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 .
DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 05/25/2026 has been entered.
Status of the Application
Claims 1-4 and 6-9 are currently pending in this case and have been examined and addressed below. This communication is a Non-Final Rejection in response to the Amendments to the Claims and Remarks filed on 05/25/2026.
Claims 1 and 6 are currently amended.
Claims 5 and 10 remain canceled and not considered at this time.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-4 and 6-9 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites a flash memory which performs the functions of setting a plurality of disease types, setting a time interval, obtaining at least one second disease in the time interval from the medical history, performing a pre-processing operation, inputting the processed data to a neural network, encoding the second disease, weighting each of the at least one second disease, and respectively converting the weighted second disease into at least one piece of word frequency information. The specification describes the flash memory as a storage circuit which is part of the electronic device (Specification [0012]). It is unclear how a flash memory (storage circuit) can perform all of the above claimed functions. The electronic device is described in the specification to include a processor as well as a flash memory, however, the processor is not recited in the claims and is not recited as performing the functions of the claim. Because the functions of the claim are recited as being performed by the flash memory, it is unclear how a memory itself can perform these functions.
Claim 6 recites an input circuit and a flash memory. The flash memory is recited as performing the functions of setting a plurality of disease types, setting a time interval, obtaining a second disease in the time interval, performing a pre-processing operation on the second disease, inputting the processed data to a neural network, encoding the second disease in a disease sequence, weighting each of the second disease, and converting the weighted second disease into a piece of word frequency information. The specification describes the flash memory as a storage circuit which is part of the electronic device (Specification [0012]). It is unclear how a flash memory (storage circuit) can perform all of the above claimed functions. The electronic device is described in the specification to include a processor as well as a flash memory, however, the processor is not recited in the claims and is not recited as performing the functions of the claim. Because the functions of the claim are recited as being performed by the flash memory, it is unclear how a memory itself can perform these functions.
Examiner suggests that Applicant recite the processor in the claims in a manner in which it can execute the functions of the claims or cause the memory to execute the functions of the claims.
As per Claims 2-4 and 7-9, the claims depend on Claims 1 and 6 and do not remedy the indefiniteness issues of Claims 1 and 6. As dependent claims inherit the deficiencies of the claims they depend on, they are also rejected.
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 1-4 and 6-9 are rejected because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1-4 fall within the statutory category of a process. Claims 6-9 fall within the statutory category of an apparatus or system.
Step 2A, Prong One
As per Claims 1 and 6, the limitations of setting a plurality of disease types according to a target disease, wherein the target disease is dementia, screening in a plurality of predetermined disease types to select the plurality of disease types corresponding to an appropriate number of diseases that are highly related in a medical field of the dementia, wherein the plurality of disease types are selected from a disease classification of CCS single level diagnoses comprising 285 types of diseases and the plurality of disease types are set corresponding to 258 types of diseases; setting a time interval, wherein the user does not suffer from the target disease, wherein the time interval is between a third time point and a fourth time point, the third time point is Z years ago before a time point, wherein the time point is when the medical history data is obtained, the fourth time point is X years ago before the third time point, and Z and X are positive numbers, wherein Z is set to 5 and X is set to 1, wherein the time interval is defined to avoid an observation starting point that is excessively early such that the user suffering from the target disease not showing a physical difference yet, and to avoid the observation starting point that is excessively late such that the effect of target disease prevention is not achieved; performing a pre-processing operation on the at least one second disease according to the disease types to obtain processed data; determining whether the subject will be diagnosed with the target disease; wherein the step of performing the pre-processing operation on the at least one second disease according to the disease types to obtain the processed data comprises: encoding the at least one second disease in a disease sequence as one-dimensional or two-dimensional encoded data according to the disease types and using the encoded data as processed data, wherein a length of the encoded data is set by a sentence embedding method to generate a vector as a format of the encoded data, wherein the encoded data retains a sequence relationship between the at least one second disease; weighting each of the at least one second disease; and respectively converting the weighted at least one second disease into at least one piece of word frequency information and treating the word frequency information as the processed data, wherein the second disease is weighted based on one of below: whether the at least one second disease has been diagnosed, wherein in response to the at least one second disease is diagnosed, a weight of the at least one second disease is set to 1, the weight of the at least one second disease is set to a number of visits for the at least one second disease, other medical history information including individual disease dosages, surgery information, symbolic chronic disease and other treatments, the weight of the at least one second disease is set to a number of disease dosages, a disease importance sorted through a machine learning method, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. The steps of setting disease types according to a target disease, setting a time interval where the user does not suffer from the target disease, performing a pre-processing operation on the second disease according to the disease types to obtain processed data which comprises encoding the second disease in a disease sequence as a one or two-dimensional encoded data and using the encoded data as processed data, weighting each second disease and converting the weighted second disease into a piece of word frequency information and treating the word frequency information as the processed data, are concepts performed including observation, evaluation, judgement and opinion in the human mind. The claim describes the encoded data to be in the format of a vector which retains a sequence relationship between the at least one second disease. The encoding in a disease sequence as a vector is not described in a manner beyond that which can be performed using human mental observation, evaluation, judgment, or opinion, because a human can mentally create vectors of data in a particular sequence. If a claim limitation, under its broadest reasonable interpretation, covers the performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. The pre-processing operation which comprises weighting a disease and converting the weighted disease into word frequency information by using a TF-IDF algorithm and treating the word frequency information as the processed data encompasses mathematical concepts such as weighting and converting. The converting is performed using a specific mathematical calculation (TF-IDF algorithm)and therefore encompasses mathematical concepts. As per the October 2019 Update on Subject Matter Eligibility, a claim can recite more than one judicial exception and claims which recite a series of steps that recite mental steps which are also mathematical calculations are identified as both. Accordingly, the claims recite an abstract idea.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application because the additional elements and combination of additional elements do not impose meaningful limits on the judicial exception. In particular, the claims (claim 6) recite the additional element – an electronic device comprising an input circuit and a flash memory. The electronic device in these steps is 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 claims also recite inputting the processed data to a neural network for the intended use of training the neural network. The step of inputting data into a neural network invokes the computer as a tool to perform in its ordinary capacity for tasks such as transmitting data which amounts to mere instructions to apply the exception, as per MPEP 2106.05(f). The claims also recite the use of the trained neural network to carry out the concepts of the abstract idea which provides nothing more than mere instructions to implement an abstract idea on a generic computer. See MPEP 2106.05(f). The step of determining whether the subject will be diagnosed with the target disease wherein a prediction effect of the trained neural network is enhanced by training with the processed data is performed “by the trained neural network”. The trained neural network is used to generally apply the abstract idea without placing any limits on how the trained neural network functions. Rather these limitations only recite the outcome of the abstract idea and do not include any details of how the determining is accomplished. The recitation of “by the trained neural network” also merely indicates a field of use or technological environment in which the abstract idea is performed. This type of limitations merely confines the use of the abstract idea to a particular technological environment (neural networks) and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h). The claims also recites the additional elements of obtaining medical history data comprising at least one first disease suffered by a user, obtaining a second disease in the time interval from the medical history data, and receiving the medical history data of a subject which amounts to insignificant extra-solution activity, as in MPEP 2106.05(g), because the steps of obtaining medical history data and a second disease from the medical history data and receiving medical history data are mere data gathering in conjunction with the abstract idea where the limitation amounts to necessary data gathering and outputting, (i.e., all uses of the recited judicial exception require such data gathering or data output). See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering). Because the additional elements do not impose meaningful limitations on the judicial exception, the claim is directed to an abstract idea. Including that the second disease is weighted based on one of the 5 different types of weighting is descriptive of the analysis but does not provide a specific step and is therefore does not provide any functional element to the claim.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. As discussed above with the respect to integration of the abstract idea into a practical application, the additional element of an electronic device comprising an input circuit and flash memory to perform the method of the invention amounts to no more than mere instructions to apply the exception using a generic computing component. The system including the "electronic device” are recited at a high level of generality and are recited as generic computer components by reciting an input interface or circuit ([0010]) and a storage circuit which is embodied as a flash memory ([0012]), which do not add meaningful limitations to the abstract idea beyond mere instructions to apply an exception. The steps of inputting the processed data to a neural network for the intended use of training the neural network and use of the trained neural network to carry out the concepts of the abstract idea are also found to be mere instructions to apply the exception. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims also include the additional elements of obtaining medical history data comprising at least one first disease suffered by a user, obtaining a second disease in the time interval from the medical history data, and receiving the medical history data which are elements that are well-understood, routine and conventional computer functions in the field of data management because they are claimed at a high level of generality and include receiving or transmitting data as well as storing and retrieving information from memory, which have been found to be well-understood, routine and conventional computer functions by the Court (MPEP 2106.05(d)(II)(i) Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added) and (iv) Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves another technology. The claims do not amount to significantly more than the underlying abstract idea.
Dependent Claims 2-4 and 7-9 add further limitations which are also directed to an abstract idea. For example, Claims 2 and 7 further specify or limit the elements of the independent claims, and hence are nonetheless directed towards fundamentally the same abstract idea as independent Claims 1 and 6.
Claims 3 and 8 include obtaining a disease sequence formed by the second disease from the first disease according to an earliest occurrence time of each of the first disease, wherein the at least one second disease in the disease sequence is sorted according to the earliest occurrence time, a number of the second disease is less than or equal to a predetermined number, and each second disease only occurs once which merely further specifies details of the obtaining data step of the independent claims and thus is directed to mere data gathering which is insignificant extra-solution activity which is found to be well-understood, routine, and convention for that same reasons as the independent claims.
Claims 4 and 9 include deleting the third disease in the medical history data to obtain a disease sequence formed by the at least one second disease, wherein an occurrence time of the third disease is earlier than an occurrence time of the second disease, the second disease in the disease sequence is sorted according to an earliest occurrence time, and a number of the at least one second disease is less than or equal to a predetermined number which amounts to a mental process. The sorting of diseases in the sequence can be performed by using human mental observation, evaluation, judgment, and opinion and is therefore directed to an abstract idea.
Response to Arguments
Applicant’s arguments, see Pages 9-11, “Discussion of Claim Rejections under 35 U.S.C. 101”, filed 05/25/2026 with respect to claims 1-4, and 6-9 have been fully considered but they are not persuasive.
Applicant argues that the claims integrate the abstract idea into a practical application because they include technical details. Examiner respectfully disagrees that adding details to steps of the claim result in integration into a practical application. The claim includes details about setting a plurality of disease types including performing screening in a plurality of predetermined disease types to select the plurality of disease types corresponding to an appropriate number of diseases that are highly related in the field of dementia, wherein the plurality of disease types are selected from a disease classification of CCS single level diagnoses comprising 285 types of disease and the plurality of disease types are set corresponding to 258 types of diseases. This detail describes setting a plurality of disease types by screening to select the disease types. This step is part of the abstract idea and the additional details merely further limit or describe the abstract idea itself. Therefore, even though it is recited in a specific manner, it is still part of the abstract idea and does not integrate the abstract idea into a practical application.
Applicant also argues that the step addressed above is not a mental process because screening 285 disease classifications to identify 258 clinically relevant types for dementia prediction cannot practically be performed in the human mind. Examiner respectfully disagrees. The number of disease classifications that needs to be screened may take more time to perform mentally than it takes to perform using a processor or the electronic device of the claims, but the time which is saved by using the electronic device amounts to mere instructions to apply the exception. The actual analysis or decision making process which is used to perform the screening is the same whether it is performed using human mental processing or by use of the electronic device and therefore, this limitation is still directed to the abstract idea. Applicant cites paragraph [0016] of the specification which describes the advantages to the number of disease types to increase prediction accuracy. This does not provide a technical improvement, but rather an explanation for the parameters of the analysis which is occurring. This merely is descriptive of the benefits achieved by the abstract idea itself and not a technical improvement to a technical problem. Therefore, this does not integrate the abstract idea into a practical application.
Applicant argues that providing the values for the time intervals provides a concrete technical solution to the problem of identifying the optimal observation window for capturing precursor disease information. Examiner respectfully disagrees that this provides a technical improvement. The problem expressed by the Applicant, identifying the optimal observation window for capturing precursor disease information, is not a technical problem, but rather is a business related problem. The solution to this problem of setting the time interval is a not a technical solution but rather is an analysis that is directed to the abstract idea itself. The improvements realized by setting the time interval are improvements to the abstract idea itself. Therefore, this does not integrate the abstract idea into a practical application.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Evangeline Barr whose telephone number is (571)272-0369. The examiner can normally be reached Monday to Friday 8:00 am to 4:00 pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Fonya Long can be reached at 571-270-5096. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EVANGELINE BARR/Primary Examiner, Art Unit 3682
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