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 .
Priority
Acknowledgment is made of Applicant's claim for priority to the following application(s):
* 63622252 filed on 18 January 2024
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c) as follows:
The later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original nonprovisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 63622252, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application. Claim 9 recites, inter alia: delivery means. The Specification as originally filed on 18 January 2024 in parent application 63622252 does not fairly disclose this feature.
Accordingly, claims 9-15 are not entitled to the benefit of the prior application
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 1,4-9 and 12-15 is/are rejected under 35 U.S.C. 103 as being unpatentable over Felsher (20020010679) in view of Rabin (6603464).
Claim 1: Felsher discloses:
A medical paperwork delivery system (Abstract illustrating a system capable of maintaining medical documents, page 1 paragraph 0008 illustrating paper medical records) comprising:
a document (41 paragraph 0311 illustrating a paper record);
a scanner (41 paragraph 0311 illustrating a scanner);
a communication interface (page 38 paragraph 0285 illustrating an access interface);
a mobile application (page 40 paragraph 0307 illustrating a portable computer storage medium and associated extension of an on-line system [considered to be a form of “mobile” application); and
a printing feature (page 40 paragraph 0303 illustrating a printer); and
Felsher does not disclose:
wherein the document is a lab order; and
further wherein the scanner is a handheld scanner.
Rabin discloses:
wherein the document is a lab order (column 5 line 64 to column 6 line 3 illustrating a lab order); and
further wherein the scanner is a handheld scanner (column 7 line 2-5 illustrating an optical scanner integrated into a pen [considered to be a form of “handheld”]).
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to include the document scanning of Rabin within the medical record system of Felsher with the motivation of improving patient care by collecting written information by doctors (Rabin; column 1 line 30-57).
Claim 4: Felsher in view of Rabin disclose:
The medical paperwork delivery system of claim 1, as discussed above and incorporated herein.
Felsher further discloses:
wherein the scanner digitizes the document (page 41 paragraph 0311 illustrating a document scanner converting a document into electronic format).
Claim 5: Felsher in view of Rabin disclose:
The medical paperwork delivery system of claim 1, as discussed above and incorporated herein.
Felsher further discloses:
wherein the communication interface is comprised of a software of the scanner (page 41 paragraph 0311 illustrating a document scanner software).
Claim 6: Felsher in view of Rabin disclose:
The medical paperwork delivery system of claim 4, as discussed above and incorporated herein.
Felsher further discloses:
wherein the communication interface allows for transmission of the document once the document is converted to a digital scan via the scanner (page 422 paragraph 0330 illustrating providing the digital document through the Internet).
Claim 7: Felsher in view of Rabin disclose:
The medical paperwork delivery system of claim 4, as discussed above and incorporated herein.
Felsher further discloses:
wherein the document can be viewed by the mobile application (page 40 paragraph 0307 illustrating a portable computer storage medium and associated extension of an on-line system).
Claim 8: Felsher in view of Rabin disclose:
The medical paperwork delivery system of claim 1, as discussed above and incorporated herein.
Felsher further discloses:
wherein the printing features allows for the document to be printed from the mobile application (page 40 paragraph 0303 illustrating a printer printing the document).
Claim(s) 9, 12-15 recite(s) substantially similar limitations as those of claim(s) 1, 4-6 above, and are therefore rejected for substantially similar rationale as applied above, and incorporated herein.
In particular, Felsher discloses linked medical information records (Figure 3).
Response to Arguments
In the Remarks filed on 19 February 2026, Applicant makes numerous arguments. Examiner will address these arguments in the order presented.
On page 5 Applicant asserts that claims 16-20 have been canceled, thereby rendering moot the rejection thereof under Section 101.
Applicant’s arguments have been carefully considered and found persuasive. The rejection of all pending claims under Section 101 is hereby withdrawn.
Applicant’s arguments with respect to claim(s) 1, 9 on page 6-8 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
Based on the evidence presented above, Applicant’s arguments are not found persuasive.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Walsh (20030074228) discloses a method of maintaining electronic records (Abstract) in a manner similar to those disclosed in the instant pending Specification as originally filed.
Tifft (20030120652) discloses maintaining patient electronic records (Abstract) in a manner similar to those disclosed in the instant pending Specification as originally filed.
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 extension fee 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 date of this final action.
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/T.N.N./ Examiner, Art Unit 3685
/KAMBIZ ABDI/Supervisory Patent Examiner, Art Unit 3685