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 .
Receipt of Applicant’s Amendment filed November 3, 2025, is acknowledged.
Response to Amendment
Claims 1 and 13 have been amended. Claims 1-24 are pending and are provided to be examined upon their merits.
Response to Arguments
Applicant's arguments filed November 3, 2025, have been fully considered but they are not persuasive. A response is provided below in bold where appropriate.
Applicant notes Claim Objection, pg. 10 of Remarks:
Claim Objections
Claim 13 is objected to because of the following informalities: the step “updating, by the computing system, using... images for selectin;” where “selectin” should be “selection.”
Claim 13 has been amended to recite “(iv) a plurality of images for selection.” Applicant thus respectfully requests that the objection to claim 13 be withdrawn.
Withdrawn based on the claim amendment.
Applicant argues 35 USC §101 Rejection, starting pg. 10 of Remarks:
Claim Rejections - 35 USC § 101
Claims 1-24 are rejected under 35 U.S.C. 101 because the claimed invention is allegedly directed to an abstract idea without significantly more. 10
Applicant respectfully submits that representative amended claim | is not directed to any of the enumerated groupings of abstract ideas in the USPTO 2019 Revised Patent Subject Matter Eligibility Guidance (the “2019 PEG”). Specifically, the amended claim 1| is not directed to any of the three groupings below:
* Mathematical concepts— mathematical relationships, mathematical formulas or equations, mathematical calculations;
* Certain methods of organizing human activity—fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions); and
* Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion). (2019 PEG at page 52.)
Amended claim 1 recites a combination of steps directed towards identifying a user’s profile on a database, selecting images for a first session trial, determining a presentation parameter for the first session trial, generating an interface element, transmitting a package to the user device that causes the user device to provide presentation of the first session trial, receiving a response via the interface element, updating the presentation parameter, selecting images for a second session trial, and transmitting another package to the user device that causes the user device to provide presentation of the second session trial, among other things, that cannot be performed outside of a computer, let alone in the human mind.
Respectfully, using a computer for a judicial exception has been shown to be abstract.
As described in Memorandum from Deputy Commissioner for Patents, Reminders on evaluating subject matter eligibility of claims under 35 U.S.C. 101, dated August 4, 2025 (the “Memorandum’”’), “a claim does not recite a mental process when it contains limitation(s) that cannot practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations(s).””» (Memorandum.) Amended claim 1 recites limitations that the human mind is not equipped to perform, such as “identify, based on the one or more requests, a user profile of the user maintained on a database,” “generate an interface element for presentation,” “transmit, to the user device, a package that causes the user device to provide, for presentation of the first session trial to the user, (i) the first image for the first session trial, (ii) the second image for the first session trial, (iii) the third image for the first session trial, in accordance with the first presentation parameter, and (iv) the interface element,” “receive, from the user, a response via the interface element identifying an association of the third image for the first session trial with one of the first image for the first session trial or the second image for the first session trial,” “update, using the performance metric, the first presentation parameter to a second presentation parameter, wherein updating to the second presentation parameter comprises updating at least one of (i) a timing of presentation of the plurality of images, (ii) a location of the plurality of images, (iii) an arrangement of the plurality of images or (iv) a plurality of images for selection,” and “transmit, to the user device, another package that causes the user device to provide, for presentation of the second session trial to the user, (i) the first image for the second session trial, (ii) the second image for the second session trial, and (iii) the third image for the second session trial, in accordance with the second presentation parameter.”
The above cited memorandum is with respect to artificial intelligence and machine learning.
From the above cited memo (pg. 2, last paragraph)…
“The mental process grouping is not without limits. Examiners are reminded not to expand this grouping in a manner that encompasses claim limitations that cannot practically be performed in the human mind. The MPEP and the AI-SME Update provide examples of claim limitations that cannot be practically performed in the human mind.8 Claim limitations that encompass AI in a way that cannot be practically performed in the human mind do not fall within this grouping.”
Further, there may still be limitations in a claim that can be a mental process, and the limitations that are not may be abstract on another basis, may be insignificant extra solution activity, or recited at a high level of generality.
Applicant is using a computer at a high level to perform functions that can be performed in the mind of a person or with pen and paper. The identify a profile is based on a user request. A person can identify a profile from a request and retrieve the profile from a database (e.g., filing cabinet). Also, see MPEP 2106.04(a)(2) III C where using a generic computer for a mental process was not enough to make the claims statutory.
For example, amended claim 1 describes transmitting a package, such as a software package, to the user device to cause the user device to provide presentation of the relevant session trial. The human mind is not equipped to transmit such a package to a device such that the package causes the device to “provide, for presentation of the first session trial to the user, (i) the first image for the first session trial, (ii) the second image for the first session trial, (iii) the third image for the first session trial, in accordance with the first presentation parameter, and (iv) the interface element.” Transmission and execution of such a package can involve machine- executable instructions, or code, that can cause the user device to render the images of the session trial. Thus, limitations of amended claim 1 such as “transmit, to the user device, a package that causes the user device to provide, for presentation of the first session trial to the user” and “transmit, to the user device, another package that causes the user device to provide, for presentation of the second session trial to the user” are inherently rooted in computer technology and cannot be performed in the human mind. For at least these reasons, Applicant respectfully submits that amended claim 1 is not directed to a mental process and is thus patent eligible.
A package could be anything, and software is not claimed. A person can create with pen and paper interface elements. Transmit a package and cause a user device to provide is recited at a high level of generality.
Further, amended claim 1 is directed to specific technical features, including identifying a user profile maintained on a database, identifying the user’s condition and images of expressions associated with the user, generating an interface element, transmitting a package to the user device that causes the user device to provide presentation of the first session trial, receiving via the interface element a response identifying an association of the third image with either the first image or the second image, and transmitting another package to the user device that causes the user device to provide presentation of the second session trial, which are not any of the aforementioned methods of organizing human activity. For example, the Office Action states that claim 1 recites elements that cover “performance of the limitation as managing personal behavior.” However, as described above, amended claim 1 is directed to multiple technical features that are not any of the aforementioned methods of organizing human activity, which includes managing personal behavior. For example, amended claim 1 describes presenting multiple images to a user in accordance with transmitted packages and dynamically updating a presentation of the multiple images based on user-computer interactions. This is not descriptive of managing personal behavior, nor any of the aforementioned methods of organizing human activity. For at least these reasons, Applicant respectfully submits that amended claim 1 is not directed to certain methods of organizing human activity and is thus patent eligible.
Using a computer for a judicial exception is not enough to make abstract claims statutory. Further, a person interacting with a computer to perform a judicial exception has been shown to be abstract.
From Applicant’s argument above…
>>”For example, amended claim 1 describes presenting multiple images to a user in accordance with transmitted packages and dynamically updating a presentation of the multiple images based on user-computer interactions. This is not descriptive of managing personal behavior, nor any of the aforementioned methods of organizing human activity.”<<
The above requires human interaction. Images are presented to a user and images are dynamically updated based on user interactions. This user interaction is managing personal behavior by following rules (interacting with a device).
Further, under the 2019 Revised Patent Subject Matter Eligibility Guidance, even if a claim recites an enumerated judicial exception, which the Applicant submits it does not, that claim is still “not “directed to’ the judicial exception if the judicial exception is integrated into a practical application of the judicial exception.” (2019 PEG, page 50.) If the claim is integrated into a practical application of the judicial exception, “then the claim is eligible at Prong Two of revised Step 2A. This concludes the eligibility analysis.” (2019 PEG, page 54.)
Under the 2019 PEG, exemplary considerations for integration into a practical application include:
“[a]n additional element [that] reflects an improvement in the functioning of a computer, or an improvement to other technology or technical field” and
“an additional element [that] 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.” (2019 PEG, page 55.)
The MPEP (revision November, 2024) provides the current guidance.
Amended claim 1 provides many technical improvements and solves several challenges in the field. Amended claim 1 recites a number of steps, such as “identify, based on the one or more requests, a user profile of the user maintained on a database,” “identify, using the user profile of the user maintained on the database, a condition of the user to be addressed and a plurality of images of expressions associated with the user,” “select, for a first session trial for the user, (i) a first image for the first session trial from the plurality of images of expressions associated with the user, (ii) a second image for the first session trial associated with another user, and (iii) a third image for the first session trial corresponding to one of a plurality of types for the condition,” “generate an interface element for presentation,” and “select, for a second session trial for the user, (i) a first image for the second session trial from the plurality of images of expressions associated with the user, (ii) a second image for the second session trial associated with another user, and (iii) a third image for the second session trial corresponding to one of a plurality of types for the condition,” that can be resource-intensive operations. For example, if such steps were performed by the user device, the user device may expend valuable and limited power, memory, and computing resources. However, amended claim 1 recites that the steps are performed by “a computing system having one or more processors coupled with memory” and “a package that causes the user device to provide, for presentation of the first session trial to the user” is transmitted to the user device. For example, the computing system of the claimed invention can perform the resource-intensive operations and transmit packages to the user device that are associated with presentation of images. Thus, amended claim 1 describes relegating resource-intensive operations to the computing system and that the computing system transmits the results of these operations to the user device. Amended claim 1 accordingly recites a computing system that can save the limited power, memory, and computing resources of the user device, while enabling the user device to provide presentation of session trials. A POSITA would have understood the technical advantages in light of the claim language and the specification as filed in at least FIG. 2 and paragraphs [0045]-[0065].
Respectfully the above is not improving a technology. Saving power, memory, and computing resources as argued is an effect or result of performing the judicial exception and may or may not happen (may or may not save power, etc.).
Further, amended claim 1 recites a combination of steps directed towards receiving one or more requests from a user device, identifying a user profile on a database, identifying a user’s condition and images of expressions associated with the user, selecting images for a first session trial, determining a presentation parameter for the first session trial, generating an interface element, transmitting a package to the user device that causes the user device to provide presentation of the first session trial, receiving a response via the interface element, determining a performance metric, updating the presentation parameter, selecting images for a second session trial, transmitting another package to the user device that causes the user device to provide the presentation of the second session trial, and updating at least one of a treatment regimen or the user profile. Thus, even assuming arguendo if amended claim 1 is directed to a judicial exception (which Applicant does not concede), amended claim 1 imposes meaningful limits on the alleged judicial exception and integrates the alleged judicial exception into a practical application.
The above meaningful limits cannot be provided by a judicial exception. For example, there is no improvement to computer or other technology.
Thus, Applicant respectfully submits that claim 1 is patent eligible. Applicant respectfully requests that the rejection of claim 1, and its dependents, under 35 U.S.C. § 101 be withdrawn. Applicant further requests that the rejection of independent claim 13, and its respective dependents, be withdrawn at least because claim 13 contains limitations similar to claim 1.
Based on the above, the rejection is respectfully maintained but modified for the claim amendments.
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 1-24 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-24 are either directed to a system or method, which are statutory categories of invention. (Step 1: YES).
The Examiner has identified method Claim 13 as the claim that represents the claimed invention for analysis and is similar to system Claim 1.
Claim 13 recites the limitations of:
A method of managing sessions for users, comprising:
receiving, from a user device of a user, one or more requests for a first session for the user;
identifying, by a computing system, based on the one or more requests, a user profile of the user maintained on a database;
identifying, by the computing system, using the user profile of the user maintained on the database, a condition of the user to be addressed and a plurality of images of expressions associated with the user;
selecting, by the computing system, for a first session trial for the user, (i) a first image for the first session trial from the plurality of images of expressions associated with the user, (ii) a second image for the first session trial associated with another user, and (iii) a third image for the first session trial corresponding to one of a plurality of types for the condition;
determining, by the computing system, a first presentation parameter for the first session trial based on the user profile;
generating, by the computing system, an interface element for presentation;
transmitting, to the user device, a package that causes the user device to provide for presentation of the first session trial to the user, (i) the first image for the first session trial, (ii) the second image for the first session trial, (iii) the third image for the first session trial, in accordance with the first presentation parameter, and (iv) the interface element;
receiving, by the computing system, from the user, a response via the interface element identifying an association of the third image for the first session trial with one of the first image for the first session trial or the second image for the first session trial;
determining, by the computing system, a performance metric of the user for the first session trial based on the association identified in the response and a type of the plurality of types corresponding to the third image; and
updating, by the computing system, using the performance metric, the first presentation parameter to a second presentation parameter
wherein updating to the second presentation parameter comprises updating at least one of (i) a timing of presentation of the plurality of images, (ii) a location of the plurality of images, (iii) an arrangement of the plurality of images or (iv) a plurality of images for selection;
selecting, by the computing system, for a second session trail for the user, (i) a first image for the second session trial from the plurality of images of expressions associated with the user, (ii) a second image for the second session trial associated with another user, and (iii) a third image for the second session trial corresponding to one of a plurality of types for the condition;
transmitting, to the user device, another package that causes the user device to provide for presentation of the second session trial to the user, (i) the first image for the second session trial, (ii) the second image for the second session trial, and (iii) the third image for the second session trial, in accordance with the second presentation parameter; and
based on the response, update, by the computing system, at least one of (i) a treatment regimen or (ii) the user profile.
These above limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. The claim recites elements, in non-bold above, which covers performance of the limitation as managing personal behavior. For example, a request is received from a user and a profile is identified based on the request, identifying a condition of a user to be addressed, selecting for a first session trial for a user a first image, a second image, and a third image, providing to the user the first, second and third images, and receiving a response identifying an association of the third image with the first or second image from the user is the user following rules or instructions by providing a response to images. Further, diagnosing or determining a patient’s health status by selecting images corresponding to a plurality of types for a condition and determining a performance metric of the user based on the association identified in response and a type of the plurality of types corresponding to the third image is identifying a condition and falls under the abstract concept of managing personal behavior (see para. [0013] of the specification for more detail on performance metric may measure an amount of mental association between a subject and the condition). It is important to note that the examples provided by the MPEP such as social activities, teaching, and following rules or instructions are provided as examples and not an exclusive listing and that MPEP 2106.04(a)(2) II stating certain activity between a person and a computer may fall within the “certain methods of organizing human activity” grouping. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a managing personal behavior, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. Claim 1 is also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
In as much as the claims can be performed in the mind of a person, with pen and paper, the claims are also abstract under Mental Processes grouping of abstract ideas. For example, a person can identify using a user profile, a user condition, select a first and second session trial using first, second and third images, determine a presentation parameter, provide for presentation first, second and third images, receive from the user a response identifying a third image, determine a performance metric and update the performance metric. It is also pointed out, generic computer performing an abstract idea has been shown to be abstract under Mental Processes (see MPEP 2106.04(a)(2) III C).
This judicial exception is not integrated into a practical application. In particular, the claims only recite: user device, computing system, processors, memory, database (Claim 1); user device, computing system, database (Claim 13). The computer hardware is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. The server appears to be a generic computing system (e.g., Fig. 8, ref. 800). The ”interface element” appears to be computer display software for interacting with the display (see para. [0012] of the specification where interface elements may be a slide bar or command buttons). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore claims 1 and 13 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification para. [0000259] about implantation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Steps such as receiving, providing (transmitting), and storing are steps that are considered insignificant extra solution activity and mere instructions to apply the exception using general computer components (see MPEP 2106.05(d), II). Thus claims 1 and 13 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2-12 and 14-24 further define the abstract idea that is present in their respective independent claims 1 and 13 and thus correspond to Certain Methods of Organizing Human Activity and Mental Processes and hence are abstract for the reasons presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Claims 9 and 21 recite a graphical user interface which is generic display software for a computer. Therefore, the claims 2-12 and 14-24 are directed to an abstract idea. Thus, the claims 1-24 are not patent-eligible.
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 1-24 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 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, 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 13 recites “transmitting, to the user device, a package that causes the user device to provide for presentation of the first session trial to the user,… transmitting, to the user device, another package that causes the user device to provide for presentation of the second session trial to the user,…” where no teaching of transmitting a package or another package that causes a user device to provide a first session trial or second session trial can be found in the specification.
The specification teaches:
“Upon determination, the package generator 135 may output, create, or otherwise generate at least one session package 235. The session package 235 may identify, contain, or otherwise include information to run the session trial for the user 205 through the application 150 on the client 110. The session package 235 may identify or include the self image 225A, the other image 225B, the stimulus image 225C, and the trial parameters 230. In some embodiments, the session package 235 may include identifiers (e.g., uniform resource locators (URLs)) referencing the self image 225A, the other image 225B, and the stimulus image 225C, respectively. In some embodiments, the session package 235 may also identify or include an identification of the task, the correct response, or incorrect response, among others. In some embodiments, the session package 235 may correspond to one or more files (e.g., image and configuration files) to be sent to the application 150. In some embodiments, the session package 235 may correspond to the payload of one or more data packets sent to the application 150 on the client 110. With the generation, the package generator 135 may transmit, send, or otherwise provide the session package 235 to the application 150 on the client 110.” [0064]
Therefore, the generator may transmit a package to an application on client 110. This is not the same as transmit a package that causes a user device to provide for presentation of first and second session trial. Claim 1 has a similar problem.
Claims 2-12 and 14-24 are rejected as they depend from their respective independent claim.
Examiner Request
The Applicant is requested to indicate where in the specification there is support for amendments to claims should Applicant amend. The purpose of this is to reduce potential 35 U.S.C. §112(a) or §112 1st paragraph issues that can arise when claims are amended without support in the specification. The Examiner thanks the Applicant in advance.
Prior Art Search
A prior art search was conducted but does not result in a prior art rejection at this time. The best prior art found is Pub. No. US 2014/0095189 to Holmes.
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 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 KENNETH BARTLEY whose telephone number is (571)272-5230. The examiner can normally be reached Mon-Fri: 7:30 - 4:00 EST.
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/KENNETH BARTLEY/Primary Examiner, Art Unit 3684