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 .
Introduction
The following is a non-final Office action in response to Applicant’s RCE submission filed on 12/10/2025. Currently claims 25-29 are pending and claim 25 is independent. From the previous claim set (dated 5/27/2025), Applicant rewrote claims 17-24 as claims 25-29 and subsequently cancelled claims 17-24. Within this, independent claim 25 was amended relative to the 5/27/2025 claim 17. Claims 9-16 remain withdrawn. No other claims were added or cancelled.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/10/2025 has been entered.
Priority to provisional application 63/103,701 filed 8/19/2020 is acknowledged.
Response to Amendments
Applicant’s amendments are acknowledged and necessitated the new grounds of rejection in this Office Action.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
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 25-29 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), specifically an abstract idea, without significantly more. With respect to claims 25-29, following the guidance laid out in MPEP 2106, the inquiry for patent eligibility follows two steps: Step 1: Does the claimed invention fall within one of the four statutory categories of invention? Step 2A (Prong 1): Is the claim “directed to” an abstract idea? Step 2A (Prong 2): Is the claim integrated into a practical application? Step 2B: Does the claim recite additional elements that amount to “significantly more” than the abstract idea?
In accordance with these steps, the Examiner finds the following:
Step 1: Claim 25 and its dependent claims (claims 26-29) are directed to a statutory category, namely a method.
Step 2A (Prong 1): Claim 17 is directed to the abstract idea of “Mental processes”, or more particularly, “Concepts performed in the human mind (including an observation, evaluation, judgement, opinion) (See MPEP 2106).” In this application that refers to using a computer system to evaluate and determine someone’s implicit/unconscious biases. To clarify this further, the Applicant’s disclosed invention is a conceptual system meant to perform the same function that a psychologist or HR manager might perform. The abstract elements of claim 25 recites in part “Develop bias profile…Download statement…Select response…Generate bias profile statement score, object statement score, dimension statement score…Provide comments…Trigger action…Trigger text response…Generate confidence descriptor…Generate second level data value…Compare elements…Display results…”. Dependent claims 27-29 add to the abstract idea the following limitations which recite in part “Numeric value includes being an importance numeric value…Ranges include defined ranges…”. All of these additional limitations, however, only serve to further limit the abstract idea, and hence are nonetheless directed towards fundamentally the same abstract idea as independent claims 25. Dependent claim 26 does not include any limitations that are directed toward the abstract idea and will be addresses in the Step 2A (Prong 2) and Step 2B analysis below.
Step 2A (Prong 2): Independent claim 25 does not contain additional elements that effectively integrate the exception into a practical application of the exception. These claims do include the limitation that recites in part “Computer based system…Display means…Electronic storage means…” which limits the claims to a networked/computer based environment, but this is insufficient with respect to integration into a practical application because it is merely applying the abstract idea to a general computer (See MPEP 2106.05(f)).
Dependent claim 26 includes the additional element “computer-based hardware and software storage systems” which only further limits “Electronic storage means…” and continues to be insufficient with respect to integration into a practical application because it is again merely applying the abstract idea to a general computer (See MPEP 2106.05(f)).
Additionally, dependent claims 27-29 do not include any additional elements to conduct a further Step 2A (Prong 2) analysis.
Step 2B: Independent claims 25 includes additional elements, when considered both individually and as an ordered combination, which are insufficient to amount to significantly more than the judicial exception. The additional elements of these claims recite in part “Computer based system…Display means…Electronic storage means…”. These items are not significantly more because these are merely the software and/or hardware components used to implement the abstract idea (evaluate and determine someone’s implicit/unconscious biases) on a general purpose computer (See MPEP 2106.05(f)). This is exemplified in the Applicant’s specification in [0140] – “Although the embodiments, or portions thereof, are not limited in this respect, the embodiments, or portions thereof, may be implemented with memory devices in microcontrollers, general purpose microprocessors, digital signal processors (DSPs), reduced instruction-set computing (RISC), and complex instruction-set computing (CISC), among other electronic components.”
Dependent claim 26 includes the additional element “computer-based hardware and software storage systems” which only further limits “Electronic storage means…” and continues to be not significantly more because this is again merely the software and/or hardware components used to implement the abstract idea (evaluate and determine someone’s implicit/unconscious biases) on a general purpose computer (See MPEP 2106.05(f)).
Additionally, dependent claims 27-29 do not include any additional elements to conduct a further 2B analysis.
Accordingly, whether taken individually or as an ordered combination claims 25-29 are rejected under 35 USC § 101 because the claimed invention is directed to a judicial exception, an abstract idea, without significantly more.
Response to Arguments
Applicant's arguments filed 12/10/2025 have been fully considered but they are not persuasive and/or are moot in light of the new rejections addressed above.
Regarding the arguments related to the 35 USC § 101 rejections, as addressed above according to the guidance included within MPEP 2106 for 35 USC § 101 rejections, the Examiner maintains that the claimed invention is an abstract idea, without significantly more, and not integrated into a practical application.
Applicant first argues that the claims are patent eligible because the specific steps of determining a bias are a novel approach to such an evaluation. Examiner does not find this persuasive because the specific steps do not fundamentally change the overall scope of the invention where it is attempting to determine the bias of an individual. Examiner interprets the overall scope of the claim as a method of evaluating someone’s biases and that falls into the “mental processes” bucket.
Examiner will note, however, that clarifying what “triggered automated action” entails is a potential route to overcoming the 101 rejection. If the claims are clear that the system is automatically performing some functionality, that potentially overcomes the 101 rejection within the Step 2A (Prong 1) analysis. Within the specification [0079] “Trigger actions” includes “change or add decision and/or Bias profiles, make a call to appropriate authorities to report dangerous potentialities, or to flag a target's profile…” Automatically calling authorities is potentially enough functionality to overcome the 101 rejection, but the other 2 are insufficient. The other 2 are effectively displaying the results of a bias analysis.
Additionally, “triggering a text response” is also interpreted as simply displaying the results of a bias analysis.
The applicant next argues that the limitations overcome the 101 rejection within the Step 2A (Prong 2) analysis because of the changes to the preamble. Examiner does not find this persuasive because as identified above, the additional elements (including items within the preamble) limit the claims to a networked/computer based environment, but this is insufficient with respect to integration into a practical application because it is merely applying the abstract idea to a general computer (See MPEP 2106.05(f)).
Finally, regarding the 2B analysis, as addressed above, the additional items are not significantly more because these are merely the software and/or hardware components used to implement the abstract idea (evaluate and determine someone’s implicit/unconscious biases) on a general purpose computer (See MPEP 2106.05(f)).
Previously withdrawn 35 U.S.C. 103 rejections remain withdrawn because none of the prior art of record, taken individually or in combination, teach the claimed invention as detailed in independent claim 17, wherein the novelty of the claimed invention is in the combination of limitations and not in any single limitation. Specifically, none of the prior art discloses a bias assessment methodology which uses responses to nested, decision dimension statements in order to generate a confidence score from the combination of importance scores, target scores, dimension scores, and object score and then uses the confidence score in order to trigger actions.
The closest prior art includes:
Browne et al. (WO 2013036594 A1)
Gaur et al. (US 20180341637 A1)
Oberlechner (US 20160225087 A1)
Ellis (US 20160086091 A1)
Adjali et al. (US 20070117072 A1)
Ahmed (WO 0150330 A1)
and
Z. Yanbo, "Implicit Bias or Explicit Bias: An Analysis Based on Natural Language Processing," 2020 International Conference on Computing and Data Science (CDS), Stanford, CA, USA, 2020, pp. 52-55, doi: 10.1109/CDS49703.2020.00018. [online], [retrieved on 2025-02-18]. Retrieved from the Internet <https://ieeexplore.ieee.org/document/9275952?source=IQplus>
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Michael R Koester whose telephone number is (313)446-4837. The examiner can normally be reached Monday thru Friday 8:00AM-5:00 PM EST.
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/MICHAEL R KOESTER/Examiner, Art Unit 3624
/Jerry O'Connor/Supervisory Patent Examiner,Group Art Unit 3624