DETAILED ACTION
This office action is in response to the above identified application filed on November 26, 2025. The application contains claims 1-25.
Claim 16 was previously cancelled
Claims 11-14 are cancelled
Claims 22-25 are newly added
Claims 1, 8, 15, and 17 are amended
Claims 1-10, 15, and 17-25 are 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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 November 26, 2025 has been entered.
Response to Arguments
Applicant's arguments and amendments filed on November 26, 2025 have been fully considered and the objections and rejections are updated accordingly.
Claim Rejections - 35 USC § 101
Applicant’s amendments to the claims do not overcome the 35 U.S.C. 101 rejections.
In response to Applicant’s 1st argument on page 3 of Applicant’s Arguments/Remarks Made in an Amendment that “Nor has the Office fully addressed claim 21 in the eligibility and art-based rejections of the Office Action”, the examiner notes Applicant’s such allegation is outright false and point Applicant to the Final Rejection dated 08/26/2025 for the eligibility and art-based rejections of claim 21.
In response to Applicant’s 2nd argument on page 7 of Applicant’s Arguments/Remarks Made in an Amendment that “Applicant's claims, at minimum, include additional elements that in combination with other elements result in improvements to a computerized records system, which are necessarily rooted in computer technology ...”, the examiner notes: per MPEP 2106.05(a), "It is important to note that in order for a method claim to improve computer functionality, the broadest reasonable interpretation of the claim must be limited to computer implementation. That is, a claim whose entire scope can be performed mentally, cannot be said to improve computer technology. Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 120 USPQ2d 1473 (Fed. Cir. 2016) (a method of translating a logic circuit into a hardware component description of a logic circuit was found to be ineligible because the method did not employ a computer and a skilled artisan could perform all the steps mentally). Similarly, a claimed process covering embodiments that can be performed on a computer, as well as embodiments that can be practiced verbally or with a telephone, cannot improve computer technology. See RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1328, 122 USPQ2d 1377, 1381 (Fed. Cir. 2017) (process for encoding/decoding facial data using image codes assigned to particular facial features held ineligible because the process did not require a computer).” Because the entire scope of the claimed invention can be all performed in the human mind as discussed in the 101 rejections below, the broadest reasonable interpretation of the claimed invention is not limited to computer implementation. The high-level recitation of generic computer components constitutes mere instructions to apply the abstract idea on a computer, which do not provide an inventive concept or significantly more.
In response to Applicant’s 3rd argument on page 8 of Applicant’s Arguments/Remarks Made in an Amendment that “Further, the fact that claim 1 is allowable over the cited references of record, as explained below, speaks powerfully as evidence that the claim recites significantly more than the purported judicial exception”, the examiner notes an improved abstract idea is still an abstract idea, which cannot be characterized as additional elements other than the abstract idea to integrate the recited judicial exception into a practical application.
In response to Applicant’s 4th argument on page 9 of Applicant’s Arguments/Remarks Made in an Amendment with respect to “well-known, routine, and conventional”, the examiner points Applicant to the detailed eligibility analyses set forth in the previous office action as well as in the updated 101 rejections below.
The examiner does not respond to Applicant’s other arguments on Applicant’s Arguments/Remarks Made in an Amendment that Applicant merely made a claim without providing any factual evidence or reasoning.
Therefore, the 35 USC § 101 rejections are updated and maintained. Please refer below for details.
Claim Rejections - 35 USC § 103
In view of the amendments to the claims, the 35 USC § 103 rejections are withdrawn.
Claim Objections
Claims 24 and 25 are objected to because of the following informalities:
Claim 24 and 25 recite the same limitations. The slightly different languages used do not change this fact.
Appropriate correction is required.
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 1-10, 15, and 17-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The 2019 PEG guidance for subject matter eligibility is applied in the following analyses:
At Step 1
The inventions of claims 1-10, 15, and 17-25 are directed to the statutory categories of a manufacture (claims 1-7 and 21-25), a machine (claims 8-10), and a process (claims 15 and 17-20). Thus, the claimed invention is directed to statutory subject matter.
The following analysis refers to representative claim 1, but the same analysis applies to independent claims 8 and 15, which recite similar limitations.
At Step 2A, Prong One
Claims 1, 8, and 15 each recite abstract ideas in the following limitations:
“calculating a probability of duplication for each particular record of the plurality of records with respect to other records of the plurality of records based on one or more rules, wherein the calculating comprises (a) utilizing, … the one or more rules and (b) evaluating, … and based on the utilizing, at least one datum in a field within each of the plurality of records; based at least on the probability of duplication for each particular record of the plurality of records, classifying the particular record into one of a set of collections, wherein (a) the classifying assigns records of the plurality of records to collections of the set of collections and (b) at least one particular record of the plurality of records is classified into a particular collection of the set of collections … based on the probability of duplication calculated for the at least one particular record”. The “calculating … utilizing … the one or more rules and … evaluating … at least one datum in a field within each of the plurality of records” is recited at a high level, which makes it encompass all possible ways of figuring out a probability of duplication because detecting duplication always involves evaluating and comparing data associated with different data records and determining whether or not they are potential duplicates of each other based on certain criteria, i.e., rules. Comparing a few records, determining how likely each record is a duplicate of another record, and grouping likely duplicates into clusters can be practically performed in the human mind with or without pen and paper. Therefore, this limitation may be characterized as a mental process.
“selecting a record from each collection, in the set of collections, to include in a reduced set of records; analyzing, … and based on a set of threshold values and a set of weights, the reduced set of records to identify at least a first record and a second record that differs from the first record”. The “selecting” and “analyzing … based on a set of threshold values and a set of weight values” are cited at a high level of generality because the limitations do not state how the selection is done and how the threshold values and weight values are utilized to analyze the reduced set of records to identify a first and a second record. Lacking technical specifics, selecting one record from each collection, grouping them together into a new collection, and analyzing the records included in the new collection to identify two records that are potential duplicates can be practically performed in the human mind with or without pen and paper. Therefore, this limitation may be characterized as a mental process.
At Step 2A, Prong Two
This judicial exception is not integrated into a practical application because the claims recite the additional elements of:
“computer-readable instructions” (claim 1), “computer-implemented” (claim 15) and “one or more hardware processors”, “an electronic memory”, and “a medical records computer system” (claims 1, 8, and 15) may be characterized as mere instructions to implement an abstract idea on a computer or use a computer as a tool to perform an abstract idea, see MPEP 2106.05(f).
“a set of application programming interface (APIs) via at least a portion of the one or more hardware processors controlling the set of APIs and associated with a first source of records” recites “a set of APIs” at a high-level of generality. Lacking specifics on what the APIs are for and how they work together with the rest of the claimed invention, this limitation may be characterized as generally linking the abstract idea to computer technology, see MPEP 2106.05(h).
“receiving … a plurality of records from one or more sources disparate from the first source of records” may be characterized as preliminary data gathering, see MPEP 2106.05(g).
“generating an updated electronic record by (a) storing a first set of one or more values from a first set of one or more fields of the first record into the updated electronic record and (b) storing a second set of one or more values from a second set of one or more fields of the second record into the updated electronic record, wherein the updated electronic record differs from the first record and differs from the second record”. This limitation generates an updated record by obtaining and temporarily storing some field values from one record and some other field values from another record. It does not indicate how the fields are chosen from each record to be combined into the updated record and how it relates to the rest of the claim limitations. Per MPEP 2106.05(f), "... in Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document. 850 F.3d at 1342; 121 USPQ2d at 1947-48. Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words "apply it"." Therefore, this limitation may be characterized as mere instructions to implement an abstract idea on a computer or use a computer as a tool to perform an abstract idea, see MPEP 2106.05(f).
“electronically writing data, corresponding to the updated electronic record, to an electronic memory associated with the first source of records at the medical records computer system based on the analyzing via the one or more hardware processors of the reduced set of records and based on the identifying of the first record and the second record” may be characterized as insignificant extra-solution activity, particularly post-solution activity, see MPEP 2106.05(g).
Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception.
At Step 2B
Claims 1, 8, and 15 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as discussed above the additional elements constitute a high-level recitation of a generic computer components which represent mere instructions to apply on a computer, generally linking the abstract idea to computer technology, and insignificant extra-solution activities including preliminary data gathering and post-solution activity.
“receiving … a plurality of records from one or more sources disparate from the first source of records” is claimed at a high level of generality and as insignificant extra-solution activities. The courts have found these functions as well understood and routine activities, see MPEP 2106.05(d) [Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information)].
“electronically writing data, corresponding to the updated electronic record, to an electronic memory associated with the first source of records at the medical records computer system based on the analyzing via the one or more hardware processors of the reduced set of records and based on the identifying of the first record and the second record” is storing information. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93]. See MPEP 2106.05(d).
Even when considered in combination, these additional elements do not provide an inventive concept or significantly more.
Therefore, claims 1, 8, and 15 are rejected under 35 USC 101 as being directed to an abstract idea without significantly more.
Dependent claims 2-7 & 21-23, 9-10, and 17-20 each recite additional elements elaborating on the further details of the abstract idea in independent claims 1, 8, and 15 that are still mentally performable.
Dependent claims 24 and 25 each recite the additional element “utilizing HTTP Patch logic … to include both (a) the first set of one or more values from the first set of one or more fields of the first record and (b) the second set of one or more values from the second set of one or more fields of the second record into the updated electronic record”. The “HTTP Patch logic” is recited at a high level of generality. Lacking technical specifics on the significance of its role in the claimed invention, the limitation may be characterized as generally linking the abstract idea to computer technology, see MPEP 2106.05(h).
Therefore, dependent claims 2-7 & 21-25, 9-10, and 17-20 are also rejected under 35 USC 101 as being directed to an abstract idea without significantly more.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to XIAOQIN HU whose telephone number is (571)272-1792. The examiner can normally be reached on Monday-Friday 7:00am-3:30pm.
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/XIAOQIN HU/Examiner, Art Unit 2168
/CHARLES RONES/Supervisory Patent Examiner, Art Unit 2168