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
Response to Arguments
In the amendment dated 12/01/2025, the following occurred: Claims 1, 2, 7-18 have been amended. Claim 3-6 and 19 were canceled.
Claims 1, 2 and 7-18 are currently pending.
Claim Objections
Claim 1 is objected to for the following informality: “wherein a data structure resulting…. providing a list of studes, the step of providing...wherein a first identifier comprises a first sub-identifier…” should read “wherein a data structure resulting…. providing a list of studies, the step of providing... wherein the first identifier comprises a first sub-identifier…”
Claim 2 is objected to for the following informality: “… a step of generating first identifiers wherein a first identifier…” should read “… a step of generating first identifiers wherein the first identifier…”
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, 2 and 7-18 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.
Claims 1, 2 and 16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites a method and a system for navigating through virtual presentations of a body portion generated in medical images.
Regarding claims 1 and 16, the limitation of (claim 1 being representative) a step of providing a list of studies comprising at least one item that is characteristic for a kind of study; a step of providing a list of presentations comprising at least one item that is characteristic for a kind of presentation; a step of providing a dataset, wherein the dataset comprises a study of a first kind of study comprising first virtual presentations and wherein the dataset comprises a study of a second kind of study comprising second virtual presentations; a step of attributing first identifiers to the first virtual presentations or to a selection thereof and second identifiers to the second virtual presentations or to a selection thereof, wherein a data structure resulting from a use of the first identifiers and the second identifiers is non-hierarchical, wherein a first identifier comprises a first sub-identifier of sub-identifiers of a first kind that represent the items of the list of studies in a unique manner and a second sub-identifier of sub-identifies of a second kind that represent the items of the list of presentations in a unique manner, wherein the first sub-identifier is equal for all first identifiers, wherein the second identifier comprises a third sub-identifier being a sub-identifier of the sub-identifiers of the first kind and a fourth sub-identifier being a sub-identifier of the sub-identifier of the second kind, wherein the third sub-identifier is equal for all second identifiers, wherein the first sub-identifier is different from the third sub-identifier; a step of providing to a user the list of studies or an adapted list of studies and the list of presentations or an adapted list of presentations, comprises an image viewer, a first view for the list of studies or the adapted list of studies, and a second view for the list of presentations or the adapted list of presentations and wherein the presentation displayed in the image viewer belongs to the study and kind of presentation indicated by the item selected in the list displayed in the first view and the item selected in the list displayed in the second view; a step of navigating through at least one of the first virtual presentations having attributed the first identifier and the second virtual presentations having attributed the second identifier by selecting an item of the list shown in the first view and by selecting an item of the list shown in the second view, wherein the step of navigating comprises displaying a virtual presentation, wherein the displayed virtual presentation has the sub-identifier of the sub-identifier of the first kind that represents the item selected in the list of studies provided in the first view and the sub- identifier of the sub-identifier of the second kind that represents the item selected in the list of presentations provided in the second view and regarding the limitation of claim 2- wherein the step of attributing comprises a step of assigning the study of the first kind to its corresponding item of the list of studies and of assigning the study of the second kind to its corresponding item of the list of studies, and a step of assigning the first virtual presentations or the selection thereof to their corresponding items of the at least one item of the list of presentations and of assigning the second virtual presentations or the selection thereof to their corresponding items of the at least one item of the list of presentations as crafted, is a process that, under the broadest reasonable interpretation, covers a method organizing human activity but for the recitation of generic computer components. That is other than reciting a computer in claims 1 and 2 and a memory, a communication unit, a controller in claim 16, the claimed invention amounts to managing personal behavior or interaction between people (i.e., rules or instructions). For example, but for the memory, the communication unit, the controller, the claims encompass methods and systems for navigating through virtual presentations of a body portion generated in medical images in the manner described in the identified abstract idea, supra. The Examiner notes that certain “method[s] of organizing human activity” includes a person’s interaction with a computer (see MPEP 2106.04(a)(2)(II)). If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or interactions between people, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity – Managing Personal Behavior Relationships, Interactions Between People (e.g. social activities, teaching, following rules or instructions)” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. Claims 1 and 2 recites the additional element of a computer. Claim 16 recites the additional element of a memory, a communication unit, a controller. These additional elements are not exclusively defined by the applicant and are recited at a high-level of generality (i.e., a generic server for enabling access to medical information or generic computer components for performing generic computer functions) such that they amounts to no more than mere instructions to apply the exception using a generic computer component. As set forth in MPEP 2106.04(d) “merely including instructions to implement an abstract idea on a computer” is an example of when an abstract idea has not been integrated into a practical application. Accordingly, even in combination, these 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. The claim is directed to an abstract idea.
Claims 1 and 16 further recite the additional element of a user interface. This additional element is recited at a high level of generality (i.e. a general means to output/receive/transmit data) and amount to extra solution activity. Accordingly, even in combination, this additional elements does not integrate the abstract idea into a practical application.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of the computer, memory, communication unit, controller to perform the noted steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept (“significantly more”). Moreover, using generic computer components to perform abstract ideas does not provide a necessary inventive concept. See Alice, 573 U.S. at 223 (“mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention”). Therefore, whether considered alone or in combination, the additional elements do not amount to significantly more than the abstract idea.
Also as discussed above with respect to integration of the abstract idea into a practical application, the additional element of the user interface was considered extra-solution activity This has been re-evaluated under “significantly more” analysis and determined to be well-understood, routine and conventional activity in the field. MPEP 2016.05(d)(II) indicates that receiving and/or transmitting data over a network has been held by the courts to be well-understood, routine and conventional activity (citing Symantec, TLI Communications, OIP Techs., and buySAFE). Well-understood, routine and conventional activity cannot provide an inventive concept (“significantly more”). Therefore when considering the additional elements alone, and in combination, there is no inventive concept in the claim, and thus the claim is not patent eligible.
The examiner notes that: A well-known, general-purpose computer has been determined by the courts to be a well-understood, routine and conventional element (see, e.g., Alice Corp. v. CLS Bank; see also MPEP 2106.05(d)); and Performing repetitive calculations is/are also well-understood, routine and conventional computer functions when they are claimed in a merely generic manner (see, e.g., Parker v. Flook; MPEP 2016.05(d)).
Claims 7-15 and 17-18 are similarly rejected because they either further define/narrow the abstract idea and/or do not further limit the claim to a practical application or provide as inventive concept such that the claims are subject matter eligible even when considered individually or as an ordered combination. Claim(s) 7 further merely describe(s) the list. Claim(s) 8 further merely describe(s) the presentations. Claim(s) 9 further merely describe(s) providing a list of presentations. Claim(s) 10 further merely describe(s) selecting items. Claim(s) 11 further merely describe(s) replacing presentation displays and switching back and forth between displays. Claim(s) 12 further merely describe(s) identifying presentations. Claim(s) 13 further merely describe(s) the list of studies. Claim(s) 14 and 15 further merely describe(s) the virtual presentations. Claim(s) 17 further merely describe(s) navigating through virtual presentations. Claim(s) 18 further merely describe(s) a computer program code. Claim 18 recites the additional elements of a computer program and a computer which are analyzed as above and do not provide practical application or significantly more. Claims 11 and 17 recites the additional elements of a user interface which is analyzed as above and do not provide practical application or significantly more.
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, 2 and 7-15 and 17-18 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.
Claims 1 and 2 recite the limitation of (claim 1 being representative) “list of studies comprising at least one item that is characteristic for a kind of study… list of presentations comprising at least one item that is characteristic for a kind of presentation … and wherein the presentation displayed in the image viewer belongs to the study and kind of presentation indicated by the item selected in the list displayed in the first view and the item selected in the list displayed in the second view… a step of navigating through at least one of the first virtual presentations having attributed a first identifier and the second virtual presentations having attributed a second identifier by selecting an item of the list shown in the first view and by selecting an item of the list shown in the second view…” The claim is indefinite because it is unclear if the item selected in the first view is the same as the item selected in the second view. It is also unclear if each of the item selected in the first view and the item selected in the second view are the same or different than the at least one item in the list of studies or the at least one item in the list of presentation. It is also unclear is the list displayed and the list shown are the list of presentations or the list of studies. The Examiner suggest clarifying which list is being displayed and shown and to use different terminologies to distinguish between the different kind of items.
Claim 1 recites a “computer-implemented method” and claim 2 recites a “computer-executable method” without any recitation in the body of each of the claims describing which step is implemented by a computer or how the computer may be involved. Each of the limitations purely pertain to data manipulation without describing whether a computer may be involved in any particular step or how it may be involved. See, e.g., Ex Parte Langemyr, Appeal No. 2008-1495 at Pg. 20, 2008 Pat App. LEXIS 13 (B.P.A.I. May 28, 2008) (finding that nominal recitation of computer-implementation in the preamble is insufficient to tie the particular steps of the method to the computer). Accordingly, it is unclear where and to what extent the computer-implementation described in the preamble may take place within the body of the claim. The Examiner suggests reciting “wherein each of the following steps are performed by the computer” or similar language.
The term “unique” in claims 1, 2, 6, 13 and 16 is a relative term which renders the claim indefinite. The term “unique” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Dependent claims are rejected by virtue of dependency.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1, 2 and 7-18 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gulaka (US 2015/0199121).
REGARDING CLAIM 1
Gulaka discloses a computer-implemented method for navigating through virtual presentations of a body portion, wherein the virtual presentations being generated in medical studies, the method comprises ([0014] teaches a medical image providing apparatus for providing a medical image or a user interface (UI) screen including the medical image such that a user easily diagnoses a disease of a patient and a medical image processing method of the same): a step of providing a list of studies comprising at least one item that is characteristic for a kind of study ([0398] and FIG. 16 teach a first list 1610 (interpreted by examiner as the list of studies comprising at least one item that is characteristic for a kind of study) may include at least one item indicating a point of time when image data or reconstructed image obtained by applying at least one protocol is obtained. Here, at least one point of time item included in the first list 1610 is related to a medical image of the same patient and the same region); a step of providing a list of presentations comprising at least one item that is characteristic for a kind of presentation ([0400] and FIG. 16 teach a second item 1612 is selected through the UI unit 630, the second item 1612 (interpreted by examiner as the list of presentations comprising at least one item that is characteristic for a kind of presentation) may include a sub-list 1620 including image data or a reconstructed image obtained by applying a predetermined protocol. When the user selects a `T2W` item from the sub-list 1610, the control unit 610 overlays and displays a T2-weighted image on the first region 820); a step of providing a dataset, wherein the dataset comprises a study of a first kind of study comprising first virtual presentations and wherein the dataset comprises a study of a second kind of study comprising second virtual presentations (FIG. 16 in list 1610 teaches a visualized dataset corresponding to different dates (interpreted by examiner as the dataset comprises a study of a first kind of study comprising first virtual presentations and comprises a study of a second kind of study comprising second virtual presentations)); a step of attributing first identifiers to the first virtual presentations or to a selection thereof and second identifiers to the second virtual presentations or to a selection thereof, wherein a data structure resulting from a use of the first identifiers and the second identifiers is non-hierarchical, and wherein the step of providing a list of studies, the step of providing the list of presentations, the step of providing the dataset, and the step of attributing first and second identifiers is performed by a computer, wherein a first identifier comprises a first sub-identifier of sub-identifiers of a first kind that represent the items of the list of studies in a unique manner and a second sub-identifier of sub-identifies of a second kind that represent the items of the list of presentations in a unique manner, wherein the first sub-identifier is equal for all first identifiers, wherein the second identifier comprises a third sub-identifier being a sub-identifier of the sub-identifiers of the first kind and a fourth sub-identifier being a sub-identifier of the sub-identifier of the second kind, wherein the third sub-identifier is equal for all second identifiers, wherein the first sub-identifier is different from the third sub-identifier (FIG. 16 teaches identifiers of visual presentations wherein the combination “December 01, 2013” – “TW1” represents the first identifier which comprises the first sub-identifier “December 01, 2013” and the second sub-identifier “TW1”, analogous labeling is applied for other combinations such as “December 01, 2012” – “TW1” would represent the second identifier (interpreted by examine as means to attribute the first and second identifier, where the identifiers comprise sub-identifiers, wherein a data structure resulting from a use of the first identifiers and the second identifiers is non-hierarchical)); a step of providing to a user via a user interface the list of studies or an adapted list of studies and the list of presentations or an adapted list of presentations, wherein the user interface comprises an image viewer, a first view for the list of studies or the adapted list of studies, and a second view for the list of presentations or the adapted list of presentations, and wherein the presentation displayed in the image viewer belongs to the study and kind of presentation indicated by the item selected in the list displayed in the first view and the item selected in the list displayed in the second view ([0014] teaches a user interface (UI) screen and FIG. 16 teaches lists of studies and presentations (interpreted by examiner as providing via a user interface the lists wherein the user interface comprises an image viewer comprising first view and second view, wherein the presentation displayed in the image viewer belongs to the study and kind of presentation indicated by the item selected in the list displayed in the first view and the item selected in the list displayed in the second view)); a step of navigating through at least one of the first virtual presentations having attributed a first identifier and the second virtual presentations having attributed a second identifier by selecting an item of the list shown in the first view and by selecting an item of the list shown in the second view, wherein the step of navigating comprises displaying a virtual presentation, wherein the displayed virtual presentation has the sub-identifier of the sub-identifier of the first kind that represents the item selected in the list of studies provided in the first view and the sub- identifier of the sub-identifier of the second kind that represents the item selected in the list of presentations provided in the second view ([0400] teaches when the second item 1612 is selected through the UI unit 630, the second item 1612 may include a sub-list 1620 including image data or a reconstructed image obtained by applying a predetermined protocol on 1 Dec. 2013. When the user selects a `T2W` item from the sub-list 1610, the control unit 610 overlays and displays a T2-weighted image on the first region 820 photographed on 1 Dec. 2013. FIG. 16 shows the selection in the two lists changes the display of the resulting image (interpreted by examiner as navigate through the first and second presentation by selecting items of the list shown in the first and second view)).
REGARDING CLAIM 7
Gulaka disclose the limitation of claim 1.
Gulaka further discloses:
The computer-implemented method according to claim 1, wherein the list shown in the first view is an ordered list, and the list shown in the second view is an ordered list (Gulaka at FIG. 16 teaches ordered lists).
REGARDING CLAIM 8
Gulaka disclose the limitation of claim 1.
Gulaka further discloses:
The computer-implemented method according to claim 1, wherein the presentations having attributed a first or second identifier are linked to the items of the list shown in the first view and the items of the list shown in the second view via the attributed identifier (Gulaka at FIG. 16 and [0398] teaches relating items in list to medical images (interpreted by examiner as the linking)).
REGARDING CLAIM 10
Gulaka disclose the limitation of claim 1.
Gulaka further discloses:
The computer-implemented method according to claim 1, wherein the selection of another item of the list shown in the first view than the currently selected item occurs at a fixed item in the list shown in the second view, and the selection of another item of the list shown in the second view than the currently selected item occurs at a fixed item in the list shown in the first view (Gulaka at ).
REGARDING CLAIM 11
Gulaka disclose the limitation of claim 1.
Gulaka further discloses:
The computer-implemented method according to claim 1, wherein the user interface comprises tools allowing the user to at least one of: replace the presentation displayed in the image viewer with a replacement presentation that corresponds to the presentation assigned to the item arranged in the list shown in the second view precedingly or subsequently to the item to which the presentation displayed in the image viewer is assigned; replace the presentation displayed in the image viewer with a replacement presentation that belongs to the study assigned to the item arranged in the list shown in the first view precedingly or subsequently to the item to which the study is assigned to which the presentation displayed in the image viewer belongs; switch back and forth between displaying in the image viewer a first presentation and a second presentation, wherein the first presentation is a presentation assigned to a first item in the list shown in the second view and the second presentation is a presentation assigned to a second item in the list shown in the second view; switch back and forth between displaying in the image viewer a first presentation and a second presentation, wherein the first presentation is a presentation of the study assigned to a first item in the list shown in the first view and the second presentation is a presentation of the study assigned to a second item in the list shown in the first view (Gulaka at [0042] teaches the control unit may control a type of an image displayed in the first region and a type of the first image to be mutually switched and displayed, according to a user request. [0487] also teaches the control unit may switch and display a first region 2910 and a first image 2900, according to a user's request input through the UI unit 630. In detail, an image type of an image displayed in the first region 2910 and an image type of the first image 2900 displayed throughout a screen may be mutually switched (interpreted by examiner as means to replace the presentation displayed in the image viewer with a replacement presentation as requested in the claim and to switch back and forth between displaying in the image viewer a first presentation and a second presentation)).
REGARDING CLAIM 12
Gulaka disclose the limitation of claim 1.
Gulaka further discloses:
The computer-implemented method according to claim 1, wherein the items of the list of presentations are suitable for identifying presentations of different kinds of presentation by the items referring to settings available or used during acquisition of raw data or presentations and/or by the items referring to features available or used during processing of acquired raw data or acquired presentations (Gulaka at [0222] teaches data output from the image processing unit may be referred as raw data or projection data and [0226] teaches imaging condition that include different settings).
REGARDING CLAIM 13
Gulaka disclose the limitation of claim 1.
Gulaka further discloses:
The computer-implemented method according to claim 1, wherein the list of studies comprises unique items only and the list of presentations comprises unique items only (Gulaka at FIG. 16 teaches unique items).
REGARDING CLAIM 14
Gulaka disclose the limitation of claim 1.
Gulaka further discloses:
The computer-implemented method according to claim 1, wherein the virtual presentations having attributed a first or second identifier are coregistered to one another, to one of the virtual presentations, or to a reference presentation (Gulaka at FIG. 16 teaches attributes of first and second identifier co-registered to virtual presentations).
REGARDING CLAIM 15
Gulaka disclose the limitation of claim 1.
Gulaka further discloses:
The computer-implemented method according to claim 14, wherein the virtual presentations having attributed a first or second identifier are coregistered to a reference presentation and wherein an algorithm determines the reference presentation from a set of virtual presentations that comprises all presentations having attributed a first or second identifier (Gulaka at FIG. 16 and [0398]-[0401] teaches obtaining images by applying protocols. the control unit 610 may read information about a photographing point of time and a protocol from the memory 640. Then, the UI unit 630 may output the first list 1610 and the sub-list 1620, as shown in FIG. 16, by using the information read by the control unit 610.).
REGARDING CLAIMS 2, 9, 16-18
Claims 2, 9, 16-18 are analogous to Claims 1, 7, 8 and 10-15 thus Claims 9, 16-18 are similarly analyzed and rejected in a manner consistent with the rejection of Claims 1, 7, 8 and 10-15.
Response to Arguments
Claim Objections
Regarding the specification objection(s), the Applicant has amended claims 1, 7-16 and canceled 3-6 to overcome the basis/bases of objection.
Rejection under 35 U.S.C. § 112(b)
Regarding the indefinite rejection of claims 1-15 and 17-18, the Applicant does not overcome the bases of rejection.
Rejection under 35 U.S.C. § 101
Regarding the rejection of claims 1, 2 and 7-18, the Examiner has considered the Applicant’s arguments, but does not find them persuasive. Applicant argues:
Applicant respectfully disagrees with the conclusion that the claims are directed to a method for organizing human activity. The Examiner indicates that the claims are directed toward "rules or instructions" (page 6 of Office action), however this is not the case. Claim 1 describes a method to navigate through virtual presentations from medical studies, i.e. a method to switch from one medical image to another, in an effective, quick and easy manner. This allows the practitioner to stay focused on the content of the navigated images (and the differences between them) instead of being troubled and distracted by the navigation process i.e. the way how to access the next medical image… As such, the claims are directed toward a method that enables a user to efficiently navigate through, select, and display medical presentations or studies of a patient. This is not something that can be done as a "mental process" or by "organizing human activity". The claims do not define "rules or instructions", but rather permit navigation between related images in a smooth and efficient manner.
Regarding 1, The Examiner respectfully disagrees. The claims recite the steps of providing a list of studies, providing a list of presentations, providing a dataset , attributing first identifiers and second identifiers, providing to a user the list of studies and the list of presentations, navigating through at least one of the first virtual presentations and the second virtual presentations- this is by definition an abstract idea. The Examiner notes that certain “method[s] of organizing human activity” includes a person’s interaction with a computer (see MPEP 2106.04(a)(2)(II)). Therefore, a person can follow a set of rules or instructions to provide a list of studies, provide a list of presentations, provide a dataset , attribute first identifiers and second identifiers, navigating through at least one of the first virtual presentations and the second virtual presentations. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or interactions between people, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity – Managing Personal Behavior Relationships, Interactions Between People (e.g. social activities, teaching, following rules or instructions)” grouping of abstract ideas.
In the case at hand, the claims improve the technical field of virtual presentations of a body portion and for navigating through the virtual presentations. It is believed, from the foregoing discussion, that the present invention improves upon the state of the art, sets forth an improvement in the technology, and that the claims reflect the improvement set forth in the specification. The method described in claim 1 is a technical solution to navigate within a multitude of medical images. It depends on the identifiers and the computer components displaying the medical images and the lists of (sub-)identifiers which can be changed on the display of the computer components. It is therefore not "a method organizing human activity but for the recitation of generic computer components", "managing personal behavior' or "an abstract idea" as alleged in the Office action. Claims 1 and 2 are indeed tied to a particular technological environment: the computer components are needed in order to provide the display as described, and also to provide a data storage for the medical images in specific combination with the identifiers attributed to them, which allows to change from one medical image to another in the described way. Without computer components, for example by using physical medical images sorted in boxes, the non-hierarchical access to the medical images by using the identifiers is not possible in the described way.
Regarding 2, The Examiner respectfully disagrees. The additional elements of a computer, a memory, a communication unit, a controller are recited at a high-level of generality (i.e., a generic server for enabling access to medical information or generic computer components for performing generic computer functions) such that they amounts to no more than mere instructions to apply the exception using a generic computer component. As set forth in MPEP 2106.04(d) “merely including instructions to implement an abstract idea on a computer” is an example of when an abstract idea has not been integrated into a practical application. Moreover, these additional elements cannot provide a technical improvement. The claim uses generic computer components to provide/display/process information. The specification states improving the efficiency of the selection, display and navigation and ease to compare presentations - which are all improvements to the abstract idea. There is no improvement to the functioning of a computer nor to a technical field.
The user interface provided by the computer components is not just displaying a medical image, but rather is part of the navigation method due to the control elements (lists of identifiers) and the provision of the medical image linked with the identifier chosen via the control elements (lists of identifiers). It is therefore needed for the method described in the claims, which indeed is a practical application as it allows the practitioner to make efficient use of the medical images. All in all this is "a significantly more" and not just "routine and conventional activity". Therefore, the claims of the present application are considered to be directed to a practical application, and therefore satisfy the requirement for patent eligibility under Step 2A, Prong Two.
Regarding 3, The Examiner respectfully disagrees. The claims use a generic user interface that is recited at a high level of generality (i.e. a general means to output/receive/transmit data) and amount to extra solution activity. Accordingly, even in combination, this additional elements does not integrate the abstract idea into a practical application. MPEP 2106.04(d)(I) indicates that extra-solution data gathering activity cannot provide a practical application.
Continuing to Step 2B, the Office Action alleges that the additional limitations of the claims are well-understood, routine, and conventional function when it is claimed in a merely generic manner. Applicant respectfully disagrees. As noted below, none of the cited references teach or suggest the methods set forth in the claims.
Regarding 4, The Examiner respectfully disagrees. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional element of the computer, memory, communication unit, controller to perform the noted steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept (“significantly more”). Moreover, using generic computer components to perform abstract ideas does not provide a necessary inventive concept. See Alice, 573 U.S. at 223 (“mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention”). The additional element of the user interface was considered extra-solution activity. MPEP 2016.05(d)(II) indicates that receiving and/or transmitting data over a network has been held by the courts to be well-understood, routine and conventional activity (citing Symantec, TLI Communications, OIP Techs., and buySAFE). Well-understood, routine and conventional activity cannot provide an inventive concept (“significantly more”). Therefore when considering the additional elements alone, and in combination, there is no inventive concept in the claim, and thus the claim is not patent eligible.
Rejection under 35 U.S.C. § 102
Regarding the rejection of claims 1, 2 and 7-18, the Examiner has considered the Applicant’s arguments, but does not find them persuasive. Applicant argues:
For at least the foregoing reasons, it is respectfully submitted that the present invention as defined in the amended claims is allowable over the art of record, and notice to that effect is hereby requested.
Regarding 1, The Examiner respectfully disagrees and notes that claims as amended are broad and display information. Given the broadest reasonable interpretation, the cited reference teaches the claimed feature.
Conclusion
Applicant’s amendment necessitated the new grounds of rejection presented in this Office action. 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 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.
The prior art made of record though not relied upon in the present basis of rejection are noted in the attached PTO 892 and include:
Wegenkittl (US 2008/0117230) teaches hanging protocol display system and method.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LIZA TONY KANAAN whose telephone number is (571)272-4664. The examiner can normally be reached on Mon-Thu 9:00am-6:00pm ET.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Robert Morgan can be reached on 571-272-6773. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from the Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docs for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/LIZA TONY KANAAN/Examiner, Art Unit 3683
/ROBERT W MORGAN/Supervisory Patent Examiner, Art Unit 3683