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
Claims 10-15 and newly added claims 20-22 have been reviewed and addressed below.
Claims 1-9, 16-19 have been cancelled.
Response to Amendment/Arguments
Applicant’s amendments filed on 6-10-26 has been entered and are addressed below.
Applicant argues that the amended claims are similar to that of Example 42 which recite specific technical mechanisms rather than the meter concept of managing coverage or referrals on a computer. Examiner respectfully disagrees. Example 42 normalized data from different platforms which then is used to create a notification to all the network users that there is an updated normalized data in real time, which the instant claim does not currently have.
Applicant argues that requiring the combination of two distinct references is evidence that the claimed combination is not conventional. Examiner respectfully disagrees. Judicial exceptions need not be old or long prevalent, and that even newly discovered judicial exceptions are still exceptions, despite their novelty. For example, the mathematical formula in Flook, the laws of nature in Mayo, and the isolated DNA in Myriad were all novel, but nonetheless were considered by the Supreme Court to be judicial exceptions because they were “‘basic tools of scientific and technological work’ that lie beyond the domain of patent protection.” The Supreme Court’s cited rationale for considering even “just discovered” judicial exceptions as exceptions stems from the concern that “without this exception, there would be considerable danger that the grant of patents would ‘tie up’ the use of such tools and thereby ‘inhibit future innovation premised upon them.’” The Federal Circuit has also applied this principle, for example, when holding the concept of using advertising as an exchange or currency abstract in Ultramercial, despite the patentee’s arguments that the concept was “new”.
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 10-15, 20-22 re 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.
Step 1:
Claims 10-15, 20-22 are drawn to computer implemented method, system and non-transitory computer-readable medium, which is/are statutory categories of invention (Step 1: YES).
Step 2A Prong One:
Independent claims 10, 13, recite “receiving patient visit data, the patient visit data comprising a public health number and information on a patient visit accessed by a physician through the EMR at a point of in-person care”, “automatically applying a stored set of jurisdictional billing rules to the patient visit data to evaluate criteria comprising patient location, physician location, employment status and provincial or state services rules, thereby determining without manual administrative intervention, whether the service should be billed to public health coverage or private insurance services”, “when the service is to be billed to public coverage, automatically reviewing applicable public coverage rules and transmitting a billing instruction to create and submit a bill for the patient to a public billing system”, “when the service is to be billed to private insurance, automatically reviewing the private insurance services, transmitting the bill to a private insurance provider, checking health eligibility for the patient of the private insurance and receiving from the private insurance provider a verification of approval”, “records and refines the jurisdictional billing rules based on each patient and case applies the redefined rules to a subsequent patient”.
The recited limitations, as drafted, under their broadest reasonable interpretation, cover methods of organizing human activity particularly managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions. Accordingly, the claims recite an abstract idea (Step 2A Prong One: YES).
Step 2A Prong Two:
This judicial exception is not integrated into a practical application. The claims are abstract but for the inclusion of the additional elements including “Service Engine module executing on a computing platform separate from an electronic medical records (EMR) system”, “application program interface (API)”, “billing system”, “computer”, which are additional elements that are recited at a high level of generality such that they amount to no more than mere instruction to apply the exception using generic computer components. See: MPEP 2106.05(f).
The additional elements are merely incidental or token additions to the claim that do not alter or affect how the process steps or functions in the abstract idea are performed (e.g., the “processor” language is incidental to what it is “configured” to perform). Therefore, the claimed additional elements do not add meaningful limitations to the indicated claims beyond a general linking to a technological environment. See: MPEP 2106.05(h).
The claims recite the additional element of “receiving patient visit data transmitted from the EMR system through an application program interface (API)” which can be considered limitations directed to insignificant extra-solution activity that does amount to an inventive concept because the limitations do not impose meaningful limits on the claim such that is it not nominally or tangentially related to the invention. See: MPEP 2106.05(g).
The combination of these additional elements is no more than mere instructions to apply the exception using generic computer components. Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Hence, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Accordingly, the claims are directed to an abstract idea (Step 2A Prong Two: NO).
Step 2B:
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, using the additional elements to perform the abstract idea amounts to no more than mere instructions to apply the exception using generic components. Mere instructions to apply an exception using a generic components cannot provide an inventive concept. See: MPEP 2106.05(f).
Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are not integrated into the claim because they are merely incidental or token additions to the claim that do not alter or affect how the process steps or functions in the abstract idea are performed. Therefore, the claimed additional elements do not add meaningful limitations to the indicated claims beyond a general linking to a technological environment. See: MPEP 2106.05(h).
Further, the claimed additional elements, identified above, are not sufficient to amount to significantly more than the judicial exception because they are generic components that are configured to perform well-understood, routine, and conventional activities previously known to the industry. See: MPEP 2106.05(d). Said additional elements are recited at a high level of generality and provide conventional functions that do not add meaningful limits to practicing the abstract idea. The originally filed specification supports this conclusion at Figure 1, and
paragraph 71 that “service engine system comprises a service engine module, a web portal module, an electronic medical records (EMR) module configured to support EMR systems, and an in-person service engine module further comprising an automated in-person in-clinic management system”.
The claims recite the additional element of “receiving patient visit data transmitted from the EMR system through an application program interface (API)” which can be considered limitations directed to insignificant extra-solution activity that does amount to an inventive concept because the limitations do not impose meaningful limits on the claim such that is it not nominally or tangentially related to the invention. See: MPEP 2106.05(g).
Viewing the limitations as an ordered combination, the claims simply instruct the additional elements to implement the concept described above in the identification of abstract idea with routine, conventional activity specified at a high level of generality in a particular technological environment.
Hence, the claims as a whole, considering the additional elements individually and as an ordered combination, do not amount to significantly more than the abstract idea (Step 2B: NO).
Dependent claim(s) 11-12, 14-15, 20-22 when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea without significantly more. These claims fail to remedy the deficiencies of their parent claims above, and are therefore rejected for at least the same rationale as applied to their parent claims above, and incorporated herein.
Conclusion
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 REGINALD R REYES whose telephone number is (571)270-5212. The examiner can normally be reached 8:00-4:30 M-F.
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 R. 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.
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REGINALD R. REYES
Primary Examiner
Art Unit 3684
/REGINALD R REYES/Primary Examiner, Art Unit 3684
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