DETAILED ACTION
Status of Claims
The present application is being examined under the pre-AIA first to invent provisions.
This action is in reply to an application filed 10 May 2004, which is a continuation application of a series of applications that claim priority to a provisional application filed 16 January 2013.
Claims 1-20 are currently pending and have been examined.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 15 May 2026 has been considered by the Office to the extent indicated.
Claim Rejections - 35 USC § 112
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.
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.
Claims 6, 7, 15 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claims 6 and 7 recite the limitation the the. It is unclear what this limitation means.
Claims 7 and 15 recite the limitation the GUI display. There is insufficient antecedent basis for this limitation in the claim.
Claim 20 recites the limitation the step of automatically highlighting. There is insufficient antecedent basis for this limitation in the claim.
To the extent that other claims rely on claims that are rejected under 35 USC 112 and fail to correct the deficiencies of the claims they rely on, those other claims are rejected for the same reasons as the claims they rely on. 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 1-20 are within the four statutory categories. Claims 1-8 and 16-20 are drawn to a method of rearranging medical orders entered on a graphical user interface (GUI) of a medical records computer system, which is within the four statutory categories (i.e. process). Claims 9-15 are drawn to a medical records computer system, which is within the four statutory categories (i.e. machine).
Prong 1 of Step 2A
Claim 1 recites: A method of rearranging medical orders entered on a graphical user interface (GUI) of a medical records computer system, the method comprising:
receiving, via the GUI, a user selection to enter a new medical order for a patient, the patient being associated with a medical record in an electronic medical records system that includes a plurality of existing medical orders for the patient;
displaying the new medical order in a first window on the GUI and the plurality of existing medical orders for the patient in a second window;
identifying, by a processor, at least one of the plurality of existing medical orders that is medically similar to the new medical order; and
automatically moving the at least one existing medical order that is medically similar to the new medical order in the second window into alignment with the new medical order in the first window.
Claim 16 recites: A method of rearranging medical orders entered on a graphical user interface (GUI) of a medical records computer system, the method comprising:
receiving, via the GUI, a user selection to enter a new medical order for a patient, the patient being associated with a medical record in an electronic medical records system that includes a plurality of existing medical orders for the patient;
displaying the new medical order in a first window on the GUI and the plurality of existing medical orders for the patient in a second window;
identifying, by a processor, at least one of the plurality of existing medical orders that is medically similar to the new medical order; and
automatically highlighting the at least one existing medical order that is similar to the new medical order in the second window.
The underlined limitations as shown above, given the broadest reasonable interpretation, cover the abstract idea of a mental process because they recite a process that could be practically performed in the human mind (i.e. observations, evaluations, judgments, and/or opinions – a user enters a medical order and then arranges orders next to each other to identify similar orders) or using a pen and paper, but for the recitation of generic computer components (i.e. the structural components of the computer and GUI), e.g. see MPEP 2106.04(a)(2). Any limitations not identified above as part of the abstract idea(s) are deemed “additional elements,” and will be discussed in further detail below.
Furthermore, the abstract idea for claim 9 is identical as the abstract idea for claim 1, because the only difference between claims 1 and 9 is that claim 1 recites a method, whereas claim 9 recites a system.
Dependent claims 2-8, 10-15 and 17-20 include other limitations, for example claims 2-7, 10-15 and 17-20 recite moving, displaying or highlighting data, but these only serve to further narrow the abstract idea, and a claim may not preempt abstract ideas, even if the judicial exception is narrow, e.g. see MPEP 2106.04. Additionally, any limitations in dependent claims 2-8, 10-15 and 17-20 not addressed above are deemed additional elements to the abstract idea, and will be further addressed below. Hence dependent claims 2-8, 10-15 and 17-20 are nonetheless directed towards fundamentally the same abstract idea as independent claims 1, 9 and 16.
Prong 2 of Step 2A
Claims 1-20 are not integrated into a practical application because the additional elements (i.e. any limitations that are 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 the GUI and the structural components of the computer, which amounts to merely invoking a computer as a tool to perform the abstract idea, e.g. see paragraphs 31 and 32 of the present Specification, see MPEP 2106.05(f); and/or
generally link the abstract idea to a particular technological environment or field of use – for example, the claim language limiting the data to medical orders, which amounts to limiting the abstract idea to the field of healthcare, see MPEP 2106.05(h); and/or
adding insignificant extrasolution activity to the abstract idea, for example mere data gathering, selecting a particular data source or type of data to be manipulated, and/or insignificant application (e.g. see MPEP 2106.05(g)).
Additionally, dependent claims 2-8, 10-15 and 17-20 include other limitations, but these limitations also amount to no more than mere instructions to apply the exception (e.g. the recitation of the GUI, or the structural components of the computer in claims 4-7, 12-15 and 20), generally linking the abstract idea to a particular technological environment or field of use (e.g. the types of data disclosed in claims 2-8, 10-15 and 17-20), and/or do not include any additional elements beyond those already recited in independent claims 1, 9 and 16, and hence also do not integrate the aforementioned abstract idea into a practical application.
Step 2B
Claims 1-20 do not include additional elements that are sufficient to amount to “significantly more” than the judicial exception because the additional elements (i.e. the non-underlined limitations above – in this case, the GUI and the structural components of the computer), as stated above, are directed towards no more than limitations that amount to mere instructions to apply the exception, generally link the abstract idea to a particular technological environment or field of use, and/or add insignificant extra-solution activity to the abstract idea, wherein the insignificant extra-solution activity comprises 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 31 and 32 of the Specification discloses that the additional elements (i.e. the GUI and the structural components of the computer) comprise a plurality of different types of generic computing systems that are configured to perform generic computer functions (i.e. receive and process 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):
i. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added));
ii. Performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.");
iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log);
iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; and
v. Electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition).
Dependent claims 2-8, 10-15 and 17-20 include other limitations, but none of these limitations are deemed significantly more than the abstract idea because, as stated above, the aforementioned dependent claims do not recite any additional elements not already recited in independent claims 1, 9 and 16, and/or the additional elements recited in the aforementioned dependent claims similarly amount to mere instructions to apply the exception (e.g. the recitation of the GUI, or the structural components of the computer in claims 4-7, 12-15 and 20), generally linking the abstract idea to a particular technological environment or field of use (e.g. the types of data disclosed in claims 2-8, 10-15 and 17-20), and hence do not amount to “significantly more” than the abstract idea.
Thus, taken alone, the additional elements do not amount to significantly more than the abstract idea identified above. 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.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102 of this title, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negatived 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(a) 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.
This application currently names joint inventors. In considering patentability of the claims under 35 U.S.C. 103(a), the examiner presumes that the subject matter of the various claims was commonly owned at the time any inventions covered therein were made absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and invention dates of each claim that was not commonly owned at the time a later invention was made in order for the examiner to consider the applicability of 35 U.S.C. 103(c) and potential 35 U.S.C. 102(e), (f) or (g) prior art under 35 U.S.C. 103(a).
Claims 1-6, 9-14 and 16-18 are rejected under 35 U.S.C. 103 as being obvious over Soderberg (U.S. PG-Pub 2007/0162312 A1), further in view of Jones (U.S. PG-Pub 2008/0255883 A1), hereinafter Jones.
As per claims 1, 9 and 16, Soderberg discloses a medical records computer system comprising a graphical user interface (GUI) for a medical records computer system, and a method of rearranging medical orders entered on a graphical user interface (GUI) of a medical records computer system (Soderberg) (Soderberg, see Figs. 2 and 4-6.), the method comprising:
receiving, via the GUI, a user selection to enter a new medical order for a patient, the patient being associated with a medical record in an electronic medical records system that includes a plurality of existing medical orders for the patient (See Soderberg, Fig. 4.);
displaying the new medical order in a first window on the GUI and the plurality of existing medical orders for the patient … (See Soderberg, Fig. 5.);
identifying, by a processor, at least one of the plurality of existing medical orders that is medically similar to the new medical order (See Soderberg, Fig. 5, wherein the system identifies and presents relevant order records.); and
1,9. automatically moving the at least one existing medical order that is medically similar to the new medical order … into alignment with the new medical order in the first window (See Soderberg, Fig. 5, wherein the system identifies and presents relevant order records in alignment.);
16. automatically highlighting the at least one existing medical order that is similar to the new medical order … (See Soderberg, Fig. 5, wherein the system identifies and presents a percentage highlighting the degree of match between existing medical orders and current medical orders.);
Soderberg fails to disclose presenting new and existing medical orders in separate windows. Although the Office takes the position that it would be old and well known at the time of the filing of the invention to present information contained in one window into information presented in two windows, the Office will provide a secondary reference for purposes of expediting prosecution.
Jones teaches that it was old and well known in the art of healthcare communications at the time of the invention/filing to present information in separate windows (See the plural windows of Jones, Figs. 6-9.) in order to display a plurality of related information sets simultaneously.
Therefore it would have been obvious to one of ordinary skill in the art of healthcare communications at the time of the invention to modify the teachings of Soderberg directed to displaying current and historical order information simultaneously with Jones use of presenting information in separate windows, because to do so would resulting in a system for displaying current and historical order information that can display a plurality of relating information sets simultaneously. Moreover, merely adding a well-known element into a well-known system, to produce a predictable result to one of ordinary skill in the art, does not render the invention patentably distinct over such combination (see MPEP 2141).
Both Soderberg and Jones are directed to the electronic processing of patient healthcare data and specifically to the display of patient data.
As per claims 2, 3, 10, 11 and 18, Soderberg/Jones discloses claims 1, 9 and 16, shown above. Soderberg/Jones also discloses:
2,10,17. wherein the step of automatically moving the at least one existing medical order that is medically similar to the new medical order into alignment with the new medical order comprises sorting the existing medical orders to position the existing medical order that is medically similar at a position adjacent the new medical order (See Soderberg, Fig. 5, wherein the system identifies and presents relevant order records in alignment.);
3,11. displaying the plurality of existing medical orders categorized in medical order types in the second window, and automatically moving the at least one of the predetermined medical order types that contains the existing medical order that is medically similar to the new order (Soderberg Fig. 5 discloses displaying medical order types in alignment, such as CBC type and HGB and HCT type.);
18. wherein the step of automatically highlighting comprises automatically moving the at least one of the existing medical order that is medically similar to the new medical order adjacent the new medical order (See Soderberg, Fig. 5, wherein the system identifies and presents relevant order records.).
As per claims 4-6, 12-14, 19 and 20, Soderberg/Jones discloses claims 1, 9 and 16, discussed above. Soderberg discloses highlighting a medical order, as shown above. Soderberg fails to explicitly disclose highlighting:
4,12.19. by changing a font of at least one of the existing medical order and the new medical order;
5,13. by changing a color of a font of at least one of the existing medical order and the new medical order; and
6,14,20. by enclosing the at least one existing medical order that is medically similar to the new medical order and the new order with a line on the display.
Jones teaches that it was old and well known in the art of healthcare communications at the time of the invention/filing to highlight:
4,12.19. by changing a font of at least one of the existing medical order and the new medical order (Jones discloses highlighting by shading, color or other visual attribute, which would include changing a font, see paragraph 23.);
5,13. by changing a color of a font of at least one of the existing medical order and the new medical order (Jones discloses highlighting by shading, color or other visual attribute, which would include changing a font, see paragraph 23.); and
6,14,20. by enclosing the at least one existing medical order that is medically similar to the new medical order and the new order with a line on the display (Jones discloses highlighting by shading, color or other visual attribute, which would include changing a font, see paragraph 23.).
Therefore it would have been obvious to one of ordinary skill in the art of healthcare communications at the time of the invention to modify the teachings of Soderberg/Jones directed to displaying current and historical order information simultaneously with Jones emphasis of data, because to do so would resulting in a system for displaying current and historical order information that can emphasize the most relevant data. Moreover, merely adding a well-known element into a well-known system, to produce a predictable result to one of ordinary skill in the art, does not render the invention patentably distinct over such combination (see MPEP 2141).
Claims 7, 8 and 15 are rejected under 35 U.S.C. 103 as being obvious over Soderberg/Jones, further in view of Patwardhan et al. (U.S. PG-Pub 2009/0281835 A1), hereinafter Patwardhan.
As per claims 7, 8 and 15, Soderberg/Jones discloses claims 1 and 9, discussed above. Soderberg/Jones discloses presenting information in dual windows in alignment and warning of medical similarities, as shown above. Soderberg fails to explicitly disclose:
7,15. Scrolling windows; and
8. producing an audible warning sound.
Patwardhan teaches that it was old and well known in the art of healthcare communications at the time of the invention/filing to provide scrolling windows and producing an audible warning sound (See Patwardhan, paragraphs 31, 33, 35, 44 and 68.).
Therefore it would have been obvious to one of ordinary skill in the art of healthcare communications at the time of the invention to modify the teachings of Soderberg/Jonews directed to displaying current and historical order information simultaneously with the use of scrolling windows and audible warnings of Patwardhan, because to do so would resulting in a system for displaying current and historical order information that presents data and warnings in more relevant and information contexts. Moreover, merely adding a well-known element into a well-known system, to produce a predictable result to one of ordinary skill in the art, does not render the invention patentably distinct over such combination (see MPEP 2141).
Both Soderberg and Patwardhan are directed to the electronic processing of patient healthcare data and specifically to the display of patient data.
Conclusion
Unused but cited relevant prior art includes:
Syed et al. (U.S. PG-Pub 2020/0168333 A1) discloses a personalized health risk assessment for critical care that determines whether a target patient is at risk for an adverse outcome.
Any inquiry of a general nature or relating to the status of this application or concerning this communication or earlier communications from the Examiner should be directed to Mark Holcomb, whose telephone number is 571.270.1382. The Examiner can normally be reached on Monday-Friday (8-5). If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Kambiz Abdi, can be reached at 571.272.6702.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MARK HOLCOMB/
Primary Examiner, Art Unit 3685
28 July 2026
Prosecution Insights