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 .
Status of Claims
This office action is in response to arguments and amendments entered on October 27, 2025 for the patent application 17/960,356 originally filed on October 5, 2022. Claims 1-20 are amended. Claims 1-20 are pending. The first office action of July 14, 2025 is fully incorporated by reference into this Final Office Action.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f):
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “configured to” are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “configured to” are not being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f), because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are:
Per claim 15
“an utterance type selector program code that selects an utterance type…”
“a grounded knowledge selector program code that selects grounded knowledge…”
“a tutor utterance generator program code that generates…”
“a learner utterance assessor program code that receives a learner utterance…”
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f), applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
Claims rejected under 35 U.S.C. § 112(a)
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.
Claims 15-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains 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 at the time the application was filed, had possession of the claimed invention.
When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.
Claim 15 recites the following:
“an utterance type selector program code that selects an utterance type…”
“a grounded knowledge selector program code that selects grounded knowledge…”
“a tutor utterance generator program code that generates…”
“a learner utterance assessor program code that receives a learner utterance…”
These limitations are not adequately described in the specification as originally filed and forms the basis of the rejection. Specifically, the specification fails to disclose the hardware and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed functions in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Furthermore, the specification does not provide a disclosure of the hardware and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed “selectors” per claim 15 to perform the claimed functions. As such, claim 15 is rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Claims 16-20 are also rejected under 35 U.S.C. § 112(a), based on their respective dependencies to claim 15.
Claims 1-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains 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 at the time the application was filed, had possession of the claimed invention.
Claims 1, 8 and 15 recite “computer executable program code.” These limitations are not adequately described in the specification as originally filed and forms the basis of the rejection. Specifically, the written description of the specification as originally filed fails to disclose any details with regard to “computer executable program code,” as claimed. As such, the limitations are reasonably rejected under a theory of new matter. Therefore, claim 1, 8 and 15 are rejected under 35 U.S.C. §112(a), as failing to comply with the written description requirement. Claims 2-7, 9-14 and 16-20 are also rejected under 35 U.S.C. § 112(a), based on their respective dependencies to claim 1, 8 or 15.
Claims 1-14 repeatedly recite “program code.” These limitations are not adequately described in the specification as originally filed and forms the basis of the rejection. Specifically, the written description of the specification as originally filed fails to disclose any details with regard to “program code,” as claimed. As such, the limitations are reasonably rejected under a theory of new matter. Therefore, claims 1-14 are rejected under 35 U.S.C. §112(a), as failing to comply with the written description requirement. Claims 2-7 and 9-14 are also rejected under 35 U.S.C. § 112(a), based on their respective dependencies to claim 1 or 8.
Claim 15, and substantially similar limitations in claims 16-20, recites the limitations “an utterance type selector program code,” “a grounded knowledge selector program code,” “a tutor utterance generator program code,” and “a learner utterance assessor program code.” These limitations are not adequately described in the specification as originally filed and forms the basis of the rejection. Specifically, the written description of the specification as originally filed fails to disclose any details with regard to “an utterance type selector program code,” “a grounded knowledge selector program code,” “a tutor utterance generator program code,” and “a learner utterance assessor program code,” as claimed. As such, the limitations are reasonably rejected under a theory of new matter. Therefore, claims 15-20 are rejected under 35 U.S.C. §112(a), as failing to comply with the written description requirement. Claims 16-20 are also rejected under 35 U.S.C. § 112(a), based on their respective dependencies to claim 15.
Claims rejected under 35 U.S.C. § 112(b)
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 1-20 recite the limitation “program code.” The limitation “computer executable program code,” is originally introduced in claim 1, 8 and 15, respectively. As such, the subsequent limitation is either (1) not following antecedent basis (i.e. “the computer executable program code”); or (2) is intended to be a new limitation which ambiguously conflicts with the previous limitation of claim 1, 8 or 15. Therefore, claims 1-20 are rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 2-7, 9-14 and 16-20 are also rejected under 35 U.S.C. § 112(b), based on their respective dependencies to claim 1, 8 or 15.
Per MPEP §2181, to satisfy the definiteness requirement under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function. Telcordia Techs., Inc. v. Cisco Systems, Inc., 612 F.3d 1365, 1376, 95 USPQ2d 1673, 1682 (Fed. Cir. 2010). A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the written description fails to link or associate the disclosed structure, material, or acts to the claimed function, or if there is no disclosure (or insufficient disclosure) of structure, material, or acts for performing the claimed function. Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850. A bare statement that known techniques or methods can be used would not be a sufficient disclosure to support a means-plus-function limitation. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 953, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007).
A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph may be appropriate in the following situations when examining means-plus-function claim limitations under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(1) when it is unclear whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(2) when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and there is no disclosure or there is insufficient disclosure of structure, material, or acts for performing the claimed function; and/or
(3) when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and the supporting disclosure fails to clearly link or associate the disclosed structure, material, or acts to the claimed function.
In the present case, claim 15 recites the following:
“an utterance type selector that selects an utterance type…”
“a grounded knowledge selector that selects grounded knowledge…”
“a tutor utterance generator that generates…”
“a learner utterance assessor that receives a learner utterance…”
Here, 35 U.S.C. 112(f) is invoked and there is no disclosure or there is insufficient disclosure of structure, material, or acts for performing the claimed functions. Accordingly, the metes and bounds of the claim are not clear. Therefore, claim 15 is rejected 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 16-20 are also rejected under 35 U.S.C. § 112(b),based on its respective dependency to claim 15.
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.
Step 1 – “Statutory Category Identification”
Claims 1 and 8 are directed to “an intelligent tutoring method system” (i.e. “a process”), and claim 15 is directed to “an intelligent tutoring system” (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 the abstract idea of “assessing a learner utterance,” either 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;” and/or “mental processes;” which require the following limitations:
Per claim 1:
“…receives learning material;
…selects an utterance type in a current dialogue turn;
…selects grounded knowledge from the learning material according to the selected utterance type in the current dialogue turn;
…generates a tutor utterance based on the selected utterance type, the grounded knowledge, and the learning material in the current dialogue turn and outputting it to a learner;
…receives a learner utterance in response to the tutor utterance in the current dialogue turn; and
…generates an assessment result of the learner utterance by assessing the learner utterance in the current dialogue turn.”
Per claim 8:
“…receives learning material, utterance types up to a current dialogue turn, and ground knowledge selected from the learning material as inputs, and …generates a tutor utterance in the current dialogue turn and outputs it to a learner, in one learned end-to-end dialogue model; and
…receives, as inputs, the tutor utterance in the current dialogue turn and the learner utterance corresponding to the tutor utterance, and assessing the learner utterance, in the one end-to-end dialogue model.”
Per claim 15:
“…selects an utterance type based on input learning material;
…selects grounded knowledge from the learning material based on the selected utterance type;
…generates based on the learning material, the selected utterance type and grounded knowledge, and outputs tutor utterance to a learner; and
…receives a learner utterance corresponding to the tutor utterance, and generates an assessment result of the learner utterance by assessing the learner utterance based on at least one of the learning material, the utterance type, the grounded content, and the tutor utterance.”
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 element of “an intelligent tutoring system,” “non-transitory computer readable storage media,” and “one or more processors,” 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 “assessing a learner utterance,” 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. “an intelligent tutoring system,” “non-transitory computer readable storage media,” and “one or more processors,” is claimed, this is a generic, well-known, and conventional data gather computing element. As evidence that this is a generic, well-known, and a conventional data gathering computing element (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 element is 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 “an intelligent tutoring system,” as described in paras. [0155]-[0156] of the Applicant’s written description as originally filed, provides the following:
“[0155] Referring to FIG. 19, the intelligent tutoring system 200 may represent a computing system in which the aforementioned intelligent tutoring method is implemented.”
“[0156] The intelligent tutoring system 200 may include at least one of processor 210, a memory 220, an input interface device 230, an output interface device 240, a storage device 250, and a network interface device 260. Each of the components may be connected by a common bus 270 to communicate with each other. In addition, each of the components may be connected through an individual interface or a separate bus centering on the processor 210 instead of the common bus 270.” As such, the Applicant’s claimed “an intelligent tutoring system,” is reasonably interpreted as a generic, well-known, and conventional data gathering computing element.
Likewise, the Applicant’s claimed “non-transitory computer readable storage media,” and “one or more processors,” as described in para. [0156] of the Applicant’s written description as originally filed, provides the following:
“[0156] The intelligent tutoring system 200 may include at least one of processor 210, a memory 220, an input interface device 230, an output interface device 240, a storage device 250, and a network interface device 260. Each of the components may be connected by a common bus 270 to communicate with each other. In addition, each of the components may be connected through an individual interface or a separate bus centering on the processor 210 instead of the common bus 270.” As such, the Applicant’s claimed “non-transitory computer readable storage media,” and “one or more processors,” are reasonably interpreted as generic, well-known, and conventional data gathering computing elements.
Therefore, the Applicant’s own specification discloses ubiquitous standard equipment within modern computing and does not provide anything significantly more. Therefore, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-7, 9-14 and 16-20 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-7, 9-14 and 16-20 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1, 8 or 15. Therefore, claims 1-20 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 October 27, 2025 related to claims 1-20 are fully considered, but are not persuasive.
Claim Interpretations and Rejections - 35 U.S.C. § 112
The Applicant respectfully argues “In response to the 112(f) interpretation, claims 15-20 have been amended to disclose a processing computer executable program code embodied in non-transitory computer readable storage media by one more processors. Accordingly, the applicant respectfully submits that the elements of claim 15 disclose sufficient structure and respectfully requests the withdrawal of the interpretation.
With regard to the 112(a) rejection, the applicant respectfully submits that the current amendments provides sufficient language to disclose the hardware and the algorithm for performing the claimed functions.
With regard to the 112(b) rejections, claims 1 and 8 have been appropriately amended. Furthermore, the assertion of the 112(f) interpretation has been sufficiently refuted.
Further, the Applicant submits that those skilled in the dialogue-based intelligent tutoring art would understand the flow charts and graphical representations of the present Application, and would generally know the processing structures and algorithms / instruction code / software inherent therein for implementing each of the graphical representations and flow chart elements.
Accordingly, the applicant respectfully requests the withdrawal of the rejections and interpretation.”
The Examiner respectfully disagrees. The Applicant’s amendments continue to use generic placeholders that are coupled with functional language without reciting sufficient structure to perform the recited functions and the generic placeholders are not preceded by structural modifiers. Furthermore, the Applicant’s amendments have provided new grounds for rejection under 35 U.S.C. §112(a) and (b), please see above. As such, the argument is not persuasive. Therefore, the rejections under 35 U.S.C. §112(a) and (b) are not withdrawn.
Claim Rejections 35 U.S.C. § 101
The Applicant respectfully argues “The pending claims have been amended to provide statutory claim limitations that include processors, and computer executable program code embodied in non- transitory computer readable storage media, the executable program code implementing inventive functionalities, support for which can be found in the present Application as published and in what is generally Known by those skilled in the executable program code processing art.
To further address the Examiner's contentions we point out that the now pending claims, while providing claim limitations that include processors, and computer executable program code (i.e., software) embodied in non-transitory computer readable storage media, they also provide executable program code limitations that implement inventive functionalities to provide an intelligent tutoring method and system capable of providing tutoring to learners without constructing many scenarios, as performed by the computer, which has been allowed without any cited prior art.”
The Examiner respectfully disagrees. The Applicant’s argument “they also provide executable program code limitations that implement inventive functionalities to provide an intelligent tutoring method and system capable of providing tutoring to learners without constructing many scenarios, as performed by the computer, which has been allowed without any cited prior art,” is conclusory. The Applicant has failed to provide any evidence supporting such a statement that even qualifies as “inventive functionalities.” Further, arguments with regard to “without any cited prior art” are best suited for arguing rejections under 35 U.S.C. §§ 102 and 103. The test for 35 U.S.C. § 101 subject-matter eligibility requires claims to be examined using the “two-part Mayo test” for determining subject-matter eligibility, as previously performed above. Still further, the Applicant is misconstruing the proper analysis under 35 U.S.C. § 101. The lack of prior art, clearing the claims of any 35 U.S.C. §§102 or 103 rejections, is not evidence of subject-matter eligibility under 35 U.S.C. §101. As such, the argument is not proper for facilitating a 35 U.S.C. § 101 subject-matter eligibility discussion and is thereby not persuasive.
The remainder of the Applicant’s arguments merely cite case law and the MPEP, but fail to articulate why the present claims are eligible in view of the cited material. Specifically, the Applicant’s arguments continue to be conclusory by failing to articulate and support any discussion and/or evidence indicating that the Examiner has made an examination error. Therefore, the arguments are not persuasive and the rejections under 35 USC §101 will not be withdrawn.
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 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. 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 Mon.-Fri. 8:00-4:00. 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, 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