DETAILED ACTION
Status of Claims
This is a Final Office Action in response to the arguments and/or amendments filed on 28 July 2026.
Claim(s) 3 and 9 is/are canceled. Claim(s) 1, 2, 4-8, 10-14, and 17-20 is/are amended.
Claim(s) 1, 2, 4-8, and 10-20 is/are currently pending and have been examined.
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 § 112(b)
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.
Claim 20 is 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 20 recites “A non-transitory computer readable storage medium including computer executable instructions, wherein the instructions, when executed by a processor, cause the processor to perform a method comprising …, wherein … the processor includes generative AI and is an application specific integrated circuit”. The scope of the processor would be unclear to one of ordinary skill in the art as the processor is claimed as both executing computer instructions and being an application specific integrated circuit. These features would appear to conflict to one of ordinary skill in the art. Alternatively one of ordinary skill in the art would not understand how a non-transitory computer readable storage medium would include computer executable instructions for an applicant specific integrated circuit. As such one of ordinary skill in the art would not be able to determine the boundaries of the claim, rendering the claim indefinite.
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, 2, 4-8, and 10-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 19, which is representative of claims 1 and 20, recites: a medical information processing method comprising:
acquiring examination purpose information regarding an examination purpose including a description regarding a first disease candidate of a patient, and an image interpretation report regarding an image examination performed according to the examination purpose;
acquiring image interpretation information including the description regarding the first disease candidate from the image interpretation report;
specifying an incidental finding described for a second disease candidate different from the first disease candidate in the information interpretation information
specifying the description regarding the first disease candidate from the image interpretation information; and
displaying a specified result
wherein
the first disease candidate is a disease candidate of a first site of the patient,
the second disease candidate is a disease candidate of a second site of the patient that is different from the first site, and the method further comprises:
inputting an input sentence including an instruction for specifying the incidental finding and the description regarding the first disease candidate from the examination purpose information and the image interpretation information, the examination purpose information, the image interpretation information, and an output format
outputting,
displaying the output sentence
The preceding recitation of the claim has had strikethroughs applied to the additional elements beyond the abstract idea to more clearly demonstrate the limitations setting forth the abstract idea. The remaining limitations describe a concept of reviewing a report to determine an alternative diagnosis. This concept describes a process that a healthcare provider should follow to identify alternative diagnoses similar to the “process that a neurologist should follow when testing a patient for nervous system malfunctions” given in MPEP 2106.04(a)(2)(II)(C) as an example of managing personal behavior in the methods of organizing human activity sub-grouping. As such, these limitation set forth a method of organizing human activity. Therefore the claims are determined to recite an abstract idea. Alternatively, this concept is analogous to the examples of “observation”, “evaluation”, and “judgement” given in MPEP 2106.04(a)(2)(III). Further, this concept as claimed does not require a scale of data beyond the mental faculties of a human being and the operations of the abstract idea can be practically performed in the human mind. As such, these limitations are determined to recite a mental process. Therefore the claims are determined to recite an abstract idea.
MPEP 2106, reflecting the 2019 PEG, directs examiners at Step 2A Prong Two to consider whether the additional elements of the claims integrate a recited abstract idea into a practical application.
Claim 1 recites the additional application of an apparatus comprising processing circuitry. Claim 20 recites the additional element of a non-transitory computer readable storage medium. These additional elements are recited at an extremely high level of generality, and may be interpreted as generic computing devices used to implement the abstract idea. Per MPEP 2106.05(f), implementing an abstract idea on a generic computing device does not integrate an abstract idea into a practical application in Step 2A Prong Two, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea on a generic computer. These claims further the processor additional element as including generative AI and as an application specific integrated circuit. The requirement that the processor includes generative AI amounts to instructions to implement the abstract idea with a generic computing device. Regarding the processor being an application specific integrated circuit (ASIC), the disclosure provides no technical details regarding how to implement an ASIC. The ASIC appears to simply be computing device programmed with hardware rather than an instruction set, but it remains a programmed computing device and amounts to a recitation of a generic computing device used to implement the abstract idea. As such these additional elements do not integrate the abstract idea into a practical application.
The claims further recite the additional element of inputting information into generative AI and receiving an output from generative AI. This additional element also amounts to an instruction to implement the abstract idea with a generic computing device. As previously noted, such additional elements do not integrate an abstract idea into a practical application. As such, this additional element does not integrate the abstract idea into a practical application.
The claims further recite the additional element of displaying information on a display. This additional element reflects no improvement to technology, no particular machine, and no transformation of an article. This additional element does not meaningfully limit the abstract idea, and instead only generally links the abstract idea to a technological environment of a computing device. Alternatively, this additional element amounts to insignificant extra-solution activity as it is simply data output. As such, this additional element does not integrate the abstract idea into a practical application.
There are no further additional elements. When considered as a combination, the additional elements only generally link the abstract idea to a technological environment of a computing device. As such, the combination of additional elements does not integrate the abstract idea into a practical application. Therefore the claims are determined to be directed to an abstract idea.
At Step 2B of the Mayo/Alice analysis, examiners are to consider whether the additional elements amount to significantly more than the abstract idea.
As previously noted, the claims recite additional elements which may be interpreted as generic computing devices used to implement the abstract idea. However, per MPEP 2106.05(f), implementing an abstract idea on a generic computing device does not add significantly more in Step 2B, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea on a generic computer. As such, this additional element does not amount to significantly more.
As previously notes, the claims recite an additional element of displaying information on a display. Dezonno et al. (US 2002/0021797 A1) demonstrates (See at least [0024]) that displaying information on a display was conventional long before the priority date of the claimed invention. As such, this additional element does not amount to significantly more.
There are no further additional elements. When considered as a combination, the additional elements only generally link the abstract idea to a technological environment of a computing device. As such, the combination of additional elements does not amount to significantly more than the abstract idea. Therefore, when considered individually and as a combination, the additional elements of the independent claims do not amount to significantly more than the abstract idea. Thus the independent claims are not patent eligible.
Dependent claims 2, 6-8, and 10-18 further narrow the abstract idea, but the claims continue to recite an abstract idea. Dependent claims 2, 6-8, and 10-18 recite no further additional elements. The previously identified additional elements, when considered individually or as a combination, do not integrate the abstract idea into a practical application for the same reasons as given above. Therefore claims 2, 6-8 and 12-16 remain directed to an abstract idea. At Step 2B, the previously identified additional elements, when considered individually or as a combination, do not amount to significantly more than the abstract idea for the same reasons as given above. Therefore the additional elements of claims 2, 6-8, and 10-18 do not amount to significantly more than the abstract idea. Because the dependent claims remain directed to an abstract idea without reciting significantly more, the dependent claims are not patent eligible.
Response to Arguments
Applicant’s Argument Regarding 101 Rejections of claims 1-20:
In this novel approach, information is generated allowing the specification of the incidental finding. The incidental finding makes the viewer aware of the specification of the incidental finding. The incidental finding makes the viewer aware of the incidental finding and attention can be given to the incidental finding.
Unlike conventional technology, another system check does not have to be run in order to detect and give attention to an incidental finding. This decreases the cost of using the apparatus by avoiding the additional check by a third party.
Applicant also refers the Examiner to the December 5, 2025 Advance notice of change to the MPEP in light of Ex Parte Desjardins: … Here, the apparatus recites the particular solution of processing circuitry configured to specify the findings and output the incidental findings at another site allowing the site to be investigated and avoiding an extra check by the system.
Examiner’s Response: Applicant's arguments filed 28 July 2026 have been fully considered but they are not persuasive.
The generation of information and making a user aware of that information does not per se render a claim eligible. Note Electric Power Group v. Alstom where a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis” was ineligible.
It is unclear what conventional technology applicant is referencing. However, Applicant’s statement that there is a cost decrease “by avoiding the additional check by a third party” indicates that the claimed invention merely automates an existing process. Per MPEP 2106.05(a), examples of automating an existing manual process has been found by the courts to be insufficient to demonstrate an improvement in computer technology.
The Desjardins memo notes that “An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome.” Here, Applicant’s claim which is reliant on an undescribed “generative AI” appears to much closer to “merely claiming the idea of a solution or outcome” than a particular solution.
Applicant’s Argument Regarding 102 Rejections of claims 1-8, 12-14, and 19-20: Kawagishi does not disclose or suggest the first or second disease candidates of different sites in the patient.
Examiner’s Response: Applicant's arguments filed 28 July 2026 have been fully considered and they are persuasive. The rejections under 102 and 103 are withdrawn.
Additional Considerations
The prior art made of record and not relied upon that is considered pertinent to applicant’s disclosure can be found in the PTO-892 of the prior office action dated 28 April 2026.
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 Bion A Shelden whose telephone number is (571)270-0515. The examiner can normally be reached M-F, 12pm-10pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kambiz Abdi can be reached at (571) 272-6702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Bion A Shelden/Primary Examiner, Art Unit 3685 2026-09-28
