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 .
Continued Examination Under 37 CFR 1. 114
A request for continued examination under 37 CFR 1 .114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1 .114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1 .114. Applicant's submission filed on September 18, 2025 has been entered.
Response to Arguments
3. Applicant's arguments filed on September 18, 2025 have been fully considered but they are not persuasive. Applicant asserted that the Examiner has rejected claims 5-8 under 35 USC 101 and has stated that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Applicant supported his assertion by arguing that for all the reasons previously stated in earlier responses, the claims as presently amended overcome a rejection under 35 USC 101.
In response, the Examiner respectfully disagrees. Applicant’s arguments are moot on view of a new ground of rejection. Applicant is directed to the updated 35 USC 101 rejection below.
Claim Rejections - 35 USC§ 112(a)
4. 35 U.S.C. 112 reads as follows:
(a) IN GENERAL-The specification shall contain a written description of the invention,
and of the manner and process of making and using it, in such full, clear, concise, and
exact terms as to enable any person skilled in the art to which it pertains, or with which
it is most nearly connected, to make and use the same, and shall set forth the best
mode contemplated by the inventor or joint inventor of carrying out the invention.
5. Claims 5-8 are rejected under 35 U.S.C. 112(a), as being indefinite for failing to
comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
There are at least two major gaps in the disclosure, where one of ordinary skill in the art would not reasonably be expected to be able to make and use the instant invention.
The first of these is determining the happiness score, as recited in element “D” of claim 5:
D. utilizing said results of said happiness indicator test to permit said server computer to calculate a happiness assessment score that scores the happiness level of said test taker,
While three sample questions of the survey are shown in Figure 7, the entirety of the fifty questions needed to determine the overall score are not disclosed. Moreover, while the numerical happiness score that is determined from the answers to the fifty questions is disclosed as falling within the range of 50 to 250, no algorithm is disclosed for converting any survey answers into any kind of numerical score, much less the particular score in the range of 50 to 250 from the 50 questions used by the instant invention, so one of ordinary skill in the art would not understand how this was being done.
The second major gap in the disclosure is then, how does the “happiness score” correlate to the risk assessment of the likelihood of the potential employee filing a workman’s compensation action in the future, as recited in element “E” of claim 5:
E. utilizing said happiness assessment score to permit said server computer to determine a likelihood that said job applicant will file a workers’ compensation claim,
On lines 23 to 24 of page 1 of the specification, applicant makes a simple, baldfaced assertion, without any support whatsoever, that, “It is further recognized that happy employees are less likely to file a Workers’ Compensation claim than unhappy employees,” however, it is completely unclear that this is even the case at all, and in any event, applicant fails to disclose any algorithm at all for correlating a “happiness score” into a “likelihood that said job applicant will file a workers’ compensation claim.”
It would seem that the filing a workman’s compensation claim would have to do with whether or not the worker got injured at work, and it doesn’t seem to be the case that happy people are less likely to be injured, so again, one of ordinary skill in the art would not understand how this was being done, and would not be able to make and use the invention, without undue experimentation or risk of unexpected results. Likewise, other inventors attempting to achieve similar goals would not be reasonably apprised as to whether or not they were infringing on the instant invention, because it is unclear what it is, and seems to attempt to preempt any and all attempts to solve similar problems by any means or techniques whatsoever that involves the same general principles and concepts.
Claims 6-8 are rejected under 35 U.S.C. 112(a), first paragraph, due to their dependency from a rejected base claim(s). Appropriate correction is required.
Claim Rejections - 35 USC§ 101
6. 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.
7. Claims 5-8 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 One:
Under Step one of an analysis, claim 5 does belong to a statutory category, namely it is a method claim. Claim 5 falls under one of the four statutory classes of invention.
Step 2A. Prong One:
The claims disclose the abstract idea of providing an employer with a happiness assessment score regarding a job applicant test taker wherein said happiness assessment score is utilized to predict the likelihood of said job applicant filing a workers' compensation claim.
Claim 5 as an example recites recite the limitations in the abstract idea indicated in non-bold and the additional elements in bold.
A. acquiring a server computer, wherein said server computer is programmed to receive communication from an employer and a test taker, said server computer comprising at least one happiness indicator test,
B. acquiring an employer computer, wherein said employer computer is connected via the Internet to said server computer, said employer computer being programmed to:
1) receive employer's account membership information and purchase orders for said at least one happiness indicator test,
2) transmit to said server computer the employer's account membership
information and purchase orders for said at least one happiness indicator test, and
3) receive from said server computer communication summarizing the
results of said happiness indicator test taken by the test taker,
C. acquiring a test taker computer, wherein said test taker computer is connected via the Internet to said server computer, said test taker computer being programmed to:
1) receive from said server computer said happiness indicator test,
and
2) transmit to said server computer answers to questions located on said happiness indicator test, and
D. utilizing said results of said happiness indicator test to permit said server computer to calculate a happiness assessment score that scores the happiness level of said test taker,
E. utilizing said happiness assessment score to permit said server computer to determine a likelihood that said job applicant will file a workers' compensation claim,
F. utilizing said server computer to make a decision whether to hire said job applicant based on said likelihood that said job applicant will file a workers' compensation claim.
Claim 6 further recites the method as in Claim 5 further comprising the step of acquiring an administrator computer connected to said server computer via the Internet, wherein said administrator computer is for monitoring said employer computer, said test taker computer and said happiness indicator test.
Claim 7 further recites a web site storing said at least one happiness indicator test and comprising programming facilitating communication between said employer computer and said test taker computer.
Claim 8 further recites the method as in Claim 7, wherein said web site comprises programming:
A) for allowing an employer to purchase and store a plurality of said happiness indicator tests,
B) for allowing an employer to create a membership account,
C) for allowing a test taker to take at least one of said happiness indicator test, and
D) for reporting to said employer computer the results of said happiness indicator test taken by said test taker.
Step 2A, Prong One:
The recited limitations cover a process that, under its broadest reasonable interpretation, covers subject matter viewed as a certain method of organizing human activity with the additional recitation of generic computer components. Here, the claimed concept falls into the category of functions of performing mental processes such as concepts performed in the human mind (including an observation, evaluation, judgment, opinion) because it amounts to the function of: determine a likelihood that said job applicant will file a workers' compensation claim. Therefore, the claim is directed to a certain method of organizing human activity.
Step 2A, Prong Two of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception(s) into a practical application of the exception. This evaluation is performed by (a) identifying whether there are any additional elements recited in the claim beyond the judicial exception, and (b) evaluating those additional elements individually and in combination to determine whether the claim as a whole integrates the exception into a practical application.2019 PEG Section III(A)(2), 84 Fed. Reg. at 54-55.
Clams 5-8 recite the following bolded limitations understood to be the additional limitations:
Claim 5 recites:
A. acquiring a server computer, wherein said server computer is programmed to receive communication from an employer and a test taker, said server computer comprising at least one happiness indicator test,
B. acquiring an employer computer, wherein said employer computer is connected via the Internet to said server computer, said employer computer being programmed to:
1) receive employer's account membership information and purchase orders for said at least one happiness indicator test,
2) transmit to said server computer the employer's account membership
information and purchase orders for said at least one happiness indicator test, and
3) receive from said server computer communication summarizing the
results of said happiness indicator test taken by the test taker,
C. acquiring a test taker computer, wherein said test taker computer is connected via the Internet to said server computer, said test taker computer being programmed to:
1) receive from said server computer said happiness indicator test,
and
2) transmit to said server computer answers to questions located on said happiness indicator test, and
D. utilizing said results of said happiness indicator test to permit said server computer to calculate a happiness assessment score that scores the happiness level of said test taker,
E. utilizing said happiness assessment score to permit said server computer to determine a likelihood that said job applicant will file a workers' compensation claim,
F. utilizing said server computer to make a decision whether to hire said job applicant based on said likelihood that said job applicant will file a workers' compensation claim.
Dependent claims:
Claim 6 further recites the step of acquiring an administrator computer connected to said server computer via the Internet, wherein said administrator computer is for monitoring said employer computer, said test taker computer and said happiness indicator test.
Claim 7 further recites a web site storing said at least one happiness indicator test and comprising programming facilitating communication between said employer computer and said test taker computer.
Claim 8 further recites:
A) for allowing an employer to purchase and store a plurality of said happiness indicator tests,
B) for allowing an employer to create a membership account,
C) for allowing a test taker to take at least one of said happiness indicator test, and
D) for reporting to said employer computer the results of said happiness indicator test taken by said test taker.
In addition to the abstract ideas recited in the claims, the claims recite additional elements including a generic data acquiring step of a server.
The claimed “server computer”, “an employer computer”, “test taker computer”, “Internet”:
1) receive from said server computer said happiness indicator test,
and
2) transmit to said server computer answers to questions located on said happiness indicator test, and
D. utilizing said results of said happiness indicator test to permit said server computer to calculate a happiness assessment score that scores the happiness level of said test taker,
E. utilizing said happiness assessment score to permit said server computer to determine a likelihood that said job applicant will file a workers' compensation claim,
F. utilizing said server computer to make a decision whether to hire said job applicant based on said likelihood that said job applicant will file a workers' compensation claim.
”, “test taker computer” are similarly understood in light of applicant's specification as mere usage of any arrangement of computer software or hardware intermediate components potentially using networks to communicate with instructions are properly understood to be mere instructions to apply the abstraction using a computer or device or computer system. Performing steps or functions by a computer server merely limits the abstraction to a computer field by execution by generic computers to process data (i.e. employer and test taker data).
Performing steps by a generic machine, or server computing device merely limit the abstraction to a computer field by execution by generic computers. See MPEP 2106.05 (1 ).
As noted in MPEP 2106.04(d), limitations which amount to instructions to implement an abstract idea on a computer or merely using a computer as a tool, limitations which amount to insignificant extra-solution activity, and limitations which amount to generally linking to a particular technological environment do not integrate a practical exception into a practical application.
Performance of the claimed steps or functions technologically may present a meaningful limit to the scope of the claims does not reasonably integrate the abstraction into a practical application.
Accordingly, 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. Thus the claims are directed to an abstract idea.
Step 2B: The elements discussed above with respect to the practical application in Step 2A, prong 2 are equally applicable to consideration of whether the claims amount to significantly more. Accordingly, the clams fail to recite additional elements which, when considered individually and in combination, amount to significantly more. Reconsideration of these elements identified as insignificant extra-solution activity as part of Step 2B does not change the analysis.
Positively reciting a "server computer", “employer computer”, “Internet” and "test taker computer", does not change the analysis as these aspects are properly considered as additional elements which amount to instructions to apply it with a computer.
These claimed elements also as found in the dependent claims are also recited at a high level of generality such that they amount to no more than mere instructions to apply the exception using a generic component.
In processing the claims, it is noted that the recitation of these additional elements does not impact the analysis of the claims because these elements in combination are noted only to be one or more of a general purpose computer for performing basic or routine computer functions. The claimed server computer, employer computer, and test taker computer and Internet are noted to a be a generic computer for calculating a happiness assessment score that scores the happiness level of said test taker, and utilizing said happiness assessment score to determine a likelihood that said job applicant will file a workers' compensation claim. These additional elements do not overcome the analysis as these elements are merely considered as additional elements which amount to instructions to be applied to the generic computer.
The judicial exception is not integrated into a practical application. In particular, the claimed "server computer", “employer computer” and "test taker computer" are recited at a high level of generality such they amount to no more than mere instructions to apply the exception using generic components. Accordingly, 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, claim 5 is directed to an abstract idea.
Dependent claims 6-8 include additional elements beyond those recited by independent claim 5. The provision of additional detail of a generic computer element does not render the element any less generic. The claimed steps do not amount to significantly more than the abstract idea, because they are well-understood, routine, and conventional computer functions in view of MPEP 2106 .05(d)(11). The recited computer elements do not amount to significantly more than the abstract idea because the computer elements are generic computer elements that are merely used as a tool to perform the recited abstract idea. As a result, claims 5-8 do not include additional elements that amount to significantly more than the abstract idea under Step 2B.
Therefore, the claims are directed to an abstract idea without additional elements amounting to significantly more than the abstract idea. Accordingly, claims 5-8 are rejected under 35 USC. 101 as being directed to non-statutory subject matter.
Conclusion
8. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. As per attached PTO 892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROMAIN JEANTY whose telephone number is (571)272-6732. The examiner can normally be reached M-F 9AM to 5:30PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerry O'Connor can be reached at 571 272-6787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RJ/
/ROMAIN JEANTY/Primary Examiner, Art Unit 3624