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 .
Response to Amendment
The amendment filed on August 26th, 2025 has been entered.
Claims 1, 4-9, 12-15, and 18-20 remain pending in the application.
Applicant’s claims have overcome each and every objection and 112(b) rejection, with the exception of one, previously set forth in the Non-Final Office Action mailed May 28th, 2025.
Response to Arguments
Applicant's arguments filed August 26th, 2025 have been fully considered but they are not persuasive. Applicant’s representative asserts that the amended claims limitations are not met. However, the rejection of claim 1, 9 and 15 is maintained as presented below.
Applicant’s representative alleges the following:
Regarding amended claim 1 Prong one of Step 2A, the Office Action alleges that the claims are directed to an abstract idea. Applicant respectfully disagrees, and submits that the claimed invention does not fall within one of the enumerated subject matter groupings of abstract ideas included in the 2019 Revised Patent Subject Matter Eligibility Guidance, e.g., the claimed invention is not a mathematical concept, a method of organizing human activity, or a mental process.
Regarding amended claim 1 Prong one of Step 2B, Applicant contends that features recited in the claim go beyond merely generic computer functions, and thus constitute features beyond an abstract idea.
Regarding point (1), the examiner notes that the amended claim is directed to mental processes.
Applicant’s representative argues that that the claim(s) is not an abstract idea, and accordingly, the claims are patent eligible. However, amended claim 1 is mainly directed to an abstract idea. Amended claim 1 recites multiples instances of a mental processes such as “forecasting a complexity of a text corpus, determining a user reading ability, identifying a plurality of complex words, finding vowels, finding patterns, dividing words into syllable parts”. (See office action below).
Regarding point (2), the examiner notes that the claims do not go beyond merely generic computer functions.
Applicant’s representative argues that the features of amended claim 1 go beyond mental steps and further the specificity of the operations recited in claim 1 are beyond conventional and generic, as specific operations for "chunking" are recited. However, the process of chunking is a mental process. Human can and constantly perform chunking of words in their minds. This is a fundamental cognitive process that helps overcome the limited capacity of working memory. Instead of processing each word individually, the brain groups them into larger, meaningful units, or "chunks," to reduce cognitive load and aid understanding. (See office action below).
Regarding claims 9 and 15, since they recite similar features to claim 1, they will also be rejected. Therefore, the rejection is maintained as present below.
Applicant’s representative argues that the dependent claims incorporate all of the limitations of their respective base claims, and are believed allowable as being dependent on an allowable base claim, as well as for the additional subject matter claimed therein. However, in light of the remarks and standing rejection below, the examiner asserts the prior art of record teaches all the elements as claimed and these elements satisfy all structural, functional, and operational limitations currently in the claims. Therefore, the standing rejections are proper and maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 1, 4-9, 12-15, and 18-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites the limitation “visual modifications” in line 5. Since the claim language does not use antecedent basis (e.g. “the” or “said”), it is unclear if applicant is referring to the same ones of “visual modifications” of claim 1 line 2 or a second set of visual modifications. For purposes of examination, it is assumed that “visual modifications” refers to the same ones of “visual modifications” found in claim 1 line 2.
Claim 9 recites the limitation “visual modifications” in line 8. Since the claim language does not use antecedent basis (e.g. “the” or “said”), it is unclear if applicant is referring to the same ones of “visual modifications” of claim 9 line 2 or a second set of visual modifications. For purposes of examination, it is assumed that “visual modifications” refers to the same ones of “visual modifications” found in claim 9 line 2.
Claim 15 recites the limitation “visual modifications” in line 9. Since the claim language does not use antecedent basis (e.g. “the” or “said”), it is unclear if applicant is referring to the same ones of “visual modifications” of claim 15 line 1 or a second set of visual modifications. For purposes of examination, it is assumed that “visual modifications” refers to the same ones of “visual modifications” found in claim 15 line 1.
Claims 4-8, 12-14, and 18-20 objected to as being dependent upon a rejected base claim.
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 1-20 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. The claims are directed to at least one of abstract idea groupings, according to the 2019 Revised Patent Subject Matter Guidelines (Mathematical Concepts, Mental Processes and/or Certain Methods of Organizing Human Activity). Further, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
More specifically, regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a system and/or process, which is are statutory categories of invention.
Step 2A-1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Independent claim 15 recites the following, with the abstract ideas highlighted in bold, including an indication as to the abstract idea grouping(s) to which the indicated limitations belong to, according to the 2019 Revised Patent Subject Matter Guidelines. Independent claims 1 and 9, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
A computer system for providing personalized reading assistance using visual modifications, the system comprising: one or more computer processors, one or more computer-readable storage media, and program instructions stored on the one or more of the computer-readable storage media for execution by at least one of the one or more processors capable of performing a method, the method comprising: forecasting a complexity of a text corpus for a user, wherein the text corpus includes a plurality of words; providing visual modifications to at least some words of the plurality of words in the text corpus based on the forecast complexity of the text corpus for the user; determining a user reading ability of the user, wherein the determined user reading ability is based on at least one of user reading speed, user reading reactions, and user background inputs; identifying a plurality of complex words from among the plurality of words in the text corpus based on the determined reading ability of the user; generating a user dictionary of the identified complex words; generating a complexity matrix for each of the identified complex words, wherein the complexity matrix includes at least one of a difficulty level, a need for chunking, a need for personalized images, and a suffix or prefix; wherein the visual modifications for the identified complex words are based on the complexity matrix; when the complexity matrix indicates a need for the chunking, the chunking including the suffix, the prefix, and a root word; and when the complexity matric indicates a need for syllable division as part of the chunking, the method further includes: finding the vowels in a word of the plurality of words, finding a pattern of consonants and vowels; and dividing the word into syllable parts.
The limitations in claim 15 (as well as claim(s) 1 and 9) recites an abstract idea included in the groupings of mental processes, connected to technology only through application thereof using generic computing elements (e.g., a computer system, a computer program, etc.) and/or insignificant extra-solution activity. According to the 2019 Revised Patent Subject Matter Guidelines:
Mental Processes include concepts performed in the human mind (including an observation, evaluation, judgement, opinion).
Specifically, the instant claims include functions/limitations, as highlighted in the independent claim above, that constitute at least:
D. Concepts performed in the human mind (e.g., “forecasting a complexity of a text corpus, determining a user reading ability, identifying a plurality of complex words, finding vowels, finding a pattern of consonants and vowels, dividing the words into syllable parts”), which is an abstract idea included in the grouping of Mental Processes. These limitations are interpreted as at least Mental Processes insomuch as the claim limitations are directed to performing the concepts in the human mind, while only generically connected to interaction with a computer utilizing non-special purpose generic computing elements and/or insignificant extra-solution activity as set forth in the claims.
Regarding dependent claims 4-8, 12-14, and 18-20:
Each claim is dependent either directly or indirectly from the independent claim identified above and includes all the limitations of said independent claim. Therefore, each dependent claim recites the same abstract idea as identified above. Each of the dependent claim further describes additional aspects of the abstract idea, i.e., additional aspects to the Mental Processes. For example, some dependent claims merely provide additional Mental Processes to be performed and/or additional insignificant extra-solution activity, without anything more significant to establish eligibility under 35 U.S.C. 101.
Step 2A-2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration if the claim limitations are directed to a practical application.
Limitations that are indicative of integration into a practical application:
-Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
-Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
-Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
-Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
-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 - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
-Adding the words “apply it” (or an equivalent) with 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 - see MPEP 2106.05(f)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)
Claims 1-20 clearly do not improve the functioning of a computer, as they only incorporate generic computing elements, do not effect a particular treatment, and do not transform or reduce a particular article to a different state or thing. Similarly, there is no improvement to a technical field. In addition the claims do not apply the judicial exception with, or by use of a particular machine. The claims do not apply or use the judicial exception in a meaningful way. The claimed invention does not suggest improvements to the functioning of a computer or to any other technology or technical field (see MPEP 2106.05 (a)).
This judicial exception is not integrated into a practical application because the claimed invention merely applies the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform the abstract idea (MPEP 2106.05 (f)) and/or generally links the use of the judicial exception to a particular technology or field of use (MPEP 2106.05 (h)). The claimed computer components are recited at a level of generality and are merely invoked as tool to perform the abstract idea. Simply implementing the abstract idea on a generic computer is not a practical application of the abstract idea.
For the reasons as discussed above, the claim limitations are not integrated to a practical application.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole are analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because no element or combination of elements is sufficient to ensure any claim of the present application as a whole amounts to significantly more than one or more judicial exceptions, as described above. For example, the recitations of utilization of “a computer system, a computer program”, etc. used to apply the abstract idea merely implements the abstract idea at a low level of generality and fail to impose meaningful limitations to impart patent-eligibility. These elements and the mere processing of data using these elements do not set forth significantly more than the abstract idea itself applied on general purpose computing devices. The recited generic elements are a mere means to implement the abstract idea. Thus, they cannot provide the “inventive concept” necessary for patent-eligibility. “[I]f a patent’s recitation of a computer amounts to a mere instruction to ‘implement]’ an abstract idea ‘on ... a computer,’... that addition cannot impart patent eligibility.” Alice, 134 S. Ct. at 2358 (quoting Mayo, 132 S. Ct. at 1301). As such, the significantly more required to overcome the 35 U.S.C. 101 hurdle and transform the claimed subject matter into a patent-eligible abstract idea is lacking. Accordingly, the claims are not patent-eligible.
Further, the claims would require structure that is beyond generic, such as structure that can be interpreted analogous to a general-purpose structure and general-purpose computing elements in that they represent well-understood, routine, conventional elements that do not add significantly more to the claims. See Alice Corp. v. CLS Bank International, 134 S. Ct. at 2358-59. The elements of a computer system and computer program are well known conventional devices used to electronically implement forecasting or providing as evidence by Robinson (US 5811322 A). Robinson discloses that it is well known that a computer system can be used for forecasting (prediction; col 3 lines 11-15). See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018).
The dependent claims do not add “significantly more” for at least the same reasons as directed to their respective independent claims, at least based on the position, as discussed above, that each of the dependent claims merely provide additional limitations to further expand the abstract idea of the independent claims, without adding anything which would establish eligibility under 35 U.S.C. 101.
Consequently, consideration of each and every element of each and every claim, both individually and as an ordered combination, leads to the conclusion that the claims are not patent-eligible under 35 USC §101.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 JOSE ANGELES whose telephone number is (703)756-5338. The examiner can normally be reached Mon-Fri 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Dmitry Suhol can be reached at (571) 272-4430. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JOSE ANGELES/Examiner, Art Unit 3715
/DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715
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