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 .
Response to Arguments
The previous objections to the claims are withdrawn or moot in light of the amendments to the claims, filed 11/17/25. However, new objections to the claims have been presented in light of the amendments, as discussed in detail below.
The previous rejections under 35 U.S.C. 112(b) are moot in light of the amendments to the claims, filed 11/17/25. However, new objections under 35 U.S.C. 112 have been presented in light of the amendments, as discussed in detail below.
Applicant’s arguments with respect to the rejections of the claims under 35 U.S.C. 101 have been fully considered but are not persuasive.
Applicant argues that the amended independent claims recite accessing specific “model data” and, based on “target performance level”, perform complex computations that would be impractical for a human to execute mentally and/or with pen and paper in order to determine a “threshold proficiency” for each skill, and thereby integrated the abstract idea into a practical application by claiming an improved learning-assistance system (Remarks, filed 11/17/25, p. 7). Examiner respectfully disagrees. The recited claim limitations of the amended independent claims, under their broadest reasonable interpretation, encompass limitations that could practically be performed in the human mind and/or using pen and paper, but for the recitation of generic computing components (memory, one or more processors), as outlined in detail below. Additionally, and/or alternatively, accessing data (e.g., model data representing a relationship between a learner’s proficiency for the one or more required skills and an expected performance for a question) is directed to the insignificant extra-solution activity of data gathering (MPEP 2106.05(g)). Meanwhile, the claims fail to recite “complex computations” (i.e., to determine a learner proficiency and threshold proficiency), but rather recite wherein a current proficiency for the learner for each skill associated with a question (i.e., fractions) and a threshold proficiency based on a predefined target performance level for the target question are obtained/determined, which encompass data that can be mentally determined by a human (i.e., based on observation and/or testing of a learner, and mental question analyzation/determination by a teacher, for example). The limitations do not improve the functioning of a computer or other technology (MPEP 2106.05(a) nor apply the judicial exception with, or by use, of a particular machine (MPEP 2106.05(b)) (see Specification, [0057-0059], “The input unit 20, and the output unit 30 are provided by a computer processor (for example, CPU (Central Processing Unit), GPU (Graphics Processing Unit) operating according to the program (skill output program). For example, a program may be stored in the storage unit 10, and the processor may read the program and, according to the program, operate the input unit 20, and the output unit 30. […] In addition, some or all of the components of each device may be realized by a general-purpose circuit (circuitry) or a dedicated circuit, a processor, etc., or a combination of these.”). Additionally, the Specification does not disclose improvements to computer processors or data presentation (see, as previously noted, Specification, [0057-0059] disclosing “some or all of the components of each device may be realized by a general-purpose circuit (circuitry)”). Moreover, claiming the improved speed or efficiency inherent with applying the abstract idea on a computer does not integrate the judicial exception into a practical application or provide an inventive concept (See MPEP 2106.05(f) (citing Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015) (further noting that merely limiting the field of use of the abstract idea to a particular existing technological environment does not render the claims any less abstract)).
Applicant further argues that the claim takes as input the learner’s state and model data, transforms them into new forms of information (threshold and current proficiency), and displays the results in a specific format, which constitutes an improvement to computer functionality itself (Remarks, filed 11/17/25, pp. 7-8). Examiner respectfully disagrees. The claims recite using gathered data to determine a current skill proficiency and a threshold proficiency based on a predefined target performance level of the target question, which encompass data that a user could mentally determine through observation/evaluation (mental processes), and simply outputting the determined data (current and threshold proficiency) “for display”. The use of a generic device comprising generic computing components (memory storing instructions and one or more processors) for performing these limitations merely amounts to invocation of a computer as a tool to perform the abstract idea, and/or generally linking the use of the abstract idea to a particular technological environment (i.e., computing environment) (MPEP 2106.05(f) & (h)). Automation of a manual process has not been found to be sufficient to show an improvement in computer-functionality. Additionally, if it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the Specification (MPEP 2106.05(a)). The Remarks, filed 11/17/25, cite to the Specification, [0031], [0035], and [0050-0055], however, Examiner notes that these paragraphs fail to recite the implementation, or complex calculations, claimed to determine a threshold proficiency for each skill.
Applicant additionally argues that the claimed components of a processor, memory, model data, and associated data collectively form a specific learning-feedback device not found in the prior art, and defines a particular machine that improves the learning process. Examiner respectfully disagrees. As noted above, the computing components of the device are recited at a high-level of generality, and are further disclosed in the Specification to be realized by general-purpose circuitry, and in a manner which 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 enablement. (see, e.g., Specification, [0057-0059], “The input unit 20, and the output unit 30 are provided by a computer processor (for example, CPU (Central Processing Unit), GPU (Graphics Processing Unit) operating according to the program (skill output program). For example, a program may be stored in the storage unit 10, and the processor may read the program and, according to the program, operate the input unit 20, and the output unit 30. […] In addition, some or all of the components of each device may be realized by a general-purpose circuit (circuitry) or a dedicated circuit, a processor, etc., or a combination of these.”).
For these reasons, the claims remain rejected under 35 U.S.C. 101, as presented in detail below.
The previous rejections of the claims under 35 U.S.C. 103 have been withdrawn in light of the amendments to the claims and/or arguments, filed 11/17/25.
Claim Objections
Claims 1, 9, and 11 are objected to because of the following informalities: “for a corresponding question for a target question” recited in claim 1, ln. 6, claim 9, ln. 4, and claim 11, ln. 6 should likely read “. Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1, 3, 8-9, and 11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claims contain subject matter which was not described in the Specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites in part “access defining one or more required skills for a plurality of questions and model data representing a relationship between a learner’s proficiency for the one or more required skills and an expected performance for a corresponding question for a target question selected from the plurality of questions”. The Specification fails to disclose this limitation. Rather, the Specification only appears to disclose model data representative of a correct answer probability (expected performance) according to the proficiency level of the skills that the learner has, as opposed to a learner’s proficiency level for the one or more required skills for a plurality of questions, as required by the claim (Specification, [0019]; [0038]; [0072]).
Claims 9 and 11 are rejected for the same reasoning.
Claims 3 and 8 are rejected by virtue of their dependencies on claim 1.
Claim 1 further recites in part “determine, for each required skill, a threshold proficiency based on a predefined target performance level for the target question”. The Specification fails to disclose a “predefined target performance level”, as required by the claim.
Claims 9 and 11 are rejected for the same reasoning.
Claims 3 and 8 are rejected by virtue of their dependencies on claim 1.
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, 3, 8-9, and 11 are 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 in part “access defining one or more required skills” in ln. 4. It is indefinite as to what this limitation comprises, and the Specification does not offer further guidance (e.g., access/retrieve one or more required skills, define/determine one or more required skills, etc.).
Claims 9 and 11 are rejected for the same reasoning.
Claims 3 and 8 are rejected by virtue of their dependencies on claim 1.
Claim 1 further recites in part “determine, for each required skill, a threshold proficiency based on a predefined target performance level for the target question”. It is indefinite as to how the “predefined target performance level” differs from a predefined “expected performance”, or “correct answer probability”, and the Specification does not offer further guidance.
Claims 9 and 11 are rejected for the same reasoning.
Claims 3 and 8 are rejected by virtue of their dependencies on claim 1.
Claim 8 recites in part “the learner’s skill” in ln. 3. There is insufficient antecedent basis for this limitation in the 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, 3, 8-9, and 11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract ideas without significantly more.
Regarding claim 9, analyzed as representative claim:
[Step 1] Claim 9 recites “A skill output method”, which falls within the “process” statutory category of invention”.
[Step 2A – Prong 1] Claim 9 recites: A skill output method comprising:
accessing defining one or more required skills for a plurality of questions and model data representing a relationship between a learner’s proficiency for the one or more required skills and an expected performance for a corresponding question for a target question selected from the plurality of questions (mental process: observation/evaluation/opinion; and/or insignificant extra-solution activity of data gathering);
obtaining a current proficiency of the learner for each required skill associated with the target question (mental process: observation/evaluation/opinion);
determining, for each required skill, a threshold proficiency based on a predefined target performance level for the target question (mental process: observation/evaluation/opinion);
outputting, for display, the threshold proficiency and the learner’s current proficiency for each required skill (insignificant extra-solution activity of data transmission/display); and
in response to a determination that the current proficiency for a required skill is below the threshold proficiency (mental process: observation/evaluation/opinion), presenting, as a next-learning suggestion, one or more recommended questions associated with the required skill (human activity: interactions between two individuals, e.g., teaching).
The limitations of accessing, obtaining, and determining, encompass, under their broadest reasonable interpretations, mental processes (i.e., concept performed in the human mind or using pencil and paper, including an observation, evaluation, judgment, or opinion) (see MPEP 2106.04(a)(2)(III)), while the limitation of presenting encompasses, under its broadest reasonable interpretation, a certain method of organizing human activity (i.e., managing personal behavior or relationships or interactions between people – including social activities, teaching, and following rules or instructions) (see MPEP 2106.04(a)(II)). That is, an educator, for example, could obtain data (e.g., previously gathered and accessed by the educator, or obtained via observation/evaluation of a student and/or question), mentally determine a current proficiency level of the learner for each skill (e.g., fractions, theorems, etc.) required to answer a target question, mentally determine a threshold proficiency for each required skill (e.g., a minimum proficiency) based on a predefined target performance level for the target question (e.g., 50% chance the student answers correctly), and present (e.g., via orally, using handouts, etc.), one or more questions associated with a required skill based on a mental determination that the student’s current proficiency for a required skill is below the threshold proficiency for that skill. Accordingly, the claim recites abstract ideas.
[Step 2A – Prong 2] The claim fails to recite additional limitations to integrate the abstract ideas into a practical application. The additional limitation of “outputting, for display, the threshold proficiency and the learner’s current proficiency for each required skill” is directed to the insignificant extra-solution activity of data transmission/display, which cannot integrate the abstract ideas into a practical application (See MPEP 2106.05(g)). Therefore, the claim is directed to the abstract ideas.
[Step 2B] As discussed above with respect to integration of the abstract idea(s) into a practical application, the claim does not further include additional elements that are sufficient to amount to significantly more than the judicial exception. Rather, the additional element of outputting, for display, determined threshold proficiency and the learner’s current proficiency for each required skill is directed to insignificant extra-solution activity of data transmission/display, which does not provide significantly more (i.e., an inventive concept). Therefore, the claim is not patent eligible.
Independent claim 1 recites a skill output device comprising a memory storing instructions and one or more processors configured to execute the instructions to perform the method step described above, while independent claim 11 recites a non-transitory computer readable information recording medium storing a skill output program, when executed a processor, that performs the method step described above. These additional limitations are recited at a high level of generality such that they do not amount to a particular machine or technical improvement thereof, nor do they represent an improvement in any other technology. Rather, the generic manner in which these additional elements are claimed amount to mere instructions to implement the abstract idea(s) in a computer environment, i.e., field of use, and/or invoke a computer as a tool to perform the abstract ideas. Thus, the additional elements do not integrate the abstract idea(s) into a practical application or provide significantly more (i.e., an inventive concept). Furthermore, the Specification further demonstrates that the additional elements are recited for their well-understood, routine, and conventional functionality ([0057-0059], “The input unit 20, and the output unit 30 are provided by a computer processor (for example, CPU (Central Processing Unit), GPU (Graphics Processing Unit) operating according to the program (skill output program). For example, a program may be stored in the storage unit 10, and the processor may read the program and, according to the program, operate the input unit 20, and the output unit 30. […] In addition, some or all of the components of each device may be realized by a general-purpose circuit (circuitry) or a dedicated circuit, a processor, etc., or a combination of these.”). Thereby, the additional elements define the field of use as a computer-implemented environment with the components listed above, and/or encompass instructions to invoke a generic computer as a tool to perform the abstract ideas, amounting to merely automating a manual process. Accordingly, claim 1 and 11 are also not patent eligible.
Dependent claims 3 and 8 include all of the limitations of claim 1 from which they respectively depend and, as such, recite the same abstract ideas noted above for claim 1. Moreover, the dependent claims may further recite additional abstract idea(s) (e.g., mathematical concepts (i.e., mathematical relationships, mathematical formulas or equations, mathematical calculations) (see MPEP 2106.04(a)(2)(I))). While the dependent claims may have a narrower scope than the independent claim, the claims fail to recite additional limitations that would integrate the abstract ideas into a practical application or provide significantly more (i.e., an inventive concept). Therefore, claims 3 and 8 are also not patent eligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 ALYSSA N BRANDLEY whose telephone number is (571)272-4280. The examiner can normally be reached M-F: 8:30am-5:00pm.
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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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/ALYSSA N BRANDLEY/Examiner, Art Unit 3715
/DMITRY SUHOL/Supervisory Patent Examiner, Art Unit 3715