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 .
Claim 1 has been amended. Claims 2-20 are new. Claims 1-20 are pending.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “wherein, based at least partially on the second subset of potential treatments, an intervening action comprising a particular treatment procedure is administered to the individual in connection with treating a particular condition associated with the one or more conditions” in the last limitation. It is unclear what is meant by “an intervening action comprising a particular treatment procedure is administered to the individual in connection…” as the claim is being implemented by a computer per the instant disclosure. As such, it appears “an intervening action comprising a particular treatment procedure is administered to the individual in connection…” is missing a word and should read and will be interpreted as “an intervening action comprising a particular treatment procedure that is administered to the individual in connection…” for purposes of examination.
Claims 2-7 are rejected as they depend from claim 1.
Claim 8 and its dependents, claims 9-14, are rejected for similar reasons.
Claim 9 and its dependents, claims 15-20, are rejected for similar reasons.
Appropriate correction is required.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1
Claims 1-7 are drawn to a system for the dynamic management of treatments for one or more conditions which is within the four statutory categories (i.e. machine). Claims 8-14 are drawn to a non-transitory medium for the dynamic management of treatments for one or more conditions which is within the four statutory categories (i.e. manufacture). Claims 15-20 are drawn to a method for the dynamic management of treatments for one or more conditions which is within the four statutory categories (i.e. process).
Step 2A | Prong One
Claim 1 of Claims 1-7 (Group I) recites a system for having one or more conditions hardware processors configured to facilitate a plurality of operations (MPEP § 2106.05 (f), apply it), the operations comprising:
receiving an indication to provide one or more active treatments that have been utilized by an individual to treat one or more conditions associated with the individual;
retrieving the one or more active treatments, each of the one or more active treatments having a corresponding a unique identifier;
communicating a computerized (MPEP § 2106.05 (f), apply it) search query, that includes the unique identifier of at least one of the one or more active treatments, to search a treatment repository (MPEP § 2106.05 (f), apply it);
identifying, from the treatment repository, a first criteria;
responsive to the communicating, identifying one or more characteristics of the at least one of the one or more active treatments;
using the one or more characteristics to generate a first criteria for filtering one or more potential treatments associated with the one or more conditions;
applying the first criteria to the one or more potential treatments, for the filtering, to identify a first subset of potential treatments that satisfy the first criteria from within the one or more potential treatments;
identifying a second criteria associated with the one or more conditions;
applying the second criteria to the first subset of potential treatments; and
in response to applying the second criteria, identifying a second subset of potential treatments that satisfy the second criteria,
wherein, based at least partially on the second subset of potential treatments, an intervening action comprising a particular treatment procedure that is administered to the individual in connection with treating a particular condition associated with the one or more conditions.
The bolded limitations, given the broadest reasonable interpretation, cover a certain method of organizing human activity because it recites fundamental economic practices, commercial or legal interactions, and/or managing personal behavior or relationships or interactions between people. Any limitations not identified above as part of abstract idea are underlined and are deemed “additional elements,” and will be discussed in further detail below.
Furthermore, the abstract idea for Claims 8-14 and 15-20 is identical as the abstract idea for Claims 1-7 (Group I), because the only difference between them is they are directed towards different statutory categories. Claim 8 further recites one or more non-transitory media having computer-readable instructions that, when executed by one or more hardware processors, cause the one or more hardware processors to facilitate a plurality of operations (MPEP § 2106.05 (f), apply it).
Dependent Claims 2-7, 9-14 and 16-20 include other limitations, for example Claims 2, 9 and 16 recite wherein the unique identifier is an assigned standardized concept unique identifier code, and wherein the first criteria comprises a medication relating to asthma, heart disease, arthritis, or a diabetes condition, Claims 3, 10 and 17 recite wherein each active treatment is assigned a standardized concept unique identifier code, and wherein the first criteria comprises an active ingredient, Claims 4, 11 and 18 recite wherein the second criteria comprises a delivery mechanism for delivering the one or more potential treatments to the individual, Claims 5, 12 and 19 recite wherein the delivery mechanism comprises at least one of oral delivery or intravenous delivery, Claims 6, 13 and 20 recite wherein the operations further comprise identifying a third criteria comprising a dosage of the one or more potential treatments, and Claims 7, 14 and 20 recite wherein the operations further comprise storing one or both of the first subset of potential treatments and the second subset of potential treatments at a data store for future use (MPEP § 2106.05 (g), insignificant extra-solution activity), but these only serve to further limit the abstract idea, and hence are nonetheless directed towards fundamentally the same abstract idea as independent Claim 1, 8 and 15.
Step 2A | Prong Two
Furthermore, Claims 1-20 are not integrated into a practical application because the additional elements (i.e. the limitations not identified as part of the abstract idea) amount to no more than limitations which:
amount to mere instructions to apply an exception – for example, the recitation of a hardware processor, computerized, repository, non-transitory computer-readable medium, which amounts to merely invoking a computer as a tool to perform the abstract idea, e.g. see paragraphs [0016] and [0019] of the present Specification, see MPEP 2106.05(f)
add insignificant extra-solution activity to the abstract idea – for example, the recitation of storing data, which amounts to an insignificant application, see MPEP 2106.05(g).
Step 2B
Furthermore, the Claims do not include additional elements that are sufficient to amount to “significantly more” than the judicial exception because, the additional elements (i.e. the elements other than the abstract idea) amount to no more than limitations which:
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, as demonstrated by:
The Specification expressly disclosing that the additional elements are well-understood, routine, and conventional in nature:
paragraphs [0016] and [0019] of the Specification discloses that the additional elements (i.e. a hardware processor, computerized, repository, non-transitory computer-readable medium) comprise a plurality of different types of generic computing systems that are configured to perform generic computer functions (i.e. storing data) that are well-understood, routine, and conventional activities previously known to the pertinent industry (i.e. healthcare);
Relevant court decisions: The following are examples of court decisions demonstrating well-understood, routine and conventional activities, e.g. see MPEP 2106.05(d)(II):
Electronic recordkeeping, e.g. see Alice Corp v. CLS Bank – similarly, the current invention merely recites the storing of one or both of the first subset of potential treatments and the second subset of potential treatments (treatment data) at a data store.
Dependent Claims 2-7, 9-14 and 16-20 include other limitations, but none of these functions are deemed significantly more than the abstract idea because the additional elements recited in the aforementioned dependent claims similarly represent no more than electronic recordkeeping (e.g. the storing of data feature of dependent Claims 7, 14 and 20).
Thus, taken alone, the additional elements do not amount to “significantly more” than the above-identified abstract idea. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually, and there is no indication that the combination of elements improves the functioning of a computer or improves any other technology, and their collective functions merely provide conventional computer implementation.
Therefore, whether taken individually or as an ordered combination, Claims 1-20 are nonetheless rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 6-9, 13-14, 16-22, 25-27, 30-31 and 34 of copending Application No. 16/572,952. The claims recite substantially similar limitations and therefore are not patentably disgustable from one another.
This is a provisional nonstatutory double patenting rejection.
Subject Matter Free from Prior Art
The closest prior art of record does not teach or render obvious the entirety of claim 1. The closest prior art of record includes, Luce (U.S. Pub. No. 2003/0163353 A1), which discloses filtering out treatment options based on user preferences, including administration routes, however it is for an initial treatment, not an active treatment as currently required by the claims.
Conclusion
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/RACHELLE L REICHERT/Primary Examiner, Art Unit 3686