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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/31/2026 has been entered.
Response to Amendment
Amendment received on 03/02/2026 is acknowledged and entered. Claims 2, 10 and 16 have been canceled. Claims 1, 9 and 15 have been amended. Claims 1, 3-9, 11-15 and 17-20 are currently pending in the application.
Claim rejections under 35 USC 103 have been withdrawn due to the Applicant’s amendment.
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, 3-9, 11-15 and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
In determining whether a claim falls within an excluded category, the Examiner is guided by the Court’s two-part framework, described in Mayo and Alice. Id. at 217-18 (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 75-77 (2012)); Bilski v. Kappos, 561 U.S. 593, 611 (2010); 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019); the October 2019 Update of the 2019 Revised Guidance (Oct. 17, 2019); 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence (July 17, 2024), and the USPTO’s Paten Subject Matter Eligibility Memorandums of August 4, 2025 and December 5, 2025.
Step 1
Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability (i.e., laws of nature, natural phenomena, and abstract ideas). Alice Corp. v. CLS Bank Int'l, 573 U. S. ____ (2014).
For the purposes of examination, the Examiner assumes that the method of claim 1 is performed by a processor. If so, claim 1 is directed to a statutory category, because a series of steps for data processing satisfies the requirements of a process (a series of acts).
The broadest reasonable interpretation of claim 9 encompasses a computer system (e.g., hardware such as a processor and memory) that implements the recited functions. If assuming that the system comprises a device or set of devices, then the system is directed to a machine, which is a statutory category of invention.
Claim 15 is directed to a computer-readable medium. For the purposes of examination, and in view of the Specification [0103], the Examiner assumes that said medium is a non-transitory medium. If so, then said non-transitory medium satisfies the requirements of a product. (Step 1: Yes).
Next, the claim is analyzed to determine whether it is directed to a judicial exception.
Step 2A – Prong 1
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more of data processing. The claim recites:
1. A method for identifying and dynamically displaying concordance between a first medical report and a second medical report, comprising:
extracting a first set of entities from a first medical report, the first medical report presenting first medical information related to a patient;
extracting a second set of entities from a second medical report, the second medical report presenting second medical information related to the patient, the first medical report and the second medical report being of different report types;
determining a first semantic correlation between the first set of entities and the second set of entities;
determining, based on the first semantic correlation, a first concordance level between the first medical information in the first medical report and the second medical information in the second medical report;
providing, based on determining the first concordance level between the first medical information in the first medical report and the second medical information in the second medical report, a display comprising a notification to a user via a user interface, wherein: (i) in accordance with a determination that the first concordance level is below a first threshold level, the notification comprises an indication that the first medical information mismatches with the second medical information; (ii) in accordance with a determination that the first concordance level exceeds the first threshold level and is below a second threshold level, the notification comprises an indication that the first medical information partially matches with the second medical information, the second threshold level being larger than the first threshold level; and (iii) in accordance with a determination that the first concordance level exceeds the second threshold level, the notification comprises an indication that the first medical information matches with the second medical information, and wherein the display comprises at least a portion of a comparison of the first medical information in the first medical report and the second medical information in the second medical report corresponding to the determined first concordance level;
receiving, via the user interface, a selection of the notification; and
dynamically adjusting the provided display, based on the received selection, to provide information corresponding to the comparison of the first medical information in the first medical report and the second medical information in the second medical report.
The recited limitations, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, which may be practically performed in the human mind using observation, evaluation, judgment, and opinion (MPEP 2106.04(a)(2), subsection III) (comparing information from two reports; assessing similarity/correlation of medical findings; deciding whether they match or partially match or mismatch, and determining what to show to a user); mathematical concepts (extracting entities; computing a semantic correlation; mapping said correlation to discrete concordance levels via thresholds); and certain methods of organizing human activity (managing medical information, diagnostic reports, and reconciliation) but for the recitation of generic computer components. That is, other than implying “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind, and/or performed as organized human activity.
Thus, aside from the general technological environment (addressed below), it covers purely mental activity, mathematical concepts and certain methods of organizing human activity processes, and the mere nominal recitation of a generic network appliance (e.g. an interface for inputting or outputting data, or generic network-based storage devices and displays) does not take the claim limitation out of the mental processes and/or certain methods of organizing human activity grouping.
Specifically, the utilizing statistical tools to process data and to output the estimated values - said functions could be performed by a human using mental steps or basic critical thinking, which are types of activities that have been found by the courts to represent abstract ideas (e.g., mental comparison regarding a sample or test subject to a control or target data in Ambry, Myriad CAFC, or the diagnosing an abnormal condition by performing clinical tests and thinking about the results in In re Grams, 888 F.2d 835 (Fed. Cir. 1989) (Grams)). In Grams, the recited functions require obtaining data or patient information (from sensors), and analyze that data to ascertain the existence and identity of an abnormality or estimated responses, and possible causes thereof. While said functions are performed by a computer, they are in essence a mathematical algorithm, in that they represent "[a] procedure for solving a given type of mathematical problem." Gottschalk v. Benson, 409 U.S. 63, 65, 93 S.Ct. 253, 254, 34 L.Ed.2d 273 (1972). Moreover, the Federal Circuit has held, “without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.” Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Further, “analyzing information by steps people go through in their minds, or by mathematical algorithms, without more, [are] essentially mental processes within the abstract-idea category.” Elec. Power, 830 F.3d at 1354; see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1146 (Fed. Cir. 2016). “[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.” Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012).
It is similar to other abstract ideas held to be non-statutory by the courts. For instance, claim 1 is analogous to claims in Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass’n, Nos. 13-1588,-1589, 14-1112, -1687 (Fed. Cir. Dec. 23, 2014), which were generally directed to “the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.” Slip op. at 7. The Court explained that ”[t]he concept of data collection, recognition, and storage is undisputedly well-known,” and noted that “humans have always performed these functions.” Id. The Court then rejected CET’s argument that the claims were patent eligible because they required hardware to perform functions that humans cannot, such as processing and recognizing the stream of bits output by the scanner. Comparing the asserted claims to “the computer-implemented claims in Alice,” the Court concluded that the claims were “drawn to the basic concept of data recognition and storage,” even though they recited a scanner.
As per receiving, storing and outputting data limitations, it has been held that “As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018) (citation omitted); see also In re Jobin, 811 F. App’x 633, 637 (Fed. Cir. 2020) (claims to collecting, organizing, grouping, and storing data using techniques such as conducting a survey or crowdsourcing recited a method of organizing human activity, which is a hallmark of abstract ideas).
All these cases describe the significant aspects of the claimed invention, albeit at another level of abstraction. See Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1240-41 (Fed. Cir. 2016) ("An abstract idea can generally be described at different levels of abstraction. As the Board has done, the claimed abstract idea could be described as generating menus on a computer, or generating a second menu from a first menu and sending the second menu to another location. It could be described in other ways, including, as indicated in the specification, taking orders from restaurant customers on a computer.").
Therefore, if a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” and/or “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. (Step 2A – Prong 1: Yes).
Step 2A – Prong 2
In Prong Two, the Examiner determines whether claim 1, as a whole, recites additional elements that integrate the judicial exception into a practical application of the exception, i.e., whether the additional elements apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is no more than a drafting effort designed to monopolize the judicial exception. See Guidance, 84 Fed. Reg. at 54-55. If the additional elements do not integrate the judicial exception into a practical application, then the claim is directed to the judicial exception. See id., 84 Fed. Reg. at 54. “An additional element [that] reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” is indicative of integrating a judicial exception into a practical application. See Guidance, 84 Fed. Reg. at 55.
The Examiner determined that this judicial exception is not integrated into a practical application, because there are no meaningful limitations that transform the exception into a patent eligible application. In particular, the claim recites additional elements – using a processor to perform the recited steps. However, the processor in each step is recited (or implied) at a high level of generality, i.e., as a generic processor performing a generic computer functions of processing data, including receiving, storing, comparing, and outputting data. This generic processor limitation is no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f). The processor that performs the recited steps merely automates these steps which can be done mentally or manually. Thus, while the additional elements have and execute instructions to perform the abstract idea itself, this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." The claim only manipulates abstract data elements into another form, and does not set forth improvements to another technological field or the functioning of the computer itself and, instead, uses computer elements as tools in a conventional way to improve the functioning of the abstract idea identified above.
Further, 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 a computer or improves any other technology, - their collective functions merely provide conventional computer implementation. None of the additional elements "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
The recited steps do not control or improve operation of a machine (MPEP 2106.05(a)), do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and do not apply the judicial exception with, or by use a particular machine (MPEP 2106.05(b)), but, instead, require receiving, storing, comparing and outputting data.
As per receiving, storing and/or outputting data limitations, these recitations amount to mere data gathering and/or outputting, is insignificant post-solution or extra-solution component and represents nominal recitation of technology. Insignificant "post-solution” or “extra-solution" activity means activity that is not central to the purpose of the method invented by the applicant. However, “(c) Whether its involvement is extra-solution activity or a field-of-use, i.e., the extent to which (or how) the machine or apparatus imposes meaningful limits on the execution of the claimed method steps. Use of a machine or apparatus that contributes only nominally or insignificantly to the execution of the claimed method (e.g., in a data gathering step or in a field-of-use limitation) would weigh against eligibility”. See Bilski, 138 S. Ct. at 3230 (citing Parker v. Flook, 437 U.S. 584, 590, 198 USPQ 193, ___ (1978)). Thus, claim drafting strategies that attempt to circumvent the basic exceptions to § 101 using, for example, highly stylized language, hollow field-of-use limitations, or the recitation of token post-solution activity should not be credited. See Bilski, 130 S. Ct. at 3230.
Therefore, claim 1 as a whole, outputs only data structure, - everything remains in the form of a code stored in the computer memory. 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. Therefore, the claim is directed to an abstract idea. (Step 2A – Prong 2: No).
Step 2B
If a claim has been determined to be directed to a judicial exception under revised Step 2A, examiners should then evaluate the additional elements individually and in combination under Step 2B to determine whether the provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
The Examiner determined that the claim does 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 using a processor to perform the recited steps amount to no more than mere instructions to apply the exception using a generic computer component. The claim is now re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field.
The method would require a processor and memory in order to perform basic computer functions of receiving information, storing the information in a database, retrieving information from the database, comparing data, and outputting said information. These components are not explicitly recited and therefore must be construed at the highest level of generality. Based on the Specification, the invention utilizes existing, conventional sensors, communication networks, and generic processors, which can be found in mobile devices or desktop computers, conventional memory and display devices, and the functions performed by said generic computer elements are basic functions of a computer - performing a mathematical operation, receiving, storing, comparing and outputting data - have recognized by the courts as routine and conventional activity. Specifically, regarding the recited functions, MPEP 2106.05(d)(II) defines said functions as routine and conventional, or as insignificant extra-solution activity:
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));
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”); collecting and comparing known information in Classen 659 F.3d 1057, 100 U.S.P.Q.2d 1492 (Fed. Cir. 2011)
iii. Electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining “shadow accounts”); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
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;
v. Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and
vi. A web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015).
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity:
i. Recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016);
iii. Restricting public access to media by requiring a consumer to view an advertisement, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014);
iv. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93;
v. Determining an estimated outcome and setting a price, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; and
vi. Arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015).
Further, extracting entities from medical reports is basically data gathering or data collection, and is well-understood, conventional activity in medical field; different report types is field of use, limiting the abstract idea to a particular technological environment, does not add “inventiveness” (See: Bilski; Alice; Electric Power Group); semantic correlation and threshold based concordance levels – mental process, and/or mathematical comparison – abstract idea; there is no specific unconventional algorithm or technical improvement to the computer itself; providing notifications on a user interface – conventional display or results, which is generic user interface output of the results of the abstract analysis; receiving selection of the notification, and dynamically adjusting the display – conventional interactive GUI behavior, - routine computer interaction, such as updating displayed information based on user selection. There is no improvement to the functioning of the computer, the user interface architecture, or data processing speed, - is inherent in any GUI; and dynamically adjusting at least a portion of a comparison – result-oriented language; said limitation or the claim as a whole does not describe how the display is adjusted in a technologically inventive way.
Thus, the background of the current application does not provide any indication that the processor is anything other than a generic, off-the-shelf computer component, and the Symantec, TLI, and OIP Techs. court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection or receipt of data over a network is a well‐understood, routine, and conventional function when it is claimed in a merely generic manner (as it is here).
Also, the claim does not involve a non-conventional and non-generic arrangement of known, conventional pieces, as asserted, by receiving information from an external source of data. The receiving of data from an external source over a network, such as via the Internet, can fairly be characterized as insignificant extra-solution activity that does not receive patentable weight. See Bilski, 545 F.3d 943, 963 (Fed. Cir. 2008) (en banc), aff’d sub nom Bilski v. Kappos, 561 U.S. 593 (2010) (characterizing data gathering steps as insignificant extra-solution activity). Similar to Content Extraction, 776 F.3d at 1347; Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 715 (Fed. Cir. 2014): “And we have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” Here, the claims are clearly focused on the combination of those abstract-idea processes. The advance they purport to make is a process of gathering and analyzing information of a specified content, then displaying the results (including highlighting data), and not any particular asserted inventive technology for performing those functions. They are therefore directed to an abstract idea. As such, the additional elements, considered individually and in combination with the other claim elements, do not make the claim as a whole significantly more than the abstract idea itself.
Accordingly, a conclusion that the recited steps are well-understood, routine, conventional activity is supported under Berkheimer Option 2. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept.
Further, similar to Electric Power Group v Alstom S.A. (Fed Cir, 2015-1778, 8/1/2016) (Power Group), claim’ invocation of computers, networks, and displays does not transform the claimed subject matter into patent-eligible applications. Claim 1 does not require any nonconventional computer, network, or display components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for performance of the claimed information collection, analysis, and display functions on a set of generic computer components and display devices. Nothing in the claim, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information. Analogous to Power Group, claim 1 does not even require a new source or type of information, or new techniques for analyzing it. As a result, the claim does not require an arguably inventive set of components or methods, such as measurement devices or techniques that would generate new data. The claim does not invoke any assertedly inventive programming. Merely requiring the selection and manipulation of information - to provide a “humanly comprehensible” amount of information useful for users - by itself does not transform the otherwise-abstract processes of information collection and analysis into patent eligible subject matter. Merely obtaining and selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas. Therefore, the recited steps represent implementing the abstract idea on a generic computer, or “reciting a commonplace business method aimed at processing business information despite being applied on a general purpose computer” Versata, p. 53; Ultramerical, pp. 11-12.
Furthermore, the recited functions do not improve the functioning of computers itself, including of the processor(s) or the network elements. Contrary to Enfish, Core Wireless, DDR Holdings, and/or McRo, the claim does not recite a specific improvement to computer functionality, network efficiency, storage or the user interface itself; there are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. Applicant did not invent a new type of computer; Applicant like everyone else programs their computer to perform functions. The Supreme Court in Alice indicated that an abstract claim might be statutory if it improved another technology or the computer processing itself. Using a (programmed) computer to implement a common business practice does neither. The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, storing, comparing and transmitting data—see the Specification as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these computer functions). 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 a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. “However, it is not apparent how appellant’s programmed digital computer can produce any synergistic result. Instead, the computer will simply do the job it is instructed to do. Where is there any surprising or unexpected result? The unlikelihood of any such result is merely one more reason why patents should not be granted in situations where the only novelty is in the programming of general purpose digital computers”. See Sakraida v. Ag. Pro, Inc., 425 U.S. 273 [ 96 S.Ct. 1532, 47 L.Ed.2d 784], 189 USPQ 449 (1976) and A P Tea Co. V. Supermarket Corp., 340 U.S. 147 [ 71 S.Ct. 127, 95 L.Ed. 162], 87 USPQ 303 (1950).
Furthermore, there is no transformation recited in the claim as understood in view of 35 USC 101. The recited steps merely represent abstract ideas which cannot meet the transformation test because they are not physical objects or substances. Bilski, 545 F.3d at 963. Said steps are nothing more than mere manipulation or reorganization of data, which does not satisfy the transformation prong. It is further noted that the underlying idea of the recited steps could be performed via pen and paper or in a person's mind. Moreover, “We agree with the district court that the claimed process manipulates data to organize it in a logical way such that additional fraud tests may be performed. The mere manipulation or reorganization of data, however, does not satisfy the transformation prong.” and “Abele made clear that the basic character of a process claim drawn to an abstract idea is not changed by claiming only its performance by computers, or by claiming the process embodied in program instructions on a computer readable medium. Thus, merely claiming a software implementation of a purely mental process that could otherwise be performed without the use of a computer does not satisfy the machine prong of the machine-or-transformation test”. CyberSource, 659 F.3d 1057, 100 U.S.P.Q.2d 1492 (Fed. Cir. 2011)
Therefore, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because, when considered separately and in combination, the claim elements do not add significantly more to the exception. Considered separately and as an ordered combination, the claim elements do not provide an improvement to another technology or technical field; do not provide an improvement to the functioning of the computer itself; do not apply the judicial exception by use of a particular machine that is integral to the claim in non-conventional way; do not effect a transformation or reduce a particular article to a different state or thing; and do not add a specific limitation other than what is well-understood, routine and conventional in the operation of a generic computer, and do not provide an unconventional arrangement of known elements that yields a technological solution to a technological problem. None of the hardware recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Id., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
Accordingly, claim 1 is not directed to significantly more than the exception itself, and is not eligible subject matter under § 101. (Step 2B: No).
Further, although the Examiner takes the steps recited in the independent claim as exemplary, the Examiner points out that limitations recited in dependent claims 3-8 further narrow the abstract idea but do not make the claims any less abstract. Dependent claims 3-8 each merely add further details of the abstract steps recited in claim 1 without including an improvement to another technology or technical field, an improvement to the functioning of the computer itself, or meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. These claims "add nothing of practical significance to the underlying idea," and thus do not transform the claimed abstract idea into patentable subject matter. Ultramercial, 772 F.3d at 716. Therefore, dependent claims 3-8 are also directed to non-statutory subject matter.
Because Applicant’s apparatus claims 9, 11-14, and computer-readable storage medium claims 15-20 add nothing of substance to the underlying abstract idea, they too are patent ineligi-ble under §101.
Citations of pertinent art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Xu et. al. - US 10,901,978 B2 – discloses extracting radiological and pathology information/entities; linking data in a time window and performing discrepancy checks; GUI displaying correlations in patient history and tracking misdiagnosis; addressing reports of different types.
Ghosh et al. - US 2019/0147993 A1 – discloses classifying reports; retrieving reports; building models of semantic relationship from extracted parameters; comparing different reports; highlighting differences for visual presentations.
Chandrashekar et al. “Automated Comparison of Pathology Reports for On-the-job Assessment of Residents” PMCID: PMC6568070 PMID: 31259004; 2019; pp. 495-504, - discloses computing lexical and semantic similarity scores between resident and attending pathology report (match – partial match – mismatch); classifying into different categories.
MacAvaney et al. “Ranking Significant Discrepancies in Clinical Reports” arXiv:2001.06674 [cs.IR]; pp. 1-7, discloses quantifying discrepancy between preliminary and final radiology reports; ranking by significance of differences.
Distinguishable Subject Matter
The present claims remain distinguishable from the prior art of record. The prior art of record, while disclosing extracting radiological and pathology information/entities; linking data in a time window and performing discrepancy checks; displaying correlations in patient history and tracking misdiagnosis; addressing and comparing reports of different types; building models of semantic relationship from extracted parameters; computing lexical and semantic similarity scores, and highlighting differences for visual presentations, fails to disclose a specific combination of the recited steps as currently recited in the claims. Thus, the Examiner has not made a prior art rejection under 35 USC §102 or §103.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive.
In response to the argument that the pending claims are not directed to abstract idea, the Examiner maintains that the recited limitations is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, which may be practically performed in the human mind using observation, evaluation, judgment, and opinion (MPEP 2106.04(a)(2), subsection III) (comparing information from two reports; assessing similarity/correlation of medical findings; deciding whether they match or partially match or mismatch, and determining what to show to a user); mathematical concepts (extracting entities; computing a semantic correlation; mapping said correlation to discrete concordance levels via thresholds); and certain methods of organizing human activity (managing medical information, diagnostic reports, and reconciliation) but for the recitation of generic computer components. That is, other than implying “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind, and/or performed as organized human activity.
Thus, aside from the general technological environment (addressed below), it covers purely mental activity, mathematical concepts and certain methods of organizing human activity processes, and the mere nominal recitation of a generic network appliance (e.g. an interface for inputting or outputting data, or generic network-based storage devices and displays) does not take the claim limitation out of the mental processes and/or certain methods of organizing human activity grouping.
Regarding the argument that the recited limitations cannot be possibly performed in the human mind alone, and that the claims as a whole are not directed to the abstract idea, the Examiner respectfully reiterates that the recited steps could all be done mentally by a person analyzing medical reports, assessing correlation between said reports and making notes. Mental processes, e.g., comparing information from two reports; assessing similarity/correlation of medical findings; deciding whether they match or partially match or mismatch, and determining what to show to a user; conducting a semantic correlation, etc., as recited in claim 1, remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. CyberSource Corp. at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalkv. Benson, [409 U.S. 63 (1972)].”). In Content Extraction & Transmission LLC v. Wells Fargo Bank, National Ass’n, Nos. 13-1588,-1589, 14-1112, -1687 (Fed. Cir. Dec. 23, 2014) the Federal Circuit affirmed that such limitations - parsing and extracting data - were generally directed to “the abstract idea of 1) collecting data, 2) recognizing certain data within the collected data set, and 3) storing that recognized data in a memory.” The Court explained that ”[t]he concept of data collection, recognition, and storage is undisputedly well-known,” and noted that “humans have always performed these functions.” Id. The Court then rejected CET’s argument that the claims were patent eligible because they required hardware to perform functions that humans cannot, such as processing and recognizing the stream of bits output by the scanner. Comparing the asserted claims to “the computer-implemented claims in Alice,” the Court concluded that the claims were “drawn to the basic concept of data recognition and storage,” even though they recited a scanner. Id. at 8. Mental processes, e.g., parsing and extracting data, as recited in claim 1, remain unpatentable even when automated to reduce the burden on the user of what once could have been done with pen and paper. CyberSource Corp. at 1375 (“That purely mental processes can be unpatentable, even when performed by a computer, was precisely the holding of the Supreme Court in Gottschalkv. Benson, [409 U.S. 63 (1972)].”).
Even accepting Applicant’s argument regarding the hardware used – a processor - it also is insufficient, without more, to establish patent eligibility that “[t]he human mind is not equipped to execute the claimed method”. Although “a method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible under § 101,” CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1373 (Fed. Cir. 2011), it does not automatically follow that methods requiring physical components, i.e., methods that arguably cannot be performed entirely in the human mind, are, therefore, not directed to abstract ideas. See, e.g., In re TLI Commc'ns LLC Patent Litig., 823 F.3d 607, 611 (Fed. Cir. 2016) (“[N]ot every claim that recites concrete, tangible components escapes the reach of the abstract-idea inquiry.”); FairWarning IP, LLC v. Latric Sys., Inc., 839 F.3d 1089, 1098 (Fed. Cir. 2016) (“[T]he inability for the human mind to perform each claim step does not alone confer patentability.”).
Regarding dynamically displaying argument, - said dynamically adjusting the display limitation is nothing more then conventional interactive GUI behavior, and routine computer interaction, such as updating displayed information based on user selection. Said dynamically displaying feature does not require or demonstrate any improvement to the functioning of the computer, the user interface architecture, or data processing speed; said displaying function is inherent in any GUI. Also, said dynamically adjusting at least a portion of a comparison is result-oriented language; said limitation or the claim as a whole does not describe how the display is adjusted in a technologically inventive way.
Regarding practical application argument, the Examiner maintains that there are no meaningful limitations that transform the exception into a patent eligible application. 2019 Revised Guidance, 84 Fed. Reg. at 55 describes that an additional element may have integrated the judicial exception into a practical application if the additional element (1) reflects an improvement in the functioning of a computer or an improvement to other technology or technical field; (2) applies or uses the judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; (3) implements the judicial exception with, or uses the judicial exception with, a particular machine or manufacture integral to the claim; (4) effects a transformation or reduction of an article to a different state or thing; or (5) applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. /d. In the current case the additional elements - a processor that performs the recited steps is recited (or implied) at a high level of generality, i.e., as a generic processor performing a generic computer functions of processing data, including receiving, storing, comparing, and outputting data. This generic processor limitation is no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f). The processor that performs the recited steps merely automates these steps which can be done mentally or manually. Thus, while the additional elements have and execute instructions to perform the abstract idea itself, this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." The claim only manipulates abstract data elements into another form, and does not set forth improvements to another technological field or the functioning of the computer itself and, instead, uses computer elements as tools in a conventional way to improve the functioning of the abstract idea identified above. And 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 a computer or improves any other technology, - their collective functions merely provide conventional computer implementation. None of the additional elements "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)). The recited steps do not control or improve operation of a machine (MPEP 2106.05(a)), do not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and do not apply the judicial exception with, or by use a particular machine (MPEP 2106.05(b)), but, instead, require receiving, storing, comparing and outputting data.
Regarding McRO argument, - claim 1 does not recite any improvement of a technical field. The claims in McRO aim to automate a 3-D animator’s tasks, specifically, determining when to set keyframes and setting those keyframes, which is accomplished through rules that are applied to the timed transcript to determine the morph weight outputs, wherein said rules configured to produce more realistic speech by ‘taking into consideration the differences in mouth positions for similar phonemes based on context.’” Thus, the basis for the McRO Court’s decision was that the claims were directed to an improvement in computer-related technology (allowing computers to produce ‘accurate and realistic lip synchronization and facial expressions in animated characters’ that previously could only be produced by human animators).” The specification in McRO underlined how the claimed rules enabled the automation of specific animation tasks that previously could not be automated.
Contrary to claims in McRO, claim 1 does not recite any improvement in computer-related technology; there is no improvements in the operation of a computer or a computer network per se, there is no improvements claimed as a set of ‘rules’ (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer.” The claimed steps of extracting first and second data; determining semantic correlation, and determining a concordance level between the data represent a collection of conventional steps performed by a computer - receiving data, manipulating data, and outputting manipulated data on a conventional display. Claim 1 does not require any nonconventional computer, network, or display components, or even a “non-conventional and non-generic arrangement of known, conventional pieces,” but merely call for performance of the claimed steps on a set of generic computer components and display devices. Nothing in the claim, understood in light of the specification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, calculating and presenting the desired information. Said computing elements are recited or implied at a high level of generality and perform the basic functions of a computer, such as performing a mathematical operation and receiving and outputting data, that would be needed to apply the abstract idea via computer. Therefore, claim 1 does not include any recitation that improve computer-related technology by allowing computer performance of a function not previously performable by a computer.”
Regarding Enfish argument, claim 1 of the current application does not provide specific improvements in computer capabilities. In Enfish, Court found that claims are directed to a specific improvement to the way computers operate, - a particular database technique - in how computers could carry out one of their basic functions of storage and retrieval of data. The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. There is no technological improvement described in the current application; the recited steps of extracting first and second data; determining semantic correlation, and determining a concordance level between the data do not improve the functioning of computers itself, including of the processor(s) or the network elements; do not recite physical improvements in the claim, like a faster processor or more efficient memory, and do not provide operational improvement, like mathematical computation that improve the functioning of the computer. The claimed invention merely utilizes conventional computing and network elements for transmitting and storing data. Thus, the current application’ solution to the problem of reducing costs and complexity of comparing medical reports is not technological, but “business solution”, or “entrepreneurial. Accordingly, claim 1 does not provide a specific means or method that improves the relevant technology, but, instead, is directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.
Regarding CardioNet argument, - claim 1 remains ineligible. In CardioNet the claimed method achieves multiple technological improvements by identifying “variability in the beat-to-beat timing . . . as relevant to the at least one of atrial fibrillation and atrial flutter in light of the variability in the beat-to-beat timing caused by ventricular beats identified by the ventricular beat detector”. The claimed device more accurately detects the occurrence of atrial fibrillation and atrial flutter—as distinct from V-TACH and other arrhythmias—and allows for more reliable and immediate treatment of these two medical conditions. Thus, the Court decided that the claims “focus on a specific means or method that improves” cardiac monitoring technology; they are not “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” McRO, 837 F.3d at 1314.
Contrary to CardioNet, the pending claims remain ineligible. The recited steps of comparing information from two reports; assessing similarity/correlation of medical findings; deciding whether they match or partially match or mismatch, determining what to show to a user; extracting entities; computing a semantic correlation; mapping said correlation to discrete concordance levels via thresholds; managing medical information, diagnostic reports, and reconciliation do not improve the functioning of computers itself, including of the processor(s) or the network elements. There are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. Apart from the instructions to implement the abstract idea, the recited steps only serve to perform well-understood functions (e.g., receiving, storing, comparing and transmitting data—see the Specification as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these computer functions). 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 a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
Regarding BASCOM argument, the claims at issue remain ineligible. In BASCOM, the Federal Circuit seemed to focus on the "technical aspects" of the claimed invention and stated that while filtering content on the Internet was already a known concept, the patent describes how its particular arrangement of elements is a technical improvement over prior art ways of filtering such content (e.g., prior art filters were either susceptible to hacking and dependent on local hardware and software, or confined to an inflexible one size-fits-all scheme). “An inventive concept may be found in the non-conventional and non-generic arrangement of the additional elements, i.e., the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user.”
Contrary to BASCOM, claim 1 does not include any recitation directed to the non-conventional and non-generic arrangement of the additional elements. Claim 1 requires only generic computer elements like a processor, a memory and the Internet for receiving, storing and outputting data. These generic computer elements are recited at a high level of generality and perform the basic functions of a computer (in this case, performing a mathematical operation, receiving/transmitting and storing data) that would be needed to apply the abstract idea via a computer. Merely using generic computer components to perform the above identified basic computer functions (transmitting, generating and computing data) to practice or apply the judicial exception does not constitute a meaningful limitation that would amount to significantly more than the judicial exception.
Further, compare to Finjan, claim 1 remains ineligible. In Finjan, the method of claim 1 employs a new way of providing computer security which was not done before by a computer – generating a security profile (a new kind of file) which allows access to be tailored for different users and ensures that threats are identified before the file reaches a user’s computer. The security profile “identifies suspicious code” allows the system to accumulate and utilize newly available, behavior-based information about potential threats without utilizing a conventional “code-matching” techniques which simply look for the presence of known viruses. Therefore, claim 1 in Finjan is
directed to a non-abstract improvement in computer functionality, rather than the abstract idea of computer security based on said “code-matching” techniques.
Contrary to Finjan, claim 1 of the current application does not provide any unique technique of data processing resulting in improving operation of a computer, and utilizes conventional calculation techniques to assess criteria of interest, e.g. a semantic correlation and a concordance level between medical reports. The recited steps do not improve the functioning computers itself, including of the processor(s) or the network elements. There are no physical improvements in the claim, like a faster processor or more efficient memory, and there is no operational improvement, like mathematical computation that improve the functioning of the computer. The Supreme Court in Alice indicated that an abstract claim might be statutory if it improved another technology or the computer processing itself. Using a (programmed) computer to implement a common business practice does neither. The claimed invention merely utilizes conventional computing and network elements for accessing, manipulating and outputting data. Therefore, contrary to Finjan, claim 1 does not provide a unique computational techniques that was not done before by a computer, but, instead, is directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.
Applicant's arguments with respect to prior art rejections have been considered but are moot; the claim rejections under 35 USC 103 have been withdrawn due to the Applicant’s amendment.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Igor Borissov whose telephone number is 571-272-6801. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor Kambiz Abdi can be reached on 571-272-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/IGOR N BORISSOV/Primary Examiner, Art Unit 3685 8/08/2026
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