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 07/17/2025 has been entered. Claims 1-20 remain pending in the application. Applicant’s amendments to the specification, and claims have overcome each and every objection, but not every 112(b) rejection previously set forth in the Non-Final Office Action mailed 05/09/2025.
Response to Arguments
Applicant's arguments filed 07/17/2025 have been fully considered but they are not persuasive. Applicant’s representative asserts that the amended claims limitations are not met. However, the rejections of claim 1-20 are maintained as presented below. Moreover, in light of the amendments to the claims, new rejection(s) under 35 U.S.C. 112(b) and 103 have been presented, as discussed in detail below.
Applicant’s representative alleges the following:
Regarding rejection under 35 U.S.C. 101, claim 1 is patentable because it includes an improvement of a conventional form processing technique used by a computer and thus the functionality of a computer can be improved by adopting such form processing technique.
Regarding rejection under 35 U.S.C. 101, claim 1 is patentable because the claimed invention includes inventive concepts that are not routine and conventional and includes functions not reasonably performed by humans such as performing OCR on the answer sheet and performing image processing on the symbol to locate the question associated with the symbol.
Regarding rejection under 35 U.S.C. 103, none of the cited references disclose extracting a symbol which is the answer to the question as the recognition result, extracting a question number corresponding to the symbol, and presenting teaching material information from teaching materials stored in advance in accordance with the question number.
Regarding point (1), the examiner notes that acquiring image data or performing OCR are well-known processes performed by a computer.
Applicant’s representative argues that there is an improvement of a conventional processing technique and quotes “OCR is applied to recognize image data” or “image data being obtained through scanning”. However, these are all well-known and foundational in the capabilities of a computer.
Regarding point (2), the examiner notes that these inventive concepts are routine and conventional.
Applicant’s representative argues that humans cannot perform these functions such as OCR or image processing on the symbol to locate the question associated with the symbol. However, humans can read, scan a document, and locate symbols of a sheet of paper. These are all mental processes that are being implemented by well-known and conventional computers for better efficiency and accuracy.
Regarding point (3), the examiner notes that the cited prior art discloses those limitations.
Applicant’s representative argues that both references do not teach the claimed limitations. However, in regards to extracting a symbol which is the answer to the question as the recognition result, scanning and extracting numbers, symbols, or characters is a primary function of OCR. In regards to extracting a question number corresponding to the symbol, this is still a primary function of OCR. In regards to presenting teaching material information from teaching materials stored in advance in accordance with the question number, the combination of both references meets the limitations.
Applicant’s representative argues that since claims 1, 19, and 20 contain newly introduced limitations not disclosed by the currently cited prior art references, then claims 1-20 as currently amended overcome the current grounds of rejection. 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.
Claims 1-18 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 “the image” in line 4. It is unclear if applicant is referring to the same ones of “an image data” of claim 1 line 3 or a different image. For purposes of examination, it is assumed that “the image” refers to the same ones of “an image data” found in line 3.
Claim 6 recites the limitation “a base point” in line 6 (previously rejected). 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 “a base point” of claim 4 from which claim 6 depends or a second base point. For purposes of examination, it is assumed that “a base point” refers to the same ones of “a base point” found in claim 4.
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 1 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 19 and 20, having substantially similar features, were also analyzed and to which the following conclusion is also applicable:
An information processing apparatus comprising: a processor configured to: acquire an image data of an answer sheet; perform an optical character recognition (OCR) of the image to acquire a recognition result of an answer to a question, the answer having been scored; extract a symbol which is the answer to the question as the recognition result; extract a question number corresponding to the symbol; and present teaching material information from teaching materials stored in advance in accordance with the question number.
The limitations in claim 1 (as well as claims 19 and 20) 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 processor, 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., “acquire an image data, perform an optical character recognition (OCR), acquire a recognition result”), 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 2-17:
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 processor”, 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. A processor is a well known conventional device used to electronically implement recognizing data as evidence by CHOI et al. (US 20190066158 A1; hereinafter Choi). Choi discloses in paragraph 0147 that a conventional processor comprises a recognizing data selector to be used in detection of data by the processor. 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.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Saito Teruka (JP2008003740A, see translation; hereinafter Saito) in view of SAKAIDA MASAYA (JP2010175699A, see translation; hereinafter Sakaida).
Regarding claim 1, Saito discloses An information processing apparatus comprising: a processor (use of a processor is inherent to a computer; 0020) configured to: acquire an image data of an answer sheet (OCR acquires image data; 0068); perform an optical character recognition (OCR) of the image (0068) to acquire a recognition result an answer to a question (paper test, practice sheet or the like; 0026), the answer having been scored (score field 83; 0027); extract a symbol which is the answer to the question as the recognition result (0035); extract a question number corresponding to the symbol (teaching material stored as question number means the OCR must extract the question number to map them; 0040); and teaching material information from teaching materials stored in advance (0031) in accordance with the question number (0040). Saito does not explicitly disclose presenting this teaching material information, but examiner notes that Saito does disclose the educational material on the answer sheet can be stored in a predetermined database in advance.
However, Sakaida teaches presenting teaching material information from (present teaching materials to students; 0017).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Saito to implement the teachings of Sakaida for the benefit of aiding students with teaching content they are incorrect or uncertain of. Sakaida teaches a learning support system that can be used with student answer information received, like the information received in an answer sheet.
Regarding claim 2, Saito discloses the relation of a question to which the symbol is located next to the recognition result (the recognition result from OCR will inherently contain the symbols, characters, and numbers next to each other). But Saito does not disclose presenting that teaching material information.
However, Sakaida teaches wherein the processor is further configured to: present the teaching material information related to a question (presenting teaching material; 0031).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Saito to implement the teachings of Sakaida for the benefit of presenting the teaching material related to the questions where students are incorrect or uncertain of the answer.
Regarding claim 3, Saito discloses a word contained in a question sentence of the question which the symbol is located next to (Fig 1B). But Saito does not explicitly disclose selecting and presenting the teaching material information corresponding to a sentence of the question.
However, Sakaida teaches selecting and presenting the teaching material information corresponding to a sentence of the question (presenting teaching material from the test question and a question has words in it; 0031).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Saito to implement the teachings of Sakaida for the benefit of presenting the teaching material related to the questions where students are incorrect or uncertain of the answer.
Regarding claim 4, Saito discloses wherein the processor is further configured to: when the answer sheet contains the question sentence of the question (question sentence 82; 0025), extract the word from the question sentence of the question (storing a character portion is implied by storing the data because you need to extract the data to store it; 0040) located in a predetermined direction with the symbol as a base point (the position of the questions, answers, and symbols are already predetermined if the answer sheet is a paper sheet as mentioned before in 0026 or shown in Fig 1. We can figure out the exact location of the symbol through coordinate analysis; 0084 and 0088).
Regarding claim 5, Saito discloses wherein the processor is further configured to: when the answer sheet does not contain the sentence of the question (question may not be described; 0026), extract an identifier for identifying the question located in a predetermined direction (the identifier would be the question number used to identify the question; Fig 1b) with the symbol as a base point (shows symbols for each question; Fig 1b). Saito does not explicitly disclose presenting the teaching material information related to the question indicated by the identifier.
However, Sakaida teaches present the teaching material information related to the question indicated by the identifier (present teaching materials to students in 0017 related to the question identifier 0031).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Saito to implement the teachings of Sakaida for the benefit of presenting the teaching material related to the questions where students are incorrect or uncertain of the answer.
Regarding claim 6, Saito discloses wherein the processor is further configured to: when the answer sheet does not contain the sentence of the question (question may not be described; 0026), extract an identifier for identifying the question located in the predetermined direction with the symbol as a base point (the identifier would be the question number used to identify the question; Fig 1b). Saito does not explicitly disclose presenting the teaching material information related to the question indicated by the identifier.
However, Sakaida teaches presenting the teaching material information related to the question indicated by the identifier (present teaching materials to students in 0017 related to the question identifier 0031).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Saito to implement the teachings of Sakaida for the benefit of presenting the teaching material related to the questions where students are incorrect or uncertain of the answer.
Regarding claims 7-11, Saito discloses wherein the symbol indicates at least one of a wrong answer or correctness of an answer is uncertain for the question (Symbol on the question; Fig 1b and 0035).
Regarding claims 12-16, Saito discloses wherein the processor is further configured to: when the symbol is attached in the recognition result (wrong answer in 0035 and performing recognition processing on the marking symbol 87 0044). Saito does not explicitly disclose presenting teaching material information corresponding to the question.
However, Sakaida teaches presenting teaching material information corresponding to the question (present teaching materials to students in 0017 related to the correct and incorrect answers 0015).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Saito to implement the teachings of Sakaida for the benefit of presenting the teaching material related to the questions where students are incorrect or uncertain of the answer.
Regarding claim 17, Saito discloses wherein the processor is further configured to: further extract a word indicating a subject contained in the answer sheet from the recognition result (subject is part of the test sheet. It is implied to be part of the process; 0028). Saito does not explicitly disclose selecting and presenting the teaching material information corresponding to the word.
However, Sakaida teaches selecting and presenting the teaching material information corresponding to the word (present teaching materials to students based on the questions and identifier in 0031 however, the specification of the present invention does not present any clear benefits from using question data or the subject data to present teaching material information).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Saito to implement the teachings of Sakaida for the benefit of presenting the teaching material related to the questions where students are incorrect or uncertain of the answer.
Regarding claim 18, Saito discloses wherein the processor is further configured to: further extract a word indicating a subject contained in the answer sheet from the recognition result (subject is part of the test sheet. It is implied to be part of the process; 0028). But Saito does not explicitly disclose selecting and presenting the teaching material information corresponding to the word.
However, Sakaida teaches selecting and presenting the teaching material information corresponding to the word (present teaching materials to students based on the questions and identifier in 0031 however, the specification of the present invention does not present any clear benefits from using question data or the subject data to present teaching material information).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Saito to implement the teachings of Sakaida for the benefit of presenting the teaching material related to the questions where students are incorrect or uncertain of the answer.
Regarding claim 19, Saito discloses a non-transitory computer readable medium storing an information processing program (0283) causing a processor of a computer to execute functions comprising: acquiring an image data of an answer sheet (OCR acquires image data; 0068); performing an optical character recognition (OCR) of the image data (0068) to acquire a recognition result an answer to a question (paper test, practice sheet or the like; 0026), the answer having has been scored (score field 83; 0027); extracting a symbol which is the answer to the question as the recognition result (0035); extracting a question number corresponding to the symbol (teaching material stored as question number means the OCR must extract the question number to map them; 0040); and teaching material information from teaching materials stored in advance (0031) in accordance with the question number (0040). Saito does not explicitly disclose presenting teaching material information from teaching materials stored in advance in accordance with the question number.
However, Sakaida teaches presenting teaching material information from teaching materials stored in advance in accordance with the question number (present teaching materials to students; 0017).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Saito to implement the teachings of Sakaida for the benefit of aiding students with teaching content they are incorrect or uncertain of. Sakaida teaches a learning support system that can be used with student answer information received, like the information received in an answer sheet.
Regarding claim 20, Saito discloses an information processing method executed by a processor (0283) of an information processing apparatus, the method comprising: acquire an image data of an answer sheet (OCR acquires image data; 0068); performing an optical character recognition (OCR) of the image data (0068) to acquire a recognition result an answer to a question (paper test, practice sheet or the like; 0026), the answer having been scored (score field 83; 0027); extract a symbol which is the answer to the question as the recognition result (0035); extract a question number corresponding to the symbol (with OCR extracting numbers, characters, or symbols is inherent because this is the purpose of OCR); and teaching material information from teaching materials stored in advance (0031) in accordance with the question number (0040). Saito does not explicitly disclose presenting teaching material information from teaching materials stored in advance in accordance with the question number.
However, Sakaida teaches presenting teaching material information from teaching materials stored in advance in accordance with the question number (present teaching materials to students; 0017).
Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have modified Saito to implement the teachings of Sakaida for the benefit of aiding students with teaching content they are incorrect or uncertain of. Sakaida teaches a learning support system that can be used with student answer information received, like the information received in an answer sheet.
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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
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