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 .
Applicant’s amendments dated 9/8/25 are hereby entered.
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, 6, and 12-21 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.
Claims 1, 6, and 12-21 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by human being and/or recite a method of organizing human activity.
In regard to Claims 1 and 6, the following limitations can be performed as a mental process by a human being and/or recite a method of organizing human activity, in terms of a human being(s) performing:
[a] method useful for generating an animated [image] related to an educational content based on a learning context in an […] educational platform comprising:
providing the […] educational platform;
obtaining [an] image;
receiving a set of administrator edits to the […] image […];
generating [an] animated […] image […],
wherein the animated […] image comprises the […] image and a set of user edits to said […] image,
wherein a content of the […] image is related to a query from a learning user;
generating a […] tutorial to a learning user, the learning user having a profile […];
[…]
including an animated [image] within a flow of the […] tutorial […];
receiving a query from […] the learning user while the learning user is accessing the […] tutorial […];
[…] displaying […] the animated […] image with the content related to the query inline with the education content of the […] tutorial wherein the animated […] image is a animated walkthrough […];
receiving a user query via [an interactive] conversation;
parsing the user query and determining subject matter of the user query related to the product walkthrough;
[…] generating a new animated [image] in response to the user query that answers the user query,
wherein the new animated [image] is based on a subject matter of the user query and comprises an audio walkthrough based on a subject matter of the user query relating to the animated walkthrough; and
providing the new animated [image] […] to answer the user query […],
[…]
wherein the new animated […] image is played multiple times and
wherein a human chat agent also delivers an animated [display] that answers the query.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., embodying Applicant’s abstract idea as computer software (e.g., “an animated GIF engine”, “a digital-image editing module”), a server, a computing device, an animated GIF image/file, digital data, performing actions “online”, performing actions “automatically”, employing a chatbot/AI, employing a GIF with universal web browser support and managed by an Animated GIF management server via an application programming interface (API) and is viewable without additional software downloads, employing machine learning, and/or employing a server to receive uploaded data and to then transform that data into a different format, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use.
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., embodying Applicant’s abstract idea as computer software (e.g., “an animated GIF engine”, “a digital-image editing module”),a server, a computing device, an animated GIF image/file, digital data, performing actions “online”, performing actions “automatically”, employing a chatbot/AI, employing a GIF with universal web browser support and managed by an Animated GIF management server via an application programming interface (API) and is viewable without additional software downloads, employing machine learning, and/or employing a server to receive uploaded data and to then transform that data into a different format, these are generic, well-known, and conventional computer elements and are claimed for the generic, well-known, and conventional functions of collecting and processing data and/or providing an analysis based on that processing. As evidence that these additional elements are generic, well-known, and conventional, Applicant’s specification discloses the support for these elements in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a). See, e.g., Figure 1 and text regarding same and paragraphs 22-25 in Applicant’s specification; and also see, e.g., p27-28 in regard to employing machine learning.
Response to Arguments
Applicant argues on page 8 of its Remarks in regard to the rejections made under 35 USC 101:
PNG
media_image1.png
369
644
media_image1.png
Greyscale
Applicant’s argument is not persuasive because the 101 rejection identifies precisely which of Applicant’s claimed limitations constitute the alleged abstract idea. See pages 4-5 in the prior NFAOM.
Applicant further argues in its Remarks in regard to the rejections made under 35 USC 101 that its claimed invention cannot be “practically performed by the human mind”. Applicant’s argument is unpersuasive. Applicant’s argument references numerous limitations (e.g., “animated GIF”, “chatbot”, etc.) that were not, in fact, part of the abstract idea alleged the 101 rejection as being a mental process. Also, Applicant’s invention is directed to collecting data (e.g., obtaining an image and edits to that image, receiving a query), analyzing that data (e.g., parsing the query), and generating outputs based on that analysis (e.g., generating an image, a tutorial, a new animated image, etc.), and such subject matter has been identified as being something that may be practically performed by the human mind. See MPEP 2106.04(a)(2)(III)(A).
Applicant further argues in its Remarks in regard to the rejections made under 35 USC 101 that it has claimed patent eligible subject matter because its claimed invention is allegedly analogous to the Office’s 101 Examples 39 or 38. It is unclear, however, how to apply the 101 Examples provided by the Office given that the Mayo test is a legal test and the Office cannot make law; because the 101 Examples themselves do not cite to and may themselves be inapposite to precedential case law; and because the 101 Examples are not provided with specifications whereby the BRI of the limitations in question may be determined. Be that as it may, Applicant does not claim an invention analogous to training a neural network for facial detection or simulating an analog audio mixer. What is more, it is unclear if Example 39 is relevant guidance considering the CAFC’s recent decision in Recentive Analytics holding that claims directed to training/employing a machine learning model in a particular technological environment are abstract under the Mayo test and thereby patent ineligible.
Applicant’s arguments regarding Finjan are not persuasive because the CAFC in that decision did not hold that patent eligible subject matter was claimed under the Mayo test merely by claiming any invention with specificity.
Applicant argues that the required Berkheimer finding was not made. Applicant is incorrect. A Berkheimer finding may be made by
A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements…in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a).
MPEP 2106.07(a)(III), emphasis added.
And the NFAOM identified examples in the Specification in regard to the elements claimed by the Applicant in addition to its abstract idea that contain so little detail in regard to how to make and/or use those elements that they could not be enabled were they not already well-known, routine, and conventional. See NFAOM, page 7.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MICHAEL C GRANT/Primary Examiner, Art Unit 3715