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 .
DETAILED ACTION
Response to Amendment
In the Amendment dated 30 March 2026, the following occurred: Claims 1, 13-15, and 21 were amended; Claims 7-10, 12, 16-18, and 22-26 were cancelled.
Claims 1-6, 11, 13-15, 19-21, and 27-30 are pending.
Priority
This application claims priority to U.S. Provisional Patent Application No. 63/534,215 dated 23 August 2023.
Subject Matter Free of Prior Art
The cited prior art of record fails to expressly teach or suggest, either alone or in combination, the features found within the independent claims. In particular, the cited prior art of record fails to expressly teach or suggest the combination of: calculating diagnostic term text embeddings for identified diagnostic terms; comparing the diagnostic term text embeddings to tracking code text embeddings corresponding to tracking codes to identify as candidate tracking codes those of the tracking codes whose respective tracking code text embeddings most closely match the diagnostic term text embeddings; sending the candidate tracking codes to the LLM along with the text block and a second prompt for an LLM that was previously used to return diagnostic information from the medical note to return a narrowed subset of the candidate tracking codes as the matching tracking codes; receiving the matching tracking codes from the LLM.
Us 2017/0337334 to Staczak teaches ranking billing codes based on a confidence level of clinical priority, but ultimately sends the ranked codes to a user for selection.
US 2012/0239429 to Corfield teaches identifying billing codes from transcribed physician notes and assigning potential billing codes to the data, but teaches that the selection of the appropriate billing code is performed by the biller.
US 2020/0226321 to Burns calculates a score for potential billing codes assigned to an input record, but teaches that the selection of a code from the scored codes is performed manually or the lowest scored code is selected.
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 1-6, 11, 13-15, 19-21, and 27-30 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.
Claims 1, 19, 20, 21, 29, and 30 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
The claims recite a method, system, and computer-readable medium (“CRM”) for processing medical diagnostic information, which are within a statutory category.
Step 2A1
The limitations of (Claim 1 being representative):
obtaining diagnostic term information identifying diagnostic terms within a text block containing medical diagnostic information wherein obtaining the diagnostic term information identifying the diagnostic terms within the text block comprises:
submitting the text block to […an analysis…] with a first prompt for the […analysis…] to return the diagnostic term information; and
receiving the diagnostic term information from the […analysis…];
mapping the identified diagnostic terms to corresponding respective tracking codes to identify matching tracking codes that correspond to the identified diagnostic terms, wherein mapping the identified diagnostic terms to the corresponding respective tracking codes to identify the matching tracking codes comprises:
calculating diagnostic term text embeddings for the identified diagnostic terms;
comparing the diagnostic term text embeddings to tracking code text embeddings for the tracking codes to identify as candidate tracking codes those of the tracking codes whose respective tracking code text embeddings most closely match the diagnostic term text embeddings;
sending the candidate tracking codes to the […analysis…] along with the text block and a second prompt for the […analysis…] to return a narrowed subset of the candidate tracking codes as the matching tracking codes;
receiving the matching tracking codes from the […analysis…]; and
returning the matching tracking codes
, as drafted, is a process that, under the broadest reasonable interpretation, covers certain methods of organizing human activity (i.e., managing personal behavior including following rules or instructions) but for recitation of generic computer components. The claims encompass a series of rules or instructions for a person or persons to follow, with or without the aid of a computer, to determine medical billing codes (see Spec. Para. 0003-0005 describing determining medical billing codes as a human activity) in the manner described in the identified abstract idea, supra. The rules or instructions are the claimed steps of “obtaining… submitting… receiving… mapping… calculating… comparing… sending… receiving… and returning” as indicated supra.
Other than reciting generic computer components (discussed infra), the claimed invention amounts to managing personal behavior or interaction between people. If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior 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 claim recites an abstract idea.
Alternately, the step of calculating represents an abstract idea in the form of a mathematical concept because it encompasses mathematical relationships, mathematical formulas or equations, and mathematical calculations but for the recitation of generic computer components. The types of identified abstract ideas are considered together as a single abstract idea for analysis purposes.
Step 2A2
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of (Claim 1, 21) a computer, (Claim 19, 29) a processor and memory, (Claim 20, 30) a non-transitory computer-readable medium (“CRM”) that implement the identified abstract idea. The computer (or components thereof) is not described by the applicant and are recited at a high-level of generality (i.e., a generic computer or components thereof) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
The claims further recite the additional element of an LLM (Claims 21, 29, 30 reciting a trained machine learning model defined as an LLM) that receives a submission and outputs a result. This represents mere instructions to implement the abstract idea on a generic computer (“apply it”). MPEP 2106.04(d)(I) indicates that merely saying “apply it” or equivalent to the abstract idea cannot provide a practical application. Accordingly, even in combination, this additional element does not integrate the abstract idea into a practical application. See, e.g., Recentive Analytics, Inc. v. Fox Corp., No. 2023-2437 at 10 (Fed. Cir. April 18, 2025) (finding that claims that do no more than apply established methods of machine learning to a new data environment are ineligible).
Step 2B
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer or components thereof to perform the noted steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept (“significantly more”).
Also, as discussed above with respect to integration of the abstract idea into a practical application, the additional element of an LLM that receives a submission and outputs a result was determined to be an “apply it” step. This has been re-evaluated under the “significantly more” analysis and has also been found insufficient to provide significantly more. MPEP2106.05(I)(A) indicates that merely saying “apply it” or equivalent to the abstract idea cannot provide an inventive concept (“significantly more”). Further, and for completeness, the prior art of record indicates that LLMs are well-understood, routine, and conventional in the field of data processing. See: US 2025/0061351 to Domeniconi at Para. 0002; US 2025/0021548 to Petersen at Para. 0008; US 11,971,914 to Watson at Col. 3, Lns. 16-46; US 2023/0368284 to Shelkh at Para. 0080. See also Recentive Analytics, Inc. v. Fox Corp., No. 2023-2437 at 17 (Fed. Cir. April 18, 2025) (finding that applying machine learning to an abstract idea does not transform a claim into something significantly more). Accordingly, even in combination, this additional element does not provide significantly more. As such the claim is not patent eligible.
Claims 2-6, 11, 13-15, 19-20, and 27-30 are similarly rejected because they either further define/narrow the abstract idea and/or do not further limit the claim to a practical application or provide as inventive concept such that the claims are subject matter eligible even when considered individually or as an ordered combination.
Claim(s) 2, 3 merely describe(s) the type of tracking codes, which further defines the abstract idea.
Claim(s) 4 merely describe(s) identifying data in a text block and the returned tracking codes, which further defines the abstract idea.
Claim(s) 5 merely describe(s) how the diagnostic terms are obtained, which further defines the abstract idea.
Claim(s) 6 merely describe(s) how text strings are compared, which further defines the abstract idea.
Claim(s) 11, 28 merely describe(s) how the text block was acquired, which further defines the abstract idea.
Claim(s) 13 merely describe(s) how the text embeddings are acquired, which further defines the abstract idea.
Claim(s) 14 merely describe(s) how terms and codes are mapped, which further defines the abstract idea.
Claim(s) 15 merely describe(s) how terms are compared to codes, which further defines the abstract idea.
Claim(s) 27 merely describe(s) how diagnostic terms used to identify tracking codes, which further defines the abstract idea.
Claim(s) 27 also includes the additional element of “at least one trained machine learning model” which generally links the abstract idea to a particular technological environment or field of use. MPEP 2106.04(d)(I) and MPEP 2106.05(A) indicate that merely “generally linking” the abstract idea to a particular technological environment or field of use cannot provide a practical application or significantly more.
Response to Arguments
Rejection under 35 U.S.C. § 101
Regarding the rejection of Claims 1-30, the Applicant has cancelled claims 7-10, 12, 16-18, and 22-26 rendering the rejection of those claims moot. Regarding the remaining claims, the Examiner has considered the Applicant’s arguments; however, the arguments are not persuasive. Applicant argues:
Respectfully, however, the Examiner's construction treats each of former claims 7, 8 and 9 and former claims 22, 23 and 24 individually, rather than taking their dependencies into account (former claim 9 depended from claims 8 and 7, and former claim 24 depended from claims 23 and 22). The elements recited in former claims 7, 8 and 9 and former claims 22, 23 and 24 (now present in amended claims 1 and 21) must be considered not only individually, but in combination, taking their respective dependencies into account.
Regarding (a), the Examiner respectfully disagrees. Applicant is directed to the Non-Final office action dated 31 December 2025 at numbered pg. 9 which states: “Claims 2-18 and 22-28 are similarly rejected because they either further define/narrow the abstract idea and/or do not further limit the claim to a practical application or provide as inventive concept such that the claims are subject matter eligible even when considered individually or as an ordered combination” (emphasis added). Similar analysis is presented in the current office action. Applicant has not pointed to any combination (discussed further, infra) that provides a practical application or significantly more and thus has not identified any error in the previous or current rejection.
Further, and contrary to Applicant’s assertions, the “ordered combination” analysis presented in 2106.05(a) is in reference to the “improvements” consideration of MPEP 2106.04(d)(1) discussed in the response to argument (b). Applicant has pointed to nothing in any particular combination that would provide an “improvement” within the meaning of the word; there is no improvement to the computer (discussed, infra) nor is there an improvement to another technology (discussed, infra) when considering the elements of the claim in combination.
Thus, pursuant to MPEP 2106.05(a), the amended claims recite an improvement in the conventional functioning of a computer (whether the LLM alone or the combined system including the computer and the LLM), and in the technical field of medical coding.
Regarding (b), the Examiner respectfully disagrees. Applicant has not pointed to anything that results in a physical improvement to the computer. The computer is not made to run faster, run more efficiently, utilize less power, or anything else that person having skill in the art would recognize as an improvement. The utilization of a multi-stage process may provide an improvement to the abstract idea; however, it does not provide an improvement to the computer by any measure in MPEP 2106.
Regarding the field of technical coding, there is no improvement to this field either. The claims are confined to a general-purpose computer and do not claim the entire field of medical coding. Moreover, the entire field of medical coding is not reasonably understood to be a problem arising in technology, as it is instead a problem arising in business and/or healthcare. The claimed invention is using a computer as a tool and any improvement present is an improvement to the abstract idea of, to paraphrase, processing medical diagnostic information to determine matching tracking codes. Finally, where Applicant’s assertion correct, the invention in Alice Corp. would have been subject matter eligible because it was an improvement to the technology of settlement risk mitigation. This is clearly not the case as the claims in Alice Corp. where ineligible.
Paragraph [0057] of the description clearly describes the specific, ordered, multi-stage process recited in former claims 7, 8 and 9 and former claims 22, 23 and 24 (now present in amended claims 1 and 21) [restates Para. 0057].
Regarding (c), the Examiner respectfully disagrees. The features of claims 7, 8, and 9, (now incorporated into the independent claims), further define the abstraction. Nothing in Para. 0057 describes an improvement to anything other than the abstraction. The fact that the claim recites “a specific, ordered, multi-stage process that utilizes the LLM at two distinct, different stages, separated by an intermediate stage outside of the LLM in which the information received from the LLM at the first stage is used to generate new information that is then fed to the LLM at the second stage” is immaterial without such features providing an improvement within the meaning of MPEP 2106.04(d)(1). Further, the inclusion of an LLM does not provide a practical application or significantly more because Applicant is merely using this known item as a tool to process data in a particular was (i.e., “apply it”). And, the prior art of record indicates that LLMs are well-understood, routine and conventional in the field of data processing.
This is analogous to at least examples (i) and (ii) in MPEP 2106.05(a)(I) because the claims recite a "modification of conventional" LLM interaction (see example (i)), an "inventive distribution of functionality" between the computer (comparing the embeddings) and the LLM (provide diagnostic terms at a first stage and narrow the candidate tracking codes at a second stage) (see example (ii)).
Regarding (d), the Examiner respectfully disagrees. Initially, it appears that the Applicant has admitted on the record that LLMs are conventional, which the prior art of record also indicates is the case. In any event, Applicant’s invention is like neither of the cited examples. Example (i) is in reference to DDR Holdings where the court found that the “modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage” improved computer functionality because it provided a technical solution to a technical problem caused by the computer. Here, the Examiner cannot find, nor has the Applicant identified, any technological problem that was caused by the technological environment to which the claims are confined. The “problems” described in the background of the Specification all relate to business, training, or medical problems.
Example (ii) is in reference to BASCOM where the court found that the “inventive distribution of functionality within a network to filter Internet content” improved computer functionality because it provided for a non-routine, non-convention arrangement of internet filters which allowed the computer improved access to personalized internet filters. Here, the Examiner cannot find, nor has the Applicant identified, any non-routine, non-conventional arrangement. In fact, everything is located on the computer and thus cannot be a non-routine, non-conventional arrangement.
Rejection under 35 U.S.C. § 112
Regarding the indefiniteness rejection of Claims 1-18 and 24, the Applicant has amended (or cancelled) the claims rendering the bases of rejection moot.
Rejection under 35 U.S.C. § 102/103
Regarding the rejection of Claims 1-30, the Applicant has cancelled claims 7-10, 12, 16-18, and 22-26 rendering the rejection of those claims moot. Regarding the remaining claims, the Examiner has considered the Applicant’s arguments in light of the present amendments and withdraws the prior art rejection.
Conclusion
Prior art made of record though not relied upon in the present basis of rejection are noted in the attached PTO 892 and include:
Oermann (U.S. Pre-Grant Patent Publication No. 2025/0357007) which discloses implementing clinical predictive models that forecast clinical events that are trained machine learning models.
Sharma et al. (U.S. Pre-Grant Patent Publication No. 2024/0095455) which discloses a question-answer system that analyze EMR document and provides answers to clinician questions.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JASON S TIEDEMAN whose telephone number is (571)272-4594. The examiner can normally be reached 7:00am-4:00pm, off alternate Fridays.
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/JASON S TIEDEMAN/Primary Examiner, Art Unit 3683
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