of the appointment from the provider, verifying and updating provider information, and receiving a request to provide patient medical history using a generic computer. Third, Applicant asserts that the payment processing is not conventional, but a specific technological implementation. Examiner respectfully disagrees. The integration of payment information access with appointment scheduling, provider verification, and medical records access is conventional payment processing using generic payment processing systems. Third, Applicant asserts that claims solve a specific technical problem in Healthcare interoperability under Prong Two. Examiner respectfully disagrees. The specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. 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. 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 (MPEP 2106.04(d)(1)). In this case, Paragraph [0015] of Applicant’s specification discloses, “The present invention overcomes these inadequacies and improves the sharing, maintaining, updating, and restricting data between healthcare stakeholders.” The specification describes conventional data-gathering activities (MPEP 2106.05(e)). Therefore, the claim does not integrate the judicial exception into a practical application. Last, Applicant asserts that the claims are significantly more than the abstract idea under step 2B. Examiner respectfully disagrees. As stated under Prong Two, the specification describes conventional data-gathering activities, thus, the claims do not represent an unconventional implementation of computer technology that goes beyond routine data processing functions. Regarding remarks about Enfish, Alice, and healthcare-specific technical requirements, see response above about technical improvements. The rejection is maintained.
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 1-19 are rejected under 35 U.S.C. 101 because the claims are not directed to patent eligible subject matter.
Claims 1-19 do fall within at least one of the four categories of patent eligible subject matter because the claims recite a process (i.e., a method).
Although claims 1-19 fall under at least one of the four statutory categories, it should be determined whether the claim wholly embraces a judicially recognized exception, which includes laws of nature, physical phenomena, and abstract ideas, or is it a particular practical application of a judicial exception (See MPEP 2106 I and II).
Claims 1-19 are directed to a judicial exception (i.e., a law of nature, natural phenomenon, or abstract idea) without significantly more.
Part I: Step 2A, Prong One: Identify the Abstract Idea
Under step 2A, Prong One of the Alice framework, the claims are analyzed to determine if the claims are directed to a judicial exception. MPEP §2106.04(a). The determination consists of a) identifying the specific limitations in the claim that recite an abstract idea; and b) determining whether the identified limitations fall within at least one of the three subject matter groupings of abstract ideas (i.e., mathematical concepts, mental processes, and certain methods of organizing human activity).
The identified limitations of independent claim 1 recite:
one or more servers in secure communication with a patient by way of a patient’s computer, a provider’s computer, a payor’s computer, or any combination thereof, the one or more servers having:
a first instruction embodied in a non-transitory computer readable medium to receive a request for scheduling an appointment from a patient, the request containing an appointment request session token, and a received appointment request value, wherein the appointment request session token includes a policy identifier logically related to the patient, a policy identifier logically related to the provider;
a second instruction embodied in a non-transitory computer readable medium to receive a confirmation of an appointment from a provider, the request containing an appointment confirmation session token, and a confirmed appointment value, wherein the appointment confirmation session token includes a policy identifier logically related to the patient, a policy identifier logically related to the provider;
a third instruction embodied in a non-transitory computer readable medium to verify provider information by searching web and other resources for provider information from multiple sources, identifying incongruencies in the provider information from the multiple sources, and returning a list of identified incongruencies to at least one of the payor or a partner;
a fourth instruction embodied in a non-transitory computer readable medium to update the provider information;
a fifth instruction embodied in a non-transitory computer readable medium to receive a request for providing patient medical history from a provider, the request containing a medical history session token, and a received medical history value, wherein the medical history session token includes a policy identifier logically related to the patient, a policy identifier logically related to the provider, a policy identifier logically related to a medical records company;
a sixth instruction embodied in a non-transitory computer readable medium to receive a request for providing patient payment information from a provider, the request containing a payment information session token, and a received payment information value, wherein the payment information session token includes a policy identifier logically related to the patient, a policy identifier logically related to the provider, a policy identifier logically related to the payor; and
wherein the medical history session token is obtained through single sign- on authentication between the patient and a medical records company, and wherein the payment information session token is obtained through single sign-on authentication between the patient and the payor
The identified limitations of a first, second, third, fourth, and fifth instruction, using their broadest reasonable interpretation, cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting servers, computers, and non-transitory computer readable medium, nothing in the claim elements precludes the steps from being performed practically in the mind. For example, the steps encompass a user receiving a scheduling request for a patient appointment, receiving confirmation of the appointment from the provider, verifying and updating provider information, and receiving a request to provide patient medical history (e.g. over the phone). The limitations cover observation, evaluation, judgement and opinion and fall within the Mental Processes groupings of abstract ideas. The identified limitation of a sixth instruction, using its broadest reasonable interpretation, covers fundamental economic principles including processing of payments (see MPEP 2106.04(a)(2)(II)(A)). The limitation falls within the Certain Methods Of Organizing Human Activity groupings of abstract ideas. Thus, the claimed invention recites a judicial exception.
Part I: Step 2A, prong two: additional elements that integrate the judicial exception into a practical application
Under step 2A, Prong Two of the Alice framework, the claims are analyzed to determine whether the claims recite additional elements that integrate the judicial exception into a practical application. In particular, the claims are evaluated to determine if there are additional elements or a combination of elements that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claims are more than a drafting effort designed to monopolize the judicial exception.
As a whole, the additional elements recite storing data into memory. The servers, computers, and non-transitory computer readable medium in the steps are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Dependent claims 2-12 and 14-19, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea. For example, claims 2, 4, 8-10, 14, 16, and 19 are directed to payment processing (certain methods of organizing human activity) and dependent claims 3, 5-7,11, 12, 15, 17, and 18 are directed to verifying and updating provider information (mental processes).
Since these claims are directed to an abstract idea, the Office must determine whether the remaining limitations “do significantly more” than describe the abstract idea.
Part II. Determine whether any Element, or Combination, Amounts to“Significantly More” than the Abstract Idea itself
Under Part II, the steps of the claims, when considered individually and as an ordered combination, do not improve another technology or technical field, do not improve the functioning of the computer itself, and are not enough to qualify as "significantly more". For example, the steps require no more than a conventional computer to perform generic computer functions. The servers, computers, and non-transitory computer readable medium in the steps are recited at a high-level of generality such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Therefore, based on the two-part Mayo analysis, there are no meaningful limitations in the claim that transform the exception into a patent eligible application such that the claim amounts to significantly more than the exception itself. Claims 1-19, when considered individually and as an ordered combination, are rejected as ineligible subject matter under 35 U.S.C. 101.
Dependent claims 2-12 and 14-19 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional claims do no recite significantly more than an abstract idea.
Conclusion
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/CHINYERE MPAMUGO/Primary Examiner, Art Unit 3685
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