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.
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 8/15/26 has been entered. Claim(s) 36-41 is/are pending and under examination.
Claim Rejections - 35 USC § 101
Claims 36-41 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 a method, 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:
A…method for generating a combined educational…file (mental process and/or certain methods of organizing human activity, as indicated for each limitation below), comprising:
receiving, from a user, a first assessment answer associated with a first subject (mental process, including observation; certain methods of organizing human activity, including interaction between individuals, e.g., teaching);
receiving, from the user, a second assessment answer associated with a second subject (mental process, including observation; certain methods of organizing human activity, including interaction between individuals, e.g., teaching);
determining, based at least in part on the first assessment answer, a first assessment score (mental process, including evaluation; certain methods of organizing human activity, including interaction between individuals, e.g., teaching);
determining, based at least in part on the second assessment answer, a second assessment score (mental process, including evaluation; certain methods of organizing human activity, including interaction between individuals, e.g., teaching);
selecting, based at least in part on the first assessment score, a first educational…file associated with the first subject (mental process, including evaluation; certain methods of organizing human activity, including interaction between individuals, e.g., teaching);
selecting, based at least in part on the second assessment score, a second educational…file associated with the second subject (mental process, including evaluation; certain methods of organizing human activity, including interaction between individuals, e.g., teaching);
combining the first educational…file and the second educational…file into a combined educational…file (mental process, including evaluation; certain methods of organizing human activity, including interaction between individuals, e.g., teaching, including using pen and paper to combine files); and
presenting the combined educational…file to the user (certain methods of organizing human activity, including interaction between individuals, e.g., teaching, including e.g., using pen and paper to present file).
wherein the combined educational…file is…containing a first identifier associated with the first educational…file and a second identifier associated with the second educational…file (defines abstract idea previously identified above, and thus falls under same judicial exception grouping).
wherein presenting the combined educational…file comprises…to print, on paper, the combined educational media file (defines abstract idea previously identified above, and thus falls under same judicial exception grouping).
wherein selecting the first educational…file is performed at least in part…using previous assessment answers of a plurality of users (defines abstract idea previously identified above, and thus falls under same judicial exception grouping).
before combining the first educational…file and the second educational…file, personalizing the first educational…file according to a context selected by the user by replacing at least one acontextual fragment with at least one context fragment associated with the selected context (mental process, including evaluation; certain methods of organizing human activity, including interaction between individuals, e.g., teaching, including using pen and paper).
wherein selecting the first educational…file is further based on disability data associated with the user (defines abstract idea previously identified above, and thus falls under same judicial exception grouping).
These steps constitute a combination of mental processes and certain methods of organizing human activity. Except 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/or using pen and paper, and by interpersonal interactions between individuals, including methods of teaching). As in the case of Electric Power Group, the claimed steps above are also akin 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 claimed file, 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., defining the method as computer-implemented; defining the file as a media file or multimedia file; perform presenting step by causing a printing service to print, on paper, the combined educational media file; perform selecting step by a recommendation engine comprising a neural network trained using previous assessment answers of a plurality of users) 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, e.g., combining media files, 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 recitation of a trained neural network to perform the claimed steps are recited in a result-based manner, i.e., trained based on previous assessment answers of a plurality of users with no details whatsoever what constitutes the algorithm of the neural network or how it is trained based on this information, e.g., data structure elements reciting adjustments in values to plurality of performance parameters while preserving prior values. Thus, the recitation of a neural network in the claims does not represent an improved way of training a neural network, and such does not represent a technical improvement. The recited use of media or multimedia files is also recited at a high level of generality to merely define the judicial exception in a generic field of use or generic technological environment. Thus, the recitation of media or multimedia files in the claims do not reflect an improvement in technology or a technical field. Likewise, the specification is silent as to any particular technical improvement provided by the claimed additional elements. Finally, the recited use of a printer service to print the combined media 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 36-41 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 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. The specification discloses use of “conventional computer programming” to implement the disclosed steps (see par. 0076, for example), thus demonstrating the claimed computer environment represents a well-understood, routine and conventional technological environment. 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. Therefore, the use of a computer to perform various steps in the claims amounts to insignificant extra-solution data processing 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, e.g., how the neural network is trained using previous assessment answers. 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). Therefore, the claimed use of a trained neural network does not represent an improvement in machine learning or other technology. Therefore, the use of a trained neural network in the claims amounts to insignificant extra-solution data processing activity.
Furthermore, the recited use of a print service to print on paper the combined educational file 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.” Therefore, the use of a printing service to print the combined file does not represent an improvement in printing technology or other technical field, but rather relies on well-understood, routine, and conventional technology. Therefore, the claimed use of a printing service to print amounts to insignificant post-solution data output activity.
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. The specification does not identify a technical improvement of any kind, nor do the claims reflect any technical improvement disclosed in the specification. Thus, the claims are not directed to significantly more than the abstract idea.
Therefore, claims 36-41 are not directed to patent eligible subject matter.
RESPONSE TO ARGUMENTS
35 USC § 101 – Rejections
Applicant's arguments filed 8/15/26 have been fully considered but they are not persuasive.
Applicant argues that under Step 2A, Prong 1, claim 36 does not recite a mental process. Applicant is directed to the analysis under Step 2A, Prong 1 of the rejection which identifies the mental process recited in the claims. As provided in the rejection, combining two files is practically performed by humans through mental evaluation and using pen and paper. Although a media file is a term to refer to a digital document, based on the high level of generality for which this is claimed as indicated under Prong 2, it does not integrate the judicial exception into a practical application. Rather, the use of media or multimedia files in the claims merely defines a field of use of technological environment in which to perform the judicial exception, and neither the specification nor the claims reflect technical detail that amounts to an improvement in technology or a technical field. To the extent the claims require the combining of media files, it is also drafted at such a high level of generality, i.e., a result to be achieved, that it amounts to merely using a computer (and digital files) as a tool to perform the abstract idea. Likewise, printing that is used to output, as claim 38 recites, is an example of post-solution activity that is not integrated into the claim as a whole, as indicated under Prong 2. See MPEP 2106.05(g). Further, the use of a printer to print a file is interpreted as a well-understood, routine, and conventional computer function, as 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.” Lastly, Applicant argues that under Prong 1, “[t]he user’s answers are inputs to a file-generation process, and educational content does not convert digital file processing into organizing human activity.” To the extent Applicant is referring to the “combining” step of claim 36, the combining of files is a task that is practically capable of being performed by a human by mental process, including the use of pen and paper to combine the content of two files into one. To the extent the claim requires the files to be media files, this is recited at such a high level of generality with no details whatsoever how the combining is accomplished, it is merely defining a field of use to perform the judicial exception. The claims lack any detail how the combining is performed, but rather recite this step as a result to be achieved, i.e., combining. Therefore, this does not represent an improvement in a “file-generation process”, “digital file process”, or any other technical field. Therefore, Applicant’s argument is not persuasive.
Applicant argues that under Prong 2, “the ordered limitations therefore use assessment information to control creation of a different digital file rather than merely communicate information”. However, the claims lack any technical detail how digital files are created, but rather recite the task of combining files as a result to be achieved. Except for referring to the files as media files, the same process can be practically performed by a human through mental observation and evaluation. For example, a teacher may receive answers from a student, select educational files based on an assessment of the student’s answers, and combine the educational files into one for presentation to a student. Applicant further argues that the dependent claim’s use of “source-file identifiers in the combined multimedia file”, “printing by a printing service”, “selection by a neural network trained using prior assessment answers of multiple users”, replacement of an acontextual fragment with a context fragment before file combination”, and “disability data to affect file selection” define the resulting file, selection mechanism, or transformation of file content rather than merely collecting or displaying information. Applicant has not provided sufficient explanation how these elements integrate the judicial exception or amount to significantly more, and thus are conclusory statements. Further, Applicant is directed to the rejection which addresses each of these elements under Step 1, Prong 1 and 2, and Step 2B. Therefore, Applicant’s argument is not persuasive.
Applicant argues that under Step 2B, the rejection does not establish the ordered combination was well-understood, routine, and conventional, as Applicant contends that claim 36 requires subject-specific inputs, separate score determinations, corresponding media-file selections, convergence of the selected files in a file-combination operation, and presentation of the resulting file. However, except for the generic recitation of a computer environment, e.g., computer-implemented and use of media files, the steps of claim 36 are practically capable of performance by human analog, including mental process and certain methods of organizing human activity, as indicated in the rejection for each limitation. This includes subject-specific inputs, separate score determinations, corresponding file selections, convergence of selected files in a file-combination operation, and presentation of the resulting file. The additional elements are analyzed under Step 2B and the Examiner determined that these elements are recited at a high level of generality, which as evidenced by the Specification and Applicant’s own admission (see citations under Step 2B in the rejection), the additional elements do not provide an improvement to a technology or technical field, but rather merely define a generic field of use in which to perform the abstract idea. Further, the specification is silent as to any technical improvement, and the claims also do not reflect an improvement disclosed in the specification. Therefore, under Step 2B, the additional elements do not amount to significantly more than the abstract idea. Therefore, Applicant’s arguments are not persuasive.
Conclusion
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.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
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) Form at https://www.uspto.gov/patents/uspto-automated- interview-request-air-form.
/JAMES B HULL/Primary Examiner, Art Unit 3715
Prosecution Insights