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 .
Continued Examination Under 37 CFR 1.114
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/12/2026 has been entered.
Status of Claims
Claims 1-14 and 16-18 are pending per Applicant’s 03/12/2026 submission to the USPTO. Claim 1 is amended. Claim 15 was previously canceled. No claims are newly added or withdrawn.
Response to Arguments
Applicant's arguments filed with respect to 35 USC 101 rejection of the previous Office action have been fully considered but they are not persuasive. Applicant argues:
Applicant submits that the Examiner has misinterpreted the reasons that the Interval claims were found ineligible. Remarks p. 11.
Respectfully, we disagree on what the holding in the Interval case. The MPEP provides guidance with respect to case law. If the Examiner has misinterpreted the case, then so has the Office of Patent Legal Administration’s Drafting Committee for the MPEP. The Applicant’s cited proportion of “The claim limitation for . . . and do not further define how the attention manager segregates the display of two sets of data on a display screen” does NOT provide a basis for determining that the instant claims are patent-eligible. Even if broadly read the section specifically refers to the overlapping or lack thereof for the displayed information – what the display looks like on the screen. The instant claims are only concerned with whether information is displayed or not (stealth or non-stealth) and not with the layout of the screen.
The rejection of the previous Office action is maintained as updated below.
Applicants submit that the CAFC opinion actually supports that the subject claims are eligible subject matter. Unlike in Interval, the present claims actually provide "description for how a display device would ensure the segregation of the two sets of information presented on a display screen." The "segregation" is between non-display/display the user interface and the "trigger" is the detection of "non-preferred issue resolution activity." And even if the present claims are directed to the same "abstract idea" as in Interval, claims directed to an abstract idea are still patent eligible if the claim recites "additional elements that amount to significantly more than the judicial exception" Remarks p. 14
Respectfully the Office disagrees with Applicant’s position. The instant invention does not have two sets of data to display therefore it cannot define how the data is segregated. The claimed invention does define whether information is displayed or not displayed – which is more like the holding Interval "[s]tanding alone, the act of providing someone an additional set of information without disrupting the ongoing provision of an initial set of information is an abstract idea," observing that the district court "pointed to the nontechnical human activity of passing a note to a person who is in the middle of a meeting or conversation as further illustrating the basic, longstanding practice that is the focus of the [patent ineligible] claimed invention." 896 F.3d at 1344-45, 127 USPQ2d at 1559, see MPEP 2106.04(a)(2). Where the trigger is whether someone will be disrupted or not. The instant claims seeks to interrupted the user’s non-preferred issue resolution by exiting stealth mode.
The rejection of the previous Office action is maintained as updated below.
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 1-14 and 16-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (i.e. certain methods of organizing human activity and mental process) without practical application or significantly more when the elements are considered individually and as an ordered combination.
Step 1: Is the claimed invention to a process, machine, manufacture or composition of matter?
Yes, the claims fall within at least one of the four categories of patent eligible subject. Claims 1-14 and 16-18 are to a computer-implemented method (process).
Step 2A, prong 1: Does the claim recite an abstract idea, law or nature, or natural phenomenon?
Yes, the claims are found to recite an abstract idea. Specifically, the abstract idea of certain methods of organizing human activity and a mental process.
Where certain methods of organizing human activity include 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) (see MPEP § 2106.04(a)(2), subsection II).
Where mental processes relates to concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Claim 1 (as a representative claim) recites the following, where the limitations found to contain elements of the abstract idea are in bold italics:
1. A computer-implemented method of providing user guidance for laboratory issue resolution within a laboratory system, the method comprising:
detecting a laboratory operation issue within the laboratory system;
performing a lookup in a database to retrieve a preferred resolution for resolving the detected laboratory operation issue;
providing a user notification to the laboratory user indicating the laboratory operation issue;
operating a user interface in a stealth mode in response to the detection of the laboratory issue;
wherein the user interface comprises guidance for the laboratory user to perform the preferred resolution;
monitoring activity of the laboratory user after receipt of the user notification by a user behavior observation system;
detecting a non-preferred issue resolution activity for the laboratory operation issue being performed by the laboratory user;
in response to detecting the non-preferred issue resolution activity, automatically exiting the stealth mode and displaying the user interface on an output display of the laboratory system to the laboratory user,
wherein the user interface display the guidance for the laboratory user to perform the preferred resolution,
wherein the user interface is not displayed unless the non-preferred issue resolution activity is detected;
detecting a resolving of the laboratory operation issue; and
in response to detecting the resolving of the laboratory operation issue, returning the user interface to the stealth mode and removing the display of the user notification to indicate the resolving to the laboratory user.
The claims are directed to the activity monitoring of a human laboratory users, detection or an error (non-preferred issue resolution) made by a human laboratory user based on instructions (notifications/guidance) provided to the user, and the correction of human laboratory user’s error when detected. Where the correction is made through guidance to the human laboratory user in the form of instructions displayed on an interface. Where the instant specification teaches, “the laboratory user has gained knowledge on how to resolve the laboratory issue the next time the laboratory issue is encountered by the laboratory user”, Spec. [44]. It is clear from the specification that the user is made smarter by the claimed invention the system itself is not improved. The claims are found to be a type of managing personal behavior, which includes following rules or instructions - certain methods of organizing human activity.
For the claims recites the “performing a lookup in a database to retrieve a preferred resolution for resolving the detected laboratory operation issue” this is akin to the mental step a user might take in search a physical research library for a solution to a known issue; thus the claims are also found to be directed to a mental process. It recites “monitoring activity of the laboratory user after receipt of the user notification by a user behavior observation system” which is a mental step a user might perform using the mind’s ability to observe. Similarly, the claims recite “detecting a resolving of the laboratory operation issue” which is a mental step a user might take in deciding if an issue has been resolved – it is a judgment that the human user is capable of making mentally.
Step 2A, prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No, the claimed invention does not recite additional elements that integrate the abstract idea into a practical application. Where a practical application is described as integrating the abstract idea by applying it, relying on it, or using the abstract idea in a manner that imposes a meaningful limit on it such that the claim is more than a drafting effort designed to monopolize it, see October 2019: Subject Matter Eligibility at p. 11.
The identified judicial exception is not integrated into a practical application. In particular, the claims recites the additional limitations see non-bold-italicized elements above. The “providing a user notification” (displaying), “exiting the stealth mode” (displaying), and “returning the user interface to the stealth mode” (not displaying) elements are determined to be insignificant extra-solution activity. Where the displaying or not displaying is viewed as a form of outputting.
Where 2106.05(g) MPEP states, “term "extra-solution activity" can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity. An example of pre-solution activity is a step of gathering data for use in a claimed process, e.g., a step of obtaining information about credit card transactions, which is recited as part of a claimed process of analyzing and manipulating the gathered information by a series of steps in order to detect whether the transactions were fraudulent. An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent.”
The Office finds that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra solution activity to the judicial exception; or only generally linking the use of the abstract idea to a particular technological environment or field is not sufficient to integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the abstract idea?
No, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, when considered individually and as part of the ordered combination.
Where 2106.05(d)(I)(2) of the MPEP states, “A factual determination is required to support a conclusion that an additional element (or combination of additional elements) is well-understood, routine, conventional activity. Berkheimer v. HP, Inc., 881 F.3d 1360, 1368, 125 USPQ2d 1649, 1654 (Fed. Cir. 2018). However, this does not mean that a prior art search is necessary to resolve this inquiry. Instead, examiners should rely on what the courts have recognized, or those in the art would recognize, as elements that are well-understood, routine, conventional activity in the relevant field when making the required determination. For example, in many instances, the specification of the application may indicate that additional elements are well-known or conventional. See, e.g., Intellectual Ventures v. Symantec, 838 F.3d at 1317; 120 USPQ2d at 1359 ("The written description is particularly useful in determining what is well-known or conventional"); Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015) (relying on specification’s description of additional elements as "well-known", "common" and "conventional"); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 614, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (Specification described additional elements as "either performing basic computer functions such as sending and receiving data, or performing functions ‘known’ in the art.").”
These limitations do NOT offer an improvement to another technology or technical field; improvements to the functioning of the computer itself; apply the judicial exception with, or by use of, a particular machine; effect a transformation or reduction of a particular article to a different state or thing; add a specific limitation other than what is well-understood, routine and conventional in the field, or add unconventional steps that confine the claim to a particular useful application; or other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. Therefore, these additional limitations when considered individually or in combination do not provide an inventive concept that can transform the abstract idea into patent eligible subject matter.
The dependent claims do not further limit the claimed invention in such a way as to direct the claimed invention to statutory subject matter. Further details on the dependent claims are provided below:
Claim 2 further adds to the abstract idea of certain methods of organizing human activity; where the user interacts with the systems and instruments.
Claim 3 further defines issues, i.e. data where data regardless of its content is abstract.
Claims 4 and 5 add to the abstract idea of a mental process where the human mind using its ability to evaluate and reason could determine the non-preferred issue resolution is actually the optimal corrective procedure. Where the saving element is an old well know function of a computing device.
Claim 6 adds to the abstract idea of a mental process where the human mind using its ability to evaluate and reason could determining a user’s skill level based on historical data. Where the outputting (reporting) element is an old well know function of a computing device.
Claim 7 adds to the abstract idea of a mental process - were the monitoring of the user for adherence and effectiveness could be performed using the human’s mind ability to observe and evaluate. Where receiving data and reporting data are insignificant extra-solution activity.
Claims 8, 10, and 11 add to the abstract idea of a mental process - were the ranking of data (training, issue resolutions, etc.) could be done by the human mind using its ability to evaluate information. Where providing the training information is extra-solution activity.
Claim 9 adds sending/receiving information (updating, removing, requesting) which are viewed as insignificant extra solution activity and the storing element is an old well know function of a computing device.
Claim 12 adds to the abstract idea of certain methods of organizing human activity without significantly more or practical application.
Claim 13 add to the abstract idea of a mental process using the mind’s ability to observe (track). Where searching (detecting) and storing in database are old well know function of a computing device.
Claim 14 describes generic computing devices used with claimed method they neither provide significantly more or a practical application.
Claim 16 it is not clear what the resolution is or the means by which it is performed. Simply and generally performing a the resolution – is a step of “apply it”.
Claim 17 where looking up and retrieving data from a database are old well know function of a computing device.
Claim 18 outputting (generating) instructions is insignificant extra solution not significantly more or practical application.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Perholtz et al (US Pat 5,732,212) teaches a Remote User desires access to a Host Unit in a manner that would not be readily detectable by anyone using the Host PC (hereinafter referred to as a "stealth mode"), the embodiment of the Host Unit could only include AC Power 50 and Setup Mode 54 lights and would not include the audible alarm. In such cases, the Remote user would access the Host Unit in a "view only" mode, as more fully described below in the narrative supporting FIG. 5B. This embodiment would be used, for example, in cases where an employer desired to remotely, discreetly, monitor employee use of an employer's Host PC.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to FOLASHADE ANDERSON whose telephone number is (571)270-3331. The examiner can normally be reached Monday to Thursday 12:00 P.M. to 6:00 P.M. CST.
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/FOLASHADE ANDERSON/Primary Examiner, Art Unit 3623