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 .
Claim Objections
Claim 1 is objected to because of the following informalities: in line 3, “preform” should read “perform”. 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 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent Claims
Step 1 analysis:
Claim 1 is drawn to an apparatus (i.e., machine), Claim 10 is drawn to a method (i.e., process), and Claim 11 is drawn to a non-transitory machine-readable medium (i.e., manufacture), which are all within the four statutory categories. (Step 1 – Yes, the claim falls into one of the statutory categories).
Step 2A analysis – Prong One:
Claim 10 recites:
A health information output method to be performed by a computer, the method comprising,
by the computer:
being capable of utilizing a first storage that stores, for each of a plurality of individuals, health information of the individual, and individual identification information identifying the individual in association with each other, and being capable of utilizing a second storage that stores, for each of a plurality of the individuals, relative information being capable of determining the individual identification information of a relative of the individual;
acquiring the individual identification information of a target person;
determining the individual identification information of a relative of the target person by using the second storage; and
acquiring, from the first storage, the health information associated with the determined individual identification information, and outputting the acquired health information.
The series of steps as recited above also falls within the “mental processes” grouping of abstract ideas, and describes concepts that can be performed in the human mind through observation, evaluation, judgement, and opinion. Determining the individual identification number of a person as well as determining a relative of a person are steps that can be performed in the human mind, with or without the use of a physical aid. Therefore, the claim recites an abstract idea of a mental process.
Claims 1 and 11 recite/describe nearly identical steps as claim 10 (and therefore also recite limitations that fall within this subject matter grouping of abstract ideas), and these claims are therefore determined to recite an abstract idea under the same analysis.
Step 2A analysis – Prong 2:
This judicial exception is not integrated into a practical application. Specifically, independent claims 1, 10, and 11 recite the following additional elements beyond the abstract idea: a computer, utilizing a first storage, utilizing a second storage, at least one memory configured to store instruction, at least one processor configured to execute the instructions, and a non-transitory computer-readable medium storing a program. These limitations are recited at a high level of generality and amount to no more than mere instructions to apply the exception using generic computer components. The limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
Specifically, The processor is a processor to be achieved by a central processing unit (CPU), a graphics processing unit (GPU), or the like (specification par. 50). The memory is a main storage apparatus to be achieved by a random access memory (RAM) or the like (specification par. 51). The storage device is an auxiliary storage apparatus to be achieved by a hard disk drive (HDD), a solid state drive (SSD), a removable medium such as a memory card, a read only memory (ROM), or the like (specification par. 52).
The limitations “acquiring the individual identification information of a target person” and “acquiring, from the first storage, the health information associated with the determined individual identification information, and outputting the acquired health information” are mere data gathering and output recited at a high level of generality, and thus are insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). In addition, all uses of the recited judicial exceptions require such data gathering and output, and, as such, these limitations do not impose any meaningful limits on the claim. These limitations amount to necessary data gathering and outputting. See MPEP 2106.05.
The additional elements do not show an improvement to the functioning of a computer or to any other technology, rather the additional elements perform general computing functions and do not indicate how the particular combination improves any technology or provides a technical solution to a technical problem. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, Claims 1, 10, and 11 are directed to an abstract idea without practical application. (Step 2A – Prong 2: No, the additional elements are not integrated into a practical application).
Step 2B analysis:
As discussed above in “Step 2A analysis – Prong 2”, the identified additional elements in Independent Claims 1, 10, and 11 are equivalent to adding the words “apply it” on a generic computer. Therefore, the claims as a whole do not amount to significantly more than the judicial exception itself.
Additional elements of “acquiring individual identification information of a person”, “acquiring health information”, and “outputting the acquired health information” were found to be insignificant extra-solution activity in Step 2A, Prong Two, because they were determined to be insignificant limitations as necessary data gathering and outputting. However, a conclusion that an additional element is insignificant extra-solution activity in Step 2A, Prong Two should be re-evaluated in Step 2B. See MPEP 2106.05, subsection I.A. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well understood, routine, and conventional in the field. See MPEP 2106.05(g).
Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. Here, the claim limitations are similar to receiving and sending information over a network (Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); OJP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); See MPEP 2106.05(d)(ll)(i)).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above with respect to integration of the abstract idea into a practical application, using the additional elements to perform the steps for provider prioritization amount to no more than using computer related devices to implement the abstract idea.
The use of a computer or processor to merely automate or implement the abstract idea cannot provide significantly more than the abstract idea itself. (See MPEP 2106.05(f) where mere instructions to apply an exception does not render an abstract idea patent eligible). There is no indication that the additional limitations alone or in combination improves the functioning of a computer or any other technology, improves another technology or technical field, or effects a transformation or reduction of a particular article to a different state or thing. Therefore, the claims are not patent eligible. The Examiner has therefore determined that no additional element, or combination of additional claims elements is/are sufficient to ensure the claims amount to significantly more than the abstract idea identified above (Step 2B: Independent claims - NO).
Dependent Claims
Dependent Claims 2-9 are directed towards elements used to describe the individual identification information of the relative and the health information. These elements include determining the disclosed relative information associated with the individual identification information, determining the individual identification information of the relative, the relative being a grandparent, child, grandchild, or a sibling, and defining a disclosure range of health information.
The elements as recited above falls within the “mental processes” grouping of abstract
ideas, and describes concepts that can be performed in the human mind through observation,
evaluation, judgement, and opinion. Therefore, the dependent claims recite an abstract idea of a mental process.
This judicial exception is not integrated into a practical application. Specifically, the dependent
claims recite the following additional elements beyond the abstract idea: outputting the health information, the first storage including a first sub storage that stores medical record information of the individual, and a second sub storage that stores birth information, and updating the second storage. These limitations are recited at a high level of generality and amount to no more than mere instructions to apply the exception using generic computer components. The limitations do not impose any meaningful limits on practicing the abstract idea, and therefore do not integrate the abstract idea into a practical application (see MPEP 2106.05(f)).
The limitation “outputting the health information” is mere data gathering and output recited at a high level of generality, and thus are insignificant extra-solution activity. See MPEP 2106.05(g) (“whether the limitation is significant”). In addition, all uses of the recited judicial exceptions require such data gathering and output, and, as such, these limitations do not impose any meaningful limits on the claim. These limitations amount to necessary data gathering and outputting. See MPEP 2106.05.
The additional elements do not show an improvement to the functioning of a computer or to
any other technology, rather the additional elements perform general computing functions and do not
indicate how the particular combination improves any technology or provides a technical solution to a
technical problem. Accordingly, these additional elements, when considered separately and as an
ordered combination, do not integrate the abstract idea into a practical application because they do not
impose any meaningful limits on practicing the abstract idea. Therefore, the dependent claims are
directed to an abstract idea without practical application. (Step 2A – Prong 2: No, the additional
elements are not integrated into a practical application).
As discussed above, the identified additional elements in Dependent Claims 2-9 are equivalent to adding the words “apply it” on a generic computer. Therefore, the claims as a whole do not amount to significantly more than the judicial exception itself.
The additional element of “outputting the health information” was found to be insignificant extra-solution activity in Step 2A, Prong Two, because it were determined to be an insignificant limitation as necessary data gathering and outputting. However, a conclusion that an additional element is insignificant extra-solution activity in Step 2A, Prong Two should be re-evaluated in Step 2B. See MPEP 2106.05, subsection I.A. At Step 2B, the evaluation of the insignificant extra-solution activity consideration takes into account whether or not the extra-solution activity is well understood, routine, and conventional in the field. See MPEP 2106.05(g).
Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. Here, the claim limitations are similar to receiving and sending information over a network (Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); OJP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); See MPEP 2106.05(d)(ll)(i)).
The use of a computer or processor to merely automate or implement the abstract idea cannot
provide significantly more than the abstract idea itself. (See MPEP 2106.05(f) where mere instructions to apply an exception does not render an abstract idea patent eligible). There is no indication that the
additional limitations alone or in combination improves the functioning of a computer or any other
technology, improves another technology or technical field, or effects a transformation or reduction of a
particular article to a different state or thing. Therefore, the claims are not patent eligible.
The Examiner has therefore determined that no additional element, or combination of
additional claims elements is/are sufficient to ensure the claims amount to significantly more than the
abstract idea identified above (Step 2B: Dependent claims - NO).
Claim Rejections - 35 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 10-11 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Naoki (JP-2021163418-A).
Regarding Claim 10, Naoki teaches the following:
A health information output method (Abstract; Pg. 7, par. 1: A method of managing personal medical information) to be performed by a computer (Pg. 3, par. 1: The PHR management unit is connected to a large number of terminals such as PCs via a network or the like, the method comprising,
by the computer (Pg. 3, par. 1: The PHR management unit is connected to a large number of terminals such as PCs via a network or the like):
being capable of utilizing a first storage that stores, for each of a plurality of individuals, health information of the individual, and individual identification information identifying the individual in association with each other (Pg. 3, par. 4: Personal medical information is stored in a server device (storage unit). Also see Pg. 3, par. 9-10: Personal identification numbers are also stored, and can be that of the owner of the record or information of a child in the womb of the parent in association with the personal ID of the parent.), and being capable of utilizing a second storage that stores (See pg. 3, par. 1: The PHR management unit 100 includes a server group (storage unit) and may include a plurality of server devices (storage units). Also see pg. 7, par. 3, where a first and second storage unit is disclosed.), for each of a plurality of the individuals, relative information being capable of determining the individual identification information of a relative of the individual (See pg. 4, par. 14: In step S7001, the PHR management unit uses the child's personal ID as a clue to the real mother's (parent's) personal ID based on the correspondence between the recorded child's personal ID and the real mother's (parent's) personal ID. Get the child's branch number.);
acquiring the individual identification information of a target person (See pg. 4, par. 13: When the PHR is accessed for the first time using the child's personal ID, the PHR management unit automatically creates the PHR associated with the child's personal ID);
determining the individual identification information of a relative of the target person by using the second storage (See pg. 5, par. 15: the PHR management unit searches for the record of the real mother); and
acquiring, from the first storage, the health information associated with the determined individual identification information (See pg. 5, par. 15: the PHR management unit searches for and acquires the record of the real mother), and outputting the acquired health information (See Pg. 4, par. 11: The stored prenatal information of the child and the personal medical information of the parent are displayed on the monitor screen (display unit) provided in the personal terminal 101 or the medical terminal 102).
Regarding Clam 11, Naoki teaches the following:
A non-transitory computer-readable medium storing a program causing a computer (Pg. 3, par. 1: The PHR management unit is connected to a large number of terminals such as PCs via a network or the like) to perform operations comprising (Pg. 3, par. 1: a program for executing the management of personal medical information is stored in a recording medium):
the computer (Pg. 3, par. 1: The PHR management unit is connected to a large number of terminals such as PCs via a network or the like) is capable of utilizing a first storage that stores, for each of a plurality of individuals, health information of the individual, and individual identification information identifying the individual in association with each other (Pg. 3, par. 4: Personal medical information is stored in a server device (storage unit). Also see Pg. 3, par. 9-10: Personal identification numbers are also stored, and can be that of the owner of the record or information of a child in the womb of the parent in association with the personal ID of the parent.), and is capable of utilizing a second storage that stores (See pg. 3, par. 1: The PHR management unit 100 includes a server group (storage unit) and may include a plurality of server devices (storage units). Also see pg. 7, par. 3, where a first and second storage unit is disclosed.), for each of a plurality of the individuals, relative information being capable of determining the individual identification information of a relative of the individual (See pg. 4, par. 14: In step S7001, the PHR management unit uses the child's personal ID as a clue to the real mother's (parent's) personal ID based on the correspondence between the recorded child's personal ID and the real mother's (parent's) personal ID. Get the child's branch number.),
acquiring the individual identification information of a target person (See pg. 4, par. 13: When the PHR is accessed for the first time using the child's personal ID, the PHR management unit automatically creates the PHR associated with the child's personal ID);
determining the individual identification information of a relative of the target person by using the second storage (See pg. 5, par. 15: the PHR management unit searches for the record of the real mother); and
acquiring, from the first storage, the health information associated with the determined individual identification information (See pg. 5, par. 15: the PHR management unit searches for and acquires the record of the real mother), and outputting the acquired health information (See Pg. 4, par. 11: The stored prenatal information of the child and the personal medical information of the parent are displayed on the monitor screen (display unit) provided in the personal terminal 101 or the medical terminal 102).
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.
Claims 1-9 are rejected under 35 U.S.C. 103 as being unpatentable over Naoki (JP-2021163418-A) in view of Nobuyuki (CN-102103662-A).
Regarding Claim 1, Naoki teaches:
At least one processor configured to execute the instructions to perform operations comprising (See pg. 3, par. 1: The PHR management unit 100 is connected to a large number of terminals such as PCs via a network or the like, and includes an interface capable of creating, updating, deleting, or acquiring records according to a request from each terminal. In the PHR management unit 100, a program for executing the management of personal medical information):
being capable of utilizing a first storage that stores, for each of a plurality of individuals, health information of the individual, and individual identification information identifying the individual in association with each other (Pg. 3, par. 4: Personal medical information is stored in a server device (storage unit). Also see Pg. 3, par. 9-10: Personal identification numbers are also stored, and can be that of the owner of the record or information of a child in the womb of the parent in association with the personal ID of the parent.),
being capable of utilizing a second storage that stores (See pg. 3, par. 1: The PHR management unit 100 includes a server group (storage unit) and may include a plurality of server devices (storage units). Also see pg. 7, par. 3, where a first and second storage unit is disclosed.), for each of a plurality of the individuals, relative information being capable of determining the individual identification information of a relative of the individual (See pg. 4, par. 14: In step S7001, the PHR management unit uses the child's personal ID as a clue to the real mother's (parent's) personal ID based on the correspondence between the recorded child's personal ID and the real mother's (parent's) personal ID. Get the child's branch number.),
acquiring the individual identification information of a target person (See pg. 4, par. 13: When the PHR is accessed for the first time using the child's personal ID, the PHR management unit automatically creates the PHR associated with the child's personal ID);
determining the individual identification information of a relative of the target person by using the second storage (See pg. 5, par. 15: the PHR management unit searches for the record of the real mother); and
acquiring, from the first storage, the health information associated with the individual identification information determined (See pg. 5, par. 15: the PHR management unit searches for and acquires the record of the real mother), and outputting the acquired health information (See Pg. 4, par. 11: The stored prenatal information of the child and the personal medical information of the parent are displayed on the monitor screen (display unit) provided in the personal terminal 101 or the medical terminal 102).
However, Naoki does not teach the following that is met by Nobuyuki:
A health information output apparatus (See Nobuyuki abstract: a medical information display device and a personal information management system) comprising:
At least one memory configured to store instructions (See Nobuyuki abstract: a memory (30) for examination information stores the personally identifying information); and
It would have been obvious to one of ordinary skill in the art before the effective filing date to have combined the teachings of Naoki with the apparatus and memory of Nobuyuki since the claimed invention is only a combination of these well-known elements which would have performed the same function in combination as each did separately. Naoki already discloses a recording medium that contains a program for executing the management of the system, therefore, simply adding a memory and an apparatus would perform the same function of executing the process as taught by Naoki. Therefore, the results would have been predictable to one of ordinary skill in the art (MPEP 2143).
Regarding Claim 2, the combination of Naoki and Nobuyuki teaches The health information output apparatus according to claim 1, and Naoki further teaches:
wherein disclosed relative information that determines a relative being capable of disclosing the health information of the individual is defined for each piece of the individual identification information of a plurality of the individuals (Pg. 3, par. 11: The referenceable personal ID is a personal ID of a user who is allowed to refer to the record other than the user who is the owner of the record.), and
determining the disclosed relative information associated with the individual identification information determined, and outputting the health information, when the target person is included in the disclosed relative information (See Pg. 4, par. 11: The stored prenatal information of the child and the personal medical information of the parent are displayed on the monitor screen (display unit) provided in the personal terminal 101 or the medical terminal 102).
Regarding Claim 3, the combination of Naoki and Nobuyuki teaches The health information output apparatus according to claim 1, and Naoki further teaches:
The health information output apparatus according to claim 1, wherein determining the individual identification information of the relative within a predetermined range (According to Naoki, the individual identification information is limited to that of a child or a parent, and therefore has a predetermined range for searching for the relative information. See pg. 5. Par. 15 and the claims on pg. 7.).
Regarding Claim 4, the combination of Naoki and Nobuyuki teaches The health information output apparatus according to claim 3, and Naoki further teaches:
The health information output apparatus according to claim 3, wherein the relative within the predetermined range is at least one of a parent, a grandparent, a child, a grandchild, and a sibling (See pg. 5, par. 15: the PHR management unit searches for and acquires the record of the real mother. See also pg. 4, par. 14: In step S7001, the PHR management unit uses the child's personal ID as a clue to the real mother's (parent's) personal ID based on the correspondence between the recorded child's personal ID and the real mother's (parent's) personal ID. Get the child's branch number).
Regarding Claim 5, the combination of Naoki and Nobuyuki teaches The health information output apparatus according to claim 1, and Naoki further teaches:
The health information output apparatus according to claim 1, wherein disclosure range information indicating a range of the health information disclosable to a relative is defined (See pg. 3, par. 11: The referenceable personal ID is a personal ID of a user who is allowed to refer to the record other than the user who is the owner of the record. In addition to setting the personal ID of the owner of the record, it is used when the record of the child can be referred to by a guardian such as a parent), and
defining a range of the health information to be output according to the disclosure range information (See pg. 6, par. 1: by making the child's record (prenatal information of the child) and the mother's record of the child in the womb mutually referenceable, health and medical information of the period of the child in the womb can be referred to).
Regarding Claim 6, the combination of Naoki and Nobuyuki teaches The health information output apparatus according to claim 5, and Naoki further teaches:
wherein a disclosure range of the health information associated with the individual identification information is defined for each of a plurality of pieces of the individual identification information (See pg. 6, par. 1: by making the child's record (prenatal information of the child) and the mother's record of the child in the womb mutually referenceable, health and medical information of the period of the child in the womb can be referred to).
Regarding Claim 7, the combination of Naoki and Nobuyuki teaches The health information output apparatus according to claim 1, and Naoki further teaches:
wherein the health information includes birth information including at least one of progress information when the individual is a fetus, progress information when the individual is born, and progress information when the individual is an infant (See pg. 4, par. 2: when the doctor inputs the medical information of the patient (parent), the electronic medical record checks whether the patient is pregnant. The electronic medical record checks the contents of the patient's record, for example, for the past 11 months, and determines that the patient is pregnant if there is a record of pregnancy and no record of childbirth thereafter. See also pg. 4, par. 6: in the record of the branch number 1 representing the foetation (child), if the body weight has increased by 10 kg from one month ago, a warning may be given to the doctor that the branch number may be different).
Regarding Claim 8, the combination of Naoki and Nobuyuki teaches The health information output apparatus according to claim 1, and Naoki further teaches:
The health information output apparatus according to claim 7, wherein the first storage includes a first sub storage that stores medical record information of the individual, and a second sub storage that stores the birth information (Pg. 7, par. 5: wherein the prenatal information of the child is stored in the first storage unit so as to be distinguishable from the personal medical information of the parent. i.e., the birth information and the medical information are sorted separately within the first storage unit.).
Regarding Claim 9, the combination of Naoki and Nobuyuki teaches The health information output apparatus according to claim 1, and Naoki further teaches:
The health information output apparatus according to claim 1, wherein the second storage is updated according to a birth registration (See Pg. 7, par. 3: wherein the prenatal information of the child is copied and stored from the first storage unit to the second storage unit after the birth of the child when the child is issued their personal ID (see also pg. 5, par. 5)).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALEXIS K VAN DUZER whose telephone number is (571)270-5832. The examiner can normally be reached Monday thru Thursday 8-5 CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marc Jimenez can be reached at (571) 272-4530. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/A.K.V./Examiner, Art Unit 3681
/MARC Q JIMENEZ/Supervisory Patent Examiner, Art Unit 3681