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
Claim Rejections - 35 USC § 101
1. 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 1-17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Each of the independent claims recites steps that result in obtaining sentences, and arranging order medical information in accordance with a predetermined rule of the sentences. All of the recited steps are processes that, under its broadest reasonable interpretation, cover the limitations under the organized human activity.
The claim features under its broadest reasonable interpretation, are certain methods of organizing human activity performed by generic computer components. For example, but for the “acquire” [human behavior: obtain, receive], and “determine” [human behavior: decide, discover, establish], in the context of this claim encompasses methods of organized human activity. If the claim limitations, under its broadest reasonable interpretation, covers fundamental economic practice, commercial or legal interaction or managing personal behavior or relationships or interactions between people but for the recitation of generic computer components, then it falls within the "system/method of organized human activity" grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. 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 claim is directed to an abstract idea.
"[A]fter determining that a claim is directed to a judicial exception, 'we then ask, [w]hat else is there in the claims before us?"' MPEP 2106.05 (emphasis in MPEP) citing Mayo, 566 U.S. at 78. "What is needed is an inventive concept in the non-abstract application realm." SAP Inc. v. lnvestPic, LLV, Appeal No. 2017-2081 (Fed. Cir. 2018). For step two, the examiner must "determine whether the claims do significantly more than simply describe [the] abstract method" and thus transform the abstract idea into patent-eligible subject matter. Ultramercial, Inc. v. Hutu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
A primary consideration when determining whether a claim recites "significantly more" than abstract idea is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. See MPEP 2106.0S{d). "If the additional element (or combination of elements) is a specific limitation other than what is well- understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility. If, however, the additional element {or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility." Id.
The Federal Circuit has held that "[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination." Bahr, Robert (April 19, 2018). Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) citing Berkheimer at 1369. "As set forth in MPEP 2106.05(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. This memo [] clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III [of the memo]." Berkheimer Memo at 3 (emphasis in memo).
Generally, "[i]f a patent uses generic computer components to implement an invention, it fails to recite an inventive concept under Alice step two." West View Research v. Audi, CAFC Appeal Nos. 2016-1947-51 (Fed. Cir. 04/19/2017) citing Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (explaining that "generic computer components such as an 'interface,' 'network,' and 'database' ... do not satisfy the inventive concept requirement"; but see Bascom (finding that an inventive concept may be found in the non-conventional and non-generic arrangement of the generic computer components, i.e., the installation of a filtering tool at a specific location, remote from the end- users, with customizable filtering features specific to each end user).
In accordance with the above guidance, the examiner has searched the claim(s) to determine whether there are any "additional elements" in the claims that constitute "inventive concept," thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 134 S. Ct. 2347 (2014). Those "additional features" must be more than "well understood, routine, conventional activity." See Alice. To note, "under the Mayo/Alice framework, a claim directed to a newly discovered ... abstract idea [] cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility." Genetic Techs. Ltd v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016); Diamond v. Diehr, 450 U.S. 175, 188-89 (1981).
As an example, the Federal Circuit has indicated that "inventive concept" can be found where the claims indicate the technological steps that are undertaken to overcome the stated problem(s) identified in Applicant's originally-filed Specification. See Trading Techs. Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017); but see IV v. Erie Indemnity, No. 2016-1128 (Fed. Cir. March 7, 2017) ("The claims are not focused on how usage of the XML tags alters the database in a way that leads to an improvement in technology of computer databases, as in Enfish.") (emphasis in original) and IV. v. Capital One, Nos. 2016-1077 (Fed. Cir. March 7, 2017) ("Indeed, the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more. See Elec. Power Grp., 830 F.3d 1356 (Fed. Cir. 2016) (cautioning against claims 'so result focused, so functional, as to effectively cover any solution to an identified problem.')"). Furthermore, "[a]bstraction is avoided or overcome when a proposed new application or computer-implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement to the capability of the system as a whole." Trading Techs. Int'l, Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017) (emphasis added).
In the search for inventive concept, the Berkheimer Memo describes "an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
A citation to one or more of the court decisions discussed in the MPEP as noting the well-understood, routine, conventional nature of the additional element(s).
A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
Accordingly, the examiner refers to the following generically-recited computer elements with their associated functions (and associated factual finding(s)), which are considered, individually and in combination, to be routine, conventional, and well-understood:
“an information processing apparatus comprising at least one processor, wherein the processor is configured to”,
“an information processing method comprising”
“a non-transitory computer-readable storage medium storing an information processing program for causing a computer to execute a process comprising”
As set forth in MPEP § 2106.0S(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. The Berkhiemer memo clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III the memo. As seen in paragraphs ([28, 99, 104, 111]) of the instant Specification and Symantec.. 838 F.3d at 1.321, 110 USPQ2d at. 1362, the elements are viewed to be well-understood, routine and conventional.
In sum, the Examiner finds that the claims "are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two." In re TLI Communications LLC, No. 2015-1372 (May 17, 2016). Similar to the claims in SAP v. lnvestPic, "[t]he claims here are ineligible because their innovation is an innovation in ineligible subject matter." Appeal No. 2017-2081 (Fed. Cir. 2018). In other words, "the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm." Id. Accordingly, when considered individually and in ordered combination, the examiner finds the claims to be directed to in-eligible subject matter.
Next, it is determined whether the claim integrates the judicial expectation into a practical application by identifying whether “any additional elements recited in the claim beyond the judicial exception(s)” and evaluate those elements to determine whether the integrate the judicial exception into a recognized practical application.
In this case, the additional elements do not integrate the judicial application into a practical application. The claim does not recite (i) an improvement to the functionality of a computer or other technology or technical field ; (ii) a "particular machine" to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation.
The additional elements beyond the judicial exception are by an information processing apparatus comprising at least one processor, an information processing method, a non-transitory computer-readable storage medium storing an information processing program for causing a computer to execute a process. Using a computing device to identify and determine a value and disposition of an object is merely applying the judicial exception using a generic computing component. Additionally, the claim identifies and determines a value and disposition of an object - the claim does not improve the functioning of the computing device, or other technology or field.
The claims do not recite specific limitations (alone or when considered as an ordered combination) that were not well understood, routine, and conventional. As set forth in the Specification, the disclosed subject matter can be implemented as a method, apparatus, or article of manufacture using standard programming and/or engineering techniques to produce software, firmware, hardware, or any combination thereof to control a computer to implement the disclosed subject matter.
Dependent claims 2-15 include further recited limitations, do not integrate the abstract idea into a practical application, and the additional elements taken individually and in combination, do not contribute to an inventive concept, In other words, the dependent claims are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
2. 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 (i.e., changing from AIA to pre-AIA ) 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.
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.
3. Claims 1-6, 10-12, 16-17 are rejected under 35 U.S.C. 103 as being unpatentable over submitted prior art Kaneda (JP 2012053632 A).
As to claim 1, Kaneda teaches an information processing apparatus comprising at least one processor (page 16 – a client-server information system comprises: a client and a server; a general purpose browser…), wherein the processor is configured to: acquire at least one finding sentences described after the producing the finding sentence, mutually different medical information (liver morphology, mass lesion, liver, gallbladder, kidney…) of the same subject (medical information) being described in finding sentences (page 8, page 9, 3rd and 5th – 6th paragraphs; page 17 under claims); and determine an arrangement order of the content of the finding sentence and the other finding input area 47and the other diagnosis input area 49 created by the editing processing part 42 as the integrated finding sentences information (page 9, last paragraph from the bottom – the arrangement order of the findings of liver and kidney is switched; last paragraph of page 11 to 1st paragraph of page 12 – when the change of the arrangement order is instructed by the organ unit display, the contents of the integrated finding text information also changed according to the instructions) in according with a predetermine rule based on the medical information described in each of sentence (3rd paragraph of page 7).
Kaneda does not explicitly discuss existing sentence and new sentence. However, Kaneda teaches the finding sentences and changes the arrangement order of each of the finding sentence in the integrated finding sentence (at least page 17 and 3rd paragraph page 18); hence there are sentences created: finding sentence(s), other finding sentence(s) described after the finding sentence.
It would have been obvious that there is at least one existing finding sentence and other finding sentence produced after the existing finding sentence produced earlier that constituting the medical report and finding sentences that the interpretation doctor particularly wants to emphasize is brought forward.
As to claim 2, Kaneda teaches the information processing apparatus according to claim 1, wherein the processor is configured to specify the medical information from each of the existing sentence and the new sentence (pages 8-9 – the left lobe is slightly swollen; the left lobe is 30x20mm in diameter and punctate calcification is observed,…, the irregular shape of 20x10mm in size, non-uniform and mixed mass is recognized …Shows a state immediately after the input of the finding sentence and the finding sentence displayed in the finding sentence display area selected by clicking in units of organs or finding items… finding sentences of “liver” and “kidney”).
As to claim 3, Kaneda teaches the information processing apparatus according to claim 1, wherein the processor is configured to determine, in a case in which there are a plurality of the existing sentences, the arrangement order including rearrangement of the existing sentences (page 9, 5th paragraph – the organ unit display change buttons 72a and 72b are used to change the order of the observations in the same organ for each paragraph and the organ internal display change buttons 73a and 73b are used to change the order of the finding sentences in the observation item unit; page 13, last paragraph – it is possible to rearrange the finding sentences in the organ unit or the organ).
As to claim 4, Kaneda teaches the information processing apparatus according to claim 1, wherein the processor is configured to determine, in a case in which there are a plurality of the existing sentences, the arrangement order for determining an insertion position of the new sentence while an arrangement order of the plurality of existing sentences is fixed (page 8, 1st paragraph – searching previous report 18 for the selection input state and findings, a report window 65 reproducing the sentence and diagnosis name displayed and only the difference from the past report 18 to be corrected; hence it would have been obvious reproducing sentence inserted with the difference findings from past report 18 and existing sentence is fixed or staying the same).
As to claim 5, Kaneda teaches the information processing apparatus according to claim 1, wherein: the medical information indicates at least one of a type of an organ, a type of a lesion, or a type of an examination (page 5, 5th paragraph – the term selection input includes large classification for each organ such as liver and bile duct and a small classification has findings items categorized as liver morphology and mass lesion), and the processor is configured to determine the arrangement order such that the existing sentence and the new sentence are arranged for each type of the medical information (page 9, 6th paragraph – arrangement order of the findings of liver and kidney is switched; page 10, last paragraph – page 11, 1st paragraph).
As to claim 6, Kaneda teaches the information processing apparatus according to claim 1, wherein the medical information indicates a property of a lesion (page 3, 1st and 3rd paragraphs – determine a therapeutic effect on a lesion being treated and a metastasis search for examining the presence or absence of a metastatic lesion recorded; page 5, 5th paragraph – categorize liver morphology and mass lesion; page 11, 1st paragraph – mass lesion is 2 and other is 3), and determine the arrangement order such that the existing sentence and the new sentence are arranged for each property of the medical information (page 14, 3rd paragraph – the state is switched to the small classification massage lesion in this state and reproducing the selection input state is displayed).
As to claim 10, Kaneda teaches acquire a past document including a sentence describing medical information of the subject; and determine the arrangement order based on whether or not the medical information corresponding to the existing sentence and the new sentence is included in the past document (page 7, page 12, 3rd - 4th paragraphs – past report 18 document including patient information: patient ID, patient name, examination ID, examination date, examination information such as examination purpose, finding information and the like; data of the selected input state of each finding information of the past report 18 used for copying is read out, and the selected input state is reproduced in the template window 45 and displayed; and determine an arrangement order of the content of the finding sentence and the other finding input area 47and the other diagnosis input area 49 created by the editing processing part 42 as the integrated finding sentences information (page 9, last paragraph from the bottom – the arrangement order of the findings of liver and kidney is switched; last paragraph of page 11 to 1st paragraph of page 12 – when the change of the arrangement order is instructed by the organ unit display, the contents of the integrated finding text information also changed according to the instructions; it would have obvious to arrange medical information that copied included in past report that have not been arranged yet in order to improve convenience by adopting a configuration in which an interpreting doctor can freely add, modify and delete a typical pattern).
As to claim 11, Kaneda teaches the information processing apparatus according to claim 1, wherein at least one of the existing sentence or new sentence includes a sentence generated based on a medical image (page 12, 4th paragraph – the report 18 stores integrate diagnosis name information, image ID of the examination image referred to when the report created and the finding sentence based on a term or a natural sentence selected and inputted in each of the input areas of the template window is displayed; page 8, 2nd paragraph; page 4, 7th paragraph – an image display window for observing the inspection image 17 is output to display and various report editing window used to create the report 18 are output to the other display).
As to claim 12, Kaneda teaches the information processing apparatus according to claim 1, wherein the processor is configured to rearrange the existing sentence and the new sentence based on the determined arrangement order (page 13, last paragraph).
Claims 16 and 17 are rejected for the same reasons as discussed above with respect to claim 1. Furthermore, Kaneda teaches an information processing method (title, under technical-field, page 19 claim 14) and a computer readable storage medium storing an information processing (page 19 and under claims).
4. Claims 7-8, 15 are rejected under 35 U.S.C. 103 as being unpatentable over submitted prior art Kaneda (JP 2012053632 A) in view of Oki et al. (JP 2009238039 A).
As to claim 7, Kaneda does not explicitly discuss the information processing apparatus according to claim 1, wherein the processor is configured to: specify a factuality regarding the medical information from each of the sentence and determine the arrangement order such that the sentences are arranged for each factuality regarding the medical information.
Oki teaches specify a factuality regarding the medical information from each of the sentence (page 16, 6th paragraph – medical reports, key information such as importance, proficiency and certainty is associated with the findings) and determine the arrangement order such that the sentences are arranged for each factuality regarding the medical information (Fig. 8 and page 11, 5th - 6th and last paragraphs – plurality of diagnosis disease names and evaluation values of importance determined in advance according to the respective diagnosis disease names are recorded in association with each other and the higher the numerical value, the higher the importance; displaying high importance evaluation value at the top).
It would have been obvious before the effective filing date of the claimed invention to incorporate the teachings of Oki into the teachings of Kaneda for the purpose of displaying high importance evaluation value at the top, easy to find important findings and they are not buried in other findings. Thereby the readability of a report or sentence improves.
As to claim 8, Oki teaches the information processing apparatus according to claim 1, wherein the medical information has a predetermined importance and determine the arrangement order such that the sentences with a higher importance of the medical information are positioned closer to a beginning of a sentence (Fig. 8 and page 11, 5th - 6th and last paragraphs – plurality of diagnosis disease names and evaluation values of importance determined in advance according to the respective diagnosis disease names are recorded in association with each other and the higher the numerical value, the higher the importance; displaying high importance evaluation value at the top in order to easy to find important findings and they are not buried in other findings).
As to claim 15, Kaneda does not explicitly discuss the information processing apparatus according to claim 1, wherein the processor is configured to display information indicating a rule for the arrangement order on a display (page 6, 5th – 6th paragraphs – other finding input area 47 and other diagnosis input are, input boxed for inputting natural sentences related to findings and diagnoses that cannot be expressed in the term selection input area and the diagnosis name input area are arranged…All organ normal buttons are arranged on the upper part of the template windows; page 11, 4th paragraph – the integrated finding text information indicates the order of arrangement of all finding sentences displayed in the finding sentence display area and is expressed in a hierarchical structure by dividing the finding ID into a large classification, a small classification). Oki teaches plurality of diagnosis disease names and evaluation values of importance determined in advance according to the respective diagnosis disease names are recorded in association with each other and the higher the numerical value, the higher the importance; displaying high importance evaluation value at the top (Fig. 8 and page 11, 5th - 6th and last paragraphs).
5. Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over submitted prior art Kaneda (JP 2012053632 A) in view of Kaneko et al. (JP 2004265039 A).
As to claim 9, Kaneda does not explicitly discuss the information processing apparatus according to claim 1, wherein the medical information indicates a point in time at which an examination is performed, and determine the arrangement order such that the sentences are arranged in chronological order.
Kaneko teaches the medical information database at the time of the medical examination of the examinee is transmitted to the processing computer ([0029]); trend of the head size of the fetus in a time series in comparison with the standard upper limit and lower limit, a trend can be displayed in chronological order by designating any of these ([0042]).
It would have been obvious before the effective filing date of the claimed invention to incorporate the teachings of Kaneko into the teachings of Kaneda for the purpose of possible to predict a future trend and a prediction request can be made.
6. Claims 13-14 are rejected under 35 U.S.C. 103 as being unpatentable over submitted prior art Kaneda (JP 2012053632 A) in view of (JP 4125439 B2).
As to claim 13, Kaneda does not explicitly discuss the information processing apparatus according to claim 12, wherein the processor is configured to highlight the new sentence and display the existing sentence and the new sentence after the rearrangement on a display.
JP 4125439 B2 teaches the detected attention information in the medical record is highlighted, for example, displayed in a different color ([0100]) and highlighting the designated area as attention information in distinction from the display of other areas ([0118]); the rearranged medical history information is displayed at step 4_3; the rearrangement corresponds to a change from the medical record ([0103]; the medical record display screen is switched…the medical record is read and edited in accordance with the arrangement order to the medical history information [0104] and a medical record displayed in accordance with the arrangement order of the medical record history information after the rearrangement [0105]).
It would have been obvious before the effective filing date of the claimed invention to incorporate the teachings of JP 4125439 B2 into the teachings of Kaneda for the purpose of reducing the time for reading the medical point when referring to the past medical record.
As to claim 14, JP 4125439 B2 teaches the information processing apparatus according to claim 12, wherein the processor is configured to highlight, in a case in which the existing sentence is rearranged, the rearranged existing sentence and display the existing sentence and the new sentence after the rearrangement on a display ([0100] - the detected attention information in the medical record is highlighted, for example, displayed in a different color; and [0118] - highlighting the designated area as attention information in distinction from the display of other areas; the rearranged medical history information is displayed at step 4_3; [0103] - the rearrangement corresponds to a change from the medical record; [0104] - the medical record display screen is switched…the medical record is read and edited in accordance with the arrangement order to the medical history information; and [0105] - a medical record displayed in accordance with the arrangement order of the medical record history information after the rearrangement).
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUYNH H NGUYEN whose telephone number is (571)272-7489. The examiner can normally be reached Monday-Thursday 7:30AM-5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ahmad Matar can be reached on 571-272-7488. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QUYNH H NGUYEN/Primary Examiner, Art Unit 2693