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 .
Applicant's amendment and arguments filed 8/18/2025 with respect to the 35 USC 101 rejections as applied in the Non-Final rejection dated 5/19/2025 have been fully considered but they are not persuasive. Applicant argues on page 16 of the response that the claims now include additional elements that integrate the judicial exception into a practical application. The Examiner respectfully disagrees. The generation of questions; receiving and analyzing of answers to the questions and determinations of a brain dysfunction based on the answers to the questions are all abstract idea steps (mental processes). I person can mentally generate questions; verbally ask them and then mentally analyze the responses for abnormalities.
Applicant’s amendment and arguments filed 08/18/2025, with respect to the previously applied 35 USC 112, 102 and 103 rejections as set forth in the Non-Final Rejection dated 05/19/2025 have been fully considered and are persuasive. The previously applied 35 USC 112, 102 and 103 rejections have been withdrawn.
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, 3-10, 12, 14 and 17-25 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claim 1 recites a machine (i.e. a non-transitory computer readable medium); Claim 12 recites a machine (i.e. an information processing device); and Claim 14 recites a process.
Step 2A, Prong 1
Claim 1 recites the steps of converting a voice to text; detecting abnormal points forma text; analyzing a message; extracting data from the message; generating questions form the extracted data; receiving answers to the questions; determining whether the answers are correct; and estimating a possibility of brain dysfunction based on the correctness or incorrectness of the answers.. These steps can be practically performed within the human mind and/or with the aid of pen and paper. A person could convert speech they hear into a text string via pen and paper; can make a mental determination of an abnormal speech pattern, word, phrase, etc.; can analyze verbal or written communication to identify key points and generate and ask questions based on the key points; and can determine whether responses to the questions are correct and determine if an abnormality exists base don the correctness or incorrectness of the responses.
Claims 12 and 14 contain the same abstract ideas.
Step 2A, Prong 2
Claims 1, 12 and 14 do not include any additional elements that amount to integration of the abstract idea into a practical application.
Claim 1 includes the additional elements of receiving voice input; first and second terminals; and sensing and receiving data from the first and second terminals.
Claim 12 includes the additional elements of a processor; first and second terminals; and sensing and receiving data from the first and second terminals.
Claim 14 likewise includes the additional elements of a processor; first and second terminals; and sensing and receiving data from the first and second terminals.
Receiving voice input amounts to the insignificant, extra-solution activity of data gathering; and the processor, first terminal and second terminal amount to generic computer structure for implementing the abstract idea on a computer. Therefore, none of these elements amount to integration of the abstract idea into a practical application.
Step 2B
Claims 1, 12 and 14 do not include any additional elements that amount to significantly more than the abstract idea itself.
Claim 1 includes the additional elements of receiving voice input; first and second terminals; and sensing and receiving data from the first and second terminals.
Claim 12 includes the additional elements of a processor; first and second terminals; and sensing and receiving data from the first and second terminals.
Claim 14 likewise includes the additional elements of a processor; first and second terminals; and sensing and receiving data from the first and second terminals.
Receiving voice input amounts to the insignificant, extra-solution activity of data gathering; and the processor, first terminal and second terminal amount to generic computer structure for implementing the abstract idea on a computer. Therefore, none of these elements (alone or in combination) amount to significantly more than the abstract idea itself.
Claims 3, 5 and 8 only further define the data gathering steps and abstract idea.
Claims 4, 9, 10 and 17-25 only further defines generic computer structure and the abstract idea.
Claims 6 and 7 only further defines the abstract idea and introduce methods of organizing human activity (another abstract idea).
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, 3-10, 12, 14 and 17-25 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.
With respect to computer-implemented functional limitations, MPEP §2161.01 states: “…claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed. See MPEP §§ 2163.02 and 2181, subsection IV.”
Regarding Claim 1, Applicant claims the computer-implemented steps of “analyzing message input from the another user”; “extracting data for generating questions for the subject”; and “generating one or more questions based on the extracted data”. Par. [0095] of PGPUB 2023/0200748 (the publication of the present application) provides supports for these limitations stating: “The server 1 analyzes the message input from the other user and extracts data for generating the first and second questions. For example, the server 1 extracts a proper noun (for example, a name of a person, and the grandchild's name “Taro” in the examples of FIGS. 11A and 11B) in the text and the image. The server 1 generates the first and second questions based on the extracted data, and outputs the first and second questions to the speaker terminal 3.”
Applicant has indicated the intended result of extracting data (such as a name “Taro”) from a message but does not set forth any particular algorithm or steps for doing so. Applicant has not set forth any algorithm that is able to assign any particular significance to particular words within a message. How is a proper noun distinguished form a verb distinguished form an improper noun, adjective, adverb etc.? Additionally, Applicant has not set forth any steps of an algorithm that, once data is extracted, constructs a question to be asked based on the extracted data. How does the algorithm ascribe any particular meaning or significance of a word or phrase to then auto-generate a meaningful question based on the word or phrase? Applicant has claimed and described an intended, functional result without the details of an algorithm that can actually produce the claimed and described results.
Claims 12 and 14 contain the same issues as highlighted with respect to Claim1 above. Claims 3-10 and 17-25 are rejected as being dependent on indefinite claims 1, 12 and 14.
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.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3-10, 12, 14 and 17-25 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
First, the Examiner notes MPEP §2173.03 states “A claim, although clear on its face, may also be indefinite when a conflict or inconsistency between the claimed subject matter and the specification disclosure renders the scope of the claim uncertain as inconsistency with the specification disclosure or prior art teachings may make an otherwise definite claim take on an unreasonable degree of uncertainty. In re Moore, 439 F.2d 1232, 1235-36, 169 USPQ 236, 239 (CCPA 1971); In re Cohn, 438 F.2d 989, 169 USPQ 95 (CCPA 1971); In re Hammack, 427 F.2d 1378, 166 USPQ 204 (CCPA 1970).”
Regarding Claim 1, the claim includes the limitation “generating one or more questions based on the extracted data” and “determining whether the answers to the one or more questions are correct”. The support for the embodiment presently claimed can be found in the “Second Embodiment” of par. [0086-0103] as referenced from PGPUB 2023/0200748, which is the publication of the present application. Particularly, with respect to the claimed “questions”, Applicant’s specification states in par. [0096], “The description will be continued returning to FIGS. 10A and 10B. First, the server 1 generates the first question by voice and outputs the first question to the speaker terminal 3. For example, as illustrated in FIG. 10A, the server 1 outputs the image extracted from the message of the other user and another image different from the image to the speaker terminal 3 to be displayed, and outputs a voice for prompting a screen operation for selecting one of the images.” Additionally, Fig, 10A shows a statement “Please touch photo of Taro” as the first question. However, a command to select a photo is not a question. It is therefore unclear as to what type of phrase/statement/question the system is configure to automatically generate as the claim is at odds with the specification and the statements within the specification are at odds with themselves as well. Applicant states a question is posed while only pointing to a command and not a question.
Furthermore, the second question is exemplified in Fig. 10B which states “Do you want to view photos”. Par. [0099] states that this is an example of the second question, “When the input of the answer to the first question is received, the server 1 outputs the second question by text. For example, as illustrated in FIG. 10B, the server 1 displays an interrogative sentence asking whether or not to browse an image (for example, a photograph), and displays an object (for example, a button) for selecting whether or not to browse the image.” However, it is unclear how this question can have a correct or incorrect answer (see claim and par. [0101]). The answer would be a preference and not have a right or wrong aspect to it. Therefore, it is unclear how the answer to such a question would have any bearing on determining a brain dysfunction or lack thereof. There are inconsistencies between the claimed subject matter and the specification to the extent that the scope of the claims are unclear.
Claims 12 and 14 contain the same issues as claim 1 above.
Claims 3-10 and 17-25 are rejected as being dependent on indefinite claims 1, 12 and 14.
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 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 ALLEN PORTER whose telephone number is (571)270-5419. The examiner can normally be reached Mon - Fri 9:00-6:00 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Carl Layno can be reached at 571-272-4949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALLEN PORTER/Primary Examiner, Art Unit 3796