Response to Arguments
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 .
Applicant’s response to the Non-final Office Action dated 05/11/2026, and amended claims and the specification, submitted on 08/11/202, have been entered and made of record.
In light of Applicant’s amendment of the title of the invention, the objection of record with respect to the specification has been withdrawn.
Status of Claims
Claims 1-3 and 5-13 are pending. Claim 4 is canceled.
Response to Arguments
Applicant’s arguments with respect to the rejections of claims based on 35 U.S.C. 102(a)(1), 35 U.S.C. 103, and 35 U.S.C. 101, Abstract Idea, have been carefully reviewed. In light of Applicant’s amendment to incorporate the indicated allowable subject matter of dependent Claim 4 into the independent claims, the rejections of record under 35 U.S.C. 102(a)(1) and 35 U.S.C. 103 have been withdrawn. However, Applicant’s arguments presented in pages 9 and 10 of its remarks with respect to the rejection of claims under 35 U.S.C. 101, abstract idea, are not persuasive. Applicant argues “Claim 1 displays information interpretable by the user, such as a medical doctor, including presenting inference steps in a decision tree so that the medical doctor can understand the determination process that concluded that a tumor is present based on the medical image data, for example.” However, this limitation is not found in the independent claims, as the independent claims broadly recite the change of display layout based on a layout change instruction, which is commonly done by a practitioner. Therefore, Examiner respectfully disagrees that the claims, as amended, overcome the rejection under 35 U.S.C. 101. New analysis of claims under this section of the rules is presented below. THIS ACTION IS MADE FINAL.
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, 7, and 13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite a method and apparatus directed to receiving medical data and perform analysis of the medical data and provide the result as output in accordance with a requested format/layout. With respect to analysis of independent method Claim 13:
Step 1:
With regard to Step 1, the instant claim is directed to a method; and therefore, the claim is directed to one of the statutory categories of invention.
Step 2A, Prong One:
With regard to 2A, Prong One, the limitation “performing a medical determination process on based on the medical data”, “ receiving a layout change instruction to change a layout of display content being displayed”, and “changing the layout of the display content being displayed, upon receipt of the layout change instruction”, as drafted, recite an abstract idea, such as a process that, under its broadest reasonable interpretation, covers performance of the limitations by a medical technician or a physician reviewing a medical image generated by a medical image acquiring device, such as an MRI system, and making a determination of presence or absence of an issue, such as a lesion/tumor, and requesting that a certain layout be displayed, a concept performed by a human through observation, evaluation, judgement, opinion. This is the concept that falls under the grouping of abstract idea mental processes for monitoring and determination (evaluation, judgement, and/or opinion of a medical technician or a physician).
Step 2A, Prong Two:
The 2019 PEG defines the phrase “evaluate whether the claim recites additional elements that integrate the exception into a practical application of the exception”. Therefore, additional elements, or a combination of additional elements in the claim, are required to apply, rely on, or use the judicial exception. In the instant case, in this instance, the additional limitations are “receiving medical data as an input” and “displaying information about a determination step together with a determination result of the medical determination process”, which are essentially considered insignificant extra-solution activities of acquiring input and providing output of the result, i.e., generation of a report. In addition, the recited circuitry in independent Claim 1 is simply regarded as a generic computing component. Therefore, overall the additional limitations do not apply, rely on, or use the judicial exception as an indication of integration of the judicial exception into a practical application. Accordingly, both Claims 1 and 13 recite an abstract idea.
Step 2B:
Because the claim fails under Step 2A, the claim is further evaluated under Step 2B. The claim herein does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because as discussed above with respect to integration of the abstract idea into practical application, the additional element in the claim is merely insignificant extra-solution activities and a generic computing component, which do not amount to significantly more than the abstract idea. Therefore, Claim 13 is not patent eligible. Independent Claim 1 is analyzed in the same manner, and found not to be patent eligible under this section of the rules.
In addition, with regard to dependent claims 2-3, and 7 viewed individually, these additional elements, under their broadest reasonable interpretation, cover performance of the limitations as an abstract idea (mental processes), and do not provide meaningful limitations to transform the abstract idea into a patent eligible application of the abstract idea such that the claims amount to significantly more than the abstract idea itself. It should be noted that Claims 5-6 and 8-12 are considered to include additional limitations that integrate the abstract idea into a practical application and provide significantly more than just the abstract idea. Therefore, Claims 5-6 and 8-12 are patent eligible.
Allowable Subject Matter
Claims 5-6 and 8-12 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Claims 1-3, 7, and 13 are not rejected over prior art, and will be allowed if the rejection of claims based on 35 U.S.C. 101, abstract idea, as discussed above, is overcome.
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 extension fee 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.
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/Siamak Harandi/Primary Examiner, Art Unit 2662
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