www.uspto.gov
`
`UNITED STATES DEPARTMENT OF COMMERCE
`United States Patent and Trademark Office
`Address: COMMISSIONER FOR PATENTS
`P.O. Box 1450
`Alexandria, Virginia 22313-1450
`
`17/025,129
`
`09/18/2020
`
`Richard F. Averill
`
`77472US015
`
`3809
`
`3M INNOVATIVE PROPERTIES COMPANY
`PO BOX 33427
`ST. PAUL, MN 55133-3427
`
`RAPILLO, KRISTINE K
`
`ART UNIT
`
`3626
`
`PAPER NUMBER
`
`NOTIFICATION DATE
`
`DELIVERY MODE
`
`12/07/2023
`
`ELECTRONIC
`
`Please find below and/or attached an Office communication concerning this application or proceeding.
`
`The time period for reply, if any, is set in the attached communication.
`
`Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
`following e-mail address(es):
`
`LegalUSDocketing@mmm.com
`
`PTOL-90A (Rev. 04/07)
`
`

`

`
`
`Disposition of Claims*
`16-35 is/are pending in the application.
`)
`Claim(s)
`5a) Of the above claim(s) _ is/are withdrawn from consideration.
`C} Claim(s)__ is/are allowed.
`Claim(s) 16-35 is/are rejected.
`(] Claim(s)__ is/are objectedto.
`C] Claim(s
`are subjectto restriction and/or election requirement
`)
`* If any claims have been determined allowable, you maybeeligible to benefit from the Patent Prosecution Highway program at a
`participating intellectual property office for the corresponding application. For more information, please see
`http://www.uspto.gov/patents/init_events/pph/index.jsp or send an inquiry to PPHfeedback@uspto.gov.
`
`) ) ) )
`
`Application Papers
`10)( The specification is objected to by the Examiner.
`11) The drawing(s)filed on 9/18/2020 is/are: a)(¥) accepted or b)() objected to by the Examiner.
`Applicant may not request that any objection to the drawing(s) be held in abeyance. See 37 CFR 1.85(a).
`Replacement drawing sheet(s) including the correction is required if the drawing(s) is objected to. See 37 CFR 1.121(d).
`
`Priority under 35 U.S.C. § 119
`12)£) Acknowledgment is made of a claim for foreign priority under 35 U.S.C. § 119(a)-(d)or (f).
`Certified copies:
`_—_c)L) None ofthe:
`b)L) Some**
`a)Q) All
`1.1) Certified copies of the priority documents have been received.
`2.1.) Certified copies of the priority documents have been received in Application No. |
`3.2.) Copies of the certified copies of the priority documents have been receivedin this National Stage
`application from the International Bureau (PCT Rule 17.2(a)).
`*“ See the attached detailed Office action for a list of the certified copies not received.
`
`Attachment(s)
`
`1) [[] Notice of References Cited (PTO-892)
`
`2) (J Information Disclosure Statement(s) (PTO/SB/08a and/or PTO/SB/08b)
`Paper No(s)/Mail Date
`U.S. Patent and Trademark Office
`
`3)
`
`4)
`
`(LJ Interview Summary (PTO-413)
`Paper No(s)/Mail Date
`(Qj Other:
`
`PTOL-326 (Rev. 11-13)
`
`Office Action Summary
`
`Part of Paper No./Mail Date 20231202
`
`Application No.
`Applicant(s)
`171025, 129
`Averill et al.
`
`Office Action Summary Art Unit|AIA (FITF)StatusExaminer
`KRISTINE K RAPILLO
`3626
`Yes
`
`
`
`-- The MAILING DATEof this communication appears on the cover sheet with the correspondence address --
`Period for Reply
`
`A SHORTENED STATUTORYPERIOD FOR REPLYIS SET TO EXPIRE 3 MONTHS FROM THE MAILING
`DATE OF THIS COMMUNICATION.
`Extensionsof time may be available underthe provisions of 37 CFR 1.136(a). In no event, however, may a reply betimely filed after SIX (6) MONTHSfrom the mailing
`date of this communication.
`If NO period for reply is specified above, the maximum statutory period will apply and will expire SIX (6) MONTHSfrom the mailing date of this communication.
`-
`- Failure to reply within the set or extended period for reply will, by statute, cause the application to become ABANDONED (35 U.S.C. § 133).
`Any reply received by the Office later than three months after the mailing date of this communication, evenif timely filed, may reduce any earned patent term
`adjustment. See 37 CFR 1.704(b).
`
`Status
`
`1) Responsive to communication(s) filed on 10/6/2023.
`C} A declaration(s)/affidavit(s) under 37 CFR 1.130(b) was/werefiled on
`
`2a)() This action is FINAL. 2b)¥)This action is non-final.
`3) An election was madeby the applicant in responseto a restriction requirement set forth during the interview
`on
`; the restriction requirement and election have been incorporated into this action.
`4)(2) Since this application is in condition for allowance except for formal matters, prosecution as to the merits is
`closed in accordance with the practice under Exparte Quayle, 1935 C.D. 11, 453 O.G. 213.
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`Page 2
`
`DETAILED ACTION
`
`Notice to Applicant
`
`1.
`
`This communication is in response to the amendment submitted October6,
`
`2023. The present application is a CON of application 16/064,146 (now abandoned).
`
`Claims 16 — 17, 23 — 24, 26 — 27, and 33 — 34 are amended. Claims 16 — 35 are
`
`pending.
`
`Notice of Pre-AlA or AIA Status
`
`2.
`
`The present application, filed on or after March 16, 2013, is being examined
`
`underthe first inventor to file provisions of the AIA.
`
`Claim Rejections - 35 USC § 101
`
`3.
`
`35 U.S.C. 101 reads as follows:
`
`Whoeverinvents or discovers any new and useful process, machine, manufacture, or
`composition of matter, or any new and useful improvementthereof, may obtain a patent
`therefor, subject to the conditions and requirements of thistitle.
`
`4.
`
`Claims 16 — 35 are rejected under 35 U.S.C. 101 becausethe 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 One
`
`5.
`
`Claims 16 — 35 are drawn to a system and method, whichis/are statutory
`
`categories of invention (Step 7: YES).
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`Page 3
`
`Step 2A Prong One
`
`6.
`
`Independentclaims 16 and 26 recite a healthcare management system for
`
`generating, in real-time, one or more suggestions for the provision of healthcare
`
`services comprising: receiving data from multiple health care providers, conforming the
`
`received data into a standard format, a multi-dimensional data representation having a
`
`plurality of dimensions including: a providers dimension, a patients dimension, a
`
`performance dimension, and specifying a clinically credible measure of actual versus
`
`expected performance basedon the plurality of dimensions.
`
`7.
`
`The recited limitations, as drafted, under their broadest reasonable interpretation,
`
`cover certain methods of organizing humanactivity by providing the performance
`
`measure of a selected healthcare provider to a user.If a claim limitation, underits
`
`broadest reasonable interpretation, covers fundamental economic principles or
`
`practices and/or managing personal behavior or relationships or interactions between
`
`people, then it falls within the “Certain Methods of Organizing Human Activity” grouping
`
`of abstract ideas. Accordingly, the claims recite an abstract idea (Step 2A Prong One:
`
`YES).
`
`Step 2A Prong Two
`
`8.
`
`This judicial exception is not integrated into a practical application. The claims
`
`are abstract but for the inclusion of the additional elements including:
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`Page 4
`
`Claims 16: “one or more computer processors communicatively coupled to a
`
`computing network”; “a display device communicatively couple to the
`n
`tt
`processors’,
`
`“a memory device communicatively coupled to the processors”
`
`Claim 21: “a reference database stored on the memory device”
`
`Claims 22 and 32: “a rule repository stored on the memory device, wherein the
`
`operations further comprise: accessing one or morerulesin the rule repository”
`
`Claim 23: “wherein the memoryincludesinstructions that when executed by the
`
`one or more computerprocessors cause the processors to perform the
`
`operations”
`
`Claim 24: “wherein the operations further cause the processors to perform
`
`operations’, “Memory device”
`
`Claim 26: “a computer implemented method for storing and retrieving data’, “one
`
`or more computer processors communicatively coupled to a computing network’,
`n
`tt
`“a display device communicatively couple to the processors”,
`
`“a memory device
`
`communicatively coupled to the processors”, “configuring the memory”
`
`Claims 27 — 30, 33 - 35: “a computer implemented method”
`
`Claim 31: “a computer implemented method’, “accessing a reference database”
`
`Claim 32: “a computer implemented method”, “accessing one or more rules
`
`stored in the rules repository”
`
`9.
`
`These features are additional elements that are recited at a high levelof
`
`generality such that they amount to no more than mereinstruction to apply the
`
`exception using generic computer components. See: MPEP 2106.05(f).
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`Page 5
`
`10.
`
`The additional elements are merely incidental or token additions to the claim that
`
`do notalter or affect how the processsteps or functions in the abstract idea are
`
`performed. Therefore, the claimed additional elements do not add meaningful limitations
`
`to the indicated claims beyond a generallinking to a technological environment. See:
`
`MPEP 2106.05(h).
`
`11.|The combination of these additional elements is no more than mereinstructions
`
`to apply the exception using generic computer components. Accordingly, even in
`
`combination, these additional elements do not integrate the abstract idea into a practical
`
`application because they do not impose any meaningful limits on practicing the abstract
`
`idea.
`
`12.
`
`Hence, the additional elements do not integrate the abstract idea into a practical
`
`application because they do not impose any meaningful limits on practicing the abstract
`
`idea. Accordingly, the claims are directed to an abstract idea (Step 2A Prong Two: NO).
`
`Step 2B
`
`13.|The claims do 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, using the additional elements
`
`to perform the abstract idea amounts to no more than mereinstructions to apply the
`
`exception using generic components. Mere instructions to apply an exception using a
`
`generic components cannotprovide an inventive concept. See MPEP 2106.05(f).
`
`14.—Further, the claimed additional elements, identified above, are not sufficient to
`
`amountto significantly more than the judicial exception because they are generic
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`Page 6
`
`components that are not integrated into the claim because they are merely incidental or
`
`token additions to the claim that do not alter or affect how the processstepsor functions
`
`in the abstract idea are performed. Therefore, the claimed additional elements do not
`
`add meaningful limitations to the indicated claims beyond a generallinking to a
`
`technological environment. See: MPEP 2106.05(h).
`
`15.
`
`Further, the claimed additional elements, identified above, are not sufficient to
`
`amountto significantly more than the judicial exception because they are generic
`
`componentsthat are configured to perform well-understood, routine, and conventional
`
`activities previously knownto the industry. See: MPEP 2106.05(d). Said additional
`
`elements are recited at a high level of generality and provide conventional functions that
`
`do not add meaningful limits to practicing the abstract idea. The published specification
`
`supports this conclusion asfollows:
`
`e
`
`[0012] The functions or algorithms described herein may be implemented
`
`in software in one embodiment. The software may consist of computer
`
`executable instructions stored on computer readable media or computer
`
`readable storage device such as one or more non-transitory memories or
`
`other type of hardware based storage devices, either local or networked.
`
`Further, such functions correspond to modules, which may be software,
`
`hardware, firmware or any combination thereof. Multiple functions may be
`
`performed in one or more modulesas desired, and the embodiments
`
`described are merely examples. The software may be executed on a
`
`digital signal processor, ASIC, microprocessor, or other type of processor
`
`operating on a computer system, such as a personal computer, server or
`
`other computer system, turning such computer system into a specifically
`
`programmed machine.
`
`e
`
`[0060] FIG. 5 is a block schematic diagram of a computer system 500 to
`
`implement methods according to example embodiments. All components
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`Page 7
`
`need not be used in various embodiments. One example computing
`
`device in the form of a computer 500, may include a processing unit 502,
`
`memory 503, removable storage 510, and non-removable storage 512.
`
`Although the example computing deviceis illustrated and described as
`
`computer 500, the computing device may bein different forms in different
`
`embodiments. For example, the computing device may instead be a
`
`smartphone, a tablet, smartwatch, or other computing device including the
`
`same or similar elements asillustrated and described with regard to FIG.
`
`5. Devices such as smartphones, tablets, and smartwatches are generally
`
`collectively referred to as mobile devices. Further, although the various
`
`data storage elementsareillustrated as part of the computer 500, the
`
`storage mayalso or alternatively include cloud-based storage accessible
`
`via a network, such asthe Internet.
`
`e
`
`[0061] Memory 503 mayinclude volatile memory 514 and non-volatile
`
`memory 508. Computer 500 mayinclude - or have access to a computing
`
`environmentthat includes - a variety of computer readable media, such as
`
`volatile memory 514 and non-volatile memory 508, removable storage 510
`
`and non-removable storage 512. Computer storage includes random
`
`access memory (RAM), read only memory (ROM), erasable
`
`programmable read-only memory (EPROM) & electrically erasable
`
`programmable read-only memory (EEPROM), flash memory or other
`
`memory technologies, compact disc read-only memory (CD ROM), Digital
`
`Versatile Disks (DVD) or other optical disk storage, magnetic cassettes,
`
`magnetic tape, magnetic disk storage or other magnetic storage devices
`
`capable of storing computer-readable instructions for execution to perform
`
`functions described herein.
`
`16.
`
`Viewing the limitations as an ordered combination, the claims simply instruct the
`
`additional elements to implement the concept described abovein the identification of
`
`abstract idea with routine, conventional activity specified at a high level of generality in a
`
`particular technological environment.
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`Page 8
`
`17.|Hence, the claims as a whole, considering the additional elements individually
`
`and as an ordered combination, do not amountto significantly more than the abstract
`
`idea (Step 2B: NO).
`
`18.
`
`Dependent claim(s) 17 — 25 and 27 — 31, when analyzed as a whole, considering
`
`the additional elements individually and/or as an ordered combination, are held to be
`
`patentineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s)
`
`to establish that the claim(s) is/are not directed to an abstract idea withoutsignificantly
`
`more. Theseclaims fail to remedy the deficiencies of their parent claims above, and are
`
`therefore rejected for at least the same rationale as applied to their parent claims above,
`
`and incorporated herein.
`
`Claim Rejections - 35 USC § 103
`
`19.
`
`The rejections under 35 USC 103 were withdrawnin the Office Action mailed
`
`March 14, 2023.
`
`Responseto Arguments
`
`20.
`
`Applicant's argumentsfiled October 6, 2023 have beenfully considered but they
`
`are not persuasive. The Applicant’s arguments have been addressedin the order in
`
`which they werereceived.
`
`The Applicant argues the present claims are directed to specific improvementsin
`
`the way computers operate, embodied by the novel multi-dimensional data
`
`representation, citing Enfish. The Examiner respectfully disagrees. The Examiner
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`Page 9
`
`submits in Enfish, for example, the Court found that "the claims at issue focused not on
`
`asserted advancesin uses to which existing computer capabilities could be put, but on
`
`a specific improvement in how computercould carry out one of their basic functions of
`
`storage and retrieval of data”. Here, the focus of the claims is not on such an
`
`improvement in computers as tools, but on abstract ideas that use computers astools.
`
`The claims here do not require any nonconventional computer, network or display
`
`components, or even a "non-conventional and non-generic arrangement of known,
`
`conventional pieces”. This conclusion is supported by the Applicant’s published
`
`specification: “[0072] FIG. 5 is a block schematic diagram of a computer system 500 to
`
`implement methods according to example embodiments. All components need not be
`
`used in various embodiments. One example computing device in the form of a computer
`
`500, may include a processing unit 502, memory 503, removable storage 510, and non-
`
`removable storage 512. Although the example computing deviceis illustrated and
`
`described as computer 500, the computing device may bein different forms in different
`
`embodiments. For example, the computing device may instead be a smartphone, a
`
`tablet, smartwatch, or other computing device including the same or similar elements as
`
`illustrated and described with regard to FIG. 5. Devices such as smartphones, tablets,
`
`and smart-watches are generally collectively referred to as mobile devices. Further,
`
`although the various data storage elements areillustrated as part of the computer 500,
`
`the storage mayalso or alternatively include cloud-based storage accessible via a
`
`network, such asthe Internet.” The Applicant’s specification indicates any type of
`
`computing device may be used, thus, unlike Enfish, the present application uses
`
`existing computers astools in aid of processes focused on abstract ideas.
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`Page 10
`
`The Applicant argues the concepts embodied in the claims are specifically
`
`adapted into the practical application of improving an organizations ability to care for its
`
`patient population. The Examiner respectfully disagrees. The additional elements of
`
`the presentclaims fail to integrate the exception into a practical application of the
`
`exception. The 2019 PEG defines the phrase “integration into a practical application” to
`
`require an additional element or a combination of additional elements in the claim to
`
`apply, rely on, or use the judicial exception in a mannerthat imposes a meaningful limit
`
`on the judicial exception, such that it is more than a drafting effort designed to
`
`monopolize the exception. For example, the 2019 PEG guidelinesrecite limitations that
`
`are indicative of integration into a practical application whenrecited in a claim with a
`
`judicial exception include:
`
`*
`
`Improvementsto the functioning of a computer, or to any other technology
`
`or technicalfield, as discussed in MPEP 2106.05(a);
`
`¢ Applying or using a judicial exception to effect a particular treatment or
`
`prophylaxis for disease or medical condition — see Vanda Memo
`
`* Applying the judicial exception with, or by use of, a particular machine, as
`
`discussed in MPEP 2106.05(b);
`
`*
`
`Effecting a transformation or reduction of a particular article to a different
`
`state or thing, as discussed in MPEP 2106.05(c); and
`
`¢ Applying or using 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
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`Page 11
`
`drafting effort designed to monopolize the exception, as discussedin
`
`MPEP 2106.05(e) and the Vanda Memo issued in June 2018.
`
`The present claims fail to demonstrate an improvementto the functioning of a
`
`computer or to any other technology or technical field. Thus, Applicant's argumentis
`
`not persuasive, and the rejection is maintained.
`
`The Applicant argues the independentclaims specifically recite receiving
`
`information from multiple sources and conforming that data into a standard format,citing
`
`Example 42 of the Subject Matter Eligibility examples. The Examiner respectfully
`
`disagrees. Example 42 recites “A method comprising: a) storing information in a
`
`standardized format about a patient's condition in a plurality of network-based non-
`
`transitory storage devices having a collection of medical records stored thereon; b)
`
`providing remote accessto users over a network so any one of the users can update
`
`the information about the patient’s condition in the collection of medical records in real
`
`time through a graphical user interface, wherein the one of the users provides the
`
`updated information in a non-standardized format dependent on the hardware and
`
`software platform used bythe one of the users; c) converting, by a content server, the
`
`non-standardized updatedinformation into the standardized format; d) storing the
`
`standardized updated information about the patient’s condition in the collection of
`
`medical recordsin the standardized format; e) automatically generating a message
`
`containing the updatedinformation about the patient’s condition by the content server
`
`whenever updated information has been stored; and f) transmitting the message to all of
`
`the users over the computer networkin real time, so that each user has immediate
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`Page 12
`
`accessto up-to-date patient information.” The abstract idea is to provide remote access
`
`to users so any one of the users can update the information about the patient’s
`
`condition in the collection of medical records so that each user has immediate access to
`
`up-to-date patient information, and falls within the grouping of certain methodsof
`
`organizing humanactivity. The combination of additional elements of the claim
`
`integrate the abstract idea into a practical application by offering a specific improvement
`
`overprior art systems. The claims of example 42 are automatically generating a
`
`message and transmitting the message to a user. The present claims differ such that
`
`the additional elements are “one or more computer processors communicatively
`
`coupled to a computing network”; “a display device communicatively couple to the
`n
`tt
`processors’,
`
`“a memory device communicatively coupled to the processors”. The claim
`
`as a whole merely describes how to generally “apply” the concept of obtaining
`
`performance measures of a selected healthcare provider (as described in the
`
`Applicant’s specification, see paragraph 3 of the published specification). The claimed
`
`computer components arerecited at a high level of generality and are merely invoked
`
`as tools to perform an existing medical records update process. Simply implementing
`
`the abstract idea on a generic computeris not a practical application of the abstract
`
`idea. Accordingly, the claim as a whole doesnotintegrate the abstract idea into a
`
`practical application because they do not impose any meaningful limits on practicing the
`
`abstract idea. Thus, the Applicant’s argument is not persuasive and the rejection is
`
`maintained.
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`Page 13
`
`Conclusion
`
`21.—Anyinquiry concerning this communication or earlier communications from the
`
`examiner should be directed to KRISTINE K RAPILLO whosetelephone numberis
`
`(571)270-3325. The examiner can normally be reached Monday- Friday 7:30 - 4 pm.
`
`Examiner interviews are available via telephone, in-person, and video
`
`conferencing using a USPTO supplied web-based collaboration tool. To schedule an
`
`interview, applicant is encouraged to use the USPTO Automated Interview Request
`
`(AIR) at http:/Avwww.uspto.gov/interviewpractice.
`
`If attempts to reach the examiner by telephone are unsuccessful, the examiner's
`
`supervisor, Fonya Long can be reached on 571-270-5096. The fax phone numberfor
`
`the organization wherethis application or proceeding is assigned is 571-273-8300.
`
`Information regarding the status of published or unpublished applications may be
`
`obtained from Patent Center. Unpublished application information in Patent Centeris
`
`available to registered users. To file and manage patent submissions in Patent Center,
`
`visit: https://patentcenter.uspto.gov. Visit https:/Awww.uspto.gov/patents/apply/patent-
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`
`https:/Awww.uspto.gov/patents/docx for information aboutfiling 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 CustomerService
`
`Representative, call 800-786-9199 (IN USA OR CANADA)or 571-272-1000.
`
`KRISTINE K. RAPILLO
`Examiner
`
`Art Unit 3626
`
`

`

`Application/Control Number: 17/025,129
`Art Unit: 3626
`
`/KRISTINE K RAPILLO/
`Examiner, Art Unit 3626
`
`Page 14
`
`