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
Applicant filed an amendment on 6/10/26. Claim 7 is pending and amended.
After careful consideration of applicant arguments and amendments, the examiner finds them to be moot in view of new grounds of rejection, non-persuasive in regards to the grounds of restriction. This action is a Final Rejection.
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
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 and US Patent Publication to McGuigan 20050091084
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 the 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 the 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; wherein the procedure codes comprise a representation of a medical procedure service or supply
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 medical condition or is a descriptor for an identified co-morbidity
of the 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 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)
Here Carbonell and Huttin do not explicitly disclose what McGuigan teaches;
In regards to the “procedure codes comprising medical procedure, service or supply”
See McGuigan (0010)
It would therefore have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine the medical procedure disclosure of Carbonell with the procedure codes of McGuigan for the motivation of ” explain and predict variation in medical related costs. (0003)
Response to Arguments
Applicant filed an amendment on 6/10/26. Claim 7 is pending and amended.
After careful consideration of applicant arguments and amendments, the examiner finds them to be moot in view of new grounds of rejection, non-persuasive in regards to the grounds of restriction. This action is a Final Rejection.
Applicant indicates that the election is made with traverse, however, at the time of the oral restriction, it was made without traverse. Therefore any traversal would be non-persuasive or moot. However, the examiner contacted the attorney on 7/23/26 to confirm that traverse may not be an accurate description of the status. However, it was agreed that having withdrawn claims for the purpose of a divisional or creating parallel sets of claims to claim 7 is encouraged.
Claim 7 is amended to require
"wherein the procedure codes comprise a representation of a medical procedure, service, or supply." Support for this amendment may be found at least in para. [0048] and FIG. 2 of the present application. A corresponding amendment is made to claims 13, 17, and 19.
Claims 7, 13, 17, and 19 are amended to improve their clarity.
The entry of the amendment to the claims is kindly requested.
Election
The Applicant elects Group 1, including claim 7, drawn to generating a cost sensitive index with weighting done by impact factor.
The election is made WITH TRAVERSE. The Applicant respectfully submits that the restriction requirement is improper because an improper analysis was applied.
As described in the MPEP, "a unity of invention analysis (not an independent and distinct analysis) is applicable in national stage applications submitted under 35 U.S.C. 371." (MPEP 1893.03(d)).
Here, the restriction requirement only presents an independent and distinct analysis. Because the present application was submitted under 35 U.S.C. 371, the Applicant
respectfully submits that such an analysis is not applicable and does not support a restriction requirement made in the present application.
For at least these reasons, removal of the restriction requirement is kindly requested.
Moot in view of the fact that applicant already made a non-traverse election. (see above)
Claim Rejections - 35 U.S.C. §101
Rejection of claim 7 under 35 U.S.C. § 101 as being directed to an abstract
idea without significantly more
Reconsideration of this rejection is requested, given the below remarks.
The rejection asserts that under Step 2A Prong 1 the claims are rejected to an abstract idea, particularly certain methods of organizing human activity which is a fundamental economic practice.
As an initial consideration, the rejection merely contains a bare assertion that claim 7 recites an abstract idea but fails to provide any support for this assertion. In particular, the rejection merely states that "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." (Action, p. 5). The rejection then includes a word for word reproduction of a portion of claim 7 and a conclusory statement reiterating the characterization as covering performance of the limitation as a fundamental economic practice. However, the rejection fails to provide any discussion of what the broadest reasonable interpretation is or how such could reasonably lead to this interpretation and thus fails to establish a prima facie case for this rejection.
The Applicant respectfully submits that this is not a proper characterization of the claims and that, even if such an abstract idea could be attributed to claim 7, that claim
7 provides elements that amount to significantly more and/or provide a practical application.
Here the claims are not a practical application of technology.
The Applicant notes that with regard to claims reciting certain methods of organizing human activity, "not all methods of organizing human activity are abstract ideas ... this grouping is limited to activity that falls within the enumerated sub-groupings of fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people, and is not to be expanded beyond these enumerated sub-groupings except in rare circumstances." See M.P.E.P. § 2106.04(a)(2).
The examples provided for the "fundamental economic principles or practices" are hedging, insurance, and mitigating risks. Additional examples are (i) mitigating settlement risk, (ii) rules for conducting a wagering game, (iii) financial instruments that are designed to protect against the risk of investing in financial instruments (non- precedential), (iv) offer-based price optimization, (v) local processing of payments for remotely purchased goods, (vi) using a marking affixed to the outside of a mail object to communicate information about the mail object, (vii) placing an order based on displayed market information.
The rejection fails to identify claim 7 as falling within any of the above examples. Indeed, claim 7 cannot reasonably be construed as falling within any of the above examples, as claim 7 is instead directed towards the generation of an index using specialized information. The index is not an abstract economic principle but is instead is an index that is statistically sensitive to a cost of treating a medical condition.
Moreover, none of the above examples include the generation of an index. Because the enumerated groups are not to be expanded, and because claim 7 does not fall into any of them, claim 7 is eligible at Step 2A Prong 1 and is thus directed to patent- eligible subject matter.
Even assuming, arguendo, that claim 7 could be interpreted as reciting an abstract idea, claim 7 is eligible at Step 2A, Prong 2. In particular, among various other technical improvements provided by claim 7, the index generated in claim 7 can "represent the cost of treating individual diseases" by using the procedure codes and the cost for the pharmaceuticals as mentioned above. The index also provides greater access to information. (see paras. [0064]-[0068] of the present application). Thus, generating the index according to the particular requirements of claim 7 provides for the practical applications recited in the present application.
Here practical application may not be persuasive because it must be rooted in the technology. Providing greater access to information would tend to be more of an established characterization of a database.
Moreover, the index is generated using different elements as recited in claim 7 and thus represents a practical application in how the steps recite generating the index based on the per capita cost, the per capita cost being determined using the cost for the weighted procedure codes and the cost for the pharmaceuticals. (see USPTO Example 48, claim 2; generating the index as recited in claim 7 is similar in form to claim 2, which was found eligible at Step 2A Prong 2 for synthesizing a new speech waveform).
Here the examiner reviewed example 48 and it does not appear to be analogous in content to claim 7.
Therefore, claim 7 is eligible at Step 2A Prong 2 if such an analysis is necessary.
Further, even if further analysis under Step 2B were deemed necessary, claim 7 is eligible under Step 2B. One path to show that a claim recites "significantly more" is to identify "a specific limitation other than what is well-understood, routine, conventional activity in the field, or ... unconventional steps that confine the claim to a particular useful application." MPEP 2106.05(I)(A)(v). At this second step of the analysis, the elements of each claim must be examined both individually and as an ordered combination to determine whether the additional elements transform the nature of the claim into a patent eligible application. MPEP 2106.05(d).
In the present application, claim 7 recites more than well-understood, routine, or conventional subject matter by reciting a method for generating an index that is statistically sensitive to a cost of treating a medical condition. As discussed in further detail below, none of the cited art references, whether considered individually or in combination, disclose or suggest the requirements of claim 7. For at least these reasons, claim 7 is further eligible at Step 2B of the analysis.
For at least these reasons, claim 7 is directed to patent eligible subject matter.
Withdrawal of this rejection is kindly requested.
Here applicant might be able to highlight the machine learning aspects of the claims to be able to argue that the invention cannot reasonably be conducted in the mind.
Claim Rejections - 35 U.S.C. §112- moot
Claim Rejections - 35 U.S.C. §103
Rejection of claim 7 under 35 U.S.C. § 103 as being unpatentable over
Carbonell (US 11176318) in view of Huttin (US 20050182659)
Reconsideration of the rejection is requested, given the amendment to claim 7, and the following remarks.
Claim 7 is amended to recite, in part, "identifying, from within the set of claim forms, codes that are determined to be procedure codes, wherein the procedure codes comprise a representation of a medical procedure, service, or supply."
The combination of Carbonell and Huttin fails to disclose such features. In particular, the combination fails to disclose or even suggest "wherein the procedure codes comprise a representation of a medical procedure, service, or supply" as required by amended claim 7.
The rejection acknowledges that Carbonell fails to disclose the requirement of "codes that are determined to be procedure codes," relying on paras. [0088]-[0094] of Huttin to remedy this deficiency.
However, Huttin does not remedy this deficiency and
further fails to disclose or suggest procedure codes which comprise a representation of a medical procedure, service, or supply.”
In particular, those paragraphs of Huttin describe probabilistic results based on gathered data about physician prescribing intention shifts, prescribing patterns, and types of insurance. Huttin mentions "drugs," "diagnosis," and "patient variables", but nowhere discloses identifying codes from claim forms that are determined to be procedure codes, much less procedure codes that comprise a representation of a medical procedure, service, or supply. Instead, Huttin is directed to using survey responses (FIGS. 3-23 of Huttin) to generate behavioral or cost sensitivity indices based on patient and physician preferences (para. [0035] of Huttin) and fails to disclose or suggest any procedure codes at all, let alone procedure codes representing medical procedures, services, or supplies from claim forms.
Thus, if one skilled in the art were to combine the teachings of Carbonell and Huttin, the result would be gathering survey data from individuals and conducting a probabilistic analysis thereon, which does not disclose or suggest the requirements of claim 7, including the claimed procedure codes.
For at least these reasons, claim 7 is patentable over the combination of Carbonell and Huttin when considered either individually or in combination with one another.
Withdrawal of the rejection is kindly requested.
Here applicant arguments re: Carbonell and Huttin were partially persuasive in regards to the medical codes. Thus, McGuigan is offered, rendering applicant arguments to be moot.
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
Top of Form
Bottom of Form
National Representatively Healthcare Database and the Application, IEEE 2016
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 BRUCE I EBERSMAN whose telephone number is (571)270-3442. The examiner can normally be reached 8:00 am - 5:00 pm Monday-Friday.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/BRUCE I EBERSMAN/Primary Examiner, Art Unit 3693
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