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 8/26/26 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, 12-18, and 19-26 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, 12-18, and 19-26 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 […] by combining [an] image and a set of user edits to said […] image into a set of frames displayed in succession, each frame introduced by [data] specifying a time delay to generate the animated […] 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, employing a GCE, 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 browser extensions or a JavaScript file, 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, employing a GCE, 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 browser extensions or a JavaScript file, 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 PGPUB; see, e.g., p34 in regard to employing a GCE; see, e.g., p25 in regard to employing browser extensions or a JavaScript file; and also see, e.g., p28 in regard to employing machine learning.
Response to Arguments
Applicant argues that the rejection made under 35 USC 101 is not prima facie because the rejection replaces limitations regarding elements that were claimed in addition to the abstract idea with “generic bracketed catchphrases” in their place. Applicant’s argument is not persuasive because to the extent that limitations regarding elements that were claimed in addition to the abstract idea are replaced that has been done with words that are demonstrative of how Applicant’s claimed abstract idea may be performed by human beings mentally.
Applicant argues on page 10 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive because all of the limitations not identified as being part of the abstract idea in the 101 rejection made supra are addressed in the “practical application” and “significantly more” portions of the rejection. That includes employing GIF’s, employing a server, etc.
Applicant argues on page 11 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive. Applicant’s PGPUB provides only one sentence in regard to how to employ GCE: “In one example embodiment, animated GIF file can comprise a number of frames that are displayed in succession, each introduced by its own Graphics Control Extension (GCE), which gives the time delay to wait after the frame is drawn. Global information at the start of the file applies by default to all frames”, paragraph 34. Therefore, to the extent that Applicant claims employing GCE in addition to its abstract idea, this paucity of disclosure in Applicant’s specification in regard to how to make and/or use GCE indicates that it must have been well-understood, routine, and conventional at the time of filing and thereby does not constitute “significantly more” that Applicant’s abstract idea. This likewise makes Applicant’s invention in regard to employing GCE not analogous to that of McRO. In terms of, in McRO the CAFC held that the subject matter was patent eligible because it was directed to employing a novel and detailed set of morph rules to provide the computer animation of human facial movements. Applicant does not claim or disclose anything novel or detailed in regard to employing GCE. To the contrary, Applicant’s claimed limitations in regard to employing GCE are similar to claims held by the CAFC that were directed to other off the shelf software techniques that the Court held were not patent eligible. See, e.g., the CAFC’s decisions in Cxloyalty v. Maritz Holdings (GUI, API, database) and Enco Systems v Davincia (non-precedential, text-to-speech).
Applicant further argues on page 11 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive because the limitations in question (“GCE”, “chatbot”, “uploading”, “server”, “API”) are not identified in the 101 rejection made supra as being part of the abstract idea alleged to be able be performed as a mental process. Applicant’s similar arguments on page 12 of its Remarks are, likewise, unpersuasive for the same reason.
Applicant argues in regard to “practical application” that its claimed invention is analogous to that of Core Wireless. Applicant’s argument is not persuasive because Applicant’s invention is in regard to providing educational content to a human being and does not concern a specific way of arranging icons on a GUI to maximize the utility of small mobile device display. Applicant’s further arguments in this regard regarding GCE are addressed by the responses to same already made supra.
Applicant argues that its invention requires a particular machine and/or transformation of matter. Applicant’s argument is not persuasive because Applicant’s embodiment of its abstract idea by employing generic computing devices and software techniques qualifies as neither a particular machine and/or the transformation of a particular article:
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Ultramercial, slip. op., pages 12-13.
Applicant’s further arguments in this regard regarding Example 37 and GCE are addressed by the responses to same already made supra. Applicant further argues on page 17 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive. A Berkheimer finding may be made with
(A) 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). A finding that an element is well-understood, routine, or conventional cannot be based only on the fact that the specification is silent with respect to describing such element.
MPEP 2106.07(a)(III).
In this vein, the 101 rejection made supra cites to individual figures and paragraphs in Applicant’s PGPUB in regard to the elements that Applicant claims in addition to its abstract idea that these elements must have been well-understood, routine, and conventional at the time of filing otherwise such limited disclosures would not have been enabling. Applicant all but admits as much when it argues that its disclosures in its specification “incorporate[e] the common knowledge of persons of skill in the art.”
Applicant further argues on page 18 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive because the majority of the limitations that Applicant references here are identified in the 101 rejection made supra as being part of the alleged abstract idea, for which there is no requirement that the Examiner provides evidence that such a feature is well-understood, routine, and conventional. Evidence is provided, however, in the rejection that the use of GCE is well-understood, routine, and conventional. Namely, the only one sentence disclosure in Applicant’s PGPUB in regard to how to use this feature.
Applicant further argues on page 19 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s argument is not persuasive because numerous of the limitations referenced here are identified in the 101 rejection made supra as being part of the alleged abstract idea. And there is only the requirement to consider as an “ordered combination” the elements claimed in addition to the abstract idea. See MPEP 2106.05(d)(I)(2): “A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity. Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed. Cir. 2018)”, emphasis original.
In regard to Applicant’s arguments regarding employing “machine learning”, Applicant’s PGPUB provides only the following in regard to how to use ML to “match the learning user with animated GIF’s”: “Animated GIF management server can utilize machine learning techniques (e.g. artificial neural networks, etc.) to perform various analysis functions…The analysis can be used to match users with animated GIFs and/or otherwise optimize the user experience” (p28). Given the absolute absence of any detail as to how the claimed ML would actually do this, such a function must have been well-understood, routine, and conventional at the time of filing and, thereby, does not constitute “significantly more” than Applicant’s abstract idea. Applicant’s claimed limitations in regard to employing ML are not analogous to either of the 101 Examples cited from the Office because Applicant does not claim or disclose any commensurate level of detail in regard to how the ML actually does the matching as compared to the Examples.
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.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
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