DETAILED ACTION
Response to Amendment
This action is in response to the amendment filed on June 12, 2026. Claim 1 is amended. Claims 21-32 have been added. Claims 9-20 have been cancelled. Claims 1-8 and 21-32 have been examined and are currently pending.
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 .
Inventorship
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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 1-8 and 21-32 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
ALICE/ MAYO: TWO-PART ANALYSIS
2A. First, a determination whether the claim is directed to a judicial exception (i.e., abstract idea).
Prong 1: A determination whether the claim recites a judicial exception (i.e., abstract idea).
Groupings of abstract ideas enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Mathematical concepts- mathematical relationships, mathematical formulas or equations, mathematical calculations.
Certain methods of organizing human activity- fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).
Mental processes- concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Prong 2: A determination whether the judicial exception (i.e., abstract idea) is integrated into a practical application.
Considerations indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using 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
Considerations that are not indicative of integration into a practical application enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or 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.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
2B. Second, a determination whether the claim provides an inventive concept (i.e., Whether the claim(s) include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
Considerations indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Improvement to the functioning of a computer, or an improvement to any other technology or technical field
Applying the judicial exception with, or by use of a particular machine.
Effecting a transformation or reduction of a particular article to a different state or thing
Applying or using 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 NOTE: The only consideration that does not overlap with the considerations indicative of integration into a practical application associated with step 2A: Prong 2.
Considerations that are not indicative of an inventive concept (aka “significantly more”) enumerated in the 2019 Revised Patent Subject Matter Eligibility Guidance.
Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or 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.
Generally linking the use of the judicial exception to a particular technological environment or field of use.
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. NOTE: The only consideration that does not overlap with the considerations that are not indicative of integration into a practical application associated with step 2A: Prong 2.
See also, 2019 Revised Patent Subject Matter Eligibility Guidance; Federal Register; Vol. 84, No. 4; Monday, January 7, 2019
Claims 1-8 and 21-32 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.
1: Statutory Category
Applicant’s claimed invention, as described in independent claim 1 is directed to a nontransitory computer readable medium and independent 21 is directed to a method.
2(A): The claim(s) are directed to a judicial exception (i.e., an abstract idea).
PRONG 1: The claim(s) recite a judicial exception (i.e., an abstract idea).
Certain Methods of Organizing Human Activity
Independent claim 1 recites the limitations, “receive a query for Cross-Enterprise Document Sharing (XDS) content in a first document repository; search the first document repository for the XDS content based on the query; intercept XDS content results based on metadata of the XDS content satisfying the query before being provided in response to the query; and morph at least one attribute associated with the XDS content results in transit before providing the XDS content results to a graphical user interface or a second document repository.” are directed to the abstract idea of certain methods of organizing human activity. In particular the limitations, “intercept XDS content results based on metadata of the XDS content satisfying the query before being provided in response to the query; and morph at least one attribute associated with the XDS content results in transit before providing the XDS content results to a graphical user interface or a second document repository.” are interpreted/directed to as filtering content. Independent claim 21 recites the limitations, “receiving a query for metadata of at least one of a first document repository or a second document repository; searching the at least one of the first document repository or the second document repository based on the query to obtain XDS content results with the metadata satisfying the query; intercepting the XDS content results before being provided to the second document repository in response to the query; and morphing at least one attribute of the metadata of XDS content in transit before providing the XDS content results to a graphical user interface or the second document repository.” are interpreted/directed to as filtering content. The “intercept” and “morph” steps can be filtering the data and identifying an attribute such as a patient ID and adjusting it to fit a certain format such as adding or removing zeroes to a patient ID number. As per MPEP 2106.04(a)(2)(II)(C), the function of “filtering content” is directed to the abstract idea of managing personal behavior under the abstract idea of certain methods of organizing human activity.
PRONG 2: The judicial exception (i.e., an abstract idea) is not integrated into a practical application.
The applicant has not shown or demonstrated any of the requirements described above under "integration into a practical application" under step 2A. Specifically, the applicant's limitations are not "integrated into a practical application" because they are adding words "apply it" with the judicial exception, or mere instructions to implement an abstract idea merely as a tool to perform an abstract idea (see MPEP 2106.05(f)). Additionally, improvements to the functioning of a computer or any other technology or technical field have not been shown or disclosed (see MPEP 2106.05(a)). The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Specifically, the applicant’s limitations are not “significantly more” because they are adding words “apply it” with the judicial exception, or mere instructions to implement an abstract idea merely as a tool to perform an abstract idea (see MPEP 2106.05(f)). The applicant’s claimed limitations do not demonstrate an improvement to another technology or technical field, an improvement to the functioning of the computer itself, effecting a transformation or reduction of particular article to a different state or thing. The current application does not amount to 'significantly more' than the abstract idea as described above. The claim does not include additional elements or limitations individually or in combination that are sufficient to amount to significantly more than the judicial exception. Specifically, the individual elements of processors, metadata, and graphical user interface amount to no more than implementing an idea with a computerized system and they are adding words “apply it” with the judicial exception, or mere instructions to implement an abstract idea merely as a tool to perform an abstract idea. The additional elements taken in combination add nothing more than what is present when the elements are considered individually. Therefore, based on the two-part Alice Corp. analysis, there are no meaningful limitations in the claims that transform the exception (i.e., abstract idea) into a patent eligible application.
Dependent claims 2-8 and 22-32 are rejected as ineligible subject matter under 35 U.S.C. 101 based on a rationale similar to the claims from which they depend. The following dependent claims: dependent claim 2 recites processors and string, claim 3 recites processors, string, and graphical user interface, dependent claim 4 recites key object selection (KOS) and Digital Imaging and Communications in Medicine (DICOM), dependent claim 5 recites metadata and processors, dependent claim 7 recites processors, metadata, and DICOM content, dependent claim 8 recites processors, dependent claim 22 recites DICOM, dependent claim 24 recites simple object access protocol (SOAP), extensible mark-up language (XML), and extensible style sheet language transformation (XSLT), dependent claim 27 recites processing circuity and DICOM, dependent claim 28 recites one or more processors, dependent claim 30 recites simple object access (SOAP) , extensible mark-up language (XML), and extensible style sheet language transformation (XSLT), dependent 31 recites one or more processors, and dependent claim 32 recites processing circuity and DICOM. Dependent claims 2-5, 7-8, 22, 24, 27-28, and 30-32 do not recite additional elements that amount to significantly more than the judicial exception.
Since the claim(s) recite a judicial exception and fails to integrate the judicial exception into a practical application, the claim(s) is/are “directed to” the judicial exception. Thus, the claim(s) must be reviewed under the second step of the Alice/ Mayo analysis to determine whether the abstract idea has been applied in an eligible manner.
2(B): The claims do not provide an inventive concept (i.e., The claim(s) do not include additional elements, or combinations of elements, that are sufficient to amount to significantly more than the judicial exception (i.e., abstract idea)).
As discussed with respect to Step 2A Prong Two, the additional element(s) in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Additionally, receiving data and searching a database is well-known routine and conventional as stated in the MPEP 2106.05(d)(II) “storing and retrieving information in memory”. The concept of presenting information on a GUI is just a generic computer function. Therefore, the limitations are not “significantly more” under step 2B.
For these reasons, there is no invention concept in the claim, and thus the claim is ineligible.
Allowable Subject Matter
The following is a statement of reasons for the indication of allowable subject matter:
intercept XDS content results based on metadata of the XDS content satisfying the query before being provided in response to the query;
and morph at least one attribute associated with the XDS content results in transit before providing the XDS content results to a graphical user interface or a second document repository.
Response to Arguments
Applicant's arguments filed June 12, 2026 have been fully considered but they are not persuasive.
A. According to applicant’s argument on pages 8-9 of the remarks disclose, “However, this ignores that claim 1 is directed to XDS content, and an interception thereof. There is no explanation of how a human could do this. XDS data is in transit from search query of a first document repository to a GUI or second document repository and its content is being morphed. A human does not have the ability to intercept data transfer and modify it. This goes to nature of how the machine is operating, not mere human personal behavior. Accordingly, this does not equate to managing personal behavior.” The examiner respectfully disagrees.
The examiner notes independent claim 1 is directed to the abstract idea of certain methods of organizing human activity not the abstract idea of mental processes (e.g., concepts performed in the human mind through observation, evaluation, etc.). According to MPEP 2106.04(a)(2)(II)(C), the function of “filtering content” is directed to the abstract idea of managing personal behavior under the abstract idea of certain methods of organizing human activity. With respect to independent claims 1 and 21 are directed to filtering content in response to receiving a query.
B. According to applicant’s argument on page 9 of the remarks discloses, “Regarding Prong 2, it is argued the judicial exception is not integrated into a practical application… However, this is incorrect, a practical application of claim 1 is improving the function of the computer by intercepting results prior to providing the response. Typical filtering only narrows a query to a subset of a database or removes certain potential results from a set of documents to review and does not actually intercept search results, much less morph the results. (The claims also recite morphing the intercepted results to remove certain content.) See paragraphs 34-36 of the published application regarding these features.” The examiner respectfully disagrees.
The examiner has reviewed paragraphs 0034-0036 of the applicant’s specification. The cited paragraphs and the limitations in independent claims 1 and 21 do not disclose an improvement to the functioning of a computer or to any other technology or technical field. According to 2025 Subject Matter Eligibility Updates, March 2026 discloses “The claim must be evaluated to ensure that the claim itself reflects the improvement. That is, the claim must include the components or steps of the invention that provide the improvement described in the specification.” Independent claims 1 and 21 do not demonstrate a technical improvement. In particular, it does not elaborate/explain how the interception of content and morphing of attributes are performed. Further, it does not disclose technical aspects or features associated with the interception of content and morphing of attributes. Therefore, the examiner maintains the rejection.
Objection to claim 1 has been withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MATTHEW L HAMILTON whose telephone number is (571)270-1837. The examiner can normally be reached Monday-Thursday 9:30-5:30 pm EST.
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/MATTHEW L HAMILTON/Primary Examiner, Art Unit 3682
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