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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 February 12, 2026 has been entered.
Status of Claims
This office action is in response to arguments and amendments entered on February 12, 2026 for the patent application 17/339,893 originally filed on June 4, 2021. Claims 1, 7, 13, 17 and 19 are amended. Claims 4, 5, 15 and 16 are cancelled. Claims 1-3, 6-14 and 17-21 are pending. The first office action of March 29, 2024; the second office action of July 31, 2024; the third office action of November 7, 2024; the fourth office action of February 28, 2025; the fifth office action of February 28, 2025; and the sixth office action of September 12, 2025 are fully incorporated by reference into this Non-Final 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 1-3, 6-14 and 17-21 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.
Step 1 – “Statutory Category Identification”
Claims 1 and 19 are directed to “a method” (i.e. a process), and claim 13 is directed to “a non-transitory computer storage product” (i.e. a machine), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 1 “Abstract Idea Identification”
However, the claims are drawn to an abstract idea of “a moderated user experience study,” in the form of “certain methods of organizing human activity,” in terms of managing personal behavior or relationships or interactions between people (including social activities, teaching and following rules or instructions), or reasonably in the form of “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion). Regardless, the claims are reasonably understood as either “certain methods of organizing human activity” or “mental processes,” which require the following limitations:
Per claim 1
“identifying at least one participant;
scheduling the at least one participant for an available study time;
testing a participant system to determine eligibility, wherein the testing includes determining a bit stream is above a set threshold;
selecting an eligible participant to join the moderated user experience study, wherein the moderated user experience study is conducted in a plurality of sessions;
sharing a screen of the eligible participant;
storing demographic information for the eligible participant;
injecting a virtual tracking code into the participant system belonging to the eligible participant wherein the virtual tracking code inserts into a browser being utilized by the eligible participant for the moderated user experience study, wherein a runtime processor in the participant's system executes the virtual tracking code to generate information regarding participant's activities on a downloaded web page including computer connection speed, and exact mouse movements;
presenting a task to the eligible participant along with interjections;
recording the eligible participant as the task is performed, wherein the recording includes saving a clickstream for the eligible participant;
displaying a thumbnail video capture of the eligible participant over the screen as the task is being performed;
embedding the thumbnail video capture into the screen to generate an aggregate data stream; and
feeding the clickstream, the demographic information, the aggregate data stream, and the task to a dedicated analytics server wherein the dedicated analytics server includes a recursive neural network to generate insights, wherein the insights identify trends in the clickstream that result in a decreased user experience.”
Per claim 13
“identifying at least one participant;
scheduling the at least one participant for an available study time;
testing a participant system to determine eligibility, wherein the testing includes determining a bit stream is above a set threshold;
selecting an eligible participant to join the moderated user experience study, wherein the moderated user experience study is conducted in a plurality of sessions;
sharing a screen of the eligible participant;
storing demographic information for the eligible participant;
injecting a virtual tracking code into the participant system belonging to the eligible participant wherein the virtual tracking code inserts into a browser being utilized by the eligible participant for the moderated user experience study, wherein a runtime processor in the participant's system executes the virtual tracking code to generate information regarding participant's activities on a downloaded web page including computer connection speed, and exact mouse movements;
presenting a task to the eligible participant along with interjections;
recording the eligible participant as the task is performed, wherein the recording includes saving a clickstream for the eligible participant;
displaying a thumbnail video capture of the eligible participant over the screen as the task is being performed;
embedding the thumbnail video capture into the screen to generate an aggregate data stream; and
feeding the clickstream, the demographic information, the aggregate data stream, and the task to a dedicated analytics server wherein the dedicated analytics server includes a recursive neural network to generate insights, wherein the insights identify trends in the clickstream that result in a decreased user experience.”
Per claim 19
“identifying at least one participant who communicates in a first language;
testing to determine eligibility, wherein the testing includes determining a bit stream is above a set threshold;
sharing a screen of the at least one participant;
storing demographic information for the eligible participant;
injecting a virtual tracking code into the participant system belonging to the at least one participant, wherein the virtual tracking code inserts into a browser being utilized by the at least one participant for the moderated user experience study, wherein a runtime processor in the participant's system executes the virtual tracking code to generate information regarding participant's activities on a downloaded web page;
presenting a task to the at least one participant;
recording the at least one participant, wherein the recording includes saving a clickstream for the eligible participant;
displaying a thumbnail video capture of the eligible participant over the screen as the task is being performed;
embedding the thumbnail video capture into the screen to generate an aggregate data stream;
feeding the clickstream, the demographic information, the aggregate data stream, and the task to a dedicated analytics server which is purpose built for analytics, wherein the dedicated analytics server includes a recursive neural network to generate insights, wherein the insights identify trends in the clickstream that result in a decreased user experience;
translating, in real time, communication from the at least one participant from the first language to the second language utilizing a machine language translation service; and
enabling interjections in the second language, which are translated in real time to the first language.”
These limitations simply describe a process of data gathering and manipulation, which is partially analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 2 – “Practical Application”
Furthermore, the applicants claimed elements of “a backend server,” “a database,” “a runtime processor,” “a downloaded web page,” and “a dedicated analytics server,” are merely claimed to generally link the use of a judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) to (1) a particular technological environment or (2) field of use, per MPEP §2106.05(h); and are applying the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, per MPEP §2106.05(f). In other words, the claimed “moderated user experience study,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Step 2B – “Significantly More”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “a backend server,” “a database,” “a runtime processor,” “a downloaded web page,” and “a dedicated analytics server,” are claimed, these are generic, well-known, and conventional data gather computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these 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), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the Applicant’s claimed “backend server,” is provided, but not specifically described in the written description of the specification as originally filed. Although a plurality of “servers” are described, it is unclear which one is the claimed “backend server.” This element is reasonably interpreted as a generic computer performing the most basic of computer functions of receiving, processing and storing data, since no details of anything beyond ubiquitous standard equipment is provided.
Also, the Applicant’s claimed “a database,” is provided, but not specifically described in the written description of the specification as originally filed. Although a plurality of “databases” are described, it is unclear which one is the claimed “database.” This element is reasonably interpreted as a generic computer component performing the most basic of computer functions of storing data, since no details of anything beyond ubiquitous standard equipment is provided.
Further, the Applicant’s claimed “a runtime processor,” is described in para. [0047] as follows:
“[0047] Data processing unit 120 includes a browser 122 that enables a user (e.g., usability test participant) using the data processing unit 120 to access target web site 110. Data processing unit 120 includes, in part, an input device such as a keyboard 125 or a mouse 126, and a participant browser 122.” This element is reasonably interpreted as a generic computer with generic computer components, which provides no details of anything beyond ubiquitous standard off-the-shelf equipment.
Likewise, the Applicant’s claimed “a downloaded web page,” is described in para. [0042] as follows:
“[0042] The present invention relates to enhancements to traditional user experience testing and subsequent insight generation. While such systems and methods may be utilized with any user experience environment, embodiments described in greater detail herein are directed to providing insights into user experiences in an online/webpage environment”
This merely describes typical functionality one would expect from an online interface, with no advancement in technology.
Continuing, the Applicant’s claimed “a dedicated analytics server,” is described in paras. [0062], and [0148] as follows:
“[0062] In an embodiment, analytics module 280 is running on a dedicated analytics server that offloads data processing tasks from traditional servers. Analytics server 280 is purpose-built for analytics and reporting and can run queries from client 171 and/or user experience researcher 181 much faster (e.g., 100 times faster) than conventional server system, regardless of the number of clients making queries or the complexity of queries.”
“[0148] The machine may be a server computer, a client computer, a virtual machine, a personal computer (PC), a tablet PC, a laptop computer, a set-top box (STB), a personal digital assistant (PDA), a cellular telephone, an iPhone, a Blackberry, a processor, a telephone, a web appliance, a network router, switch or bridge, or any machine capable of executing a set of instructions (sequential or otherwise) that specify actions to be taken by that machine.” This element is reasonably interpreted as a generic networking computer with generic computer components performing a limited number of tasks. Any sort of technical advancement, other than limiting the quantity of tasks to process (i.e. “dedicated”), is unclear. No details of anything beyond ubiquitous standard off-the-shelf equipment is provided.
As such, the claimed limitations of “a backend server,” “a database,” “a runtime processor,” “a downloaded web page,” and “a dedicated analytics server,” are reasonably understood as ubiquitous standard equipment and are not providing anything significantly more. Therefore, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-12, 14-18 and 20-21 also do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-12, 14-18 and 20-21 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1, 13 or 19. Therefore, claims 1-21 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Response to Arguments
The Applicant’s arguments filed on February 12, 2026 related to claims 1-3, 6-14 and 17-21 are fully considered, but are not persuasive.
Rejection Under 35 USC § 101
Under Step 2A, Prong 2, Amended Claim 1 is Not Directed to an Abstract Idea Because It Includes Additional Elements that Produce a Practical Application that Provides an Improvement to a Technology
The Applicant respectfully argues “While the Examiner maintains that the claims recite an abstract idea, Applicant respectfully submits that the following "additional element' integrates the abstract idea into a practical application that improves a technology:
displaying a thumbnail video capture of the eligible participant over the screen as the task is being performed;
embedding the thumbnail video capture into the screen to generate an aggregate data stream;
The specification explains that a video file with an aggregate data stream can be transmitted at lower bandwidth requirements as compared to separate video streams. Persons having ordinary skill in the art will appreciate, based on the evidence in the specification of lower bandwidth, that the additional "displaying a thumbnail video capture" and "embedding" integrate the alleged abstract idea in claim 1 into a practical application that improves the functioning of a computer. Thus, these additional elements meaningfully limit amended claim 1 by going beyond generally linking the use of the judicial exception to a particular technological environment and thus transform the claim into patent-eligible subject matter.”The Examiner respectfully disagrees. The Applicant’s argument is misguided as to the proper analysis of a “Practical Application” as required under Step 2A, Prong 2. Specifically, the Applicant’s argument appears to describe claimed utility, which is not the test. Instead, the Applicant’s claims are not considered a “Practical Application,” because the claims do not provide any of the following:
An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
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Furthermore, there are also several factors that reasonably explain that the Applicant’s claims are not indicative of integration into a practical application, which include:
Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
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Here, the Applicant’s claims are not providing any technological advancement as described in the first five bulleted factors and, as described above in the rejection, the Applicant’s claims are merely claimed to use a computer as a tool to perform an abstract idea and to generally link the use of a judicial exception to a particular technological environment or field of use. As such, the argument is not persuasive.
The Applicant respectfully argues “Therefore, Applicant respectfully submits that amended independent claim 1 is directed to patent-eligible subject matter, and that dependent claims 2-4, and 7-12, which depend from amended claim 1, are patent-eligible for at least the reasons set forth for amended claim 1.
Applicant respectfully submits that independent claims 13 and 19 are directed to patent-eligible subject matter for at least the reasons set forth for amended claim 1, and that dependent claims 14, 17, 18, which depend from claim 13, and dependent claims 20 and 21, which depend from claim 19, are patent-eligible for at least the reasons as the claims from which they depend.
The Examiner respectfully disagrees, for the reasons stated here and above. Therefore, the rejection of claims 1-3, 6-14 and 17-21 under 35 U.S.C. §101 is not withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT P. BULLINGTON whose telephone number is (313) 446-4841. The examiner can normally be reached on Monday through Friday from 8 A.M. to 4 P.M. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Peter Vasat, can be reached on (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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/Robert P Bullington, Esq./ Primary Examiner, Art Unit 3715