DETAILED ACTION
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 .
Status of Claims
In reply filed 22 June 2026, the following changes have been made: amendments to claims 1, 3-5, and 7-11.
Claims 1, 3-5, and 7-11 are currently pending and have been examined.
Priority
While receipt is acknowledged of certified copies of papers required by 37 CFR 1.55, it is not in English.
An English translation as well as a statement that the translation is accurate is required. See 37 CFR 1.55 (g)(3)(iii) & 37 CFR 1.55 (g)(4).
Failure to provide a certified translation may result in no benefit being accorded for both the non-English applications.
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, 3-5, and 7-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
The claim(s) recite(s) subject matter within a statutory category as a machine (claims 1, 3-5, and 7-9), process (claim 10), and article of manufacture (claim 11).
INDEPENDENT CLAIMS
Step 2A Prong 1
Claim 1 recites steps of
a memory that stores a table in which an occurrence part or a diagnosis name of
an incidental finding and a medical department that is in charge of the incidental finding are associated with each other; and
at least one processor coupled to the memory,
wherein the at least one processor is configured to:
receive a designation of a specific patient from a user terminal device;
acquire, from a server via a network, data of a medical document to which first medical department information indicating a first medical department that is a creation source and date information indicating a creation date are assigned, the medical document including a report and an electronic medical record for the specific patient;
extract text from the data of the report
extract text from the data of the electronic medical record:
extract, as the incidental finding, a text that is included in the data of
the report and is not included in the data of the electronic medical record, by using a text analysis technique:
identify a second medical department that is in charge of the extracted
incidental finding as a second medical department information, by referring to the table stored in the memory;
generate list information in a format in which identification names of a plurality of medical departments are taken on a first axis and a date is taken on a second axis intersecting the first axis, wherein information of the report and the electronic medical record is recorded in a field in the list information corresponding to the first medical department information and the date information;
record the extracted incidental finding in the field in the list information corresponding to the first medical department information and the date information, and in a field in the list information corresponding to the second medical department information and the date information; and
transmit the list information to the user terminal device.
Claims 10 and 11 recite similar limitations as claim 1 but for the recitation of generic computer components.
These steps for acquiring a medical document and generating a master list with information corresponding to the medical document, as drafted, under the broadest reasonable interpretation, includes methods of organizing human activity. That is, nothing in the claim element precludes the italicized portions from managing personal behavior or relationships or interactions between people by organizing the activity around generating a list of information that corresponds to a creation date and the respective medical department that is the creation source. This could be analogized to manual file keeping operations that involves creating a master list of file transactions. If a claim limitation, under its broadest reasonable interpretation, covers performance as organizing human activity but for the recitation of generic computer components, then it falls within the “Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application. In particular, the additional elements non-italicized portions identified above for claims 1 and 10-11, do not integrate the abstract idea into a practical application, other than the abstract idea per se, because the additional elements amount to no more than limitations which:
amount to mere instructions to apply an exception (such as
recitation of a memory that stores; at least one processor coupled to the memory, wherein the processor is configured; from a server via a network; via at least one processor provided in an information processing apparatus; and, a non-transitory computer-readable storage medium storing an information processing program causing at least one processor of an information processing apparatus to execute a process amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f))
add insignificant extra-solution activity to the abstract idea (such as recitation of receive a designation of a specific patient from a user terminal device; acquire […] data of a medical document; and, transmit the list information to the user terminal device amounts to mere data gathering and output since it does not add meaningful limitations to the receiving, acquiring, and transmitting actions performed, see MPEP 2106.05(g))
Each of the above additional elements therefore only amounts to mere instructions to implement functions within the abstract idea using generic computer components or other machines within their ordinary capacity, and add insignificant extra-solution activity to the abstract idea. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. These elements are therefore not sufficient to integrate the abstract idea into a practical application. Therefore, the above claims, as a whole, are directed to an abstract idea.
Step 2B
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception, and add insignificant extra-solution activity to the abstract idea. Additionally, the additional limitations, other than the abstract idea per se, amount to no more than limitations which:
amount to mere instructions to apply an exception in particular fields such as a memory that stores; at least one processor, wherein the processor is configured; from a server via a network; via at least one processor provided in an information processing apparatus; and, a non-transitory computer-readable storage medium storing an information processing program causing at least one processor of an information processing apparatus to execute a process, e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f).
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields such as recitation of receive a designation of a specific patient from a user terminal device; acquire […] data of a medical document; and, transmit the list information to the user terminal device; e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i);
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation.
DEPENDENT CLAIMS
Step 2A Prong 1
Dependent claims recite additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claims 3-5 and 7-9 reciting particular aspects for acquiring a medical document and generating a master list with information corresponding to the medical document such as
[Claim 3] wherein the at least one processor is configured to present, in response to a request, details of the information described in the medical document;
[Claim 4] wherein the at least one processor is configured to present other-department handling information, which is included in the medical document created by the first medical department and indicates a matter that needs to be handled by the second medical department, in the list information in a different form from other information;
[Claim 5] wherein the at least one processor is configured to extract the other-department handling information via a text analysis of the medical document created by the first medical department;
[Claim 7] wherein the at least one processor is configured to present the information on the incidental finding recorded in the field, of the format, corresponding to the first medical department information and the information on the incidental finding recorded in the field corresponding to the second medical department information, in the list information in different forms from each other;
[Claim 8] wherein the at least one processor is configured to generate the list information in which a marker corresponding to the medical document is recorded in the format;
[Claim 9] wherein the at least one processor is configured to generate the list information in which a first marker corresponding to a medical document, which is created by a first medical department and includes other-department handling information indicating a matter that needs to be handled by a second medical department, and a second marker corresponding to a medical document, which is created by the second medical department and includes information corresponding to the other-department handling information, are connected by a line segment;
these italicized portions are methods of organizing human activity since they merely describe types of data and determinations that can be performed by humans.
Step 2A Prong 2
Dependent claims 3-5 and 7-9 recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (the additional limitations in claims 3-5 and 7-9 (the at least one processor is configured); amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f))). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B
Dependent claims 3-5 and 7-9 recite additional subject matter which, as discussed above with respect to integration of the abstract idea into a practical application, amount to invoking computers as a tool to perform the abstract idea, e.g., a commonplace
business method or mathematical algorithm being applied on a general-purpose
computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f). Also, see [0027] which provides examples of off-the-shelf hardware and [0028] which provides examples of off-the-shelf displays and input devices. There is no indication that these additional elements improve the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation.
Therefore, in consideration of all the facts, this is a textbook USC 101 where the present invention is not patent-eligible under USC 101. Additionally, it is evident that the present claims monopolize fundamental human administrative tasks, restricting further innovation in this area without offering a specific, technical improvement to how the computer actually operates; “monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980 (quoting Myriad, 569 U.S. at 589, 106 USPQ2d at 1978 and Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012)).
Response to Arguments
The arguments filed on 22 June 2026 have been considered, but are not fully persuasive.
Regarding the priority, the applicant argues that an English translation is not needed to establish an entitlement to foreign priority except for patentability reasons, such as when overcoming a reference (MPEP 216). Thus, applicant submits that an English translation of the priority document is not required in this case.
Examiner disagrees with the applicant’s argument. Examiner points out that an English translation required for other reasons besides overcoming a reference.
For example, claiming priority and submitting a certified copy does not guarantee that the applicant’s present application lacks new matter. Since the applicant has not submitted an English translation, the present application is not entitled to the priority dates of both the non-English applications (MPEP 213.04).
Regarding the USC 101 rejection, the applicant submits that claim 1 provides improvements to computer functionality. Applicant points to multiple portions of the specification asserting that the present invention solves problems with conventional approaches of physicians manually detecting incidental findings, which relies on subjective human judgment and requires a time-consuming and potentially error-prone manual review process covering vast amounts of data, by automating automatic generation of incidental findings through information processing; this eliminates subjective and manual processes done by a human, and identifies the medical department that should treat the incidental finding. Applicant asserts that the present invention employs unconventional technical means to improve the operation of conventional systems. Applicant states that claims 1, 3-5, and 7-11 are allowable.
Examiner disagrees with the applicant’s arguments. Examiner asserts that the added limitations do not advance prosecution with respect to USC 101. The MPEP makes it clear that claims can recite an abstract idea even if they are claimed as being performed on a computer. The courts have also found claims requiring a generic computer or nominally reciting a generic computer may still recite abstract idea even though the claim limitations are not performed entirely by a human. The computers in the claims are not used in a specific, inventive way. The limitations identified as abstract in the present application are very outcome-based or result-focused and don’t give much technical detail that goes beyond what a human can do. The computer component(s) in the present claims are recited at a high level of generality. One of ordinary skill in the art would understand that applicant’s invention is clearly directed to judicial exception as confirmed by multiple subject matter experts at the USPTO. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1984 (2014). See also OIP Techs. v. Amazon.com, 788 F.3d 1359, 1364, 115 USPQ2d 1090, 1093-94 (Fed. Cir. 2015) ("Just as Diehr could not save the claims in Alice, which were directed to ‘implement[ing] the abstract idea of intermediated settlement on a generic computer’, it cannot save OIP's claims directed to implementing the abstract idea of price optimization on a generic computer.") (citations omitted).
Examiner further adds that the specification provides a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art. The MPEP provides that improvements to the functioning of a computer or to any other technology or technical field can signal eligibility, see MPEP 2106.05(a), and provides examples of improvements to computer functionality, MPEP 2106.05(a)(I), and improvements to any other technology of technical field, MPEP 2106.05(a)(I). “In computer-related technologies, the examiner should determine whether the claim purports to improve computer capabilities or, instead, invokes computers merely as a tool”. Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336, 118 USPQ2d 1684, 1689 (Fed. Cir. 2016). In Enfish, the court evaluated the patent eligibility of claims related to a self-referential database. Id. The court concluded the claims were not directed to an abstract idea, but rather an improvement to computer functionality. Id. It was the specification' s discussion of the prior art and how the invention improved the way the computer stores and retrieves data in memory in combination with the specific data structure recited in the claims that demonstrated eligibility. 822 F.3d at 1339, 118 USPQ2d at 1691. The claim was not simply the addition of general purpose computers added post-hoc to an abstract idea, but a specific implementation of a solution to a problem in the software arts. 822 F.3d at 1339, 118 USPQ2d at 1691. Unlike Enfish, the instant claimed invention appears to improve upon a judicial exception rather than a problem in the software arts. Rather than improving a computer's algorithm (i.e., solving a technically based problem), the claimed invention purports to solve the non-technological problem of the need for confirming the information for each medical department from an overarching perspective ([0004] of the specification) through generically applying computer components as a tool to acquire a medical document and generate a master list with information corresponding to the medical document thus enabling understanding of information on a medical document created in a plurality of medical departments. As can be seen one of the main/glaring issues is that specification does not show or describe a deficiency in the technology. Applicant is merely using computers to improve upon the judicial exception. That is, all the applicant is doing is applying computers/generic natural language analysis for their intended benefit(s) to a new data environment and calling it an improvement (see Customedia Techs., LLC v. Dish Network Corp., Case No.18-2239 (Fed. Cir. Mar. 6, 2020). In this present application, applicant is clearly improving upon the abstract idea, further supported by applicant’s arguments of record on page 11 that the invention “enables automatic generation of incidental findings
through information processing, thereby eliminating subjective and manual processes done by a human.” This exact assertion by the applicant is the perspective of the USPTO, making this case a clear textbook USC 101. MPEP 2106 is clear that patents are NOT granted in the United States to inventions that automate a manual process. Applicant’s current claims aren’t meaningful and do not help integrate the judicial exception into a practical application. Again, the applicant’s own specification does not support the assertion that the improvement is of a technological nature.
The examiner asserts the following facts that the applicant has not been able to
dispute:
1) the invention does NOT involve a novel algorithm or data structure that significantly improves the computer's functionality,
2) the invention does NOT involve a new hardware component or configuration that works with the computer to achieve a specific technical benefit, and 3) the computer is NOT used in a completely new way demonstrating a significant technical advancement.
Thus, examiner does not see how the present claims improve the functioning of a computer or provide improvements to any other technology or technical field. The claimed invention appears similar to the example of improvements that are insufficient to show an improvement in computer-functionality such as arranging transactional information on a graphical user interface in a manner that assists traders in processing information more quickly, Trading Technologies v. IBG LLC, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019). See MPEP 2106.05(a)(I)(viii). The asserted benefits from the applicant’s invention seem to come as a result of the use of general-purpose computers. The broad claims are lacking concrete limitations to integrate the abstract idea into a practical application. Examiner points out that the claimed limitations have no indication in the specification that the operations recited invoke any inventive programming, require any specialized computer hardware or other inventive computer components, i.e., a particular machine, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (fed Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). Most importantly, in DDR Holdings and unlike the present claims, the claims at issue specified how interactions with the Internet were manipulated to yield a desired result—a result that overrode the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink. 773 F.3d at 1258; 113 USPQ2d at 1106. The examiner also points out that there is no indication in the specification that the claimed invention affects a transformation or reduction of a particular article to a different state or thing. To show an involvement of a computer assists in improving technology, the claims must recite details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology (MPEP 2106.05(a)(II)). In Finjan, Inc. v. Blue Coat Systems the courts found that the claims were “directed to a non-abstract improvement in computer functionality…” (MPEP 2106.04(d)). The present invention does not meet the condition set forth by the courts and thus does not integrate the judicial exception into a practical application. Claims 10 and 11 are also not drawn to patent eligible subject matter.
With respect to Step 2B, in comparison to Bascom, examiner points out that Bascom is not similar to the present application because Bascom claimed a technical improvement in the art i.e., a technology-based solution to filter content on the internet while the present application is not presenting an improvement to computer technology (as indicated above). The additional elements have been treated under the “well-understood, routine, and conventional” consideration with citation of court case(s) in addition to the “apply it” consideration under Step 2B. The use of a computer or other machinery in its ordinary capacity for economic or other tasks or simply adding a general-purpose computer or computer components after the fact to an abstract idea does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Applicant’s claims do not recite unconventional steps that improve a conventional system. Thus, "significantly more" standard has not been satisfied. The applicant has not demonstrated that their invention is patent-eligible under USC 101. Therefore, the USC 101 rejection is strongly maintained.
Prior Art Cited but Not Relied Upon
Vos, J. F., Boonstra, A., Kooistra, A., Seelen, M., & Van Offenbeek, M. (2020). The influence of electronic health record use on collaboration among medical specialties. BMC health services research, 20(1), 676.
This reference is relevant because it discloses electronic health record collaboration among specialties and disciplines.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WINSTON FURTADO whose telephone number is (571)272-5349. The examiner can normally be reached Monday-Friday 8:00 AM to 4:00 PM EST.
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, Mamon Obeid can be reached at (571) 270-1813. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WINSTON R FURTADO/Primary Examiner, Art Unit 3687
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