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 .
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this 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 §§ 706.02(1)(1) -706.02(1)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-l.jsp.
Claims 21-38 are rejected on the grounds of non-statutory double patenting over claims 1-20 of US Patent No. 11056230.
Claims 21, 28, and 34 recite substantially similar limitations to claims 1, 10, and 16 of US Patent No. 11056230. The subject matter in the instant application amounts to claims which are generally similar in scope. For example, both claim 21 of the instant application and claim 1 of the patent ‘230 recite methods of enabling access to encounter data for a healthcare appointment, normalizing the data with CPT codes, and transmitting alerts indicating the availability of encounter data for the healthcare appointment. The data can then be requested for access and the data displayed on an interactive interface.
Dependent Claims 22-27, 29-33, and 35-38 recite similar limitations to dependent claims 2-9, 11-15, and 17-20 of the ‘230 patent and are also rejected as being obvious variations of the claims of the ‘230 patent.
Although the claims at issue are not identical, they are not patentably distinct from each.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier.
Regarding Claim 21 and 28 – The claim recites a synchronizer application installed on and configured to access data associated with a medical practice group... See MPEP 2181. The claim limitation uses the term synchronizer application. The “synchronizer application” is modified by functional language “configured to access data….” The synchronizer application is not modified by sufficient structure, material or act for performing the claim. Therefore 112(f) is invoked. See Spec. [0046] describes the synchronizer application as installed software, which the specification goes on to describe at [0066] as being carried out by a processor. For examination purposes the synchronizer application is construed to be software carried out by a processor.
Regarding Claim 21 and 28 – The claim recites synchronizer application is configured to poll the medical practice... See MPEP 2181. The claim limitation uses the term synchronizer application. The “synchronizer application” is modified by functional language “configured to poll….” The synchronizer application is not modified by sufficient structure, material or act for performing the claim. Therefore 112(f) is invoked. See Spec. [0046] describes the synchronizer application as installed software, which the specification goes on to describe at [0066] as being carried out by a processor. For examination purposes the synchronizer application is construed to be software carried out by a processor.
Because this claim limitation is being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it is being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this limitation interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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 21-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more.
Step 1 of the Alice/Mayo Test
Claims 21-27 are drawn to a method, which is within the four statutory categories (i.e. process). Claims 28-33 are drawn to a system, which is within the four statutory categories (i.e. apparatus). Claims 34-38 are drawn to a non-transitory computer-readable storage medium, which is within the four statutory categories (i.e. manufacture).
Step 2A of the Alice/Mayo Test - Prong One
The independent claims recite an abstract idea. For example, claim 21 (and substantially similar with independent claim 28, 34) recites:
A method, comprising:
providing a synchronizer application installed on and configured to access data associated with a medical practice group server that lacks an application program interface to communicate with an aggregator server;
receiving, by the aggregator server and from one of a patient and the synchronizer application, a start time of a healthcare appointment between the patient and a physician associated with the medical practice group server;
determining, by the aggregator server, a completion time of the healthcare appointment based at least in part on the start time and a duration of the healthcare appointment;
based on the completion time, transmitting, by the aggregator server and to the synchronizer application, a request for encounter data for the healthcare appointment, wherein the synchronizer application is configured to poll the medical practice group server to retrieve the encounter data in response to the request;
receiving, by the aggregator server and from the synchronizer application, the encounter data, wherein the encounter data includes one or more services rendered during the healthcare appointment;
decoding and normalizing, by one of aggregator server and synchronizer application, prior to storing in the aggregator database, the encounter data that has been encoded using Current Procedural Terminology (CPT) codes;
storing, by the aggregator server, the encounter data in an aggregator database;
transmitting, in response to one of a communication from the aggregator server and a signal generated by the synchronizer based on the completion time, a billing request from the synchronizer application to a billing module on the medical practice group server;
transmitting, in response to the billing request, encounter data from the billing module to one of an insurer and a clearing house for resolution;
generating, by the aggregator server, an electronic alert addressed to a computing device accessible by the patient, the alert indicating an availability of encounter data for the healthcare appointment;
transmitting, by the aggregator server, the alert to the computing device;
receiving, by the aggregator server and from the computing device, an electronic response to the alert, wherein the response includes a request to access the encounter data for the healthcare appointment; and
providing, by the aggregator server, an interactive user interface to the computing device, wherein the interactive user interface is configured to display the encounter data on the computing device.
These underlined elements recite an abstract idea that can be categorized, under its broadest reasonable interpretation, to cover the management of personal behavior or interactions (i.e., following rules or instructions), but for the recitation of generic computer components. For example, but for the synchronizer application (construed as software carried out by a processor – see 112(f) above), aggregator server, medical practice group server, application program interface, aggregator database, billing module, electronic alerts and responses, computing device, interactive user interface, non-transitory computer-readable medium, processor, the limitations in the context of this claim encompass an automation of organizing and normalizing medical information regarding patient encounters and providing viewable access to providers during a healthcare appointment. If a claim limitation, under its broadest reasonable interpretation, covers management of personal behavior or interactions but for the recitation of generic computer components, then the limitations fall within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. See MPEP § 2106.04(a).
Dependent claims recite additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claims 22-27, 29-33, 35-38 reciting particular aspects of the abstract idea).
Step 2A of the Alice/Mayo Test - Prong Two
For example, claim 21 (and substantially similar with independent claim 28, 34) recites:
A method, comprising:
providing a synchronizer application installed on and configured to access data associated with a medical practice group server that lacks an application program interface to communicate with an aggregator server; (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f))
receiving, by the aggregator server and from one of a patient and the synchronizer application (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)), a start time of a healthcare appointment between the patient and a physician associated with the medical practice group server;
determining, by the aggregator server (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)), a completion time of the healthcare appointment based at least in part on the start time and a duration of the healthcare appointment;
based on the completion time, transmitting, by the aggregator server and to the synchronizer application (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)), a request for encounter data for the healthcare appointment, wherein the synchronizer application is configured to (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)) poll the medical practice group server to retrieve the encounter data in response to the request;
receiving, by the aggregator server and from the synchronizer application (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)), the encounter data, wherein the encounter data includes one or more services rendered during the healthcare appointment;
decoding and normalizing, by one of aggregator server and synchronizer application, prior to storing in the aggregator database (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)), the encounter data that has been encoded using Current Procedural Terminology (CPT) codes;
storing, by the aggregator server (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)), the encounter data in an aggregator database; (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f))
transmitting, in response to one of a communication from the aggregator server and a signal generated by the synchronizer based on the completion time, a billing request from the synchronizer application to a billing module on the medical practice group server; (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f))
transmitting, in response to the billing request, encounter data from the billing module to one of an insurer and a clearing house for resolution;
generating, by the aggregator server, an electronic (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)) alert addressed to a computing device (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)) accessible by the patient, the alert indicating an availability of encounter data for the healthcare appointment;
transmitting, by the aggregator server, (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)) the alert to the computing device; (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f))
receiving, by the aggregator server and from the computing device, an electronic (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)) response to the alert, wherein the response includes a request to access the encounter data for the healthcare appointment; and
providing, by the aggregator server, an interactive user interface to the computing device, wherein the interactive user interface is configured to (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f)) display the encounter data on the computing device. (merely invokes use of computer and other machinery as a tool as noted below, see MPEP 2106.05(f))
The judicial exception is not integrated into a practical application. In particular, the additional elements do not integrate the abstract idea into a practical application, other than the abstract idea per se, because the additional elements amount to no more than limitations, which:
amount to mere instructions to apply an exception (such as recitations of the synchronizer application (construed as software carried out by a processor – see 112(f) above), aggregator server, medical practice group server, application program interface, aggregator database, billing module, electronic alerts and responses, computing device, interactive user interface, non-transitory computer-readable medium, processor, thereby invoking computers as a tool to perform the abstract idea, see applicant’s specification [0019], [0033], [0037], [0042]-[0046], [0062], [0066], [0070], see MPEP 2106.05(f))
Dependent claims recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (such as claims 22, 24-27, 29-30, 32-33, 35-38 recites additional elements that further the abstract idea; claims 23, 31 recite additional limitations which amount to invoking computers as a tool to perform the abstract idea; and claims 22-27, 29-33, 35-38 recite additional limitations which can also generally link the abstract idea to a particular technological environment or field of use). 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 and do not impose a meaningful limit to integrate the abstract idea into a practical application.
Step 2B of the Alice/Mayo Test for Claims
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception. Additionally, the additional elements, other than the abstract idea per se, amount to no more than elements which:
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields (such as using the synchronizer application (construed as software carried out by a processor – see 112(f) above), aggregator server, medical practice group server, application program interface, aggregator database, billing module, electronic alerts and responses, computing device, interactive user interface, non-transitory computer-readable medium, processor, e.g., Applicant’s spec describes the computer system with it being well-understood, routine, and conventional because it describes in a manner that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such elements to satisfy 112a. (See Applicant’s Spec. [0019], [0033], [0037], [0042]-[0046], [0062], [0066], [0070]); using a synchronizer application (construed as software carried out by a processor – see 112(f) above), aggregator server, medical practice group server, application program interface, aggregator database, billing module, electronic alerts and responses, computing device, interactive user interface, non-transitory computer-readable medium, processor, e.g., merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2358-59, 110 USPQ2d 1976, 1983-84 (2014).
Dependent claims recite additional subject matter which, as discussed above with respect to integration of the abstract idea into a practical application, amount to invoking computers as a tool to perform the abstract idea and are generally linking the abstract idea to a particular field of environment. 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. Therefore, the claims are not patent eligible, and are rejected under 35 U.S.C. § 101.
Subject Matter Free of Prior Art
Claims 21-38 are free of prior art over Polimeni (US 2015/0356250), White et al. (US 2004/0019501), and Haras et al. (NPL 2005, Patient Data Synchronization Process in a Continuity of Care Environment). The prior art references, or reasonable combination thereof, could not be found to disclose, or suggest all of the limitations found in the independent claims. The closest prior art is Polimeni (US 2015/0356250), which teaches a method for managing and maintaining healthcare records on a web based database and authorizes healthcare providers to have access to the patient’s records. White et al. (US 2004/0019501) teaches a patient scheduling, tracking, and status system that enables for the collection and evaluation of patient data and about appointment information. The closest NPL reference is Haras et al. (2005), which teaches synchronizing data from different sources and looking at the tools needed for the process. The references taken solely, or in combination, fail to provide the required limitations, and modification of any complementary combination of the references of record would be impermissible hindsight and not provide any advantages over their present application. The dependent claims are also free of prior art due to their corresponding dependency of the independent claims.
Conclusion
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/AMANDA R. COVINGTON/Examiner, Art Unit 3686
/RACHELLE L REICHERT/Primary Examiner, Art Unit 3686