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 .
Status of the application
This office action is response the amendment and argument filed on 08/05/2024. The current statuses of the claims in the application are as follow: claims 41-44 are still pending and claims 1-40 have been cancelled.
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 41-44 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) series of steps to guide a user to keep promise chain and providing the instructions/lessons for the user to help maintain said promise. These limitations covers performance of the limitations of the mind or the management of personal behavior. For example, the limitation of claims 41 discloses steps to receiving a plurality of viable promises, having a physical activation signal, showing the viable promises in an ordering number, setting promise times of the viable having a notification for the user when the time is up, receiving input from an input of broken promises, display a promise score and showing a level of sureness of the user graphically for the user to view and monitor. These steps appear to be directed to an abstract idea that can be performed in the human mind using a pen or pencil. As such, the examiner takes the position that these limitations are directed to the abstract idea grouping of “mental process” or “certain method of organizing human activity”. Similarly, the limitations of the dependent claims also show the same issue, for example:
Claims 42, the steps of determine whether the one of the viable promises being broken is the excused broken promise or the unexcused broken promise, wherein only the unexcused broken promise has the negative effect on the promise score, wherein the excused broken promise and the unexcused broken promise are selected by the user can be interpreted to directed to the abstract idea grouping of “mental process” or “certain method of organizing human activity”.
Claim 43, a learning and training phase with the one or more lessons for techniques of effective promise in responsive to a selection of the user through the selector according to a personal control score of the user can be interpreted to directed to the abstract idea grouping of “mental process” or “certain method of organizing human activity”.
Claim 44, calculating/showing a promise score that contain personal control score of the user; promise score, wherein the excused broken promise and the unexcused broken promise are selected by the user can be interpreted to directed to the abstract idea grouping of “mental process” or “certain method of organizing human activity”.
However, the applicant’s own specification shows that these limitations are nothing more than mere instructions to apply the exception using a generic computer component. For example, the limitations of claim 41-43 are replete with recitations of the use of generic computing element to display various information (for example, a screen, an input device comprising an activator configured for the user to generate physical activation signal, time setter displaying a physical activation signal, input device, a time setter, an activator, an excuse button and unexcused button), receiving input from the user, using a processor to execute a program instruction, and storing information in memory module. For example, page 8 of the applicant’s specification shows that the preferred embodiment of these program, storage device, and screen are nothing more than “iPhone App” (see “The Shield Method”). Further reading of the applicant’s specification further support examiner’s interpretation that these limitations are nothing more than generic computing device (see applicant’s specification page 46 line 1215-1219). As such, this limitation can also be interpreted as insignificant extra-solution activity to the judicial exception.
The claim(s) does/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, the additional element of using a processor to perform both the display of information and calculating scores amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Response to Arguments
Applicant’s arguments with respect to claims 41-44 have been considered but are considered to be unpersuasive. The applicant argued that the use of physical elements, activator, time setter, excused broken promise and unexecused broken promise are specific hardware configurations and constitute additional limitations amounting to significantly more than the exception. However, the specification shows that the buttons are nothing more that generic computer input devices. As it has been argued before the use of a screen and/or an input device can be interpreted as insignificant extra-solution activity to the judicial exception. As these limitation appears to be similar to the data gathering steps that can be interpreted as insignificant extra-solution activity.
The examiner respectfully disagrees with applicant’s argument. A claim directed to software (or executed in a computer) does not necessarily mean that the such claim can be instantly interpreted as patently eligible. For examples, Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed “conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally,” i.e., “as a person would do it by head and hand.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of “translating a functional description of a logic circuit into a hardware component description of the logic circuit” are directed to an abstract idea, because the claims “read on an individual performing the claimed steps mentally or with pencil and paper”). In this particular case, nothing in the applicant’s specification or argument would preclude someone from mentally performing the mental step of forming a promise chain and tracking the score for tracking promises as described in claim 41.
The applicant also provide argument that the claimed limitation is directed to an improvement to technology of forming promise chain or promise score tracking. The examiner notes that the applicant’s assertion is done without providing any evidence of such improvement. The MPEP is clear that ”… the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.” [see MPEP 2106.05(a)]. In this particular case, the specification and the applicant’s argument is silent on any evidence of technical improvement that the current claim limitation supposed to solve. Furthermore, the applicant’s argument that improvement to the promise chain and scoring of such promise chain does not appear to be directed to technological improvement since the claim itself appears to be a mere automation of a series of mental processes. For example, mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017) and the recording, transmitting, and archiving digital images by use of conventional or generic technology in a nascent but well-known environment, without any assertion that the invention reflects an inventive solution to any problem presented by combining a camera and a cellular telephone, TLI Communications, 823 F.3d at 611-12, 118 USPQ2d at 1747.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT J UTAMA whose telephone number is (571)272-1676. The examiner can normally be reached 9:00 - 17:30 Monday - Friday.
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/ROBERT J UTAMA/Primary Examiner, Art Unit 3715