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 the reply filed 24 June 2026 the following changes have been made: amendments claims 1-3 and 5-6.
Claims 1-6 are currently pending and have been examined.
Priority
Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55.
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 1-6 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 1-4), process (claim 5), and article of manufacture (claim 6).
INDEPENDENT CLAIMS
Step 2A Prong 1
Claim 1 recites steps of
a processor configured to
acquire adverse event information that indicates an adverse event occurred in a patient,
extract administration information that indicates a drug administered to the patient, the administration information including administration date and time information
that includes administration date and time when the drug is administered to the patient;
after the drug was administered to the patient, acquire, from a storage, anticipated period information that includes an anticipated period during which occurrence of the adverse event is anticipated and align the anticipated period information;
identify a related drug related to occurrence of the adverse event, from the administration information;
identify related image information on the related drug, when there is the related drug; and
display output information that includes the adverse event information, the administration information, drug information on the drug, and the related image information.
Claims 5 and 6 recite similar limitations as claim 1 but for the recitation of generic computer components.
These steps for identifying a related drug related to occurrence of the adverse event, as drafted, under the broadest reasonable interpretation, includes performance of the limitations in the mind but for recitation of generic computer components. That is, nothing in the claim element precludes the italicized portions from practically being performed in the mind through performing determinations, including observations and evaluations, on adverse event identification involving a drug. This could be analogized to collecting information, analyzing it, and displaying certain results of the collection and analysis. If a claim limitation, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it falls within the “Mental Process” 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 5-6, 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 processor; display output information; and, a non-transitory computer readable medium including programmed instructions, wherein the instructions, when executed by a computer, cause the computer to execute 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 acquire adverse event information; extract administration information; and, acquire, from a storage, anticipated period information amounts to mere data gathering since it does not add meaningful limitations to the acquiring and extracting 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 a processor; display output information; and, a non-transitory computer readable medium including programmed instructions, wherein the instructions, when executed by a computer, cause the computer to execute, 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
acquire adverse event information; extract administration information; and, acquire, from a storage, anticipated period information, 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 2-4 reciting particular aspects for identifying a related drug related to occurrence of the adverse event such as
[Claim 2] wherein the processor is further configured to identity the related drug, based on the administration information, and the anticipated period information that includes the anticipated period from the administration date and time;
[Claim 3] wherein the processor is further configured to identify the related image information that includes captured image data captured within the anticipated period, based on the anticipated period;
[Claim 4] wherein the adverse event information includes severity information that indicates severity of the adverse event;
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 2-3 recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (the additional limitations in claims 2-3 (the processor); 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 2-3 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 [0096] which provides examples of off-the-shelf hardware and [0098] which provides examples of computer readable non-transitory storage mediums. 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, the present invention is clearly not a patent-eligible invention under USC 101.
Claim Rejections - 35 USC § 103
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 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 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 set forth in Graham v. John Deere Co., 383 U.S. 1, 148
USPQ 459 (1966), that are applied 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) 1-2 and 5-6 are rejected under 35 U.S.C. 103 as being unpatentable over Kano et al. (US20200075142A1) in view of Bulut et al. (US20160103967A1).
Regarding claim 1, Kano discloses a processor configured to acquire adverse event information that indicates an adverse event occurred in a patient ([0065] “Assume that the processing circuitry 11 receives the designation of event type “cardiac failure sign event”.”)
extract administration information that indicates a drug administered to the patient ([0045] “More specifically, with the registration function 612, the processing circuitry 61 causes the memory 62 to store, for example, the medical treatment information acquired from the HIS 2 according to a preset rule. […] the date of administration of a medicine”)
the administration information including administration date and time information that includes administration date and time when the drug is administered to the patient ([0045] “Event dates include, for example, […] the date of administration of a medicine” [0059] “a medical treatment and time information representing the time associated with the event. Time information is represented by, for example, a year, a month, a date, or a date and time.”)
and display output information that includes the adverse event information, the administration information, […] and the related image information ([0141] “FIG. 9 is a view showing another display example of mapping data according to the first modification. Assume that referring to FIG. 9, the processing circuitry 11 has received, for example, the designation of character strings “cardiac failure sign event”, “renal function deterioration event”, “medicine assessment event”, and “image examination event”.”)
Kano does not explicitly disclose however Bulut teaches after the drug was administered to the patient, acquire, from a storage, anticipated period information that includes an anticipated period during which occurrence of the adverse event is anticipated and align the anticipated period information ([0086] “In a second step S12 drug administration data identifying a drug administered to the patient […] a third step S14 drug information of the identified drug are obtained, said drug information including drug side effects and/or drug-drug interactions and/or drug-disease contraindications.” [0070] “the exact time of drug administration is recorded and stored. Using this information a timeline of the expected course of adverse effects will be automatically calculated by accessing the drug, drug-drug interaction, drug-disease contraindications and patient data.”)
identify a related drug related to occurrence of the adverse event, from the administration information ([0018] “obtaining drug information of the identified drug, said drug information including drug side effects and/or drug-drug interactions and/or drug-disease contraindications”)
identify related image information on the related drug, when there is the related drug ([0050] “Advantageously, the proposed monitoring information providing device further comprises an imaging unit, in particular a camera, for providing image data, wherein said patient data input is configured to identify the patient from said image data (e.g. via face recognition) and said drug identification input is configured to identify the drug administered to the patient and the time of administration of the drug to the patient […] and said processing unit is configured to determine one or more physiological signs of the patient from said image data (e.g. via the well-known remote photo-plethysmography technique)”)
drug information on the drug ([0074] “Additionally, if space on the displayed screen allows, the drug(s) that cause the potential adverse effect and, optionally, further drug information on these drugs, may be displayed.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the medical display system of Kano after the drug was administered to the patient, acquire, from a storage, anticipated period information that includes an anticipated period during which occurrence of the adverse event is anticipated and align the anticipated period information; identify a related drug related to occurrence of the adverse event, from the administration information; identify related image information on the related drug, when there is the related drug; and, drug information on the drug as taught by Bulut since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 2, Kano discloses […] administration date […] ([0045] “Event dates include, for example, […] the date of administration of a medicine” [0059] “a medical treatment and time information representing the time associated with the event. Time information is represented by, for example, a year, a month, a date, or a date and time.”)
Kano does not explicitly disclose however Bulut teaches wherein the processor is further configured to identify the related drug, based on the administration information, and the anticipated period information that includes the anticipated period from the […] and time ([0034] “implemented by e.g. a PC, processor” [0087] “Further, a drug database 130 may be accessed to obtain drug information for the identified drug.” [0017] “obtaining drug administration data identifying a drug administered to the patient and the time of administration of the drug to the patient”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the medical display system of Kano wherein the processor is further configured to identify the related drug, based on the administration information, and the anticipated period information that includes the anticipated period from the […] and time as taught by Bulut since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 5, Kano discloses acquiring adverse event information that indicates an adverse event occurred in a patient ([0065] “Assume that the processing circuitry 11 receives the designation of event type “cardiac failure sign event”.”)
extracting administration information that indicates a drug administered to the patient ([0045] “More specifically, with the registration function 612, the processing circuitry 61 causes the memory 62 to store, for example, the medical treatment information acquired from the HIS 2 according to a preset rule. […] the date of administration of a medicine”)
the administration information including administration date and time information that includes administration date and time when the drug is administered to the patient ([0045] “Event dates include, for example, […] the date of administration of a medicine” [0059] “a medical treatment and time information representing the time associated with the event. Time information is represented by, for example, a year, a month, a date, or a date and time.”)
and displaying output information that includes the adverse event information, the administration information, […], and the related image information ([0141] “FIG. 9 is a view showing another display example of mapping data according to the first modification. Assume that referring to FIG. 9, the processing circuitry 11 has received, for example, the designation of character strings “cardiac failure sign event”, “renal function deterioration event”, “medicine assessment event”, and “image examination event”.”)
Kano does not explicitly disclose however Bulut teaches after the drug was administered to the patient, acquire, from a storage, anticipated period information that includes an anticipated period during which occurrence of the adverse event is anticipated and align the anticipated period information ([0086] “In a second step S12 drug administration data identifying a drug administered to the patient […] a third step S14 drug information of the identified drug are obtained, said drug information including drug side effects and/or drug-drug interactions and/or drug-disease contraindications.” [0070] “the exact time of drug administration is recorded and stored. Using this information a timeline of the expected course of adverse effects will be automatically calculated by accessing the drug, drug-drug interaction, drug-disease contraindications and patient data.”)
identifying a related drug related to occurrence of the adverse event, from the administration information ([0018] “obtaining drug information of the identified drug, said drug information including drug side effects and/or drug-drug interactions and/or drug-disease contraindications”)
identifying related image information on the related drug, when there is the related drug ([0050] “Advantageously, the proposed monitoring information providing device further comprises an imaging unit, in particular a camera, for providing image data, wherein said patient data input is configured to identify the patient from said image data (e.g. via face recognition) and said drug identification input is configured to identify the drug administered to the patient and the time of administration of the drug to the patient […] and said processing unit is configured to determine one or more physiological signs of the patient from said image data (e.g. via the well-known remote photo-plethysmography technique)”)
drug information on the drug ([0074] “Additionally, if space on the displayed screen allows, the drug(s) that cause the potential adverse effect and, optionally, further drug information on these drugs, may be displayed.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the medical display system of Kano after the drug was administered to the patient, acquire, from a storage, anticipated period information that includes an anticipated period during which occurrence of the adverse event is anticipated and align the anticipated period information; identify a related drug related to occurrence of the adverse event, from the administration information; identify related image information on the related drug, when there is the related drug; and, drug information on the drug as taught by Bulut since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Regarding claim 6, Zhou discloses a non-transitory computer readable medium including programmed instructions, wherein the instructions, when executed by a computer, cause the computer to execute ([0046] “The memory 62 may be a driving device that reads and writes various types of information from and to a portable storage medium such as a CD-ROM drive, DVD drive, or flash memory.”)
acquiring adverse event information that indicates an adverse event occurred in a patient ([0065] “Assume that the processing circuitry 11 receives the designation of event type “cardiac failure sign event”.”)
extracting administration information that indicates a drug administered to the patient ([0045] “More specifically, with the registration function 612, the processing circuitry 61 causes the memory 62 to store, for example, the medical treatment information acquired from the HIS 2 according to a preset rule. […] the date of administration of a medicine”)
the administration information including administration date and time information that includes administration date and time when the drug is administered to the patient ([0045] “Event dates include, for example, […] the date of administration of a medicine” [0059] “a medical treatment and time information representing the time associated with the event. Time information is represented by, for example, a year, a month, a date, or a date and time.”)
and displaying output information that includes the adverse event information, the administration information, […], and the related image information ([0141] “FIG. 9 is a view showing another display example of mapping data according to the first modification. Assume that referring to FIG. 9, the processing circuitry 11 has received, for example, the designation of character strings “cardiac failure sign event”, “renal function deterioration event”, “medicine assessment event”, and “image examination event”.”)
Kano does not explicitly disclose however Bulut teaches after the drug was administered to the patient, acquire, from a storage, anticipated period information that includes an anticipated period during which occurrence of the adverse event is anticipated and align the anticipated period information ([0086] “In a second step S12 drug administration data identifying a drug administered to the patient […] a third step S14 drug information of the identified drug are obtained, said drug information including drug side effects and/or drug-drug interactions and/or drug-disease contraindications.” [0070] “the exact time of drug administration is recorded and stored. Using this information a timeline of the expected course of adverse effects will be automatically calculated by accessing the drug, drug-drug interaction, drug-disease contraindications and patient data.”)
identifying a related drug related to occurrence of the adverse event, from the administration information ([0018] “obtaining drug information of the identified drug, said drug information including drug side effects and/or drug-drug interactions and/or drug-disease contraindications”)
identifying related image information on the related drug, when there is the related drug ([0050] “Advantageously, the proposed monitoring information providing device further comprises an imaging unit, in particular a camera, for providing image data, wherein said patient data input is configured to identify the patient from said image data (e.g. via face recognition) and said drug identification input is configured to identify the drug administered to the patient and the time of administration of the drug to the patient […] and said processing unit is configured to determine one or more physiological signs of the patient from said image data (e.g. via the well-known remote photo-plethysmography technique)”)
drug information on the drug ([0074] “Additionally, if space on the displayed screen allows, the drug(s) that cause the potential adverse effect and, optionally, further drug information on these drugs, may be displayed.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the medical display system of Kano after the drug was administered to the patient, acquire, from a storage, anticipated period information that includes an anticipated period during which occurrence of the adverse event is anticipated and align the anticipated period information; identify a related drug related to occurrence of the adverse event, from the administration information; identify related image information on the related drug, when there is the related drug; and, drug information on the drug as taught by Bulut since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Claim(s) 3 is rejected under 35 U.S.C. 103 as being unpatentable over over Kano et al. (US20200075142A1) in view of Bulut et al. (US20160103967A1) and further in view of Ko et al. (WO2022085736A1).
Regarding claim 3, Kano in view of Bulut does not explicitly disclose however Ko teaches wherein the processor identifies the related image information that includes captured image data captured within the anticipated period, based on the anticipated period ([pg. 6] “The physical condition information acquisition unit that acquires […] the medication information that indicates that a medication different from the therapeutic drug was used for the patient, and the medication time that is the time when the medication was administered are acquired. The medical information acquisition unit, the medical information image data generation unit that generates medical information image data showing the medical information image in which the physical condition information and the medical information are arranged in chronological order, and the medical information image data.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the medical display system of Kano and the monitoring system of Bulut identifying the related image information that includes captured image data captured within the anticipated period, based on the anticipated period as taught by Ko since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Claim(s) 4 is rejected under 35 U.S.C. 103 as being unpatentable over over Kano et al. (US20200075142A1) in view of Bulut et al. (US20160103967A1) and further in view of Ahluwalia et al. (US20230414567A1).
Regarding claim 4, Kano in view of Bulut does not explicitly disclose however Ahluwalia teaches wherein the adverse event information includes severity information that indicates severity of the adverse event ([0008] “During the study, some investigators discontinued etrasimod due to lymphocyte levels meeting CTCAE grade 3 criteria.”)
Therefore, it would have obvious to one of ordinary skill in the art prior to the effective filing date of the claimed invention to include in the medical display system of Kano and monitoring system of Bulut the adverse event information including severity information that indicates severity of the adverse event as taught by Ahluwalia since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art.
Response to Arguments
Applicant’s arguments filed on 24 June 2026 have been considered but are not fully persuasive.
Regarding priority, applicant states that both priority documents have been retrieved by the USPTO and requests that the examiner acknowledge all certified copies of priority documents as received.
Examiner acknowledges that the USPTO has retrieved priority documents, but the fact remains that the priority requirement has not been met under 35 U.S.C. 119 and MPEP 213.04 if an examiner explicitly requires a translation of a non-English foreign application and the applicant fails to submit it. Therefore, applicant is not entitled to the priority dates of the foreign applications.
Regarding specification, applicant has amended the title of the application which is now reflected in the application file. Therefore, the title/specification objection has been withdrawn.
Regarding USC 101 rejection, applicant argues that claims 1 and 5-6 are directed to a specific technological solution for improving physician diagnosis of drug-induced adverse events by associating multiple categories of medical information that were conventionally maintained separately where the claim features provide an integrated diagnostic output for use in evaluating adverse events rather than merely automating a mental process. That even the claims recite an abstract idea, under Step 2A Prong 2 the claims they require a specific sequence in which administration date/time information is used together with anticipated period information stored for particular drugs to identify a related drug and to further identify related image information associated with that drug. The resulting output information associates adverse event information, administered drugs, and medical images in a manner that enables physicians to efficiently evaluate potential drug-induced adverse events ([0061] of specification). Applicant asserts that the claims are analogous to McRO, Inc. v. Bandai Namco Games America Inc., in which specific rules for processing information were held to improve an existing technological process. Applicant states that the claims therefore impose meaningful limits on any alleged abstract idea and do not merely instruct a generic computer to "apply it." For Step 2B, applicant asserts that there is no cited evidence demonstrating that it was conventional to perform the claimed steps. The specification is pointed to which states that conventional systems made diagnosis difficult where the present invention improves diagnostic efficiency. Applicant submits that the claims are patent eligible and requests the USC 101 rejection be withdrawn.
Examiner disagrees with the applicant’s arguments. Applicant’s claims are clearly directed to an abstract idea. The invention is a mental process and a generic data manipulation scheme. Acquiring, extracting, aligning, and identifying information are tasks a human can do with a pen and paper. 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 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. 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). Even if the claims nominally recite computer components that are rooted in technology, there is no recitation of how the computer components are specifically programmed to distinguish from generic computer processes
Examiner asserts the present amendments do not do much to advance prosecution because the present 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 to 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 physicians finding it difficult to diagnose patients ([0003] of specification) by using computers to automate physician diagnosis (pg. 7 of applicant’s arguments of record). In other words, one of the main/glaring issues with the present invention is that the problem solved by the applicant is not technological problem. Applicant’s invention lacks a specific, concrete technical improvement. It describes basic steps of getting information, comparing dates, and showing data using standard computer functions. In McRO, Inc. v. Bandai Namco Games America Inc., et al., 837 F.3d 1299 (Fed. Cir. 2016) the technological improvement the Federal Circuit found was that the claimed invention programmed a computer to perform tasks which could not be done previously in a computer; this is not the case for the present invention.
The examiner asserts the following facts which the applicant will not be 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.
It is evident from the specification and claims that the applicant is not improving computer technology, and instead providing an improvement to the abstract idea. An improvement to the abstract idea is not an improvement to computer technology. 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 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 & 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 clearly does not meet the condition set forth by the courts and thus is not integrated into a practical application.
An analysis was performed under Step 2B, with court case citations, which didn’t result in the claim being eligible under USC 101. 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 (as indicated above). There is nothing specialized about using off-the-shelf computers on new data. 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). The applicant has not demonstrated that their invention is inventive. There is no justification to withdraw the USC 101. Therefore, the USC 101 rejection is strongly maintained.
Regarding the USC 103 rejection, in response to applicant’s arguments that Kano does not disclose the added limitations, examiner points out that new paragraphs from Kano and Bulut have been cited to teach the added limitations. Therefore, the USC 103 rejection has been maintained.
Prior Art Cited but Not Relied Upon
Dara, O. N., Ibrahim, A. A., & Mohammed, T. A. (2024). Advancing medical imaging: detecting polypharmacy and adverse drug effects with Graph Convolutional Networks (GCN). BMC Medical Imaging, 24(1), 174.
This reference is relevant because it discloses identifying drug related adverse events or side effects.
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.
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/WINSTON R FURTADO/Primary Examiner, Art Unit 3687
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