DETAILED ACTION
Remarks
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
The Amendment filed 2/16/26 has been entered. Claim(s) 6 and 27-35 are pending in the application and are under examination.
The previous rejections under 35 USC 112(a), 112(b), and 112(d) are withdrawn based on the amendment filed 2/16/26, which either deletes the limitations at issue, or cancels the previously rejected claims, thus rendering the previous rejections moot.
Claim Rejections - 35 USC § 101
Claims 6 and 27-35 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1 = YES: The claimed invention is to computer-readable medium, and thus falls under one of the four statutory categories (i.e., machine or manufacture).
STEP 2A, Prong 1: Claims recite a mental process when they contain limitations that can practically be performed in the human mind, including for example, observations, evaluations, judgments, and opinions. Examples of claims that recite mental processes include: a claim to “collecting information, analyzing it, and displaying certain results of the collection and analysis,” where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016). Additionally, claims recite certain methods of organizing human activity when they contain social activities, teaching, and following rules or instructions. In this case, the claims recite both of these judicial exceptions, including a series of steps which can be practically performed by mental process (including observation, evaluation, judgement and/or opinion) and certain methods of organizing human activity (including managing personal behavior or relationships or interactions between people, including social activities, teaching, and following rules or instructions). Specifically, the claims recite a series of steps for generating a combined educational item for a user comprising:
receiving…assessment answers from a user on a first subject… (i.e., mental observation or collection of information, and/or human activity including an interaction between people);
receiving…assessment answers from the user on a second subject (i.e., mental observation or collection of information, and/or human activity including an interaction between people);
evaluating… the assessment answers on the first subject and the second subject (i.e., mental evaluation or analysis of collected information);
selecting…a first educational item related to the first subject according to the evaluation of the assessment answers on the first subject (i.e., mental evaluation/analysis of information and judgement);
selecting a second educational item related to the second subject according to the evaluation of the assessment answers on the second subject (mental evaluation or analysis);
combining the first educational item and the second educational item into a combined educational item (mental evaluation or analysis); and
presenting…the combined educational item to the user (i.e., mental process, including conveying information, e.g., using pen and paper; human activity including an interaction between people, teaching or displaying results of the evaluation/analysis).
…prints the combined educational item on a printable medium (i.e., mental process, including conveying information, e.g., using pen and paper; human activity including an interaction between people, teaching or displaying results of the evaluation/analysis);
printing a physical mailing address of the user on the printable medium (i.e., mental process, including conveying information, e.g., using pen and paper; human activity including an interaction between people, teaching or displaying results of the evaluation/analysis);
…outputs identifiers of stored educational items to retrieve (i.e., mental process, including conveying information, e.g., using pen and paper; human activity including an interaction between people, teaching or displaying results of the evaluation/analysis);
wherein the combined educational item is an image, video, or multimedia file (i.e., mental process, including conveying information, e.g., using pen and paper to generate an image; human activity including an interaction between people, teaching or displaying results of the evaluation/analysis);
receiving disability information concerning the user and modifying the combined educational item accordingly (i.e., mental observation or collection of information, and/or human activity including an interaction between people); and
receiving disability information concerning the user and modifying the combined educational item accordingly (i.e., mental observation or collection of information, and/or human activity including an interaction between people).
These steps constitute a combination of mental processes and certain methods of organizing human activity, and but for generically-recited computer components using a generically-recited neural network to implement these judicial exceptions, the claimed limitations do not preclude a person or persons from performing the steps by human analog (i.e., by hand, by merely thinking, and by interpersonal interactions between individuals). As in the case of Electric Power Group, the claimed steps above are also to collecting information (i.e., receiving steps), analyzing the information (i.e., evaluating, selecting, and combining steps), and displaying a result based on the analysis (i.e., presenting, printing, and outputting steps), and thus recite an abstract idea. Note that even if most humans would use a physical aid (e.g., pen and paper) to help them complete the recited steps, including presenting the combined educational item and printing the physical mailing address of the user, the use of such physical aid does not negate the mental nature of these limitations. Therefore, the claims recite an abstract idea.
STEP 2A, Prong 2: This judicial exception is not integrated into a practical application because the additional elements (i.e., A computer system non-transitory computer-readable storage medium storing instructions that, when executed by one or more processors, cause operations comprising of the abstract idea identified under Prong 1; storing and retrieving data identified as part of the abstract idea under Prong 1 from a database and from one or more non-transitory computer-readable storage media containing the data; defining the steps identified as an abstract idea under Prong 1 as being performed at an input interface, at a processor, at an output interface comprising a printer or transmitting information of the abstract idea over a network interface, and lastly, invoking a neural network on a graphics processing unit to output information identified under Prong 1 as an abstract idea) are each recited at a high level of generality, and thus amount to mere instructions to apply the judicial exceptions on a general purpose computer environment to automate a manual process. Together, these additional elements amount to merely defining a generic field of use or generic technological environment in which to implement the abstract idea, using a computer environment rather than mental processes and activities between individuals. The additional limitations provide only a result-oriented solution and lack details as to how the computer or neural network perform the associated steps, and are thus equivalent to instructions to implement the judicial exception using a generic computer environment. The recited use of an input interface to perform the receiving steps amounts to insignificant pre-solution data gathering activity based on the lack of technical detail defining how this is achieved, and thus relying on the basic functions of a general-purpose computer to perform, as recited in a result-based manner. Additionally, the recited use of an output interface and/or printer to present the results of the combining step (i.e., printed information on a printed medium or as a video or multimedia file) amounts to insignificant post-solution activity based on the lack of technical defining how this is achieved, and thus relying on the basic functions of a general-purpose computer and printer to perform, as recited in a result-based manner. See MPEP 2106.05 describing a printer that is used to output a report as an example of post-solution activity that is not integrated into the claim as a whole.
In addition, the combination of limitations recited in claims 6 and 27-35 do not result in an improvement in any other technology or technical field. It should be noted that because the courts have made it clear that mere physicality or tangibility of an additional element or elements is not a relevant consideration in the eligibility analysis, the physical nature of the computer environment does not affect this analysis. See MPEP 2106.05(I) for more information on this point, including explanations from judicial decisions including Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 224-26 (2014). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception.
Therefore, the claims are directed to the recited judicial exceptions.
STEP 2B: The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as provided in Step 2A, Prong 2, the claims merely append generic limitations defining the judicial exception in a computer environment, at the outset of each claim, with no technical detail which amounts to an improvement to the functioning of the recited computer or any other technology or technical field. Defining a judicial exception as being performed by generically-recited computer components, as the present claims do, amounts to mere automation of manual processes which is not sufficient to show an improvement in computer-functionality (see Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017)(using a generic computer to process an application for financing a purchase); see also LendingTree, LLC v. Zillow, Inc., 656 Fed. App'x 991, 996-97 (Fed. Cir. 2016) (non-precedential)(speeding up a loan-application process by enabling borrowers to avoid physically going to or calling each lender and filling out a loan application). Further, the recitation of the steps identified in Prong 1 above being computer implemented including a processor and non-transitory computer-readable medium amounts to simply using the words “apply it” with the judicial exception, or mere instructions to implement an abstract idea on a computer, similar to Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f)), which the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception. Further, based on the lack of technical detail in the claim, the use of generically-recited computer hardware to receive and output information amounts to insignificant pre and post solution activity. The specification discloses use of “conventional computer programming” to implement the disclosed steps (see par. 0076, for example). Further, the claimed computer system relies on conventional equipment, as evidenced by Applicant’s reply filed 2/16/26 that states the “Specification discloses ‘processor’ and ‘microprocessor’ generically, without architectural limitation, and a graphics processing unit (GPU) is a well-known species of processor to a person of ordinary skill.” (Remarks filed 2/25/26, page 5). Thus, Applicant’s remarks further demonstrate that the claimed computer does not represent a technical improvement, but rather relies on a conventional system to perform the abstract idea.
Furthermore, receiving or transmitting data over a network, i.e., network interface, as claimed, is recognized by the courts as a well-understood, routine, and conventional computer function. MPEP 2106.05(d)(II). In this case, the transmitting is recited generically in a result-based manner as “over a network interface” is recited with no specific detail how it is achieved, and thus amounts to well-understood, routine and conventional computer activity and insignificant extra-solution activity.
To the extent a “neural network” is recited to perform certain steps, the claims are silent as to any technical detail how this result is achieved. In fact, the specification is silent as to how a “neural network” performed the claimed functionality, referring to it by name alone, and thus demonstrating the neural network is a conventional machine learning performing well-understood, routine, and conventional computer functions so that further disclosure is not necessary to meet the requires under 35 USC 112(a).
Furthermore, the recited use of a computer to generate a print-ready file that is subsequently output via a printer or a file output via an output interface lacks any technical detail defining any unconventional printer/computer/interface functionality or printer/interface hardware, and thus amounts to using well-understood, routine, and conventional computer and printer technology to perform the output, therefore amounting to insignificant post-solution data output activity. This is evidenced by Applicant’s statements in the reply filed 9/27/25 (see page 7, heading II, second paragraph) which states “[t]he art of generating print-ready files and transmitting data over network interfaces is well established.”
The additional elements are recited without any technical detail to simply perform the abstract idea, and are recited so generically that they do not amount to a particular machine or improvement thereof, nor any kind of technological improvement. Thus, the claims amount to nothing significantly more than an instruction to apply the abstract idea of generating and presenting a combined educational item to a user based on an evaluation of assessment answers, as described under Prong 1, using a generic computer environment, and thus merely defining a field of use of the identified abstract idea.
Thus, the claims are not directed to significantly more than the abstract idea.
Therefore, claims 6 and 27-35 are not directed to patent eligible subject matter.
RESPONSE TO ARGUMENTS
35 USC § 101 – Rejections
Applicant's arguments filed 2/16/26 have been fully considered but they are not persuasive.
Applicant argues that claim 6 recites limitations that are “concrete, end-to-end workflow” that “uses the computer in a particular way to create new, structured digital artifact, not to merely organize or display information.” Applicant further asserts this amounts to a “processor-driven synthesis and device-oriented presentation” that “integrate the concept into a practical application under Step 2A, and the ordered combination imposes meaningful limits that constitute significantly more under Step 2B.” (pg. 5). At the outset, Applicant’s assertions are conclusory, with no evidence or explanation explaining which limitations recite particular computer functions that “create new, structured digital artifact”. Moreover, as provided in the rejection, but for the generically-recited computer environment, the claimed steps are practically performed by human analog, i.e., mental processes and certain methods of organizing human activities. This includes evaluating… the assessment answers on the first subject and the second subject (i.e., mental evaluation or analysis of collected information); selecting…a first educational item related to the first subject according to the evaluation of the assessment answers on the first subject (i.e., mental evaluation/analysis of information and judgement); selecting a second educational item related to the second subject according to the evaluation of the assessment answers on the second subject (mental evaluation or analysis); and combining the first educational item and the second educational item into a combined educational item. Thus, to the extent Applicant interprets the product of the evaluating and combining step an “artifact”, that product is interpreted as part of the abstract idea itself. The claim lacks any technical detail whatsoever how the evaluating and combining step are performed that would preclude performance by human analog. Thus, to the extent the claims provide an automatic transformation of two independently evaluated sets, it is merely relying on conventional computer to define a field of use, and does not represent a technical improvement of any kind. Moreover, the claim relies on generically-recited computer hardware and a generically recited neural network, with no further details defining the underlying operations, and thus amount to the use of conventional computers and neural networks. Thus, these additional elements are recited to merely automate a manual process and thus do not offer meaningful limitations beyond generally linking the abstract idea to a generic technological environment. Thus, defining the claimed abstract idea in this context amounts to merely defining a generic field of use, not a technical improvement to a technological problem.
Accordingly, Applicant’s arguments are not persuasive and the rejection is maintained.
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 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to James Hull whose telephone number is 571-272-0996. The examiner can normally be reached on Monday-Friday from 8:00am to 5:00pm MST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Xuan Thai, can be reached at telephone number 571-272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAMES B HULL/Primary Examiner, Art Unit 3715