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
This action is in reply to the amendments and remarks filed on July 28, 2025.
Track One status of the application is noted.
Claims 1, 11, and 21 are amended.
Claims 1-30 are currently pending and have been examined.
Applicant’s remarks and arguments are addressed below.
Information Disclosure Statement
The Information Disclosure Statements filed on May 2, 2025 and July 28, 2025 have been considered. Initialed copies of the Form 1449s are enclosed herewith.
Claim Objections
Claims 1-30 are objected to because of the following informality: each of independent Claims 1, 11, and 21 recite “including monitoring a closes charitable organizing to determine if the closed charitable organization has reopened via automated visits to a website of the closed charitable organization” instead of –including monitoring a closed charitable organization to determine if the closed charitable organization has reopened via automated visits to a website of the closed charitable organization—. Because Claims 2-10, 12-20, and 22-30 are dependent upon Claims 1, 11, or 21, these claims are also objected to. 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 1-30 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. When considering subject matter eligibility under 35 U.S.C. § 101, there are multiple steps that may need to be assessed. First, in step 1 it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined in step 2A prong 1 whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea). If the claim is directed toward a judicial exception, it must then be determined in step 2A prong 2 whether the judicial exception is integrated into a practical application. Finally, if the judicial exception is not integrated into a practical application, it must additionally be determined in step 2B whether the claim recites “significantly more” than the abstract idea. See “2019 Revised Patent Subject Matter Eligibility Guidance,” 84 Fed. Reg. (4): 50-57 (Jan. 7, 2019).
In the instant case, Claims 1-10 are directed toward a method, i.e., process, Claims 11-20 are directed toward a non-transitory computer readable medium, i.e., article of composition, and Claims 21-30 are directed toward a system, i.e., apparatus. Nevertheless, the claims are directed toward the judicial exception of an abstract idea in step 2A prong 1. Independent Claim 1 recites as follows:
Claim 1. A computer-implemented method, executed on a computing device, comprising:
defining a disease diagnosis for a patient;
matching the patient to one or more charitable organizations associated with the disease diagnosis, including monitoring a close[d] charitable organiz[ation] to determine if the closed charitable organization has reopened via automated visits to a website of the closed charitable organization; and
applying the patient for funding via the one or more charitable organizations associated with the disease diagnosis.
The bold language above corresponds to the abstract ideas recited in Claim 1 (whereas the underlined language is language that is addressed in step 2A prong 2 and step 2B). As the bold language above demonstrates, Applicant’s claims are directed toward obtaining data to verify that land use complied with conditions to obtain the legal rights of a carbon offset credit. This is a method of organizing human activity, specifically commercial interactions. See MPEP § 2106.04(a)(2)(II)(B). Because the instant invention is matching patients with donors for funding their treatment, the invention is reciting a certain method of organizing human activities, specifically commercial interactions because it relates to the performance of payment for healthcare services. Alternatively, because defining a diagnosis, matching a patient with an organization for that diagnosis, and applying for that funding are all steps utilizing observations, evaluations, and judgments that can be performed in the human mind, the claim also recites abstract mental processes. See MPEP § 2106.04(a)(2)(III).
Finding the claims to be directed toward an abstract idea, however, is not the end of the inquiry. Rather, the next step is to determine whether the judicial exception is integrated into a practical application (step 2A prong 2). The revised guidance provides exemplary considerations that are indicative that an additional element or combination of elements may have integrated the exception into a practical application: 1) an additional element reflecting an improvement in the functioning of a computer or an improvement to another technology or technical field, 2) an additional element that implements the judicial exception with a particular machine or manufacture that is integral to the claim, 3) an additional element that effects a transformation or reduction of a particular article to a different state or thing, or 4) an additional element that applies or uses the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment such that the claim as a whole is more than a drafting effort designed to monopolize the exception. See MPEP § 2106.04(d). Examples where a judicial exception has not been integrated into a practical application include: 1) use of “apply it” or the equivalent, i.e., merely using a computer to implement or perform an abstract idea, 2) an additional element that adds insignificant extra-solution activity to the judicial exception, and 3) an additional element that does no more than generally link the use of the judicial exception to a particular technological environment or field of use. See id.
Applying these considerations to the claims in the instant application, the claims do not integrate the judicial exception into a practical application. The claims fail to recite an improvement of a computer, any improvement to a technology or technical field, any particular machine, any transformation or reduction of a particular article to a different state or thing, or any additional element that uses the judicial exception in a meaningful way. Instead, the claims are merely reciting instructions to implement the abstract idea on a computer (i.e., “computer implemented method, executed on a computing device”), which is insufficient to provide a practical application of the claims and provide subject matter eligibility. See id. The limitation of including monitoring a close[d] charitable organiz[ation] to determine if the closed charitable organization has reopened via automated visits to a website of the closed charitable organization is merely gathering data for the operation of the abstract idea, which is insufficient to provide any integration of the abstract idea into a practical application. See MPEP § 2106.05(g). Therefore, there is no integration of the abstract idea into a practical application.
If the claims are not integrated into a judicial exception, the Examiner must consider whether there is “significantly more” recited in the claim in step 2B. See MPEP § 2106.05. There is nothing unconventional or inventive in Applicant’s claims for the purpose of analysis under step 2B, e.g., any combination of elements that provide an advance over any technological state of the art. Rather, as noted above, an abstract commercial interaction or set of mental processes is merely implemented by a general-purpose computer along with computer gathered data. Other than the limitations that are abstract for the reasons articulated above, Applicant has merely recited a generic computer that facilitates the steps of the invention. Thus, Applicant’s claims merely recite a computer to implement the abstract idea, which fails to provide “significantly more” than the abstract idea.
As the MPEP states, Examiners may consider the following three factors when determining whether the claim recites mere instructions to implement an abstract idea on a computer: 1) whether the claim recites only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished; 2) whether the claim invokes computers or other machinery merely as a tool to perform an existing process; and 3) the particularity or generality of the application of the judicial exception. See MPEP § 2106.05(f). Applying those factors to the instant application: 1) the claims do not recite how the computer performs any of the steps other than just stating that they do it; 2) the claims invoke the computer to perform a process of medical diagnosis and funding matching that has been performed without computers and before the ubiquity of computers; and 3) the claims are general and not recited in much particularity because it can apply to any way of performing the funding matching.
The dependent claims 2-10, 12-20, and 22-30 are merely reciting further embellishments of the abstract idea and do not amount to anything that is significantly more than the abstract idea itself. Instead, these claims relate to automatically populating forms, defining entities in databases for matching, or otherwise processing forms electronically (Claims 3, 5-10, 13, 15-20, 23, and 25-30) or embellishments regarding what the charity is or what the funding covers (2, 4, 12, 14, 22, and 24). Performing the processing of mental steps or commercial interactions via a computer is merely using the computer as a tool to perform the abstract idea. Further limitations defining a donor entity or what funding is covered are further limitations to the abstract commercial interaction.
In other words, none of the dependent claims recite an improvement to a technology or technical field or provide any meaningful limitations that, in an ordered combination provide “significantly more” or providing any integration into a practical application. Rather, the dependent claims are merely further reciting features that are just as abstract as independent Claims 1, 11, and 21. Therefore, Claims 1-30 are directed to non-statutory subject matter and are rejected as ineligible subject matter under 35 U.S.C. § 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 of this title, 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.
Claims 1-30 are rejected under 35 U.S.C. § 103 as being unpatentable over Artusy et al. (US 2023/0317239 A1, hereinafter “Artusy”) in view of Fox et al. (US 2024/0355462 A1, hereinafter “Fox”).
Claim 1. Artusy teaches: A computer-implemented method, executed on a computing device, comprising:
defining a disease diagnosis for a patient (see, e.g., ¶ 29 teaching a patient being diagnosed and ready for treatment and then securing funding if that diagnosis and other factors matches predetermined requirements; see also ¶ 69 teaching unique codes for the treatment the patient is seeking);
matching the patient to one or more charitable organizations associated with the disease diagnosis (see, e.g., ¶ 29 teaching a patient being diagnosed and ready for treatment and then securing funding if that diagnosis and other factors matches predetermined requirements; see also ¶ 69 teaching unique codes for the treatment the patient is seeking as well as a donor database with the treatment codes that the donors are willing to fund to find a match; see further ¶s 62-63 and 70-74 teaching obtaining further data from the patient and then using an algorithm to perform the function of matching that patient with a willing funder), including monitoring a close[d] charitable organiz[ation] to determine if the closed charitable organization has reopened via automated visits to a website of the closed charitable organization (this is further addressed below); and
applying the patient for funding via the one or more charitable organizations associated with the disease diagnosis (see, e.g., ¶ 80 teaching that the “donor side may also include mission driven charitable organizations” such as those “for a specific focus area (e.g., a type of medical condition),” noting as mentioned above that ¶s 62-63 and 70-74 teaching matching the patient’s necessary treatment with approved donors for that treatment).
Regarding the limitation of including monitoring a close[d] charitable organiz[ation] to determine if the closed charitable organization has reopened via automated visits to a website of the closed charitable organization, Artusy fails to expressly teach this limitation. Nevertheless, such a feature is taught in analogous prior art. Fox, for example, teaches such a limitation (see, e.g., at least ¶ 313 teaching periodically checking a schedule to determine if there is a waitlist or not).
Therefore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of automatically checking schedules and wait lists (as disclosed by Fox) to the known method and system of linking charities with those needing help paying medical bills (as disclosed by Artusy). One of ordinary skill in the art would have been motivated to apply the known technique of automatically checking schedules and wait lists because it would ensure that the person needing the charitable help gets properly scheduled in a timely manner.
Furthermore, it would have been obvious to one of ordinary skill in the art as of the effective filing date to apply the known technique of automatically checking schedules and wait lists (as disclosed by Fox) to the known method and system of linking charities with those needing help paying medical bills (as disclosed by Artusy), because the claimed invention is merely applying a known technique to a known method ready for improvement to yield predictable results. See KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). In other words, all of the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective functions, and the combination would have yielded nothing more than predictable results to one of ordinary skill in the art at the time of the invention (i.e., predictable results are obtained by applying the known technique of automatically checking schedules and wait lists to the known method and system of linking charities with those needing help paying medical bills, because predictably a scheduling agent can help with the linking of charities and those needing charitable help). See also MPEP § 2143(I)(D).
Regarding Claims 11 and 21, these claims recite the same method steps as Claim 1 but recite different statutory categories. The rejection of Claim 1 above relying on the combination of Artusy and Fox to render the claims obvious is incorporated herein. Claim 11 recites a computer program product comprising a computer readable medium that, when executed by the processor, performs the same steps as Claim 1. Claim 21 recites a computer system including a processor and a memory configured to perform the operations of Claim 1. Because Artusy teaches a computer system (see at least Figure 4; see further Figures 1-3) with a processor (see Figure 4 feature 402) and memory that can execute the process (see Figure 4 features 403, 404, and 406), the combination of Artusy and Fox render obvious Claims 11 and 21 with these additional teachings. Similarly coextensive dependent claims will be treated together below for the sake of brevity.
Claims 2, 12, and 22. The combination of Artusy and Fox teaches the limitations of Claims 1, 11, and 21. Artusy further teaches: The computer-implemented method of claim 1 wherein the one or more charitable organizations includes one or more of: a charity; a non-profit organization; and a philanthropic entity of a for-profit entity (see, e.g., ¶s 79-80 teaching the donors “may include various types of donors, including, but not limited to: hospital endowment centers, foundations (of all types, e.g., independent, corporate, family), public charities, charitable trusts, non-profit organizations, and individual donors” as well as “mission driven charitable organizations” with a “specific focus area”).
Claims 3, 13, and 23. The combination of Artusy and Fox teaches the limitations of Claims 1, 11, and 21. Artusy further teaches: The computer-implemented method of claim 1 wherein the one or more charitable organizations are defined within a charitable organization database (see, e.g., ¶ 80 teaching that the “donor side may also include mission driven charitable organizations” such as those “for a specific focus area (e.g., a type of medical condition)” and at least ¶ 85 teaching that all the donors are placed into a curated donor database).
Claims 4, 14, and 24. The combination of Artusy and Fox teaches the limitations of Claims 1, 11, and 21. Artusy further teaches: The computer-implemented method of claim 1 wherein the funding includes one or more of: drug-based funding; treatment-based funding; and disease-based funding (see, e.g., at least ¶ 69 teaching that the donors have agreed to fund particular treatments).
Claims 5, 15, and 25. The combination of Artusy and Fox teaches the limitations of Claims 1, 11, and 21. Artusy further teaches: The computer-implemented method of claim 1 wherein defining a disease diagnosis for a patient includes: processing an electronic medical record (EMR) to define the medical condition that includes the disease diagnosis (see, e.g., ¶ 78 teaching that the back end server data repositories are compatible with electronic health record and electronic medical record software; see further ¶s 40 and 57 teaching the administrator using a particular code to categorize the patient that is used for matching with the donors; see additionally ¶ 69 teaching a treatment code for the patient that is used to match with donors that have agreed to fund that treatment).
Claims 6, 16, and 26. The combination of Artusy and Fox teaches the limitations of Claims 1, 11, and 21. Artusy further teaches: The computer-implemented method of claim 1 wherein applying the patient for funding via the one or more charitable organizations includes: automatically applying the patient for funding via an electronic application process (see, e.g., ¶s 75-76 teaching that the back-end server can perform the matching automatically, such that participation of the patient, provider, and donor can be automated).
Claims 7, 17, and 27. The combination of Artusy and Fox teaches the limitations of Claims 1, 11, and 21. Artusy further teaches: The computer-implemented method of claim 1 further comprising: defining a charitable organization database that defines application criteria for a plurality of charitable organizations (see, e.g., ¶s 59, 62-66, 69, 85, 93, and 96 teaching a donor system and curated donor database that includes authenticated donors for particular treatments).
Claims 8, 18, and 28. The combination of Artusy and Fox teaches the limitations of Claims 1, 11, and 21. Artusy further teaches: The computer-implemented method of claim 1 wherein applying the patient for funding via the one or more charitable organizations associated with the disease diagnosis includes: populating an application for the patient for the one or more charitable organizations associated with the disease diagnosis, thus defining one or more populated applications (see, e.g., ¶s 75-76 teaching that the back-end server can perform the matching automatically, such that participation of the patient, provider, and donor can be automated).
Claims 9, 19, and 29. The combination of Artusy and Fox teaches the limitations of Claims 8, 18, and 28. Artusy further teaches: The computer-implemented method of claim 8 wherein applying the patient for funding via the one or more charitable organizations associated with the disease diagnosis further includes: submitting the one or more populated applications to the one or more charitable organizations associated with the disease diagnosis (see, e.g., ¶s 62-63 teaching obtaining approval of a pledge of medical payment from a donor; see ¶s 85 and 93-95 teaching substantially the same; Examiner notes that these steps are performed after the system collects the necessary information to perform the match as noted in ¶s 75-76).
Claims 10, 20, 30. The combination of Artusy and Fox teaches the limitations of Claims 1, 11, and 21. Artusy further teaches: The computer-implemented method of claim 1 further comprising: obtaining a funding approval (see, e.g., ¶s 62-63 teaching obtaining approval of a pledge of medical payment from a donor; see ¶s 85 and 93-95 teaching substantially the same).
Response to Arguments
Applicant’s arguments have been fully considered. In the remarks, Applicant specifically addresses the following:
Claim Rejections - 35 U.S.C. § 101:
Claims 1-20 were rejected under § 101 as being directed toward the judicial exception of an abstract idea without any integration into a practical application or significantly more. Applicant argues that the amendments render the claims statutory (see Remarks page 8). This argument is not persuasive because the new limitation (at least as currently recited, in a “wherein” clause and stated at a high level of generality) is merely gathering data for the operation of the abstract idea, which is insufficient to provide any integration of the abstract idea into a practical application. See MPEP § 2106.05(g). Thus, the rejection is maintained.
Claim Rejections - Prior Art:
Regarding the application of the prior art to the claims, Applicant argues that the claim amendments overcome the prior art of record (i.e., the Artusy reference). This argument is persuasive, but the argument is moot in light of the new grounds of rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure: Nidy et al., US 8,209,194 B1; Graybill, US 2018/0322543 A1; Navar, US 2021/0326939 A1; Jagemann et al., US 2013/0304486 A1.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAN P MINCARELLI whose telephone number is (571)270-5909. The examiner can normally be reached on Monday through Friday, 8:00 AM to 4:30 PM Eastern Time.
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/JAN P MINCARELLI/Primary Examiner, Art Unit 3626