DETAILED ACTION
This communication is in response to application no. 19/078626 filed 13 March 2025.
Claims 1-20 are currently pending and have been examined.
Claims 1-20 are rejected as shown in this 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 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 1-9 recite a method which is considered a process. Claims 10-18 recite a non-transitory computer-readable medium which is considered a machine or manufacture. Claims 19 and 20 recite a server computer which is considered a machine or manufacture.
Step 2A-Prong One
(Claims 1, 10, and 19) The “determining one or more conditions for triggering presentation of a particular type of virtual clinical exam based at least in part on the exam information and the dynamic sensor data” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “computer-implemented” language in claim 1, the “cause one or more processors to” language in claim 10, or the “cause the server computer to perform” language in claim 19, the claim encompasses a user manually using given information to make a determination. These claims fall into the mental processes grouping of abstract ideas and thus recite an abstract idea.
(Claims 2 and 11) These claims recite use of a machine learning model into which data is fed and used to assist in the “determining” step (see “training a machine-learning model using the exam information and the dynamic sensor data as inputs to the machine-learning model, and determining the one or more conditions based at least in part on the machine-learning model” in claim 2). The model is not defined in the specification in any detail other than by its inputs (i.e., the exam information and the dynamic sensor data) and its outputs (i.e., the one or more conditions). Thus, the use of this model does not take the claims out of the above-identified abstract idea grouping. These claims recite an abstract idea.
(Claims 3 and 12) The “updating the one or more conditions based at least in part on the updated exam information and the updated dynamic sensor data” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “computer-implemented” language in claim 3 or the “cause one or more processors to” language in claim 12, the claim encompasses a user manually using given information to update determined conditions. These claims fall into the mental processes grouping of abstract ideas and thus recite an abstract idea.
(Claims 4, 5, 13, 14, and 20) These claims further define the received data (see “the dynamic sensor data comprise raw sensor data” in claim 4 and “the exam information identifies at least beginning times and ending times for the plurality of virtual clinical exams” in claim 5). These limitations do not take the claims out of the above-identified abstract idea grouping. Thus, these claims recite an abstract idea.
(Claims 6, 15, and 20) These claims further define information related to the received data (see “the plurality of virtual clinical exams are tailored to one or more movement disorders” in claim 6). These limitations do not take the claims out of the above-identified abstract idea grouping. Thus, these claims recite an abstract idea.
(Claims 7 and 16) The “wherein determining the one or more conditions comprises determining the one or more conditions based at least in part on the static data” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “computer-implemented” language in claim 7 or the “cause one or more processors to” language in claim 16, the claim encompasses a user manually using given information to make a determination. These claims fall into the mental processes grouping of abstract ideas and thus recite an abstract idea.
(Claims 8 and 17) The “wherein determining the one or more conditions comprises determining the one or more conditions based at least in part on the user profile information” step, as drafted, is a process that under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components. For example, but for the “computer-implemented” language in claim 8 or the “cause one or more processors to” language in claim 17, the claim encompasses a user manually using given information to make a determination. These claims fall into the mental processes grouping of abstract ideas and thus recite an abstract idea.
(Claims 9, 18, and 20) These claims further define what is determined in the “determining” steps (see “the one or more conditions define one or more value ranges for the dynamic sensor data” in claim 9). These limitations are not so complex that they could not be performed in the mind; a human can determine value ranges. Thus, these limitations do not take the claims out of the above-identified abstract idea grouping. These claims recite an abstract idea.
Step 2A-Prong Two
This judicial exception is not integrated into a practical application. The claims recite the additional element of a computer (found in claims 1-9), a non-transitory computer-readable medium and a processor (found in claims 10-18), or a server computer comprising memory (found in claims 19 and 20) and includes no more than mere instructions to apply the exception using a generic computer component. The computer, computer-readable medium, or server computer does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Additionally, the steps of “receiving, from a plurality of user devices, exam information corresponding to a plurality of virtual clinical exams performed by the plurality of user devices, the exam information identifying at least a virtual clinical exam type for each of the plurality of virtual clinical exams” (found in claims 1, 10, and 19), “receiving, from the plurality of user devices, dynamic sensor data corresponding to the plurality of virtual clinical exams, the dynamic sensor data collected by one or more sensors associated with the plurality of user devices” (found in claims 1, 10, and 19), “receiving updated exam information associated with presentation of the particular type of virtual clinical exam at the particular user device” (found in claims 3 and 12), “receiving updated dynamic sensor data associated with presentation of the particular type of virtual clinical exam at the particular user device” (found in claims 3 and 12), “receiving static data comprising at least health record data or demographic data” (found in claims 7 and 16), and “receiving user profile information corresponding to a particular user profile that is associated with the particular user device” (found in claims 8 and 17) are mere data gathering and the step of “providing the one or more conditions to a particular user device for use by the particular user device in triggering presentation of the particular type of virtual clinical exam at the particular user device” (found in claims 1, 10, and 10) is post-solution activity. These steps are considered insignificant extra-solution activity and do not integrate the abstract idea into a practical application. Note that the phrase “for use by the particular user device in triggering presentation of the particular type of virtual clinical exam at the particular user device” in interpreted to be intended use and is not given patentable weight.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed previously with respect to Step 2A-Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using a generic computer component. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. See MPEP 2106.05(f). The claims do not provide an inventive concept (significantly more than the abstract idea). The claims are ineligible.
The courts have recognized that when certain functions are claimed in a merely generic manner, they are well-understood, routine, and conventional. This includes the above-identified “receiving” and “providing” steps, which fall under the recognized function of “Receiving or transmitting data over a network, e.g., using the Internet to gather data.” See MPEP 2106.05(d)(II). Thus, these steps do not contribute an “inventive concept” under Step 2B analysis.
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.
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Claim 1 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 3 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 6 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 8 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 15 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 12 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 13 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 15 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 16 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 17 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 11 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 18 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 12 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Claim 19 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 10 of U.S. Patent No. 12,278,002. Although the claims at issue are not identical, they are not patentably distinct from each other because the claim under examination is anticipated by the patented claim.
Conclusion
The claims are not rejected under 35 USC § 102/103. While virtual clinical exams are known in the art (See US 2023/0335274 (“Bychkov”) at [0017] “there is provided a method for performing one or more remote medical examinations of a patient, the method comprises performing the following for at least one remote medical examination of the remote medical examinations: receiving, by a processing resource, during the remote medical examination, from a remote medical data acquisition device, first data generated from medical data acquired by a sensor of the remote medical data acquisition device from a body of the patient” and US 2020/0381119 (“Gibbs”) at [0010] “proactive telemedicine system therefore provides the pet health data necessary for improving a veterinarian's virtual examination of the pet.”), determining conditions for triggering a particular virtual clinical exam based on 1) exam information corresponding to a plurality of virtual clinical exams performed by a plurality of user devices, the exam information identifying at least a virtual exam type, and 2) dynamic sensor data corresponding to the plurality of virtual clinical exams is not found in the prior art. Bychkov is considered the closest prior art. Cireddu, Nasry, and Singh, cited in the parent application (17/450521), also remain relevant as they all disclose virtual clinical exams.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MEREDITH A LONG whose telephone number is (571)272-3196. The examiner can normally be reached Mon - Fri 9:30 - 6.
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/MEREDITH A LONG/Primary Examiner, Art Unit 3622
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