DETAILED ACTION
This action is made in response to the amendments/remarks filed on January 28, 2026. This action is made final.
Claims 1-7 and 9-13 are pending. Claim 8 is presently canceled. Claims 1, 7, 10, 12, and 13 have been amended. Claims 1, 10, and 13 are independent claims.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Arguments
Applicant's arguments filed January 28, 2026 have been fully considered but they are not persuasive.
As to the 101 rejection, Applicant argues the claims are not directed to organizing human activity as the claimed operations require computerized access to distributed medical data, generation of proposal information, and controlled transmission to an external medical institution. However, the Examiner respectfully disagrees.
MPEP 2106. 04(a)(2)(II) states that a claimed invention is directed to certain methods of organizing human activity if the identified claim elements contain limitations that encompass fundamental economic principles or practices, commercial or legal interactions, or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). The Examiner submits that the identified claim elements represent a series of rules or instructions that a person or persons, with or without the aid of a computer, would follow to selectively share medical information with a medical provider/institution. The Examiner notes that Applicant’s Background describes the management of patient data as a human task (see 1:13-25). Furthermore, the Examiner submits that healthcare itself is inherently represents the organization of human activity. Applicant has not pointed to anything in the claims that fall outside of this characterization. Because the claim elements fall under a series of rules or instructions that a person or persons would follow to selectively share medical information with a medical provider, the claimed invention is directed to an abstract idea.
Applicant argues the claims are integrated into a practical application as they address the technical problem of indiscriminate transmission of irrelevant or unauthorized medical data. However, the examiner respectfully disagrees.
MPEP 2106.04(d)(1) and MPEP 2106.05(a) indicates that a practical application may be present where the claimed invention provides a technical solution to a technical problem. See, e.g., DDR Holdings, LLC. v. Hotels.com, L.P., 773 F.3d 1245, 1259 (Fed. Cir. 2014) (finding that claiming a website that retained the “look and feel” of a host webpage provided a technological solution to the problem of retention of website visitors by utilizing a website descriptor that emulated the “look and feel” of the host webpage, where the problem arose out of the internet and was thus a technical problem). Here, the Applicant’s argued problem is not a technological problem caused by computers. The problem of safeguarding data and sharing only desired/relevant data is not a problem cause by the computer, is it a problem that existed and/or exists regardless of whether a computer is involved in the process. At best, Applicant’s identified problem is an information management problem. Because no technological problem is present, the claims do not provide a practical application.
Applicant further argues the displaying a selection screen on a touch panel and receiving user selection of medical data via the touch panel prior to transmission is a technical solution. However, the examiner respectfully disagrees. As previously stated, the claims cannot provide a technical solution to a technical problem as the purported problem of the claims and specification are not technical. Furthermore, as addressed in the present 101 rejection below, the touch screen/touch panel amount to merely invoking a computer as a tool to perform the abstract idea and it a mere instruction to apply the abstract idea.
Furthermore, insomuch as Applicant asserts ordered combination amounts to significantly more, the examiner respectfully disagrees. The technological environment to which the claims are confined is a general-purpose computer performing generic computer functions (see 6:6-25) that is recited at a high level of generality and has been found by the courts to be insufficient to provide a practical application (see MPEP 2106.05(d)(II); Alice Corp.). As such, when viewed either individually or as an ordered combination, the additional elements do not provide significantly more to the abstract idea and the claims are not subject matter eligible.
Applicant’s argument with respect to the previous 103 rejection has been fully considered but is not persuasive. Applicant argues previously cited Abergel teaches selection of a provider, and not of the user for choosing the PHR data. However, the examiner respectfully disagrees. In at least Figs. 13-15 and [0090]-[00941], Abergel teaches a patient-side interface in which a patient can review, merge, and transmit a clinical document which the user/patient has selected. Accordingly, Abergel teaches the newly amended claim limitation.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 7 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
As to claim 7, the claim recites “wherein the priority level is set to a higher level when a reference frequency at which the medical data has been referred to in a medical institution exceeds a predetermined frequency threshold”. However, the originally filed specification fails to describe setting a higher frequency when the frequency to which the data been referred to exceeds a predetermined frequency threshold. Rather, the specification merely states a higher priority level is assigned to the data when the acquired reference frequency is higher (see 15:8-10). However, the originally filed specification fails to disclose what the reference frequency is to be compared to in order to determine whether or not it is higher. Appropriate correction is required. Applicant is reminded any amendments to the claims must be fully supported by the originally filed specification.
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 1-13 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 1-9 recite a non-transitory computer readable memory performing instructions for providing medical data, which is within the statutory class of a manufacture. Claim 10-12 recites a device for providing medical data, which is within the statutory class of a machine. Claim 13 recites a device for providing medical data, which is within the statutory class of a machine.
Claims are eligible for patent protection under § 101 if they are in one of the four statutory categories and not directed to a judicial exception to patentability. Alice Corp. v. CLS Bank Int'l, 573 U.S. ___ (2014). Claims 1-13, each considered as a whole and as an ordered combination, are directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
MPEP 2106 Step 2A – Prong 1:
The bolded limitations of:
Claims 1 and 10 (claim 1 being representative)
receive an input of disease information including a chief complaint from the user on a touch panel; access a plurality of medical data corresponding to the disease information that the user stored in a storage medium separated from a medical institution; pick up medical data from the plurality of medical data stored, which is to be provided to the medical institution by the user in accordance with the disease information; propose the picked medical data to the user before the picked medical data is provided to the medical institution; display a selection screen on the touch panel, the selection screen being a screen where the user can select the medical data from the plurality of medical data stored, which is to be provided to the medical institution by the user in accordance with the disease information; and transmit the medical data selected by the user on the selection screen displayed on the touch panel to a terminal device of the medical institution via a communication interface.
Claim 13
processing circuitry configured to receive information about the disease information from the terminal device according to claim 10 via a communication interface; generate the medical data to be provided to the medical institution by the user from a provision target database on the basis of the information about the disease information that has been received; and transmit the generated medical data to the terminal device via the communication interface
as presently drafted, under the broadest reasonable interpretation, covers a method of organizing human activity (i.e., managing personal behavior including following rules or instructions). For example, but for the noted computer elements, the claim encompasses a person following rules or instructions to select and send data in the manner described in the abstract idea. The examiner further notes that “methods of organizing human activity” includes a person’s interaction with a computer (see October 2019 Update: Subject Matter Eligibility at Pg. 5). If the claim limitation, under its broadest reasonable interpretation, covers managing persona behavior or interactions between people but for the recitation of generic computer components, then it falls within the “method of organizing human activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
MPEP 2106 Step 2A – Prong 2:
This judicial exception is not integrated into a practical application because there are no meaningful limitations that transform the exception into a patent eligible application. The additional elements merely amount to instructions to apply the exception using generic computer components (“a computer-readable non-transitory storage medium”, "a computer”, “a touch panel”, “storage medium”, “screen”, “a terminal device”, “communication interface”, “processing circuitry”, “a communication interface”, and “database”—all recited at a high level of generality). Although they have and execute instructions to perform the abstract idea itself, this also does not serve to integrate the abstract idea into a practical application as it merely amounts to instructions to "apply it." (See MPEP 2106.04(d)(2) indicating mere instructions to apply an abstract idea does not amount to integrating the abstract idea into a practical application). Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose meaningful limits on practicing the abstract idea. Therefore, the claims are directed to an abstract idea.
The claims only manipulate abstract data elements as part of performing the abstract idea. They do not set forth improvements to another technological field or the functioning of the computer itself and instead use computer elements as tools in a conventional way to improve the functioning of the abstract idea identified above. 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. None of the additional elements recited "offers a meaningful limitation beyond generally linking 'the use of the [method] to a particular technological environment,' that is, implementation via computers." Alice Corp., slip op. at 16 (citing Bilski v. Kappos, 561 U.S. 610, 611 (U.S. 2010)).
At the levels of abstraction described above, the claims do not readily lend themselves to a finding that they are directed to a nonabstract idea. Therefore, the analysis proceeds to step 2B. See BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1349 (Fed. Cir. 2016) ("The Enfish claims, understood in light of their specific limitations, were unambiguously directed to an improvement in computer capabilities. Here, in contrast, the claims and their specific limitations do not readily lend themselves to a step-one finding that they are directed to a nonabstract idea. We therefore defer our consideration of the specific claim limitations’ narrowing effect for step two.") (citations omitted).
MPEP 2106 Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception for the same reasons as presented in Step 2A Prong 2. Moreover, the additional elements recited are known and conventional generic computing elements (“a computer-readable non-transitory storage medium”, "a computer”, “a touch panel”, “storage medium”, “screen”, “a terminal device”, “communication interface”, “processing circuitry”, “a communication interface”, and “database”—see Specification Fig. 1, 6:8-7:15 describing the various components as general purpose, common, standard, known to one of ordinary skill, and at a high level of generality, and in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy the statutory disclosure requirements). Therefore, these additional elements amount 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 that amounts to significantly more. See MPEP 2106.05(f).
The Federal Circuit has recognized that "an invocation of already-available computers that are not themselves plausibly asserted to be an advance, for use in carrying out improved mathematical calculations, amounts to a recitation of what is 'well-understood, routine, [and] conventional.'" SAP Am., Inc. v. InvestPic, LLC, 890 F.3d 1016, 1023 (Fed. Cir. 2018) (alteration in original) (citing Mayo v. Prometheus, 566 U.S. 66, 73 (2012)). Apart from the instructions to implement the abstract idea, they only serve to perform well-understood functions (e.g., receiving, translating, and displaying data—see Specification above as well as Alice Corp.; Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307 (Fed. Cir. 2016); and Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334 (Fed. Cir. 2015) covering the well-known nature of these computer functions).
Dependent Claims
The limitations of dependent but for those addressed below merely set forth further refinements of the abstract idea without changing the analysis already presented. Claims 2, 4 recite providing user authorization to provide the data; claims 3, 5, 9 recite the type of data; claims 6-8 recite setting a priority to send the data; and claim 12 recites updating the patient data, which covers a method of organizing human activity (i.e., managing personal behavior including following rules or instructions).
Claims 2, 4, 11 further refine the abstract idea described in the independent claim and insomuch as they further recite an “input interface” and “output interface”, these additional elements are considered to “apply it” under both the practical application and significantly more analysis, as detailed in the analysis above.
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 (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.
Claim(s) 1-5 and 9-13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hudson (USPPN: 2014/0172451; hereinafter Hudson) in further view of Abergel et al. (USPPN: 2017/0098039; hereinafter Abergel).
As to claim 1, Hudson teaches A computer-readable non-transitory storage medium storing a program (e.g., see Fig. 1) for causing a computer of a user to:
receive an input of disease information including a chief complaint from the user on a touch panel (e.g., see [0028], [0042] wherein a user can provide a reason for a medical visit, including a symptom or disease);
access a plurality of medical data corresponding to the disease information that the user stored in a storage medium separated from a medical institution (e.g., see Fig. 1, [0052], [0053], [0056]-[0059] wherein user personal health record and other information regarding the reason for the health visit including information related to the suspected disease or condition, or information related to needed procedures, may be accessed remotely from the client and medical care providers);
pick up medical data from the plurality of medical data stored, which is to be provided to the medical institution by the user in accordance with the disease information (e.g., see [0056], [0059] wherein medical information is provided to the medical care provider, including information of the disease, medical condition, needed procedure, etc.).
While Hudson teaches that a user can manually enter or access data to be sent to the medical care provider, Hudson fails to explicitly teach propose the picked medical data to the user before the picked medical data is provided to the medical institution; display a selection screen on the touch panel, the selection screen being a screen where the user can select the medical data from the plurality of medical data stored, which is to be provided to the medical institution by the user in accordance with the disease information; and transmit the medical data selected by the user on the selection screen displayed on the touch panel to a terminal device of the medical institution via a communication interface.
However, in the same field of endeavor of patient healthcare, Abergel teaches propose the picked medical data to the user before the picked medical data is provided to the medical institution (e.g., see Figs. 13-15, [0090], [0092], [0094] wherein a patient may select one of a plurality of documents to review and share with a medical provider (i.e., data is proposed before provided to medical institution)); display a selection screen on the touch panel, the selection screen being a screen where the user can select the medical data from the plurality of medical data stored, which is to be provided to the medical institution by the user in accordance with the disease information (e.g., see Figs. 13-15, [0090], [0092], [0094] wherein a user can select one of the displayed medical data, via a touchscreen, to be sent to the medical provider, the medical data including conditions, diagnosis, problems, etc. (i.e., disease information)); and transmit the medical data selected by the user on the selection screen displayed on the touch panel to a terminal device of the medical institution via a communication interface (e.g., see Figs. 16-18, 35, [0092], [0094], [0122] wherein the transmitted data is sent to the selected medical provider via a communication network).
Accordingly, it would have been obvious to modify Hudson in view of Abergel with a reasonable expectation of success. One would have been motivated to make the modification in order to improve patient experience by permitting them to selectively share their personal health records (e.g., see [00067] of Abergel).
As to claim 2, the rejection of claim 1 is incorporated. While Hudson teaches that a user can manually enter or access data to be sent to the medical care provider and further teaches provide to the medical institution with the disease information (e.g., see [0056], [0059] wherein medical information is provided to the medical care provider, including information of the disease, medical condition, needed procedure, etc.), Hudson fails to explicitly teach receive an input manipulation from the user designating an authorized-provision-related personal health record (PHR) authorized to be provided to the medical institution within the medical data; and provide the authorized-provision-related PHR to the medical institution together with the disease information.
However, in the same field of endeavor of patient healthcare, Abergel teaches receive an input manipulation from the user designating an authorized-provision-related personal health record (PHR) authorized to be provided to the medical institution within the medical data (e.g., see Fig., 1, [0006], [0066], [0067] wherein a user can select a provider to send their PHR data); and provide the authorized-provision-related PHR to the medical institution together with the disease information (e.g., see Figs. 1, [0014], [0066]-[0068] wherein the authorized medical institution receives the PHR data as well as additional information including conditions, diagnostic results, etc.).
Accordingly, it would have been obvious to modify Hudson in view of Abergel with a reasonable expectation of success. One would have been motivated to make the modification in order to improve patient experience by permitting them to selectively share their personal health records (e.g., see [00067] of Abergel).
As to claim 3, the rejection of claim 2 is incorporated. Hudson further teaches wherein the computer-readable non-transitory storage medium stores the program for causing the computer to further include data related to previous medical examination and treatment results of the user in the medical data and provide the medical data to the medical institution (e.g., see [0004], [0052] wherein patient past medical history information is also provided, including information such as past illnesses, procedures, medications, etc.).
As to claim 4, the rejection of claim 3 is incorporated. Hudson further teaches wherein the computer-readable non-transitory storage medium stores the program for causing the computer to further receive an input of the medical data to be provided to the medical institution from the user (e.g., see [0057], [0066] wherein a user can provide manual input or additional information to be sent to the medical provider).
As to claim 5, the rejection of claim 3 is incorporated. Hudson further teaches wherein the medical data includes at least one item of life information about the life of the user and medical history information about a medical history of the user (e.g., see [0052] wherein medical information includes personal information and past medical history).
As to claim 9, the rejection of claim 1 is incorporated. Hudson further teaches wherein the medical data includes at least one item of prescription data related to prescriptions, inspection data related to inspections, medical examination and treatment facility data related to a specific medical examination and treatment facility, and home measurement data based on home measurement (e.g., see [0052] wherein medical information includes prescription information, prior medical procedures, etc.).
As to claim 10, the claim is directed to the device implementing the instruction of the computer-readable non-transitory storage medium of claim 1 and is similarly rejected.
As to claim 11, the rejection of claim 10 is incorporated. Hudson further teaches an input interface configured to input information received by the processing circuitry (e.g., see Fig. 1); and an output interface configured to output information proposed by the processing circuitry to the user (e.g., see Fig. 1).
As to claim 12, the rejection of claim 11 is incorporated. Hudson-Abergel further teaches wherein the processing circuitry is further configured to receive an input of an authorized-provision-related personal health record (PHR) whose provision is authorized by the user within the medical data and provides information about the disease information that has been received and the authorized-provision-related PHR to the medical institution (e.g., see [0069] of Hudson wherein the medical care provider can provide updates to the patient’s personal health record. See also Fig. 1, [0067] of Abergel wherein the medical institution is authorized to receive the PHR data and additionally teaches the medical institution can provide updates to the PHR data).
Accordingly, it would have been obvious to modify Hudson in view of Abergel with a reasonable expectation of success. One would have been motivated to make the modification in order to improve patient experience by permitting them to selectively share their personal health records (e.g., see [00067] of Abergel).
As to claim 13, Hudson teaches A medical information proposal device (e.g., see Fig. 1) comprising:
processing circuitry configured to receive information about the disease information from the terminal device according to claim 10 via a communication interface (e.g., Fig. 1 teaching processing circuitry and a communication interface. See also rejection of claim 10 above teaching the terminal device);
generate the medical data to be provided to the medical institution by the user from a provision target database on the basis of the information about the disease information that has been received (e.g., see [0042], [0060], [0066] wherein contextual information about the disease provided by the user and sent to the medical care provider); and
transmit the generated medical data to the terminal device via the communication interface (e.g., see [0066] wherein the information is sent to the medical care provider).
Claim(s) 6 and 7 is/are rejected under 35 U.S.C. 103 as being unpatentable over Hudson and Abergel, as applied above, and in further view of Reiner (USPPN: 2014/0324469; hereinafter Reiner).
As to claim 6, the rejection of claim 1 is incorporated. Hudson-Abergel fail to teach wherein a priority level for provision to the medical institution is assigned to the medical data.
However, in the same field of endeavor of patient health management, Reiner teaches wherein a priority level for provision to the medical institution is assigned to the medical data (e.g., see [0101], [0102] wherein data can be prioritized for population into a database for access by a medical institution).
Accordingly, it would have been obvious to modify Hudson-Abergel in view of Reiner with a reasonable expectation of success. One would have been motivated to make the modification in order to modify the degree of data granularity and importance based on individual needs (e.g., see [0123] of Reiner).
As to claim 7, the rejection of claim 6 is incorporated. Hudson-Abergel fail to teach wherein the priority level is set to a higher level when a reference frequency for the disease information is higher at which the medical data has been referred to in a medical institution exceeds a predetermined reference frequency threshold.
However, in the same field of endeavor of patient health management, Reiner teaches wherein the priority level is set to a higher level when a reference frequency for the disease information is higher at which the medical data has been referred to in a medical institution exceeds a predetermined reference frequency threshold (see 112 rejection above. e.g., see also [0123], [0137] wherein data is prioritized (i.e., priority level is higher) based on whether a medical provider having a higher need and or higher likelihood to request the data (i.e., medical data has been referred to exceeds a predetermined reference frequency)).
Accordingly, it would have been obvious to modify Hudson-Abergel in view of Reiner with a reasonable expectation of success. One would have been motivated to make the modification in order to modify the degree of data granularity and importance based on individual needs (e.g., see [0123] of Reiner).
It is noted that any citation to specific pages, columns, lines, or figures in the prior art references and any interpretation of the references should not be considered to be limiting in any way. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33, 216 USPQ 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 USPQ 275, 277 (CCPA 1968)). Further, a reference may be relied upon for all that it would have reasonably suggested to one having ordinary skill the art, including nonpreferred embodiments. Merck & Co. v. Biocraft Laboratories, 874 F.2d 804, 10 USPQ2d 1843 (Fed. Cir.), cert. denied, 493 U.S. 975 (1989). See also Upsher-Smith Labs. v. Pamlab, LLC, 412 F.3d 1319, 1323, 75 USPQ2d 1213, 1215 (Fed. Cir. 2005); Celeritas Technologies Ltd. v. Rockwell International Corp., 150 F.3d 1354, 1361, 47 USPQ2d 1516, 1522-23 (Fed. Cir. 1998).
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 STELLA HIGGS whose telephone number is (571)270-5891. The examiner can normally be reached Monday-Friday: 9-5PM.
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/STELLA HIGGS/Primary Examiner, Art Unit 3681
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