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 .
Priority
Acknowledgment is made of Applicant's claim for priority to the following application(s):
* 17683229 filed 28 February 2022
Double Patenting
A rejection based on double patenting of the “same invention” type finds its support in the language of 35 U.S.C. 101 which states that “whoever invents or discovers any new and useful process... may obtain a patent therefor...” (Emphasis added). Thus, the term “same invention,” in this context, means an invention drawn to identical subject matter. See Miller v. Eagle Mfg. Co., 151 U.S. 186 (1894); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Ockert, 245 F.2d 467, 114 USPQ 330 (CCPA 1957).
A statutory type (35 U.S.C. 101) double patenting rejection can be overcome by canceling or amending the claims that are directed to the same invention so they are no longer coextensive in scope. The filing of a terminal disclaimer cannot overcome a double patenting rejection based upon 35 U.S.C. 101.
Claims 7 and 17 is/are rejected under 35 U.S.C. 101 as claiming the same invention as that of claims 7 and 11 of prior U.S. Patent No. 12367965. This is a statutory double patenting rejection.
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 1-6, 8-16, 18-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12367965. Although the claims at issue are not identical, they are not patentably distinct from each other because application claim 1 is anticipated by patent claim 7.
Application claim 1 recites all limitations of patent claim 7, with the exception that application claim 1 does not recite the blade computer of patent claim 7. Therefore patent claim 7 of Esposito ‘965 is in essence a “species” of the generic invention of application claim 1. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
Similarly, claims 2-6, 8-10 recite the same limitations as those of patent claims 2-10, and therefore before the effective filing date of the application, it would have been obvious to one of ordinary skill in the art to combine the PACS feature of patent claim 7 within the embodiments of patent claims 2-6, 8-10 with the motivation of improving patient care by using a known image processing protocol, e.g. PACS.
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.
Claim(s) 1-6, 8-16, 18-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
Claim 1 recites:
A computing system, comprising:
at least one processor; and
at least one memory having processor-readable instructions stored therein, wherein the at least one processor is configured to access the at least one memory and execute the processor-readable instructions to perform operations, the operations comprising:
receiving a selection of a medical image study in a user interface;
determining whether the medical image study is accessible by a first computing device based at least in part on a token associated with the medical image study, the first computing device being an active computing device in the computing system, and the token comprising an indication of a source picture archiving and communications systems (PACS) server from which the medical image study originated;
in response to determining that the medical image study is inaccessible by the first computing device, identifying a second computing device among a plurality of computing devices configurable to access the medical image study, the plurality of computing devices comprising the first computing device; and
generating an output signal to cause the computing system to activate the second computing device for accessing the medical image study.
Step 1:
The claim as a whole falls within at least one statutory category, i.e. a process, machine, manufacture, or composition of matter.
Step 2A Prong One:
The highlighted portion, as drafted, is a process that, under its broadest reasonable interpretation, falls under “Certain methods of organizing human activity” because the steps of determining which computer can access a study and generating a command to activate the computer were traditionally performed by human beings, i.e. managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). MPEP 2106.04(a)(2)(II)
Additionally, the highlighted portion, as drafted, is a process that, under its broadest reasonable interpretation, falls under “Mental processes”.
For example, but for a generic computer recited with a high level of generality, the step of determining which computer is able to access a study based on a token could be performed by a person looking at the data and thinking about the results, i.e. mental steps that could be performed either mentally or with pen and paper. Additionally, the step of generating a command could be performed by a person merely thinking about the results.
In particular, the Specification as originally filed on 11 May 2021 discloses that the user may manually perform the switching between blade systems without any computer used to perform automatic switching, and that the computer is merely invoked in a post hoc manner to implement the switching after a decision has been made in the mind of the user without any computer structure (page 4 paragraph 0011).
The different categories of abstract ideas are being considered together as one single abstract idea. MPEP 2106.04(II)(B)
Dependent claim(s) recite(s) additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claim(s) 2-6, 8-10 reciting limitations further defining the abstract idea, which may be performed in the mind but for recitation of generic computer components, and/or may be a method of managing relationship or interactions between people, e.g. claims 2-3 reciting abstract data processing to select a computer to access the patient data, claims 6 reciting abstract worklists).
Step 2A Prong Two:
This judicial exception is not integrated into a practical application. In particular, the claim recites the following additional element(s), if any:
at least one processor; and
at least one memory having processor-readable instructions stored therein, wherein the at least one processor is configured to access the at least one memory and execute the processor-readable instructions to perform operations, the operations comprising:
receiving a selection of a medical image study in a user interface;
The additional element(s) do(es) not integrate the abstract idea into a practical application, other than the abstract idea per se.
When read in light of the Specification as originally filed, the processor and memory amount(s) to mere instructions to apply an exception (invoking computers as a tool to perform the abstract idea). MPEP 2106.05(f))
It is noted that the PACS server, when read in context, is not a structural component of the claim, and is instead directed towards a data source that is indicated in the processed data.
The step of receiving a selection merely add(s) insignificant extra-solution activity to the abstract idea (mere data gathering, selecting a particular data source or type of data to be manipulated, insignificant application). MPEP 2106.05(g))
Dependent claim(s) recite(s) additional subject matter which amount to limitation(s) consistent with the additional element(s) in the independent claims. Regarding the switching device, the Specification as originally filed appears to disclose a generic computer used to perform the recited functionality. Similarly, the power supply and network connection of claims 8 and 10 merely link the abstract idea to a technical environment, and specifically because the power supply and network connection don’t have any nexus with the abstract idea.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation and do not impose a meaningful limit to integrate the abstract idea into a practical application.
Accordingly, the additional elements do not integrate the judicial exception into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Accordingly, the claim recites an abstract idea.
Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception, add insignificant extra-solution activity to the abstract idea, and/or generally link the abstract idea to a particular technological environment or field of use.
The additional elements, as discussed above and incorporated herein, amount to no more than mere instructions to apply an exception, add insignificant extra-solution activity to the abstract idea, and/or generally link the abstract idea to a particular technological environment or field of use, as discussed above and incorporated herein.
Mere instructions to apply an exception, insignificant extra-solution activity, and linking to a particular technological environment using a generic computer component cannot provide an inventive concept.
Regarding the use of a token, Ting (20070186106) discloses that a token used to authenticate a user to a PACS system is WURC in the pertinent arts (page 8 paragraph 0062).
Regarding the step of receiving a selection, i.e. a form of data, this limitation amount(s) to element(s) that have been recognized as well-understood, routine, and conventional activity in particular fields (e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i)). MPEP 2106.05(d)(II)(ii))
Dependent claims recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation.
The claim is not patent eligible.
Claims 11-16, 18-20 also recites substantially similar limitations as those of claims 1-6, 8-10, and are also similarly rejected.
Claims 11 and 18 further recite a PACS server. This limitation has been identified in the discussion above as being directed towards insignificantly extrasolution activity in a manner that would be WURC in the pertinent arts, as is evidenced by Ting, as discussed above and incorporated herein.
Subject Matter Free of Prior Art
Claim(s) 1-20 distinguish(es) over the prior art for the following reasons.
The following is a statement of reasons for the subject matter free of prior art:
Claim 1: the primary reason for the indication of subject matter free of prior art is the inclusion of the following limitations in the combination as recited in the abstract concept and not found in the closest available prior art of record:
receiving a selection of a medical image study in a user interface;
determining whether the medical image study is accessible by a first computing device based at least in part on a token associated with the medical image study, the first computing device being an active computing device in the computing system, and the token comprising an indication of a source picture archiving and communications systems (PACS) server from which the medical image study originated;
in response to determining that the medical image study is inaccessible by the first computing device, identifying a second computing device among a plurality of computing devices configurable to access the medical image study, the plurality of computing devices comprising the first computing device; and
generating an output signal to cause the computing system to activate the second computing device for accessing the medical image study.
The closest available prior art of record are as follows:
Krishnamurthy (8826069) discloses a sever blade using an RDMA token to access data (column 7 line 1-7); however, Krishnamurthy does not fairly disclose or suggest determine whether the medical image study is accessible by the first blade computing device based at least in part on a token associated with the medical image study, the token comprising an indication of a specific blade computing device of the plurality of blade computing devices that can access the medical image study, and identify a second blade computing device of the plurality of blade computing devices that can access the medical image study based at least in part on the token, in response to determining that the medical image study is inaccessible by the first blade computing device.
Sjostrand (11544407) discloses selecting an imaging study (column 7 line 58-60) for processing on a blade server (column 8 line 57-59); however, Sjostrand does not fairly disclose or suggest determine whether the medical image study is accessible by the first blade computing device based at least in part on a token associated with the medical image study, the token comprising an indication of a specific blade computing device of the plurality of blade computing devices that can access the medical image study, and identify a second blade computing device of the plurality of blade computing devices that can access the medical image study based at least in part on the token, in response to determining that the medical image study is inaccessible by the first blade computing device.
Based on the evidence presented above, none of the closest available prior art of record fairly discloses or suggests the claimed invention. For this reason, claim 1 would be found to be subject matter free of prior art.
Claim(s) 2-10: this/these claim(s) would also be found to be subject matter free of prior art for at least the same rationale as applied to parent claim 1 above, and incorporated herein.
Claim(s) 11-20: this/these claim(s) would also be found to be subject matter free of prior art for substantially similar rationale as applied to claim(s) 1-10 above, and incorporated herein.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Ghostine (9576140) discloses using a security token to access a blade computer (column 10 line 35-39).
Kamgaing (20200045754) discloses a blade computer with hot swappable blade processors and associated circuit boards (Abstract).
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/T.N.N./ Examiner, Art Unit 3685 /KAMBIZ ABDI/Supervisory Patent Examiner, Art Unit 3685
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