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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 07/29/2026 has been entered.
Notice to Applicant
This communication is in response to the amendment filed 07/29/2026. Claims 1, 14 have been amended. Claims 1-14 are presented for examination.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-14 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-13 of copending Application No. 18/419,500 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because both sets of claims are directed toward a method for exchanging healthcare information, comprising: using a healthcare informatics system to obtain first medical information that is encoded in accordance with a first coding scheme; providing a first cryptographic key to a patient device after receiving a request from the patient device for keys to be used to encrypt the first medical information; encoding the first medical information and the first cryptographic key in an optical code that is displayed for capture by a clinician device; responsive to a request from the clinician device, using a mapping to translate the first medical information to obtain second medical information that is encoded in accordance with a second coding scheme, wherein the first coding scheme and the second coding scheme correspond to different medical coding standards; and providing the second medical information to the clinician device, wherein the second medical information is provided to the clinician device after the clinician device has captured the optical code and used the first cryptographic key extracted from the optical code to decrypt the first medical information.
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
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 1-14 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. Based upon consideration of all of the relevant factors with respect to the claims as a whole, the claims are directed to non-statutory subject matter which do not include additional elements that are sufficient to amount to significantly more than the judicial exception because of the following analysis:
Claim 1 is drawn to a method which is within the four statutory categories (i.e., method). Claim 14 is drawn to a processor-readable storage medium comprising code which, for purposes of compact prosecution, is presumed to be within the four statutory categories (i.e., manufacture).
Independent claim 1 (which is representative of independent claim 14) recites…obtain first medical information that is encoded in accordance with a first coding scheme; providing a first cryptographic key…after receiving a request…for keys to be used to encrypt the first medical information; encoding the first medical information and the first cryptographic key in an optical code that is displayed for capture…; responsive to a request…, using a mapping to translate the first medical information to obtain second medical information that is encoded in accordance with a second coding scheme, wherein the first coding scheme and the second coding scheme correspond to different medical coding standards; and providing the second medical information…, wherein the second medical information is provided…after…[capturing] the optical code and [using] the first cryptographic key extracted from the optical code to decrypt the first medical information.
Under its broadest reasonable interpretation, the limitations noted above, as drafted, covers certain methods of organizing human activity (i.e., managing personal behavior or relationships or interactions between people…following rules or instructions), but for the recitation of generic computer components. The claims encompass a series of rules or instructions for a person or persons to access and exchange healthcare information between users in the manner described in the identified abstract idea, supra. The rules or instructions are the claimed steps as indicated supra. That is, other than reciting generic computer components (discussed infra), the claim amounts to managing personal behavior or relationships or interactions between people following rules or instructions. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or relationships or interactions between people, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
Claim 1 recites additional elements (i.e., a healthcare informatics system; a patient device; a clinician device). Claim 14 recites additional elements (i.e., A processor-readable storage medium comprising code; a processing circuit; a healthcare informatics system; a patient device; a clinician device). Looking to the specifications, a computing system having a processor-readable storage medium comprising code; a processing circuit is described at a high level of generality (¶ 0027-0032; ¶ 0165-0169), such that it amounts to no more than mere instructions to apply the exception using generic computer components. Also, “a healthcare informatics system” only invokes the healthcare informatics system merely as a tool in its ordinary capacity to perform an existing process (i.e., providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Also, “a patient device” and “a clinician device” only invokes the devices merely as a tool in its ordinary capacity to perform an existing process (i.e., receiving, transmitting data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. The 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. Accordingly, the claims are directed to an abstract idea.
Reevaluated under step 2B, the additional elements noted above do not provide “significantly more” when taken either individually or as an ordered combination. The use of a general purpose computer or computers (i.e., a computing system having a processor-readable storage medium comprising code; a processing circuit) amounts to no more than mere instructions to apply the exception using generic computer components and does not impose any meaningful limitation on the computer implementation of the abstract idea, so it does not amount to significantly more than the abstract idea. Also, “a healthcare informatics system” only invokes the healthcare informatics system merely as a tool in its ordinary capacity to perform an existing process (i.e., providing data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Also, “a patient device” and “a clinician device” only invokes the devices merely as a tool in its ordinary capacity to perform an existing process (i.e., receiving, transmitting data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. The combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology and their collective functions merely provide a conventional computer implementation of the abstract idea. Furthermore, the additional elements or combination of elements in the claims, other than the abstract idea per se, amount to no more than a recitation of generally linking the abstract idea to a particular technological environment or field of use, as the courts have found in Parker v. Flook; similarly, the current invention merely limits the claimed calculations to the healthcare industry which does not impose meaningful limits on the scope of the claim. Therefore, there are no limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception.
Dependent claims 2-13 include all the limitations of the parent claims and further elaborate on the abstract idea discussed above and incorporated herein.
Claims 2-13 further define the analysis and organization of data for the performance of the abstract idea and do not recite any additional elements. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Thus, the claims do not integrate the abstract idea into a practical application and do not provide “significantly more.”
Although the dependent claims add additional limitations, they only serve to further limit the abstract idea by reciting limitations on what the information is and how it is received and used. These information characteristics do not change the fundamental analogy to the abstract idea grouping of “Certain Methods of Organizing Human Activity,” and, when viewed individually or as a whole, they do not add anything substantial beyond the abstract idea. Furthermore, the combination of elements does not indicate a significant improvement to the functioning of a computer or any other technology. Therefore, the claims when taken as a whole are ineligible for the same reasons as the independent claims.
Claim Rejections - 35 USC § 103
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.
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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1-9, 12, 14 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. US 2021/0224624 A1 (hereinafter referred to as "Hill") in view of U.S. Patent App. Pub. No. US 2017/0068785 A1 (hereinafter referred to as "Experton").
Regarding (currently amended) claim 1, Hill teaches a method for exchanging healthcare information, comprising:
using a healthcare informatics system to obtain first medical information that is encoded in accordance with a first coding scheme (Hill: figure 7k, i.e., “Summary Screen” includes “PMHX,” “FamHX,” “PSHx,” “sOChX,” “Immun.,” “Meds.”; ¶ 0061, i.e., “FIGS. 7A-7N show various examples of user interfaces 131 of the client application 130 used to perform an ingestion process by prompting the user with various types of user input”; ¶ 0072);
providing a first cryptographic key to a patient device after receiving a request from the patient device for keys to be used to encrypt the first medical information (Hill: ¶ 0060, i.e., “the key management service 115 manages the storage and transmission of the IV to the client devices 106…along with the cryptographic key 121”; ¶ 0079, i.e., “a user of the client application 130 can specify…a recipient of the data…the cryptographic key 121 can be pseudo-randomly generated by the client application 130 or the key management application 118. If generated by the client application 130, the cryptographic key 121 is transmitted to the key management application 118 which, in turn, communicates the cryptographic key 121 to…client device 106 as instructed by a user of the client application 130…When “Atlanta Health” is selected, the client application 130 may use the one or more cryptographic keys 121 stored in association with the “Atlanta Health” provider to encrypt information for use in a machine-readable identifier 133”; ¶ 0099, i.e., “the first cryptographic key 121a and the second cryptographic key 121b may be sent to the client device 106 by the key management application 118 or other similar service over the network 112”);
encoding the first medical information and the first cryptographic key in an optical code that is displayed for capture by a clinician device (Hill: ¶ 0041, i.e., “generate a machine-readable identifier 133 that includes user input data encrypted with the cryptographic key 121 for the reader device 109”; ¶ 0054, i.e., “transformation of input data into a matrix code or other machine-readable identifier 133. Starting with step 603, user input is accessed. The user input may include, for example, health information”; ¶ 0075, i.e., “Using a reader device 109, the healthcare provider can scan the machine-readable identifier 133”);
Yet, Hill does not explicitly teach, but Experton teaches, in the same field of endeavor,
responsive to a request from the clinician device, using a mapping to translate the first medical information to obtain second medical information that is encoded in accordance with a second coding scheme (Experton: ¶ 0179, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “electronic healthcare records” of Experton as the “various types of user input” including “PMHX,” “FamHX,” “PSHx,” “sOChX,” “Immun.,” “Meds.” of Hill, which Examiner interprets as the claimed first medical information; ¶ 0187; ¶ 0188, i.e., “individual data can be displayed in the spoken language of the healthcare professional making use of that data can be automated based on the GPS location of the individual app user or the GPS location of the health care professional accessing that data… When translated, individual medications and immunization data are matched to the corresponding specific data where the information is being reviewed”), wherein the first coding scheme and the second coding scheme correspond to different medical coding standards (Experton: ¶ 0187, i.e., “The code sets [including] the various international or national standardized health data code lists for medications, diagnoses, laboratory tests, procedures, immunizations, individual medical professions, and so on” of the individual data may be different from “Code sets specific to geographic regions or countries…in the language of the user's choice or the health care professional accessing that data”); and
providing the second medical information to the clinician device (Experton: ¶ 0179, i.e., “The electronic healthcare records may be displayed…in a spoken language of a healthcare professional making use of the electronic healthcare records”; ¶ 0187-0188),
wherein the second medical information is provided to the clinician device after the clinician device has captured the optical code and used the first cryptographic key extracted from the optical code to decrypt the first medical information (Experton: ¶ 0095, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “encryption keys need to decrypt the contents of the container 614” of Experton as including “the cryptographic key 121” of Hill, which Examiner interprets as the claimed first cryptographic key; ¶ 0188, i.e., “individual data can be displayed in the spoken language of the healthcare professional making use of that data can be automated based on the GPS location of the individual app user or the GPS location of the health care professional accessing that data via mobile to mobile communication in various means (QR code scanning…)”).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include responsive to a request from the clinician device, using a mapping to translate the first medical information to obtain second medical information that is encoded in accordance with a second coding scheme, wherein the first coding scheme and the second coding scheme correspond to different medical coding standards; and providing the second medical information to the clinician device, wherein the second medical information is provided to the clinician device after the clinician device has decrypted the optical code using the first cryptographic key, as taught by Experton, within the system of Hill, with the motivation “so that the medical information necessary for a patient to communicate or exchange with a healthcare professional is available at all times” (Experton: ¶ 0185).
Regarding (original) claim 2, Hill and Experton teach the method of claim 1, further comprising:
translating text elements indicated by the second medical information from a first language to a second language (Experton: ¶ 0179; ¶ 0188).
The obviousness of combining the teachings of Hill and Experton are discussed in the rejection of claim 1, and incorporated herein.
Regarding (original) claim 3, Hill and Experton teach the method of claim 2, further comprising:
replacing medical terms indicated by the second medical information with corresponding medical terms used by a clinician associated with the clinician device (Experton: ¶ 0179; ¶ 0188-0189).
The obviousness of combining the teachings of Hill and Experton are discussed in the rejection of claim 1, and incorporated herein.
Regarding (original) claim 4, Hill and Experton teach the method of claim 3, wherein the medical terms used by the clinician are consistent with medical terms used in a country in which the clinician device is located (Experton: ¶ 0179; ¶ 0187-0188).
The obviousness of combining the teachings of Hill and Experton are discussed in the rejection of claim 1, and incorporated herein.
Regarding (original) claim 5, Hill and Experton teach the method of claim 1, further comprising:
replacing pharmaceutical names indicated by the second medical information with corresponding pharmaceutical names known to a clinician associated with the clinician device (Experton: ¶ 0179; ¶ 0187-0188).
The obviousness of combining the teachings of Hill and Experton are discussed in the rejection of claim 1, and incorporated herein.
Regarding (original) claim 6, Hill and Experton teach the method of claim 5, wherein the pharmaceutical names known to the clinician are defined for pharmaceutical distribution in a country in which the clinician device is located (Experton: ¶ 0179; ¶ 0187-0188).
The obviousness of combining the teachings of Hill and Experton are discussed in the rejection of claim 1, and incorporated herein.
Regarding (original) claim 7, Hill and Experton teach the method of claim 1, further comprising:
converting a medication name used in a first country to a corresponding medication name used in a second country (Hill: ¶ 0032, i.e., “translate user input from a first language, such as Spanish, to a second language, such as English”; ¶ 0066, i.e., “a user interface 131 illustrating an embodiment of a screen dedicated to obtaining current and past medications is shown which enables the user to provide current and previous medications”; ¶ 0092; ¶ 0128).
Regarding (original) claim 8, Hill and Experton teach the method of claim 1, further comprising:
converting a vaccine name used in a first country to a corresponding vaccine name used in a second country (Hill: ¶ 0032, i.e., “translate user input from a first language, such as Spanish, to a second language, such as English”; ¶ 0070, i.e., “a user interface 131 illustrates one embodiment that obtains immunizations from a user”; ¶ 0092; ¶ 0128).
Regarding (original) claim 9, Hill and Experton teach the method of claim 1, further comprising:
converting a drug allergy name used in a first country to a corresponding drug allergy name used in a second country (Hill: figure 7f, i.e., “Allergies” include “Lasix” as “Name of Medication(s)?”; ¶ 0032, i.e., “translate user input from a first language, such as Spanish, to a second language, such as English”; ¶ 0067, i.e., “a user interface 131 where a user can provide current and past allergies”; ¶ 0092; ¶ 0128).
Regarding (original) claim 12, Hill and Experton teach the method of claim 1, wherein the first medical information corresponds to information provided by a user of the patient device (Hill: ¶ 0061, i.e., “FIGS. 7A-7N show various examples of user interfaces 131 of the client application 130 used to perform an ingestion process by prompting the user with various types of user input”; ¶ 0072).
Regarding (currently amended) claim 14, Hill teaches a non-transitory processor-readable storage medium comprising code configured to cause a processing circuit (Hill: ¶ 0145) to:
use a healthcare informatics system to obtain first medical information that is encoded in accordance with a first coding scheme (Hill: figure 7k, i.e., “Summary Screen” includes “PMHX,” “FamHX,” “PSHx,” “sOChX,” “Immun.,” “Meds.”; ¶ 0061, i.e., “FIGS. 7A-7N show various examples of user interfaces 131 of the client application 130 used to perform an ingestion process by prompting the user with various types of user input”; ¶ 0072);
provide a first cryptographic key to a patient device after receiving a request from the patient device for keys to be used to encrypt the first medical information (Hill: ¶ 0060, i.e., “the key management service 115 manages the storage and transmission of the IV to the client devices 106…along with the cryptographic key 121”; ¶ 0079, i.e., “a user of the client application 130 can specify…a recipient of the data…the cryptographic key 121 can be pseudo-randomly generated by the client application 130 or the key management application 118. If generated by the client application 130, the cryptographic key 121 is transmitted to the key management application 118 which, in turn, communicates the cryptographic key 121 to…client device 106 as instructed by a user of the client application 130…When “Atlanta Health” is selected, the client application 130 may use the one or more cryptographic keys 121 stored in association with the “Atlanta Health” provider to encrypt information for use in a machine-readable identifier 133”; ¶ 0099, i.e., “the first cryptographic key 121a and the second cryptographic key 121b may be sent to the client device 106 by the key management application 118 or other similar service over the network 112”);
encode the first medical information and the first cryptographic key in an optical code that is displayed for capture by a clinician device (Hill: ¶ 0041, i.e., “generate a machine-readable identifier 133 that includes user input data encrypted with the cryptographic key 121 for the reader device 109”; ¶ 0054, i.e., “transformation of input data into a matrix code or other machine-readable identifier 133. Starting with step 603, user input is accessed. The user input may include, for example, health information”; ¶ 0075, i.e., “Using a reader device 109, the healthcare provider can scan the machine-readable identifier 133”);
Yet, Hill does not explicitly teach, but Experton teaches, in the same field of endeavor,
responsive to a request from the clinician device, use a mapping to translate the first medical information to obtain second medical information that is encoded in accordance with a second coding scheme (Experton: ¶ 0179, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “electronic healthcare records” of Experton as the “various types of user input” including “PMHX,” “FamHX,” “PSHx,” “sOChX,” “Immun.,” “Meds.” of Hill, which Examiner interprets as the claimed first medical information; ¶ 0187; ¶ 0188, i.e., “individual data can be displayed in the spoken language of the healthcare professional making use of that data can be automated based on the GPS location of the individual app user or the GPS location of the health care professional accessing that data… When translated, individual medications and immunization data are matched to the corresponding specific data where the information is being reviewed”), wherein the first coding scheme and the second coding scheme correspond to different medical coding standards (Experton: ¶ 0187, i.e., “The code sets [including] the various international or national standardized health data code lists for medications, diagnoses, laboratory tests, procedures, immunizations, individual medical professions, and so on” of the individual data may be different from “Code sets specific to geographic regions or countries…in the language of the user's choice or the health care professional accessing that data”); and
provide the second medical information to the clinician device (Experton: ¶ 0179, i.e., “The electronic healthcare records may be displayed…in a spoken language of a healthcare professional making use of the electronic healthcare records”; ¶ 0187-0188),
wherein the second medical information is provided to the clinician device after the clinician device has captured the optical code and used the first cryptographic key extracted from the optical code to decrypt the first medical information (Experton: ¶ 0095, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “encryption keys need to decrypt the contents of the container 614” of Experton as including “the cryptographic key 121” of Hill, which Examiner interprets as the claimed first cryptographic key; ¶ 0188, i.e., “individual data can be displayed in the spoken language of the healthcare professional making use of that data can be automated based on the GPS location of the individual app user or the GPS location of the health care professional accessing that data via mobile to mobile communication in various means (QR code scanning…)”).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include responsive to a request from the clinician device, use a mapping to translate the first medical information to obtain second medical information that is encoded in accordance with a second coding scheme; and provide the second medical information to the clinician device, wherein the second medical information is provided to the clinician device after the clinician device has decrypted the optical code using the first cryptographic key, as taught by Experton, within the system of Hill, with the motivation “so that the medical information necessary for a patient to communicate or exchange with a healthcare professional is available at all times” (Experton: ¶ 0185).
Claim(s) 10-11 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. US 2021/0224624 A1 (hereinafter referred to as "Hill") in view of U.S. Patent App. Pub. No. US 2017/0068785 A1 (hereinafter referred to as "Experton"), as applied to claims 1-9, 12, 14, further in view of U.S. Patent App. Pub. No. US 2014/0095882 A1 (hereinafter referred to as "Spalka").
Regarding (original) claim 10, Hill and Experton teach the method of claim 1.
Yet, Hill and Experton do not explicitly teach, but Spalka teaches, in the same field of endeavor, wherein the first cryptographic key is a time-limited key (Spalka: ¶ 0069-0070; ¶ 0128, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “key pairs” of Spalka as including “the cryptographic key 121” of Hill, which Examiner interprets as the claimed first cryptographic key).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include wherein the first cryptographic key is a time-limited key, as taught by Spalka, with the system of Hill and Experton, with the motivation of “If a user attempts to use an “expired” key pair Ki; i.e. the user opens a session on the information system in which he authenticates himself with the key pair then the information system denies him this” (Spalka: ¶ 0070).
Regarding (original) claim 11, Hill and Experton teach the method of claim 1.
Yet, Hill and Experton do not explicitly teach, but Spalka teaches, in the same field of endeavor, wherein the first cryptographic key is a one-time use key (Spalka: ¶ 0069; ¶ 0071; ¶ 0137, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “key pairs” of Spalka as including “the cryptographic key 121” of Hill, which Examiner interprets as the claimed first cryptographic key).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include wherein the first cryptographic key is a one-time use key, as taught by Spalka, with the system of Hill and Experton, with the motivation of “If the number of uses of a key pair Ki which has already taken place has reached its maximum number, the information system denies fresh use of Ki; the session is then thus not set up” (Spalka: ¶ 0071).
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent App. Pub. No. US 2021/0224624 A1 (hereinafter referred to as "Hill") in view of U.S. Patent App. Pub. No. US 2017/0068785 A1 (hereinafter referred to as "Experton"), as applied to claims 1-9, 12, 14, further in view of U.S. Patent App. Pub. No. US 2015/0213195 A1 (hereinafter referred to as "Blechman").
Regarding (original) claim 13, Hill and Experton teach the method of claim 1.
Yet, Hill and Experton do not explicitly teach, but Blechman teaches, in the same field of endeavor, wherein the first medical information corresponds to information extracted from electronic healthcare records stored on the patient device (Blechman: figure 16, i.e., “behavior from PCHR data hub on registered devices” 1632 is used to populate “PCHR patient record” 1642; ¶ 0102, i.e., under broadest reasonable interpretation, a person having ordinary skill in the art would have understood the “behavioral observations and…physiological parameters such as blood glucose, activity, heart rate and blood pressure” of Blechman as the “various types of user input” including “PMHX,” “FamHX,” “PSHx,” “sOChX,” “Immun.,” “Meds.” of Hill, which Examiner interprets as the claimed first medical information).
Therefore, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include wherein the first medical information corresponds to information extracted from electronic healthcare records stored on the patient device, as taught by Blechman, with the system of Hill and Experton, with the motivation of “enables patients and their support teams to collect, visualize and share merged behavioral observations and physiological results as the basis for day to day practical decisions about healthcare self-management and as the basis for evidence-based shared decision making with healthcare providers who can access patient-collected observations and results from their ECHR systems” (Blechman: ¶ 0102).
Response to Arguments
Applicant's arguments filed 07/29/2026 have been fully considered but they are not persuasive. Applicant’s arguments will be addressed hereinbelow in the order in which they appear in the response filed 07/29/2026.
In the remarks, Applicant argues in substance that:
Regarding the double patenting rejections, the amendments overcome the rejections.
Regarding the 101 rejections,
“The claim limitations define a specific, technically-constrained ordered sequence that includes obtaining medical information encoded under a first coding scheme, providing a cryptographic key to the patient device in response to an explicit encryption request, and encoding both the encrypted medical information AND the cryptographic key jointly in a single optical code displayed by the patient device. A clinician device captures the optical code, extracts the cryptographic key from the optical code, and uses the optical code key to decrypt the first medical information. A structured mapping is used to translate the decrypted information from the first coding scheme into a second, different medical coding standard before delivery. This sequence constitutes a specific technical architecture and is not limited to mere human activity. The use of "rules or instructions" as the characterization of the abstract idea is particularly inapt. The claims do not describe a set of rules for humans to follow — they describe a machine-implemented cryptographic and coding-scheme interoperability protocol”;
“The inability of healthcare computer systems using different medical coding standards to interoperate without structured mapping is precisely a technical problem arising from the technological environment. For example, the presently claimed invention provides solutions to incompatibility between distinct, machine-readable coding standards such as ICD-10, SNOMED CT, WHODrug, and MedDRA. This is not an administrative or human activity problem; it is a data-format incompatibility problem requiring a technical, computer-implemented solution. Furthermore, the presently-recited optical-code delivery mechanism is a specific technical solution to the problem of secure, patient-controlled health record access without requiring pre-established network connections or portal accounts. The claims recite methods for jointly encoding encrypted medical data and a cryptographic key in a patient-displayed optical code, where clinician access requires physical capture and cryptographic decryption. Certain aspects of the presently-claimed system solve a technology-rooted problem using a specifically structured cryptographic and optical-encoding architecture. The incompatibility of medical coding standards is a technical problem, and the claimed structured-mapping translation architecture is a technical solution to it”; and
“The ordered combination of: (a) jointly encoding encrypted medical data and a cryptographic key in a single patient-displayed optical code; (b) conditioning clinician access on physical capture of that optical code and extraction and use of the cryptographic key; and (c) performing structured mapping-based translation between different medical coding standards, constitutes an unconventional ordered combination not found in any single prior art reference.”
Regarding the 103 rejections, the cited prior art reference(s) fails to teach the amended claim limitations because “the Final Office Action provides no reasoned basis for the proposal that a skilled artisan would find any suggestion in the cited references that would bridge the gap between the presently claimed invention and the combination of a the key management service disclosed by Hill and the GPS-based natural language display feature cited in Experton.”
It is respectfully submitted that Examiner has considered Applicant’s arguments and does not find them persuasive. Examiner has attempted to address all of the arguments presented by Applicant; however, any arguments inadvertently not addressed are not persuasive for at least the following reasons:
In response to Applicant’s argument that (a) regarding the double patenting rejections, the amendments overcome the rejections:
It is respectfully submitted that Examiner maintains the double patenting rejections, which have been updated to address the amendments in the above Office Action.
In response to Applicant’s argument that (b) regarding the 101 rejections,
“The claim limitations define a specific, technically-constrained ordered sequence that includes obtaining medical information encoded under a first coding scheme, providing a cryptographic key to the patient device in response to an explicit encryption request, and encoding both the encrypted medical information AND the cryptographic key jointly in a single optical code displayed by the patient device. A clinician device captures the optical code, extracts the cryptographic key from the optical code, and uses the optical code key to decrypt the first medical information. A structured mapping is used to translate the decrypted information from the first coding scheme into a second, different medical coding standard before delivery. This sequence constitutes a specific technical architecture and is not limited to mere human activity. The use of "rules or instructions" as the characterization of the abstract idea is particularly inapt. The claims do not describe a set of rules for humans to follow — they describe a machine-implemented cryptographic and coding-scheme interoperability protocol”:
It is respectfully submitted that per broadest reasonable interpretation of the claim in light of the specification, the claims of the present invention encompass the activity of (to paraphrase) rules or instructions to access and exchange healthcare information between users, which covers the sub-grouping of managing personal behavior or relationships or interactions between people in the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Put another way, the claimed invention amounts to a series of rules or steps that users (i.e., patient, doctor) would follow to collect, convert, and exchange medical data accordingly. This is an abstract idea. That the steps are performed on a well-known, general purpose computer (i.e., a computing system having a processor-readable storage medium comprising code; a processing circuit) does not remove the invention from being directed to an abstract idea.
Applicant argues “a specific, technically-constrained ordered sequence that includes obtaining medical information encoded under a first coding scheme, providing a cryptographic key to the patient device in response to an explicit encryption request, and encoding both the encrypted medical information AND the cryptographic key jointly in a single optical code displayed by the patient device. A clinician device captures the optical code, extracts the cryptographic key from the optical code, and uses the optical code key to decrypt the first medical information. A structured mapping is used to translate the decrypted information from the first coding scheme into a second, different medical coding standard before delivery. This sequence constitutes a specific technical architecture and is not limited to mere human activity.” However, Applicant fails to specify how the aforementioned “sequence…is not…human activity.” Regardless, the claim limitations to which Applicant seem to refer as “obtaining medical information encoded under a first coding scheme, providing a cryptographic key…in response to an explicit encryption request, and encoding both the encrypted medical information AND the cryptographic key jointly in a single optical code displayed... captures the optical code, extracts the cryptographic key from the optical code, and uses the optical code key to decrypt the first medical information. A structured mapping is used to translate the decrypted information from the first coding scheme into a second, different medical coding standard before delivery” are interpreted as rules or instructions to access and exchange healthcare information between users. Also, “a patient device” and “a clinician device” are not interpreted as part of the abstract idea, but as additional elements which are only invoked merely as a tool in its ordinary capacity to perform an existing process (i.e., receiving, transmitting data), which does not impose meaningful limits on the scope of the claim and amounts to no more than a recitation of the words "apply it" (or an equivalent), and only generally links the claimed invention to a particular technological environment or field of use (i.e., computer technology), which does not impose meaningful limits on the scope of the claim. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually.
Applicant argues “The claims do not describe a set of rules for humans to follow — they describe a machine-implemented cryptographic and coding-scheme interoperability protocol.” However, Applicant fails to specify how the aforementioned “protocol” does not “describe a set of rules for humans to follow.” Regardless, the claims do not need to recite “describe a set of rules for humans to follow,” as long as the claim recites an abstract idea, which it does, by managing personal behavior or relationships or interactions between people following rules or instructions, as explained above.
Thus, the claims are directed to an abstract idea.
“The inability of healthcare computer systems using different medical coding standards to interoperate without structured mapping is precisely a technical problem arising from the technological environment. For example, the presently claimed invention provides solutions to incompatibility between distinct, machine-readable coding standards such as ICD-10, SNOMED CT, WHODrug, and MedDRA. This is not an administrative or human activity problem; it is a data-format incompatibility problem requiring a technical, computer-implemented solution. Furthermore, the presently-recited optical-code delivery mechanism is a specific technical solution to the problem of secure, patient-controlled health record access without requiring pre-established network connections or portal accounts. The claims recite methods for jointly encoding encrypted medical data and a cryptographic key in a patient-displayed optical code, where clinician access requires physical capture and cryptographic decryption. Certain aspects of the presently-claimed system solve a technology-rooted problem using a specifically structured cryptographic and optical-encoding architecture. The incompatibility of medical coding standards is a technical problem, and the claimed structured-mapping translation architecture is a technical solution to it”:
Applicant argues “The inability of healthcare computer systems using different medical coding standards to interoperate without structured mapping is precisely a technical problem arising from the technological environment… a data-format incompatibility problem requiring a technical, computer-implemented solution… the problem of secure, patient-controlled health record access without requiring pre-established network connections or portal accounts… The incompatibility of medical coding standards is a technical problem.” However, while the specification need not explicitly set forth the improvement, the disclosure does not provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing any technical improvement or any physical improvement to the computer. See MPEP § 2106.04(d)(1) and 2106.05(a).
Applicant argues “For example, the presently claimed invention provides solutions to incompatibility between distinct, machine-readable coding standards such as ICD-10, SNOMED CT, WHODrug, and MedDRA.” However, it is noted that the features upon which applicant relies (i.e., “ICD-10, SNOMED CT, WHODrug, and MedDRA”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Applicant argues “the presently-recited optical-code delivery mechanism is a specific technical solution…The claims recite methods for jointly encoding encrypted medical data and a cryptographic key in a patient-displayed optical code, where clinician access requires physical capture and cryptographic decryption. Certain aspects of the presently-claimed system solve a technology-rooted problem using a specifically structured cryptographic and optical-encoding architecture…the claimed structured-mapping translation architecture is a technical solution to it.” However, Applicant fails to specify the claim limitations to which Applicant refer as the “solution.” Regardless, the claim limitations to which Applicant seem to refer as the “the presently-recited optical-code delivery mechanism…methods for jointly encoding encrypted medical data and a cryptographic key in a patient-displayed optical code, where clinician access requires physical capture and cryptographic decryption…using a specifically structured cryptographic and optical-encoding architecture…the claimed structured-mapping translation architecture” are interpreted as rules or instructions to access and exchange healthcare information between users, which is the abstract idea, and not additional elements to be interpreted in Step 2A, Prong Two. Even if the claims provide the alleged improvements, any alleged benefits of the invention are at best, an improvement to the abstract idea of rules or instructions to access and exchange healthcare information between users. However, an improved abstract idea is still an abstract idea and the claims do not provide a technical improvement.
Thus, the claim as a whole does not integrate the recited judicial exception into a practical application.
“The ordered combination of: (a) jointly encoding encrypted medical data and a cryptographic key in a single patient-displayed optical code; (b) conditioning clinician access on physical capture of that optical code and extraction and use of the cryptographic key; and (c) performing structured mapping-based translation between different medical coding standards, constitutes an unconventional ordered combination not found in any single prior art reference”:
Applicant argues “The ordered combination of: (a) jointly encoding encrypted medical data and a cryptographic key in a single patient-displayed optical code; (b) conditioning clinician access on physical capture of that optical code and extraction and use of the cryptographic key; and (c) performing structured mapping-based translation between different medical coding standards, constitutes an unconventional ordered combination not found in any single prior art reference.” However, per MPEP § 2106.05(I): “the search for an inventive concept should not be confused with a novelty or non-obviousness determination…As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter…a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty…Because [novelty and obviousness] are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101.” Furthermore, per MPEP § 2106.05(I)(A), evaluating whether a claim limitation is “well-understood, routine, conventional activity” is not a standalone test for determining eligibility, but only one consideration “For Evaluating Whether Additional Elements Amount To An Inventive Concept.”
Thus, the claim as a whole does not amount to significantly more than the judicial exception.
Thus, Examiner maintains the 101 rejections of claims 1-14, which have been updated to address Applicant’s remarks and to comply with the 2019 Revised Patent Subject Matter Eligibility Guidance and the 2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence in the above Office Action.
In response to Applicant’s argument that (c) regarding the 103 rejections, the cited prior art reference(s) fails to teach the amended claim limitations because “the Final Office Action provides no reasoned basis for the proposal that a skilled artisan would find any suggestion in the cited references that would bridge the gap between the presently claimed invention and the combination of a the key management service disclosed by Hill and the GPS-based natural language display feature cited in Experton”:
It is respectfully submitted that Applicant argues “the Final Office Action provides no reasoned basis for the proposal that a skilled artisan would find any suggestion in the cited references that would bridge the gap between the presently claimed invention and the combination of a the key management service disclosed by Hill and the GPS-based natural language display feature cited in Experton.” However, In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, it would have been obvious to one having ordinary skill in the art, before the effective filing date of the claimed invention, to include responsive to a request from the clinician device, using a mapping to translate the first medical information to obtain second medical information that is encoded in accordance with a second coding scheme, wherein the first coding scheme and the second coding scheme correspond to different medical coding standards; and providing the second medical information to the clinician device, wherein the second medical information is provided to the clinician device after the clinician device has decrypted the optical code using the first cryptographic key, as taught by Experton, within the system of Hill, with the motivation “so that the medical information necessary for a patient to communicate or exchange with a healthcare professional is available at all times” (Experton: ¶ 0185).
Examiner has updated passages and citations to the amended claims and applied new passages and citations accordingly, at the present time, as addressed in the above Office Action, and the analogous independent claims and the remaining dependent claims have been taught by the applied/recited passages and citations, as addressed in the above Office Action.
Thus, the cited prior art references teach the aforementioned amended claim limitations.
Conclusion
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/EMILY HUYNH/Primary Examiner, Art Unit 3683
