DETAILED ACTION
Notice to Applicant
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This communication is in response to the amendment filed on 6/4/26. Claims 1-4, 9-11, 17-19, 23-27, and 30-34 are pending.
Claim Rejections - 35 USC § 112
The rejections of claims 1-4, 9-11, 17-19, 23-27, and 30-34, under 35 USC 112(b), based on recitation of the limitation “transceiver unit” invoking 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, and the written description failing to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function, are withdrawn due to the claim amendments filed on 6/4/26. More specifically, the disclosure fails to provide corresponding structures or materials to perform the recited functions.
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 1-4, 9-11, 17-19, 23-27, and 30-34 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.
35 USC 101 enumerates four categories of subject matter that Congress deemed to be appropriate subject matter for a patent: processes, machines, manufactures and compositions of matter. As explained by the courts, these “four categories together describe the exclusive reach of patentable subject matter. If a claim covers material not found in any of the four statutory categories, that claim falls outside the plainly expressed scope of Section 101 even if the subject matter is otherwise new and useful.” In re Nuijten, 500 F.3d 1346, 1354, 84 USPQ2d 1495, 1500 (Fed. Cir. 2007). Step 1 of the eligibility analysis asks: Is the claim to a process, machine, manufacture or composition of matter? Applicant’s claims fall within at least one of the four categories of patent eligible subject matter because claims 1-4, 9-11, and 17-18 are drawn to a method, and claims 19, 23-27, and 30-34 are drawn to a system.
Determining that a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 USC 101 (i.e., process, machine, manufacture, or composition of matter) in Step 1 does not complete the eligibility analysis. Claims drawn only to an abstract idea, a natural phenomenon, and laws of nature are not eligible for patent protection. As described in MPEP 2106, subsection III, Step 2A of the Office’s eligibility analysis is the first part of the Alice/Mayo test, i.e., the Supreme Court’s “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l,134 S. Ct. 2347, 2355, 110 USPQ2d 1976, 1981 (2014) (citing Mayo, 566 U.S. at 77-78, 101 USPQ2d at 1967-68).
In 2019, the United States Patent and Trademark Office (USPTO) prepared revised guidance (2019 Revised Patent Subject Matter Eligibility Guidance) for use by USPTO personnel in evaluating subject matter eligibility. The framework for this revised guidance, which sets forth the procedures for determining whether a patent claim or patent application claim is directed to a judicial exception (laws of nature, natural phenomena, and abstract ideas), is described in MPEP sections 2106.03 and 2106.04.
As explained in MPEP 2106.04(a)(2), the 2019 Revised Patent Subject Matter Eligibility Guidance explains that abstract ideas can be grouped as, e.g., mathematical concepts, certain methods of organizing human activity, and mental processes. Moreover, this guidance explains that a patent claim or patent application claim that recites a judicial exception is not ‘‘directed to’’ the judicial exception if the judicial exception is integrated into a practical application of the judicial exception. A claim that recites a judicial exception, but is not integrated into a practical application, is directed to the judicial exception under Step 2A and must then be evaluated under Step 2B (inventive concept) to determine the subject matter eligibility of the claim.
Step 2A asks: Does the claim recite a law of nature, a natural phenomenon (product of nature) or an abstract idea? (Prong One) If so, is the judicial exception integrated into a practical application of the judicial exception? (Prong Two) A claim recites a judicial exception when a law of nature, a natural phenomenon, or an abstract idea is set forth or described in the claim. While the terms “set forth” and “describe” are thus both equated with “recite”, their different language is intended to indicate that there are different ways in which an exception can be recited in a claim. For instance, the claims in Diehr set forth a mathematical equation in the repetitively calculating step, while the claims in Mayo set forth laws of nature in the wherein clause, meaning that the claims in those cases contained discrete claim language that was identifiable as a judicial exception. The claims in Alice Corp., however, described the concept of intermediated settlement without ever explicitly using the words “intermediated” or “settlement.” A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.
In the instant case, claims 1-4, 9-11, 17-19, 23-27, and 30-34 recite(s) a method and system for certain methods of organizing human activities, which is subject matter that falls within the enumerated groupings of abstract ideas described in MPEP 2106.04 (2019 Revised Patent Subject Matter Eligibility Guidance) Certain methods of organizing human activities includes fundamental economic practices, like insurance; commercial interactions (i.e. legal obligations, marketing or sales activities or behaviors, and business relations). Organizing human activity also encompasses managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions.) The recited method and system are drawn to assessing a patient/user health status.
In particular, claims 1 and 19 recite a method and system for:
analysing…the user data comprising at least one of the demographics data, the physical health data, the mental and emotional health data, and the behavioural health data, based at least on a first set of pre-set rules;
generating…, a corresponding composite score for one or more health based dimensions of the user, based on the analysis of the user data;
automatically generating,…a health-wellness score of the user based at least on the corresponding composite score for one or more health based dimensions;
automatically generating…the true health-wellness status of the user based on the health-wellness score of the user; and
MENTAL PROCESS-ANALYSIS
Moreover, the language of claims 1 and 19 encompasses performance of the limitations(s) in the mind, but for the recitation of generic computer components.
In the instant case, the limitations of analysing…user data; generating…a composite score; generating… a health-wellness score; and generating …a true health-wellness status, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “by a processing unit,” nothing in the claim element precludes the step from practically being performed in the mind.
For example, but for the “by a processing unit” language, analyzing and generating in the context of this claim encompasses the user manually reviewing the user data and mentally determining a composite score, a health-wellness score and the true-health status of the user.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas.
As explained in MPEP 2106.04(a)(2)(III), the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). (emphasis added) As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978).
Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions.
The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper").
Moreover, courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer").
This judicial exception is not integrated into a practical application because the claim language does not recite any improvements to the functioning of a computer, or to any other technology or technical field (See MPEP 2106.04(d)(1); see also MPEP 2106.05(a)(I-II)). Moreover, the claims do not integrate the judicial exception into a practical application because the claimed invention does not: apply the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)); effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)); or apply or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment see MPEP 2106.05(e). (Considerations for integration into a practical application in Step 2A, prong two and for recitation of significantly more than the judicial exception in Step 2B)
While abstract ideas, natural phenomena, and laws of nature are not eligible for patenting by themselves, claims that integrate these exceptions into an inventive concept are thereby transformed into patent-eligible inventions. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2354, 110 USPQ2d 1976, 1981 (2014) (citing Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 71-72, 101 USPQ2d 1961, 1966 (2012)). Thus, the second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Id. An “inventive concept” is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 134 S. Ct. at 2355, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966). Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting “the Government’s invitation to substitute Sections 102, 103, and 112 inquiries for the better established inquiry under Section 101”). As made clear by the courts, the “‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the Section 101 categories of possibly patentable subject matter.” Intellectual Ventures I v. Symantec Corp.,838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9).
As described in MPEP 2106.05, Step 2B of the Office’s eligibility analysis is the second part of the Alice/Mayo test, i.e., the Supreme Court’s “framework for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. _, 134 S. Ct. 2347, 2355, 110 USPQ2d 1976, 1981 (2014) (citing Mayo, 566 U.S. 66, 101 USPQ2d 1961 (2012)). Step 2B asks: Does the claim recite additional elements that amount to significantly more than the judicial exception? The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Examples of insignificant extra-solution activity include mere data gathering, selecting a particular data source or type of data to be manipulated, and insignificant application. In the instant case, claims 1 and 19 additionally recite: receiving …, a user data comprising at least one of a demographics data, a physical health data, a mental and emotional health data, and a behavioural health data; and providing the true health-wellness status of the user. The additional steps amount to insignificant extra-solution activity to the judicial exception (see MPEP 2106.05(g)).
More specifically, the additional steps amount to necessary data gathering and outputting, (i.e., all uses of the recited judicial exception require such data gathering or data output). See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015) (presenting offers and gathering statistics amounted to mere data gathering)
Claims 1 and 19 further recite: a processor; at least one of the electronic device, and a healthcare provider device. The additional components is/are generic components that perform functions well-understood, routine and conventional activities and that amount to no more than implementing the abstract idea with a computerized system.
The generic nature of the computer system used to carryout steps of the recited method is underscored by the system description in the instant application, which discloses: “processor” or “operating processor” includes one or more processors, wherein processor refers to any logic circuitry for processing instructions. A processor may be a general-purpose processor, a special purpose processor, a conventional processor, a digital signal processor, a plurality of microprocessors, one or more microprocessors in association with a DSP core, a controller, a microcontroller, Application Specific Integrated Circuits, Field Programmable Gate Array circuits, any other type of integrated circuits, etc. " (par. 30 of US PG-Pub US 20250391571 A1)
The disclosure also states: “a user equipment”, “a user device”, “a smart-user-device”, “a smart-device”, “an electronic device”, “a mobile device”, “a handheld device”, “a wireless communication device”, “a mobile communication device”, “a communication device” may be any electrical, electronic and/or computing device or equipment, capable of implementing the features of the present disclosure. The user equipment/device may include, but is not limited to, a mobile phone, smart phone, laptop, a general-purpose computer, desktop, personal digital assistant, tablet computer, wearable device or any other computing device which is capable of implementing the features of the present disclosure. Also, the user device may contain at least one input means configured to receive an input from a transceiver unit, a processing unit, a storage unit and any other such unit(s).” (par. 31)
The application explains: “storage unit” or “memory unit” refers to a machine or computer-readable medium including any mechanism for storing information in a form readable by a computer or similar machine. For example, a computer-readable medium includes read-only memory (“ROM”), random access memory (“RAM”), magnetic disk storage media, optical storage media, flash memory devices or other types of machine-accessible storage media.” (See par. 32) Such language underscores that the applicant's perceived invention/ novelty focuses on the computerized implementation of the abstract idea, not the underlying structure of generic system components.
Furthermore, the courts have recognized certain computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity (See MPEP 2106.05 (d) (II)). Among these are the following features, which are recited in claims 1 and claim 19:
- Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP 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); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added));
- Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;
Because Applicant’s claimed invention recites a judicial exception that is not integrated into a practical application and does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself, the claimed invention is not patent eligible.
Claims 2-4, 9-11, and 17-18 are dependent from Claim 1 and include(s) all the limitations of claim(s) 1. However, the additional limitations of the claims 2-4, 9-11, and 17-18 fail to recite significantly more than the abstract idea. More specifically, the additional limitations further define the abstract idea with additional steps or details regarding data types; or additional steps which amount to insignificant extra solution activities. Therefore, claim(s) 2-4, 9-11, and 17-18 are also rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Claims 23-27, and 30-34 are dependent from Claim 19 and include(s) all the limitations of claim(s) 19. However, the additional limitations of the claims 23-27 and 30-34 fail to recite significantly more than the abstract idea. More specifically, the additional limitations further define the abstract idea with additional steps or details regarding data types; or additional steps which amount to insignificant extra solution activities. Therefore, claim(s) 23-27 and 30-34 are also rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
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.
Claim(s) 1-4, 9, 19, 23, 26-27, and 30-31 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Lee et al (US 20200118685 A1)
Claims 1 and 19 Lee teaches a method and system for providing a true health-wellness status of a user of an electronic device, the system comprising:-
a processor and memory storing instructions, (par. 34-39: data reception unit receives various types of user data), wherein the processor is configured to cooperate with the instructions to perform operations comprising:
receiving, a user data comprising at least one of a demographics data, a physical health data, a mental and emotional health data, and a behavioural health data; (par. 34-39)
- analysing, the user data comprising at least one of the demographics data, the physical health data, the mental and emotional health data, and the behavioural health data, based at least on a first set of pre-set rules; (par. 46-49- analyzing and extracting parameters)
- generating, a corresponding composite score for one or more health based dimensions of the user, based on the analysis of the user data; (par. 50-54: Par. 50: The first health index generation unit 610 may generate a first health index using a parameter for each health data according to a health group to which the health data belongs. The first health index generation unit 610 may quantitatively analyze health data by applying a healthcare model specified for a health group which the health data belongs to, and may generate a first health index for each health group. Particularly, the first health index generation unit 610 may generate a first health index associated with the physical activity status using a healthcare model specified for the health group of the physical activity status, in association with health data matched to the health group of the physical activity status)
- automatically generating, a health-wellness score of the user based at least on the corresponding composite score for one or more health based dimensions; (par. 50-second index score based at least on first score: the health data evaluation unit 600 may include a first health index generation unit 610 that quantitatively analyzes health data, a second health index generation unit 630 that generates integrated second health data associated with user health data by integrating first health indices, each of which is generated for one of the health groups, and a healthcare report generation unit 650 that analyzes a second health index so as to determine the health status of a user; par. 55- The second health index generation unit 630 may generate a second health index by integrating a plurality of first health indices generated by the first health index generation unit 610. The second health index generation unit 630 may generate the second health index using a weight assigned for each health group corresponding to health data)
- automatically generating, the true health-wellness status of the user based on the health-wellness score of the user; and (par. 56- The healthcare report … may provide user's overall health status)
- providing, to at least one of the electronic device, and a healthcare provider device, the true health-wellness status of the user. (par. 50: a healthcare report generation unit 650 that analyzes a second health index so as to determine the health status of a user, and generates a healthcare report that visually shows the health state of the user; par. 56-58)
Claims 2 Lee teaches the method as claimed in claim 1, wherein the at least one of the demographics data, the physical health data, the mental and emotional health data, and the behavioural health data further comprises one or more parameters associated with the user. (par. 34-38; par. 46-user data and parameters from user data)
Claim 3. Lee teaches the method as claimed in claim 2, wherein the corresponding composite score for the one or more health based dimensions is based on at least one of a corresponding score-weightage for each parameter of the one or more parameters. (par. 8- generating the second health index by multiplying the one or more first health indices by the weights, and adding result values; par. 55)
Claim 4 Lee discloses the method as claimed in claim 2, wherein the one or more parameters are configurable based on one of an automatic input and a manual input. (par. 7-receiving user data from sensors or user input)
Claim 9. Lee teaches the method as claimed in claim 1, wherein the automatically generating, by the processor, the health-wellness score of the user based at least on the corresponding composite score further comprises: automatically generating, by the processor, the health-wellness score of the user based on a weighting of the corresponding composite score for one or more health based dimensions using a second set of pre-set rules. (par. 8- generating the second health index by multiplying the one or more first health indices by the weights, and adding result values; par. 55-56)
Claim 23 Lee teaches the system as claimed in claim 19, wherein: the physical health data comprises at least one of an anthropometry data, a general physical examination data and a systemic examination data. (par. 11; par. 35; par. 55-data includes user's age, physical condition, recent physical examination records, and previous healthcare report )
Claim 26 Lee teaches the system as claimed in claim 19, wherein the user data is provided by the user via the electronic device. (par. 50: a healthcare report generation unit 650 that analyzes a second health index so as to determine the health status of a user, and generates a healthcare report that visually shows the health state of the user; par. 56-58)
Claim 27 Lee teaches the system as claimed in claim 19, wherein the processor ro automatically generate the health-wellness score of the user based at least on the corresponding composite score, is further configured to: automatically generate the health-wellness score of the user based on a weighting of the corresponding composite score for one or more health based dimensions using a second set of pre-set rules. (par. 8- generating the second health index by multiplying the one or more first health indices by the weights, and adding result values; par. 55-56)
Claim 30 Lee teaches the system as claimed in claim 19, wherein the analysis of the user data is further based on a patient health data of one or more patients similar to the user. . (par. 11, par. 14; par. 23-analysis uses model which is based on health groups)
Claim 31 Lee teaches the system as claimed in claim 19, wherein the true health-wellness status is provided via a representation indicating at least one of one or more health goal scores, and the health-wellness score of the user. (par. 12-13; par. 20-21: based on thresholds values; par. 55-58; par. 64)
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(s) 10-11, 17-18, 24-25, and 32-33 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (US 20200118685 A1) in view of Swartz et al (US 20180165418 A1)
Claim 10 Lee teaches the method as claimed in claim 3, as explained but does not expressly disclose wherein the corresponding composite score for the one or more health based dimensions is updated periodically based on a periodical update in the user data.
Swartz discloses a method wherein the data and the scores for health based dimensions periodically (i.e. the corresponding composite score for the one or more health based dimensions is updated periodically based on a periodical update in the user data.) (par. 14- After each health vector update, the system applies the health assessment model to determine the current health score of the individual. Health vector updates and health score determinations may correspond to individual-triggered events, such as the individual's completion of a survey, achieving of a fitness goal, participation in a rewards program, etc. Updates may also be triggered by events, such as car accidents, or by medical diagnoses.) At the time of filing, it would have been obvious to one of ordinary skill in the art to modify the method/system of Lee with the teaching of Swartz to update the scores based on user data with the motivation of ensuring that the health score trend reflects changes over time for the individual. (par. 14)
Claim 11 Lee teaches the method as claimed in claim 10, wherein the generating, by the processor ], the corresponding composite score for the one or more health based dimensions of the user, is further based on at least one of a baseline value of said each parameter of the one or more parameters and a target value of said each parameter of the one or more parameters. (par. 12-13; par. 20-21: based on thresholds values; par. 55; par. 64)
Claim 17 Lee teaches the method as claimed in claim 1, as explained. Lee does not expressly disclose but Swartz teaches the method comprising:-
receiving, at the processor, a content data, wherein the content data comprises at least one of a disease-related information and one or more medical guidelines; (par. 30-scores based on CDC guidelines)
determining, by the processor, an assessment of the user for one or more diseases, based on the content data; and (par. 30- a CDC score may reflect an assessment by the Center of Disease Control of the likelihood of the individual getting sick.)
providing, an output related to a disease probability, to at least one of the electronic device, and a healthcare provider device, based on the true health wellness status of the user and the assessment of the user. (par. 30- l the health vector 125 may include contextual health scores. In contrast to the health score generated by the system, which characterizes an individual's overall health, the contextual health scores reflect an assessment of the individual's health or wellness within a narrower context. For example, a CDC score may reflect an assessment by the Center of Disease Control of the likelihood of the individual getting sick)
At the time of effective filing, it would have been obvious to one or ordinary skill in the art to modify the system/method of Lee with the teaching of Swartz to provide a better context and more accurate health scores for patients (the contextual health scores reflect an assessment of the individual's health or wellness within a narrower context)
Claim 18 Lee teaches a method as claimed in claim 17, wherein the analysing, by the processor the user data, is based on at least one of the one or more medical guidelines and a medical history of the user. (par. 11, par. 14; par. 23-analysis uses model which is based on health groups)
Claim 24 Lee teaches the system as claimed in claim 19, as explained, but does not expressly disclose wherein the behavioural health data comprises at least one of a substance abuse data and a treatment adherence data.
Swartz discloses a system and method wherein patient behaviours regarding treatment adherence are tracked (par. 19- identified cohort members showed equivalent positive outcomes for meditating 30 minutes a day and going on four walks a week, and the individual already meditates 20 minutes a day but goes on no walks, then the system may prioritize the recommendation to go on four walks a week. As an additional example, factors can be ranked according to the likelihood that the individual will actually adopt or act upon the recommended factor. The likelihood of adoption can be based on historical engagement or adoption data among the population as a whole or among the corresponding cohorts to the individual.)
At the time of effective filing, it would have been obvious to one or ordinary skill in the art to modify the system/method of Lee with the teaching of Swartz to track behavior information regarding patient(s) treatment adherence with the motivation of determining the most efficacious recommendations that the individual's health vector indicate they are likely to adopt. (Swartz: par. 19)
Claim 25 Lee teaches the method/ system as claimed in claim 19. Lee does not disclose, but Swartz teaches a method wherein the user data is based on a primary diagnosis of the user and diagnosis of one or more comorbidities of the user. (par. 12-data collected by the system includes medical conditions of the user: Collected factors directly relating to the health of the individual may further include information regarding any chronic medical conditions of the individual (e.g., arthritis, asthma, cancer) or acute injuries of the individual (e.g., broken leg, concussion, torn ligament). Other data collected by the system relates to contextual factors that impact or characterize the health of the individual. For example, the collected data may include objective information about environmental factors around the individual, such as the weather around the individual, location of the individual, news events that may impact individual, etc).
At the time of effective filing, it would have been obvious to one or ordinary skill in the art to modify the system/method of Lee with the teaching of Swartz to collect data regarding the medical history (primary diagnoses and comorbidity data) for patients with the motivation of accurately capturing all of the factors which characterize the overall health and anticipated behavior of the user. (Swartz: par. 12)
Claim 32 Lee teaches the system as claimed in claim 31, as explained. Lee does not disclose but Swartz teaches a method/system wherein the processor is further configured to: provide, to at least one of the electronic device, and a healthcare provider device, one or more recommendations for at least one of one or more follow up consultations, one or more health investigations and one or more comorbidities based on at least one of the one or more health goal scores and the health-wellness score of the user. (computer hardware-par. 44-47; recommendations-par. 12-13; par. 74-76) At the time of effective filing, it would have been obvious to one or ordinary skill in the art to modify the system/method of Lee with the teaching of Swartz to provide recommendation information to user related to the health score assessment. One would have been motivated to include this feature to provide the user with actions or changes that the individual can take that are likely to improve the individual's health.
Claim 33 Lee teaches the system as claimed in claim 31, as explained. Lee does not disclose but Swartz teaches a method/system wherein the processor is further configured to: provide, to at least one of the electronic device, and the healthcare provider device, at least one of one or more suggested activities, one or more suggested precautions, one or more suggested treatment options, and one or more emergency alerts based on at least one of the one or more health goal scores and the health-wellness score of the user. (par. 64; par. 71-74-activity recommendations based on scoring assessments) At the time of effective filing, it would have been obvious to one or ordinary skill in the art to modify the system/method of Lee with the teaching of Swartz to provide specific recommendations information to user related to the health score assessment. One would have been motivated to include this feature to provide the user with actions or changes that the individual can take that are likely to improve the individual's health.
Claim(s) 34 is/are rejected under 35 U.S.C. 103 as being unpatentable over Lee et al (US 20200118685 A1) in view of Swartz et al (US 20180165418 A1) as applied to claim 33, and in further view of Soto et al ( US 20210134415 A1).
Claim 34 Lee and Swartz in combination teach the system as claimed in claim 33. Lee and Swartz do not disclose, but Soto teaches wherein the processor is further configured to: identify one or more complications based on at least one of the one or more health goal scores and the health-wellness score of the user; (par. 50; par. 170; par. 180-risk of complications using health assessment scoring; Fig. 17) and- provide to at least one of the electronic device, and a healthcare provider device, the one or more emergency alerts for the one or more identified complications. (par. 180; par. 53; par. 72; par. 243-alert/notification of an adverse event) .
At the time of effective filing, it would have been obvious to one or ordinary skill in the art to further modify the system/method of Lee and Swartz in combination with the teaching of Soto to include identification of complication risks and to provide alerts users (e.g. healthcare provider; patient ) regarding the risks. One would have been motivated to include these features with the motivation of using this information to take interventions that may reduce the risk thereby avoiding adverse health outcomes (par. 10)
Response to Arguments
Applicant's arguments filed 6/4/26 have been fully considered but they are not persuasive.
(A) Applicant argues the claim rejections under 35 USC 112(b) based upon interpretation of claim terminology under 35 USC 112(f).
In response, the claim rejections have been withdrawn based upon the amendments filed on 6/4/26.
(B) Applicant argues the rejection of the claims under 35 USC 101. In particular, the Applicant argues that claims recite additional elements that amount to significantly more than an abstract idea.
In response, the Examiner disagrees. The claims are drawn to a method and system for assessing a patient/user health status. The language identified by applicant as “additional elements” are in fact part of the abstract idea, used in the assessment of the patient.
Moreover, the examiner disagrees with the assertion that the claimed steps cannot be practically performed in the mind of a user. As drafted, but for the “by a processing unit” language, analyzing and generating in the context of this claim encompasses the user manually reviewing the user data and mentally determining a composite score, a health-wellness score and the true-health status of the user.
As explained in the mental process analysis, courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer").
(C) Applicant argues that any recited abstract idea(s) is/are integrated into a practical application.
In response, the examiner disagrees. As explained, the recite judicial exception is not integrated into a practical application because the claim language does not recite any improvements to the functioning of a computer, or to any other technology or technical field (See MPEP 2106.04(d)(1); see also MPEP 2106.05(a)(I-II)). Moreover, the claims do not integrate the judicial exception into a practical application because the claimed invention does not: apply the judicial exception with, or by use of, a particular machine (see MPEP 2106.05(b)); effect a transformation or reduction of a particular article to a different state or thing (see MPEP 2106.05(c)); or apply or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment see MPEP 2106.05(e).
Applicant argues that the claimed invention provides an improvement: the “present application addresses specific technical shortcomings in conventional healthcare monitoring systems. As described in the specification, existing health assessment solutions often rely on isolated health metrics or limited datasets and therefore fail to provide a reliable representation of an individual's overall wellness condition. Conventional systems are unable to effectively integrate multiple categories of health-related data to generate a holistic representation of a user's health state.”
Consideration of improvements is relevant to the integration analysis regardless of the technology of the claimed invention. That is, the consideration applies equally whether it is a computer-implemented invention, an invention in the life sciences, or any other technology. See, e.g., Rapid Litigation Management Ltd. v. CellzDirect, Inc., in which the court noted that a claimed process for preserving hepatocytes could be eligible as an improvement to technology because the claim achieved a new and improved way for preserving hepatocyte cells for later use, even though the claim is based on the discovery of something natural.(See 827 F.3d 1042, 1048 (Fed. Cir. 2016)) Notably, the court did not distinguish between the types of technology when determining that the invention improved technology.
However, it is important to keep in mind that an improvement in the judicial exception itself (e.g., a recited fundamental economic concept) is not an improvement in technology. For example, in Trading Technologies Int’l v. IBG LLC, the court determined that the claim simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology. (921 F.3d 1084, 1093-94 (Fed. Cir. 2019) In the instant case, applicant’s argued improvement seems to be to the abstract idea (i.e. the patient assessment process).
Furthermore, in accordance with MPEP 2106.05 (a), if it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art.
For example, in McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea. McRO, 837 F.3d at 1313-14, 120 USPQ2d at 1100-01. In contrast, the court in Affinity Labs of Tex. v. DirecTV, LLC relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible. 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016).
An important consideration in determining whether a claim is directed to an improvement in technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome. McRO, 837 F.3d at 1314-15, 120 USPQ2d at 1102-03; DDR Holdings, 773 F.3d at 1259, 113 USPQ2d at 1107. In this respect, the improvement consideration overlaps with other Step 2B considerations, specifically the particular machine consideration (see MPEP § 2106.05(b)), and the mere instructions to apply an exception consideration (see MPEP § 2106.05(f)). Thus, evaluation of those other considerations may assist examiners in making a determination of whether a claim satisfies the improvement consideration.
Applicant’s disclosure fails to provide a technical explanation or a discussion that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. Moreover, despite applicant’s assertion that the claimed invention is not merely implemented on a generic computer system (pg. 15 of arguments), the applicant’s disclosure states: “As used herein, a ‘processing unit’ or ‘processor’ or ‘operating processor’ includes one or more processors, wherein processor refers to any logic circuitry for processing instructions. A processor may be a general-purpose processor, a special purpose processor, a conventional processor, a digital signal processor, a plurality of microprocessors, one or more microprocessors in association with a DSP core, a controller, a microcontroller, Application Specific Integrated Circuits, Field Programmable Gate Array circuits, any other type of integrated circuits, etc.” (Emphasis added)
(D) Applicant argues that Lee fails to disclose the limitations of claim 1 including “receiving user data comprising at least one of a demographics data, a physical health data, a mental and emotional health data, and a behavioural health data…”
In response the examiner disagrees. Lee discloses that the system processor receives health data including sensor data (par. 35: user device may include a plurality of sensors, for example, a pedometer, a gyro sensor, an acceleration sensor, a cardiotachometer, an electrocardiogram measurement instrument, a brain wave monitor, an electromyogram measurement instrument, a weight sensor, a temperature sensor, a humidity sensor, an illumination sensor… The user device may receive a sensor value associated with user's physical information and behavior information and may transmit the same to the server.) Lee further discloses the processor receiving demographic information (par. 36: the data reception unit 100 may receive user unique information, such as gender, age, physical information and the like from the user device.)
Applicant argues that the applicant’s invention requires: “receiving multidimensional user data comprising demographic data, physical health data, mental and emotional health data, and behavioural health data, which collectively represent multiple health-based dimensions of a user.” However, as drafted, the claim requires “at least one of” the types of data listed, not all of them. Therefore Applicant’s arguments regarding the Lee reference not disclosing receiving and analyzing “multidimensional user data comprising demographic data, physical health data, mental and emotional health data, and behavioural health data” are not persuasive, as this is not required by the current claim language.
(E) Applicant argues that the Lee reference does not disclose “a layered transformation pipeline, nor does it disclose the specific dependency between composite scores, health-wellness score, and true health-wellness status as recited in the claims.” Applicant argues that the Swartz reference does not correct the deficiencies of Lee reference.
In response, the Lee reference discloses:
- generating, a corresponding composite score for one or more health based dimensions of the user, based on the analysis of the user data; (par. 50-54: Par. 50: The first health index generation unit 610 may generate a first health index using a parameter for each health data according to a health group to which the health data belongs. The first health index generation unit 610 may quantitatively analyze health data by applying a healthcare model specified for a health group which the health data belongs to, and may generate a first health index for each health group. Particularly, the first health index generation unit 610 may generate a first health index associated with the physical activity status using a healthcare model specified for the health group of the physical activity status, in association with health data matched to the health group of the physical activity status)
- automatically generating, a health-wellness score of the user based at least on the corresponding composite score for one or more health based dimensions; (par. 50-second index score based at least on first score: the health data evaluation unit 600 may include a first health index generation unit 610 that quantitatively analyzes health data, a second health index generation unit 630 that generates integrated second health data associated with user health data by integrating first health indices, each of which is generated for one of the health groups, and a healthcare report generation unit 650 that analyzes a second health index so as to determine the health status of a user; par. 55- The second health index generation unit 630 may generate a second health index by integrating a plurality of first health indices generated by the first health index generation unit 610. The second health index generation unit 630 may generate the second health index using a weight assigned for each health group corresponding to health data)
- automatically generating, the true health-wellness status of the user based on the health-wellness score of the user; and (par. 56- The healthcare report … may provide user's overall health status)
- providing, to at least one of the electronic device, and a healthcare provider device, the true health-wellness status of the user. (par. 50: a healthcare report generation unit 650 that analyzes a second health index so as to determine the health status of a user, and generates a healthcare report that visually shows the health state of the user; par. 56-58)
It is not entirely clear to the Examiner which features applicant feels are not taught by the prior art with regard to the arguments directed toward the claim rejections under 35 USC 103. Moreover, in response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Therefore, applicant’s arguments are not persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Khan et al ( US 2014/0006039)- discloses a healthcare management system for evaluating medical risk and health state of a consumer comprising a gateway configured to obtain clinical information and non-clinical information for the consumer, determine a composite healthcare index (HCI) for the consumer based on both the clinical information and non-clinical information, and share the composite HCI with a plurality of healthcare stakeholders that are authorized to receive the composite HCI.
THIS ACTION IS MADE FINAL. 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 Rachel L Porter whose telephone number is (571)272-6775. The examiner can normally be reached M-F, 10-6:30.
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, Shahid Merchant can be reached at 571-270-1360. 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.
/Rachel L. Porter/Primary Examiner, Art Unit 3684
Prosecution Insights