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
Applicant's arguments regarding the claim eligibility received 03/24/2026 have been considered but are moot in view of the new ground(s) of rejection. Detailed response is given in sections 3-4 as set forth below in this Office Action.
Applicant's arguments about the 102 rejection in reference to the amended claims are deemed persuasive. The corresponding rejection is therefore withdrawn.
Claim Rejections - 35 USC § 101
3. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 101 that form the basis for the rejections under this section made in this Office action:
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.
4. Claims 1-13 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.
Under the 2019 PEG (now been incorporated into MPEP 2106), the revised procedure for determining whether a claim is "directed to" a judicial exception requires a two-prong inquiry into whether the claim recites: (1) any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human interactions such as a fundamental economic practice, or mental processes); and (2) additional elements that integrate the judicial exception into a practical application (see MPEP § 2106.05(a)-(c), (e)-(h)).
Only if a claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application, do we then look to whether the claim: (3) adds a specific limitation beyond the judicial exception that is not "well-understood, routine, conventional" in the field (see MPEP § 2106.0S(d)); or (4) simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception.
Claims 1-13 are directed to an abstract idea of evaluating the performance of a user playing a piece of music.
Specifically, representative claim 1 recites:
A method executed by a computer connected to a musical instrument having a plurality of performance operators, the method comprising:
(S1) in response to performance actions input to the performance operators during a performance, obtaining at least one of a plurality of pieces of note data, performance action intervals, and a number of performance action instances;
(S2) evaluating, during the performance, at least one of
(i) rapid playing, by calculating an evaluation value of the rapid playing based on at least one of the performance action intervals and the number of performance action instances, and
(ii) a tonality, by calculating an evaluation value of the tonality based on the plurality of pieces of note data; and
(S3) instructing, during the performance, a speaker to output a reaction sound corresponding to the evaluation in response to at least one of the evaluation value of the rapid playing and the evaluation value of the tonality reaching at least a threshold value.
The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
The highlighted portion of the claim constitutes an abstract idea under the 2019 Revised Patent Subject Matter Eligibility Guidance and the additional elements are NOT sufficient to amount to significantly more than the judicial exceptions, as analyzed below:
Step
Analysis
1. Statutory Category ?
Yes.
Method
2A - Prong 1: Judicial Exception Recited?
Yes.
See the bolded portion listed above.
Under the broadest reasonable interpretation (BRI), the limitation S2 encompasses mental processes, namely concepts performed in the human mind or with pen and paper, and mathematical concepts, namely a series of calculations leading to one or more numerical results or answers, that can be performed in the human mind or by a human with the aid of a pen and paper.
Nothing in the bolded portion precludes the claimed mental processes and math concepts from practically being performed in the mind and/or with the aid of pen/paper. Note, the courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea. See CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). See also to MPEP 2106.04(a)(2).III
As such, the bolded portion of instant claim 1 falls within a combination of the “Mathematical Concepts” and “Mental Process” Groupings of Abstract Ideas defined by the 2019 PEG.
2A - Prong 2: Integrated into a Practical Application?
No.
The generic recitation of “a computer connected to a musical instrument having a plurality of performance operators” in the preamble does not integrate the abstract idea into a practical application. It has been held that performing an abstract algorithm using a general-purpose computer/circuitry would not amount to significantly more than the abstract algorithm itself. See, for example, Whitserve LLC v. Dropbox, Inc.
Under the BRI, the limitation S1 reads on merely a process of gathering the data/information necessary for performing the abstract idea identified above in 2A - Prong 1. According to MPEP 2106.05(g)(3): … that were described as mere data gathering in conjunction with a law of nature or abstract idea. As such, it represents an extra-solution activity to the judicial exception. As to the limitation of the obtained data, it encompasses merely data characterization which can be viewed as nothing more than an attempt to generally link the use of the judicial exception to the technological environment or field of use. Further, the step S1 as recited does not require any particular devices or sensors to perform the “obtaining”. Thus claim 1 would monopolize the abstract idea across a wide range of applications.
Under the BRI, the limitation S3 encompasses an insignificant post-solution activity and/or a field of use of the output from identified judicial exception, thus it does not amount to be meaningful to integrate the recited judicial exception into a practical application. See MPEP 2106.04(d) and 2106.05(g).
In general, the claim as a whole does not meet any of the following criteria to integrate the abstract idea into a practical application:
An additional element reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field;
an additional element that applies or uses a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition;
an additional element implements a judicial exception with, or uses a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim;
an additional element effects a transformation or reduction of a particular article to a different state or thing; and
an additional element applies or uses 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.
Various considerations are used to determine whether the additional elements are sufficient to integrate the abstract idea into a practical application. However, in all of these respects, the claim fails to recite additional elements which might possibly integrate the claim into a particular practical application. Instead, based on the above considerations, the claim would tend to monopolize the algorithm across a wide range of applications.
2B: Claim provides an Inventive Concept?
No.
Focusing on what the inventors have invented exactly, Examiner considers that the “core” of pending claim 1 is directed to an algorithm of analyzing and/or manipulating the existing data using mental process and math concepts to evaluate rapid chord playing and/or tonality based on performance actions of a performance. As discussed with respect to Step 2A Prong Two, none of the additional elements in the claim amounts to be “significantly more” to integrate the abstract idea into a practical application. The additional elements encompass mere instructions to apply the exception using a generic computer component or extra-solution activities which can be viewed as an attempt to link the use of the judicial exception to the relevant technological environment or field of use. The same analysis applies here in Step 2B.
Furthermore, features such as a computer connected to a musical instrument having a plurality of performance operators, obtaining at least one of a plurality of pieces of note data, performance action intervals, and a number of performance action instances in response to performance actions input to the performance operators of the musical instrument, and instructing a speaker in real-time to output a reaction sound corresponding the output of the mental/math evaluation are all considered well-understood, routine, conventional activities that do not add something significantly more to the judicial exception or provide any Inventive Concept.
The claim is therefore ineligible under 35 USC 101.
The dependent claims 2-6 inherit attributes of the independent claim 1, but do not add anything which would render the claimed invention a patent eligible application of the abstract idea. These claims merely extend (or narrow) the abstract idea which do not amount for "significant more" because they merely add details to the algorithm which forms the abstract idea as discussed above.
Claims 7-13 are rejected under 35 USC for the same reasons as for claims 1-6 set forth above.
Conclusion
5. 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 extension fee 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 date of this final action.
Contact Information
6. Any inquiry concerning this communication or earlier communications from the examiner should be directed to JIANCHUN QIN whose telephone number is (571)272-5981. The examiner can normally be reached 9AM-5:30PM EST M-F.
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, Dedei Hammond can be reached on (571)270-7938. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIANCHUN QIN/Primary Examiner, Art Unit 2837
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