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
Claims 7,13-20 were pending after a preliminary amendment on 11/12/24. However, by a phone call placed by the examiner on 9/23/25 to attorney Charles Meeker to solicit an oral restriction without traverse, it was agreed to examiner claim 7 and withdraw claims 13-19 because the applicant method claims 7,13,17 and 19 are directed to different inventions. This action is a non-final office action on the merits for claim 7 which was agreed to be pending.
Election/Restriction
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claim 7, drawn to generating a cost sensitive index with weighting done by impact feature classified in G06Q40/08.
II. Claim 13-16, drawn to a cost sensitive index for pharmaceuticals using Big data, classified in G06Q 40/08.
III. Claims 17-18 are drawn to a sensitive medical index based on syntactical analysis classified in G16H 15/00
IV. Claims 19-20 are drawn to a statically sensitive medical index based on per capita costs.
Classified in G16H70/40
The inventions are independent or distinct, each from the other because:
Inventions I, III, III and IV are related as subcombinations disclosed as usable together in a single combination. The subcombinations are distinct if they do not overlap in scope and are not obvious variants, and if it is shown that at least one subcombination is separately usable. In the instant case, subcombination II has separate utility such as directed to pharmaceutical cost. See MPEP § 806.05(d).
The examiner has required restriction between subcombinations usable together. Where applicant elects a subcombination and claims thereto are subsequently found allowable, any claim(s) depending from or otherwise requiring all the limitations of the allowable subcombination will be examined for patentability in accordance with 37 CFR 1.104. See MPEP § 821.04(a). Applicant is advised that if any claim presented in a divisional application is anticipated by, or includes all the limitations of, a claim that is allowable in the present application, such claim may be subject to provisional statutory and/or nonstatutory double patenting rejections over the claims of the instant application.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
Here applicant has four inventions that are separate in content. The applicant agreed to restrict without traverse selecting invention I. Applicant was offered the alternative to create parallel sets of claims or to reconfigure the claims to remove the restriction concerns. However, applicant attorney elected invention I without traverse.
Applicant is advised that the reply to this requirement to be complete must include (i) an election of an invention to be examined even though the requirement may be traversed (37 CFR 1.143) and (ii) identification of the claims encompassing the elected invention.
The election of an invention may be made with or without traverse. To reserve a right to petition, the election must be made with traverse. If the reply does not distinctly and specifically point out supposed errors in the restriction requirement, the election shall be treated as an election without traverse. Traversal must be presented at the time of election in order to be considered timely. Failure to timely traverse the requirement will result in the loss of right to petition under 37 CFR 1.144. If claims are added after the election, applicant must indicate which of these claims are readable upon the elected invention.
Should applicant traverse on the ground that the inventions are not patentably distinct, applicant should submit evidence or identify such evidence now of record showing the inventions to be obvious variants or clearly admit on the record that this is the case. In either instance, if the examiner finds one of the inventions unpatentable over the prior art, the evidence or admission may be used in a rejection under 35 U.S.C. 103 or pre-AIA 35 U.S.C. 103(a) of the other invention.
During a telephone conversation with attorney Charles Meeker on 9/23/ a provisional election was made without traverse to prosecute the invention of I, claim 7. Affirmation of this election must be made by applicant in replying to this Office action. Claims 13-20 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
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.
Claim 7 is rejected under 35 U.S.C. 101 because it is directed to an abstract idea without significantly more.
Claim 7 is the only claim pending and analyzed. Claim 7 is directed to a method which is a proper statutory class. Step 1 yes
Here the claim 7 under the broadest reasonable interpretation covers performance of the limitation as certain methods of organizing human activity which is a fundamental economic practice.
The abstract elements are as follows;
:accessing a set of claim forms that are related to an identified medical condition: identifying, from within the set of claim forms, codes that are determined to be procedure codes: determining whether one or more pharmaceuticals are associated with each procedure code in the procedure codes: for procedure codes that have associated pharmaceuticals, determining a cost for the pharmaceuticals: weighting each of the procedure codes based on whether each procedure code is a descriptor for the particular medical condition or is a descriptor for an identified co-morbidity of the particular medical condition: determining a cost for the weighted procedure codes: using the cost for the weighted procedure codes and the cost for the pharmaceuticals to determine a per capita cost for the medical condition: and generating an index for the medical condition based on the per capita cost, wherein the weighting is performed by applying an impact factor to the procedure codes, and wherein the impact factor is defined as a number of times that the procedure code is identified as being associated with a diagnostic code for the identified medical condition within the set of claim forms divided by a total number of times that the procedure code is identified within the set of claim forms.
If a claim limitation under it’s broadest reasonable interpretation covers performance of the limitation as a fundamental economic practice, then it falls within the certain methods of organizing human activity grouping of abstract ideas. Accordingly the claim recites an abstract idea. No computer components are identified in claim 7. So claim 7 may be applying generic components which are not recited in the claims. In 00164 of applicant specification, a generic computing system is described as an example.
Step 2A Prong 1 – yes the claims recite an abstract idea
This judicial exception is not integrated into a practical application. In particular the claim recite no additional elements.
Step 2a prong 2 No there are no additional elements recited.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because when considered separately or as an ordered combination they do not add significantly more or inventive concept to the exception. The claims are not directed to a practical application.
Thus claim 7 is not patent eligible (Step 2 B No the claim does not provide significantly more)
There are no dependent claims.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 7 recites the limitations which lack antecedent basis.
“the medical condition” vs “an identified medical condition”, and “the particular medical condition” , “the medical condition”, “ the identified medical condition” Antecedent basis is both inconsistent and also lacking for example in regards to the particular medical condition. Are these the same or different medical conditions. For the purposes of examination, “medical” condition will be taken to be all the same medical condition and no Distington is being made between “identified medical condition”, “medical condition” and “particular medical condition”
Correction is required.
Claim Rejections - 35 USC § 103
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 7 is/are rejected under 35 U.S.C. 103 as obvious over
US Patent 11176318 to Carbonell in view of US Patent Publication 20050182659 to Huttin
As per claim 7 Carbonell discloses;
Carbonell discloses; A method for generating an index that is statistically sensitive to a cost of treating a medical condition, where said treating includes both a procedural cost and a pharmaceutical cost, said method comprising: (pre-amble has minimal weight)
accessing a set of claim forms that are related to an identified medical condition; identifying, from within the set of claim forms, Carbonell(col. 5 lines 40-45)
and the cost for the pharmaceuticals to determine a per capita cost for the medical condition; and generating an index for the medical condition based on the per capita cost,
Carbonell(col. 12 lines 45-55) Carbonell does not explicitly disclose what Huttin teaches;
codes that are determined to be procedure codes;
determining whether one or more pharmaceuticals are associated with each procedure code in the procedure codes; Huttin(0088-94 measuring drugs prescribed and diagnosis for diseases)
drug in Huttin means pharmaceuticals and procedure code means “diagnosis”
for procedure codes that have associated pharmaceuticals, Huttin(0088-94)
determining a cost for the pharmaceuticals; Huttin (0088-94)
weighting each of the procedure codes based on whether each procedure code is a descriptor for the particular medical condition or is a descriptor for an identified co-morbidity
of the particular medical condition;
Huttin(note “or” is a choice so both elements are not needed, just one, further based on is not a specific methodology and also condition/co-morbidity are someone intertwined, see 0098, where diabetes and cholesterol for example are analyzed as conditions and co morbidities, depending on how one might define these) determining a cost for the weighted procedure codes; Huttin(0094, cost of treating a particular disease, it is noted again that weighting is not defined specifically)
using the cost for the weighted procedure codes Huttin(what is the weight? but Huttin uses “odds” in 0091) wherein the weighting is performed by applying an impact factor (it is noted that applicant spec definition of impact factor is not a consistent factor leading to a broad interpretation,
see 0043-44 of applicant spec. it could be a contribution factor…. It might be based on the number of claims etc. there is no specific definition, Huttin(0052)
to the procedure codes, and wherein the impact factor is defined as a number of times that the procedure code is identified as being associated with a diagnostic code for the identified medical condition within the set of claim forms Huttin(risk factor 0037, weight factor 0052)
divided by a total number of times that the procedure code is identified within the set of claim forms.
Huttin (ratio, 0090)
It would therefore would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the medical network disclosure of Carbonell with the cost analysis teaching of Huttin for the motivation of providing “better tools to predict health care treatment shifts and assess health care decisions and costs” (0003)
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
A search of IP.com revealed the following references;
Predicting Frailty Condition in Elderly Using Multidimensional Socioclinical Databases, IEEE 2018
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National Representatively Healthcare Database and the Application, IEEE 2016
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRUCE I EBERSMAN whose telephone number is (571)270-3442. The examiner can normally be reached 8:00 am - 5:00 pm Monday-Friday.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Michael W Anderson can be reached at 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRUCE I EBERSMAN/Primary Examiner, Art Unit 3693