Prosecution Insights
Last updated: April 17, 2026
Application No. 18/235,928

STIMULUS GENERATOR

Non-Final OA §101§102§103§112
Filed
Aug 21, 2023
Examiner
BODENDORF, ANDREW
Art Unit
3715
Tech Center
3700 — Mechanical Engineering & Manufacturing
Assignee
unknown
OA Round
1 (Non-Final)
27%
Grant Probability
At Risk
1-2
OA Rounds
4y 1m
To Grant
66%
With Interview

Examiner Intelligence

Grants only 27% of cases
27%
Career Allow Rate
25 granted / 94 resolved
-43.4% vs TC avg
Strong +40% interview lift
Without
With
+39.6%
Interview Lift
resolved cases with interview
Typical timeline
4y 1m
Avg Prosecution
32 currently pending
Career history
126
Total Applications
across all art units

Statute-Specific Performance

§101
20.1%
-19.9% vs TC avg
§103
35.8%
-4.2% vs TC avg
§102
16.6%
-23.4% vs TC avg
§112
24.5%
-15.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 94 resolved cases

Office Action

§101 §102 §103 §112
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. Status of Claims This action is in response to the amendment filed on August 21, 2023. Claims 1-17 are pending. Drawings The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the processor, the memory, the stimulus engine, and the screen must be shown or the features canceled from the claims. No new matter should be entered. The drawings are objected to as failing to comply with 37 CFR 1.84(p)(4) because reference character “12” ha s been used to designate both data groups in general in Fig 1 and a points to a particular data group in Fig 2 . In addition, character “11” is described in the specification as indicating the highlighted data groups; however, in Fig. 2 character “ 11 ” only point s to one of the highlighted data groups in step b. Fig. 2 should be corrected to have character 11 point to each highlighted element and character 12 indicate all of the data groups. Character “ 13 ” has similar issues for specifying only one of the selected data group s in step c in Fig. 3 when it should point to each of the selected data groups. In addition, the specification indicates character “ 40 ” is a stimulus generator application; however, reference character 40 in Fig. 2 points to examples of display screens output by an application (but not an application) . Corrected drawing sheets in compliance with 37 CFR § 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 § CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance. Specification The disclosure is objected to because of the following informalities: Page 9, line 22 refers to “a stylus generated idea 34.” It is believed this should read --a stimulus generated idea 34.-- The abstract of the disclosure is objected to because the abstract should not refer to purported merits or speculative applications of the invention . Therefore, the language “The stimulus is intended to act as stimuli to the user in order to help drive new thoughts and ideas useful when trying to solve a problem, get inspiration, or be creative” should be deleted. A corrected abstract of the disclosure is required and must be presented on a separate sheet, apart from any other text. See MPEP § 608.01(b). Claim Objections Cl aims 2- 6 , 8, 12, and 15 -17 are objected to because of the following informalities: Claim s 2 and 3 include the language “ the new output/s (stimulus) .” It is not clear what “/” means in the context of the claim. For example, does the claim recite a single new output, multiple new outputs, or single and multiple new outputs? The slash should be deleted from the claim. For purposes of examination, this term is interpretated as a single new output. In addition, it is unclear what the term in parentheticals means. Is this an option term, and additional term, or equivalent term ? The parentheticals should be deleted from the claim and the term either positively recited , it relation to the other claim components state, or it should be deleted from the claim. For purposes of examination, this term is interpretated as an optional term that does not further limit the claim. Appropriate correction is req uired. Claim 3 includes the language “wherein the new output/s (stimulus) is based on a predetermined algorithm selection from one or more data groups.” This clause is confusing. The language is unclear whether the predetermined algorithm is selected from the one or more data groups or whether the selection of the one or more data groups is performed by a predetermined algorithm. For purposes of examination, this term is interpretated as the algorithm selecting the output from a data group . Appropriate correction is req uired. Claim s 4 and 8 include the language “ data group /s.” It is not clear what “/” means in the context of the claim. For example, does the claim recite a data group , data groups , or single and multiple data groups ? The slash should be deleted from the claim. For purposes of examination, this term is interpretated as a single data group . Appropriate correction is req uired. Claim 5 includes the language “data group/s” and “output/s.” It is not clear what “/” means in the context of the claim. For example, does the claim recite a data group, data groups, or single and multiple data groups? Does the claim recite a single output, multiple outputs, or single and multiple outputs? The slash should be deleted from the claim. For purposes of examination, these terms are interpretated as a single data group and a single output. In addition, the claim recites “the new output is selected from the plurality of outputs the same data group/s of the previously selected output/s.” There appears to be a word (e.g., a proposition ) missing from the clause. It is believed this should read --the new output is selected from the plurality of outputs of the same data group/s of the previously selected output/s. Appropriate correction is req uired. Claim 6 includes the language “ which may contain text, words, images and/or sounds. ” The language “which may” is unclear and leads to confusion over whether the terms are intended to be optional or are within the scope of the claim. As a result, the claim is unclear as one cannot determine the metes and bounds of the claim. For purposes of examination, these terms are interpretated as optional and do not further limit the scope of the claim. Appropriate correction or clarification is req uired. Claim 12 includes the language “ a chosen stimulus or generated idea.” However, there is no previous recitation of a step of choosing a stimulus or generating an idea, therefore, it is unclear what these terms are referring to within the steps of the method. For purposes of examination, these terms are interpretated as an output selected from a data group. Appropriate correction or clarification is req uired. Claim 15 includes the language “further comprising wireless connection.” Wireless is lacking an indefinite article. This should read -- further comprising a wireless connection--. In addition, the claim includes the language “generated idea(s).” It is not clear what “(s)” means in the context of the claim. For example, does the claim recite a single generated idea, multiple generated ideas, or single and multiple generated ideas? The parentheticals should be deleted from the claim and the term either positively recited or deleted from the claim. For purposes of examination, this term is interpretated as a single generated idea. Appropriate correction is req uired. Claims 16 and 17 include the language “a storage to store plurality of data groups.” Plurality is lacking an indefinite article. This should read -- a storage to store a plurality of data groups--. Appropriate correction is req uired. 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. Claims 2, 3 , and 9 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claims contain 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, at the time the application was filed, had possession of the claimed invention. Claims 2 , 3 , and 9 recite the following computer/processor-based functions (respectively): 1) wherein the new output/s (stimulus) is randomly selected from one or more data groups (claim 2) ; and 2) wherein the new output/s (stimulus) is based on a predetermined algorithm selection from one or more data groups (claim 3) ; 3) wherein the two or more outputs are used by artificial intelligence to create an image representing the stimulus (claim 9) . According to MPEP 2161.01 I., when examining computer-implemented claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed functions in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined, for example, as "a finite sequence of steps for solving a logical or mathematical problem or performing a task." Microsoft Computer Dictionary (5th ed., 2002). Applicant may "express that algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Finisar Corp. v. DirecTV Grp., Inc. , 523 F.3d 1323, 1340, 86 USPQ2d 1609, 1623 (Fed. Cir. 2008) (internal citation omitted). It is not enough that one skilled in the art could write a program to achieve the claimed function because the specification must explain how the inventor intends to achieve the claimed function to satisfy the written description requirement. See, e.g., Vasudevan Software, Inc. v. MicroStrategy, Inc. , 782 F.3d 671, 681-683, 114 USPQ2d 1349, 1356, 1357 (Fed. Cir. 2015) (reversing and remanding the district court’s grant of summary judgment of invalidity for lack of adequate written description where there were genuine issues of material fact regarding "whether the specification show[ed] possession by the inventor of how accessing disparate databases is achieved"). If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention a rejection under 35 U.S.C. 112(a) for lack of written description must be made. With regard to above-referenced limitations 1 ), 2 ) , and 3), the specification appears to provide disclosure of a computer to implement the functions, but completely lacks any description of the algorithms (e.g., flow chart, mathematical model, code, prose) of how to implement these functions. The only description in the specification for these limitations is provided at p. 7, ll. 11-15. This section reads “the selection of the output/s which constitute the stimulus 20 is performed by the computer program for the implementation of the method 30 using any applicable algorithm known in the art, for example, an algorithm designed for a random selection of at least one item. The stimulus 20 may comprise any combination of words, texts, phrases, sounds, or images. ” However, no examples of the algorithm, flow chart, mathematical model, code, prose as to how to implement the selection of outputs are provided. Although one example is described as an algorithm designed for random selection , there are many different types of random selection , which may be implemented in many different ways; therefore, Applicant has not described what process Applicant intended and how it is applied to achieve the functions recited in Applicant’s claims. Therefore, one skilled in the art is left to “guess” at what is meant by the limited description provided. Moreover, the language is so vague “using any applicable algorithm known in the art ” that it could include any algorithms in any art, including those not currently in existence, therefore, making it unclear what algorithm intends to satisfy this description. With regard to limitation 3), the specification is devoid of any description of artificial intelligence and creation of images using artificial intelligence ( or otherwise ) . No algorithm or description of how this is implemented is provide. Therefore, one skilled in the art again is left to “guess” at what is meant by this limitation and what implements the limitation. The specification must explicitly disclose the algorithm for performing the claimed function, and simply reciting the claimed function in the specification will not be a sufficient disclosure for an algorithm which, by definition, must contain a sequence of steps. Blackboard, Inc. v. Desire2Learn , Inc., 574 F.3d 1371, 1383-85, 91 USPQ2d 1481, 1491-93 (Fed. Cir. 2009); Net MoneyIN , Inc. v. VeriSign, Inc. , 545 F.3d 1359, 1366-67, 88 USPQ2d 1751, 1756-57 (Fed. Cir. 2008); Ex parte Rodriguez , 92 USPQ2d 1395, 1405-06 (Bd. Pat. App. & Inter. 2009). Here the specification provides no such description, therefore, the specification lacks adequate written description for the claimed functions of the computing device. As a result, claims 2 , 3, and 9 contain subject matter which lacks adequate written description, and for at least these reasons, claims 2 , 3, and 9 are found to fail the written description requirement. Claim Rejections - 35 USC § 112 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. Claims 1-17 are rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, regards as the invention. In re claim 1 , the claim recites “one or more data groups each containing one or more outputs with each output relating to other outputs within the respective data group.” According to the plain meaning of th e limitations in this clause , the claim may include one data group with one output. In this interpretation , it is unclear how a single output can relate to other outputs within the data group when there are no other outputs? In addition, a ccording to the se limitations of claim 1 , the method can include a single data group. However, the claim continues “selecting at least one data group from a plurality of data groups.” It is unclear 1) whether the selected data group and plurality of data groups are the same or different than the one or more data groups previously recited , and 2) how can the claim include both one data group and a plurality of data groups at the same time . Similarly, c laim 1 recites the data groups may have one output. Therefore, it is unclear whether the data group can have one output or a plurality of output s , as both are positively recited. C laim 1 also recite s the limitation “ the respective data group ” at line 3 . There is insufficient antecedent basis for th i s limitation in the claim. In addition, the claims recitation of “the output,” “the plurality of outputs,” and “t he data group ” at lines 6-7, lack clear antecedent basis as it is unclear which the outputs recited in the claim is “the output.” Similarly, it is unclear which of the plurality of outputs and data groups is “the” plurality of outputs and “the” data group . For purposes of examination, these terms are interpretated as an output selected from a data group. In re claim s 2 and 3 , the claim s recite the limitations “the new output/s” at line s 1-2 . There is insufficient antecedent basis for these limitations in the claim. Claims 2 and 3 recite “one or more data groups.” It is unclear if the one or more data groups of claim 2 are the same as or different than the data groups of claim 1. For purposes of examination, th is term i s interpretated as an output selected from a data group. In re claim 4, the claim recites the limitation “the at least one data group/s” at line 3 . There is insufficient antecedent basis for th i s limitation in the claim. In addition, the claim recites “ each of the at least one data group/s. ” Each implies multiple at least one data groups ; however , claim 1 only recites at least one data group . Th erefore , it is u nclear if there is more than one selected data group as implied by the use of each . For purposes of examination, th is term i s interpretated to mean there can be a single data group. In re claim 5, the claim recites “t he selected outputs ” at line 2, “the same data group/s” at line 3, and “the previously selected output/s” at line 4 . There is insufficient and/or lack of clear antecedent basis for these limitations in the claim. In addition, the claim recites “the selected outputs in the stimulus.” Claim 1 recites “the output is the stimulus.” Therefore, it is unclear what “in” means in claim 5. In other words , how can the selected outputs be in the stimulus when they are the stimulus? For purposes of examination, th i s term i s interpretated to mean the selected outputs are the stimulus . In re claim 6, “the output” at line 1 lacks clear antecedent basis. In re claim 7, the claim recites “the at least one output meaning” at line s 2-3 . There is insufficient antecedent basis for this limitation in the claim. In addition, the meaning of “grouped” at line 2 is unclear. Does “ grouped ” mean that certain outputs of the data group are grouped together or that all the outputs of the data group are selected together to b e the outputs of the data group. For purposes of examination, th i s term is interpretated to mean all the outputs of a data group have a common category, relation, or similar meaning . In re claim 8, the claim recites “the user” at line 1 and “the at least one data group/s” at line 2 . There is insufficient antecedent basis for these limitations in the claim. In addition, the term “desired” is a subjective term that is not defined by the claim, and the specification does not provide an objective standard for ascertaining the meaning of the term “desired” within the context the claim such that one of ordinary skill in the art would be reasonably apprised of the scope of the claim. It is unclear according to the language of the claim whether or not the claim positively recites that the user actually adds outputs as desired is ambiguous within the claim. For purposes of examination, th e adding of outputs i s interpretated as an being optional and does not further limit the claim as one may not desire to add outputs . In re claim 9, the claim recites “the two or more outputs” at line s 1-2 . There is insufficient antecedent basis for this limitation in the claim. In re claim 10, the claim recites “the user” at line 1 and “ the user's device screen” at line 2. There is insufficient antecedent basis for these limitations in the claim. In re claim 12, the claim recites “the user” and “ the user's device memory” at line 2 . There is insufficient antecedent basis for these limitations in the claim. In re claim 14, the claim recites “the user , ” “the time remaining , ” and “the predetermined amount of time” at line 2 . There is insufficient antecedent basis for these limitations in the claim. In re claim 15, the claim recites “the user's selected social media” and “the user posts of stimulus . ” There is insufficient antecedent basis for these limitations in the claim. In addition, the claim recites “enabling the user posts of stimulus or stimulus generated idea(s) as desired.” The term “as desired” is a subjective term that is not defined by the claim, and the specification does not provide an objective standard for ascertaining the meaning of the term “desired” within the context the claim such that one of ordinary skill in the art would be reasonably apprised of the scope of the claim. It is unclear according to the language of the claim whether or not the claim positively recites that user post are enabled or if they are optional at the whim of a user. In addition, it is unclear what constitutes stimulus generated idea(s) as the previously recited steps of the method do not recite any step of generating stimulus ideas. For purposes of examination, “enabling” is interpretated as optional and does not further limit the claim one may not desire to post . In re claims 16 and 17, the claims recite “plurality of data groups of claim 1.” This limitation is indefinite. Claim 1 recites “ one or more data groups, ” “ a plurality of data groups, ” and “ at least one selected data group. ” It is unclear which of these data groups of claim 1 and /or if all of the se data groups of claim 1 are included in this recitation of claims 16 and 17 . For purposes of examination, this term is interpretated as a t least one data groups with at least one output. In re claim 17, the claim recites “the user's device screen.” There is insufficient antecedent basis for this limitation in the claim. Claims 2-1 5 depend from a rejected base claim, and therefore are rejected for at least the reasons provided for the base claim. 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 1-17 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more. A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.” 35 U.S.C. § 101. The Supreme Court has held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable. Alice Corp. Pty. Ltd. v. CLS Bank Int’l , 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson , 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, the application of these concepts may be deserving of patent protection. Mayo Collaborative Servs. v. Prometheus Labs., Inc. , 132 S. Ct. 1289, 1293-94 (2012). In Mayo , the Court stated that “to transform an unpatentable law of nature into a patent eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.” Mayo , 132 S. Ct. at 1294 (citation omitted). In Alice , the Supreme Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice , 134 S. Ct. at 2355. The first step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id . If the claims are directed to a patent-ineligible concept, then the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination” to determine whether there are additional elements that “transform the nature of the claim’ into a patent-eligible application.” Id . (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step is to “search for an ‘inventive concept’- i.e. , an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.” Id . (brackets in original) (quoting Mayo , 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos , 561 U.S. 593, 610-11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,’ was not ‘enough’ [in Mayo ] to supply an ‘inventive concept.” Alice , 134 S. Ct. at 2357 (quoting Mayo , 132 S. Ct. at 1300, 1297, 1294). Examiners must perform a Two-Part Analysis for Judicial Exceptions. In Step 1, it must be determined whether the claimed invention is directed to a process, machine, manufacture or composition of matter. Claims 1-17 are directed to a method and system s . As such, the claimed invention falls into the broad categories of invention. However, even claims that fall within one of the four subject matter categories may nevertheless be ineligible if they encompass laws of nature, physical phenomena, or abstract ideas. See Diamond v. Chakrabarty , 447 U.S. at 309. In Step 2A, it must be determined whether the claimed invention is ‘directed to’ a judicially recognized exception. According to the specification, a disclosure of a method for generating stimulus is provided . “ The stimulus comprises texts, words, images, sounds, or combinations thereof. ” The stimulus is intended to act as a trigger to the user in order to help drive new thoughts and ideas useful when trying to solve a problem, get inspiration, or do creative writing .” (p p. 1 and 4 ). Independent claim 1 recites the following (with emphasis): A computer-implemented method for generating a stimulus, comprising: one or more data groups each containing one or more outputs with each output relating to other outputs within the respective data group; selecting at least one data group from a plurality of data groups, wherein each data group comprises a plurality of outputs; selecting at least one output from the plurality of outputs from the data group, wherein the output is the stimulus . The underlined portions of claim 1 generally encompass the abstract idea, with substantially identical features in claims 16 and 17 . Claims 2-15 further define the abstract idea such as by defining the way the stimulus is generated or what the stimulus is . Under prong 2, the claimed invention encompasses an abstract idea in the form of certain methods of organizing human activity and/or mental processes. The claims recite a method or system of stimulating an individual . This is an abstract concept of organizing human activity because it is drawn to the managing personal behavior of an individual by stimulating th e individual. Furthermore, the method can be performed in the mind of a human and/or with the aid of pencil and paper. The claims recite a group data that including an output. The output of a group is selected as a stimulus for the individual . Stimulating a n individual is directed to the abstract concept sub-grouping of "managing personal behavior " i n this case stimulating thought s of a n individual . In addition, the claims also recite a mental process. But for the recitation of the recitation of computer implemented and/or a processor or memory or engine (software) , nothing in the claimed method or operations of the system preclude the recitations from practically being performed in the mind. For example, data groups each containing one or more outputs with each output relating to other outputs within the respective data group may be implemented by an individual memorizing and/or thinking of a data group (e.g., thinking of primary colors) and an output (e.g., red , yellow , or blue) or writing it down on paper. Selecting at least one data group from a plurality of data groups, wherein each data group comprises a plurality of outputs may be performed by the individual thin king of a group as a desired group (e.g., thinking of primary colors) or circling the group on a paper. Selecting at least one output from the plurality of outputs from the data group, wherein the output is the stimulus by an individual thinking of a primary color ( thinking of the color red , circling the color red or writing down red and/or stating or shown the color read to another ). Therefore, under prong 2, the claimed invention encompasses an abstract idea in the form of mental processes and/or certain methods of organizing human activity. Under prong 2, the instant claims do not integrate the abstract idea into a practical application. In other words, the claims do not (1) improve the functioning of a computer or other technology, (2) effect a particular treatment or prophylaxis for a disease or medical condition (3) are not applied with any particular machine, (4) do not effect a transformation of a particular article to a different state, and (5) are not applied in any 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, the claims are directed to the judicially recognized exception of an abstract idea. See MPEP §§ 2106.05(a)-(c), (e)-(h). While certain physical elements (i.e., elements that are not an abstract idea) are present in the claims, such features do not affect an improvement in any technology or technical field and are recited in generic (i.e., not particular) ways. Similarly, the abstract idea does not improve the functioning of these physical elements. In recent cases, the CAFC has made it clear that the term “practical application” means providing a technical solution to a technical problem in computers or networks per se. To be patent-eligible, the claimed invention must improve the computer as a computer. Applicant’s invention does not meet these requirements. Applicant’s invention uses computers (e.g., a processor and a memory) to processes and/or present information . This does not improve the computer qua computer. Instead, Applicant’s invention uses generic computers as a tool to implement the abstract idea. As such, the claims are not eligible under Section 101. Step 2B requires that if the claim encompasses a judicially recognized exception, it must be determined whether the claimed invention recites additional elements that amount to significantly more than the judicial exception. The additional elements or combination of elements other than the abstract idea per se amounts to no more than: a system having a computer and memory configured to perform the abstract idea. The additional claimed elements are a processor , a memory , an engine (i.e. software) , and a display. These elements are not particular and are recited at a high level of generality. These elements amount to generic, well-understood and conventional computer components. The use of computers /software to process data, memories to store data, and displays to present data represent well-understood, routine, conventional activity previously known to the industry as noted by the Supreme Court in Alice . As demonstrated by Berkheimer v. HP , such computer functions cannot save an otherwise ineligible claim under §101. In short, each step /operation does no more than require a generic computer to perform generic computer functions. Considered as an ordered combination, only generic computer components are present. Viewed as a whole, the claims simply recite the concept of making judgments (i.e., selecting) by a generic computer. The claims do not, for example, purport to improve the functioning of the computer itself. Nor do they effect an improvement in any other technology or technical field. Instead, the claims at issue amount to nothing significantly more than an instruction to apply the abstract idea using some unspecified, generic computer. Under relevant court precedents, that is not enough to transform an abstract idea into a patent-eligible invention. As a result, claims 1-17 are not patent eligible Claim Rejections - 35 USC § 102 In the event the determination of the status of the application as subject to AIA 35 U.S.C. §§ 102 and 103 (or as subject to pre-AIA 35 U.S.C. §§ 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status. The following is a quotation of the appropriate paragraphs of 35 U.S.C. § 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. (a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention. Claims 1-7 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by International Publication No. WO 9410683 A1 by Hyman et al. (“ Hyman ”). In re claim 1, Hyman discloses a computer-implemented method for generating a stimulus [ See, Summary of the invention, pp. 2-3 ] , comprising: one or more data groups each containing one or more outputs with each output relating to other outputs within the respective data group [ Table 1-Groups A-E, p. 2, ll. 14-35, among others, describe the stored data is segregated into categories (groups). In each category is a plurality of sound phrases, that is a word or words of speech in a digitized format (outputs). Phrases in a particular category may be devoted to sound effects instead of words of speech. To form a sentence, phrases are selected for output from several categories in a particular predetermined sequence and converted from digital data into analog signals that drive an amplifier and loud speaker ] ; selecting at least one data group from a plurality of data groups, wherein each data group comprises a plurality of outputs [ p.2, ll. 14-35, among others, describe forming a sentence by selecting phrases for output from several categories (groups) ] ; selecting at least one output from the plurality of outputs from the data group, wherein the output is the stimulus [ p.2, ll. 14-35, among others, describe phrases (outputs) are selected for output from several categories (groups) in a particular predetermined sequence and converted from digital data into analog signals that drive an amplifier and loud speaker (output/stimulus) ] . In re claim 2, Hyman discloses the new output/s (stimulus) is randomly selected from one or more data groups [ p. 2, ll. 29-30, p. 7 , l . 34- p. 8, l. 2, among others, describe the phrase, or phrases, to be outputted from a selected category that is selected at random including a new random output based on second input signal ] . In re claim 3, Hyman discloses the new output/s (stimulus) is based on a predetermined algorithm selection from one or more data groups [ p. 7, ll. 2-38 , among others, describe an algorithm using random number generator to select categories and phrases. A fter the entire selected sequence is completed a new stimulus may be randomly generated in response to a second input signal ] . In re claim 4, Hyman discloses a user requests a new stimulus [p. 9, ll. 9-10, among others, describe. The play switch 44 causes a new random sound sequence to be played each time the switch 44 is pressed] ; the new stimulus comprises selecting a different output from the plurality of outputs from each of the at least one data group/s [p. 7, ll. 34-38, among others, describe a second input signal, represented by the arrow 30, will initiate a new output, which is based upon the randomness of the signals generated in the generators 16, 20, and therefore will differ from the previous output ] . In re claim 5, Hyman discloses a user requests a new output instead of at least one of the selected outputs in the stimulus; the new output is selected from the plurality of outputs the same data group/s of the previously selected output/s [p. 6, ll. 13-19 , among others, describe output from categories A-E followed by a sequence from categories b and c, where the words in b and c are not repeated ] . In re claim 6, Hyman discloses the output is selected from a data group which may contain text, words, images and/or sounds [ Table 1, shows outputs from categories A-E include text, words, and sounds ] . In re claim 7, Hyman discloses the at least one output is grouped in the at least one data group based on the at least one output meaning [Table 1 categories A-E where the groups have outputs grouped by different meaning, for example, group A provides a subject ; group B includes verbs; group C provides objects, and group D provides a prepositional phrase (or location). In addition, Group E provides sounds] . Claims 1, 6, 8-10, 16, and 17 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by US Publication No. 2020 / 0098281 by Meisner (“Meisner”). In re claim 1, Meisner discloses a computer-implemented method for generating a stimulus [ Abstract describes providing a stimulus ] , comprising: one or more data groups each containing one or more outputs with each output relating to other outputs within the respective data group [ Fig 5, ¶¶17-19, among others, describes a data groups of related stimuli (outputs), for example, by subject matters, such as chemistry or math ] ; selecting at least one data group from a plurality of data groups, wherein each data group comprises a plurality of outputs [ ¶¶17-19, 20 user selects topic of interest from many topics (math, chemistry, Edenborough , Venice , for example, t hrough user- or algorithm-guided selection of a set of components in the stimulus responsive to the interests and/or learning style and/or ability level of the examinee, adaptive and personalized assessment of the examinee is realized ] ; selecting at least one output from the plurality of outputs from the data group, wherein the output is the stimulus [ Fig. 5, ¶ 23 Shorter stimuli and accompanying questions are: ( i ) generated by assessment module 105 in device 150; and (ii) sent to assessment program 135. Assessment program 135 is a software platform for providing the shorter stimuli and accompanying questions outputted to GUI 120 on device 155 ] . In re claim 6, Meisner discloses teaches wherein the output is selected from a data group which may contain text, words, images and/or sounds [¶ 18 , among others, describes t he testing stimuli may be in text, audio, image, or video formats ] . In re claim 8, Meisner discloses the user adds outputs as desired into the at least one data group/s [¶ 2 6, among others, describes, t he training data set may also include stimuli created from user input provided through a graphical user interface and/or by scanning stimuli generated on paper sources. The training stimuli may be associated with the respective training content from information sources 130A-N from which the respective training stimuli were created ] . In re claim 9, Meisner discloses the two or more outputs are used by artificial intelligence to create an image representing the stimulus [ Figs. 5 and 6, ¶ ¶ 26-29, 40 , among others, describes machine learning creating short stimuli from base stimuli including a visual elements such as images and pictures ] . In re claim 10, Meisner discloses the user creates at least one data group [¶ ¶ 26-29, 40 , among others, describes user provide profile and interested which are used by the AI to create a data group for study/examination ] . In re claim 16, Meisner discloses a system [Fig. 1 #100] comprising: a processor [Fig. 7 #704] ; and, a memory [Fig. 7 708/710] ; wherein the memory includes a storage to store plurality of data groups of claim 1 [ Claim 8, 24] ; wherein the memory further comprises a stimulus generation engine [Fig. 1 #105] , which, when executed on the processor, performs an operation that generates a stimulus, the operation comprising: generating a stimulus; and, transmitting the stimulus to a user's device [Fig. 5, ¶¶17-19, 20, 23 user selects topic of interest from many topics (math, chemistry, Edenborough, Venice, for example, through user- or algorithm-guided selection of a set of components in the stimulus responsive to the interests and/or learning style and/or ability level of the examinee, adaptive and personalized assessment of the examinee is realized Shorter stimuli and accompanying questions are: ( i ) generated by assessment module 105 in device 150; and (ii) sent to assessment program 135. Assessment program 135 is a software platform for providing the shorter stimuli and accompanying questions outputted to GUI 120 on device 155] . In re claim 17, Meisner discloses a system [Fig. 1 #100] comprising: a user device [Fig. 1 #155] comprising a processor [Fig. 7 #704] and a memory [Fig. 7 708/710] ; wherein the memory includes a storage to store plurality of data groups of claim 1; wherein the memory further comprises a stimulus generation engine [Fig. 1 #135] , which, when executed on the processor, performs an operation that generates a stimulus, the operation comprising: generating a stimulus; and, displaying the stimulus on the user's device screen [Fig. 5, ¶¶17-19, 20, 23 user selects topic of interest from many topics (math, chemistry, Edenborough, Venice, for example, through user- or algorithm-guided selection of a set of components in the stimulus responsive to the interests and/or learning style and/or ability level of the examinee, adaptive and personalized assessment of the examinee is realized Shorter stimuli and accompanying questions are: ( i ) generated by assessment module 105 in device 150; and (ii) sent to assessment program 135. Assessment program 135 is a software platform for providing the shorter stimuli and accompanying questions outputted to GUI 120 on device 155] . Claims 1, 6, 10, 11, 13, and 15 -17 are rejected under 35 U.S.C. § 102(a)(1) as being anticipated by US Publication No. 2018 / 0181854 by Koukoumidis et al. (“ Koukoumidis ”). In re claim 1, Koukoumidis discloses a computer-implemented method for generating a stimulus [ Fig. 1 #100 ] , comprising: one or more data groups each containing one or more outputs with each output relating to other outputs within the respective data group [ ¶¶41,42, among others, describes clustering objects into groups ] ; selecting at least one data group from a plurality of data groups, wherein each data group comprises a plurality of outputs [¶¶41,42, among others, describes clustering objects into groups the response stimuli are determined from the cluster of objects ] ; selecting at least one output from the plurality of outputs from the data group, wherein the output is the stimulus [ ¶42, among others, describes providing the stimuli from the group to the user ] . In re claim 6, Koukoumidis discloses the output is selected from a data group which may contain text, words, images and/or sounds [¶ 30, among others, describes the response stimulus may take the form of a textual message, a visual image or video, a haptic feedback (e.g., mobile device vibration), an audio output (e.g., playing uplifting music), or a combination of the aforementioned forms ] . In re claim 10, Koukoumidis discloses the user creates at least one data group [¶ ¶26-28, 41, 42, among others, describes user input 102 is used to create the response stimulus. The response stimulus is generat e d from a group of stimuli and selected for output ] . In re claim 11, Koukoumidis discloses the user determines which data groups output is displayed on the user's device screen [¶¶26-28, 41, 42, among others, describes user input 102 is used to create the response stimulus. The response stimulus is generated from a group of stimuli which is selected for output therefore the output (and group) is determined by the user] . In re claim 13, Koukoumidis discloses generating a stimulus of claim 10, wherein a chosen stimulus or generated idea is stored by the user in the user device's memory or in a server memory [ Fig s . 4, 5 #414 , ¶ 33 ,42 , among others, describes the response stimuli provided by the server computing devices 208 may be stored on at least one local database 204, at least one remote database 206, or a combination of both. The server computing devices 508 implements method 100 by processing the input data in operation 104, determine the response stimulus in 106, store the input data and response stimulus in operation 108, and finally provide the response stimulus back to the user in operation 110 ] . In re claim 15, Koukoumidis discloses further comprising wireless connection to the user's selected social media; enabling the user posts of stimulus or stimulus generated idea(s) as desired [¶ 3, 75 , 79, 84, among others, describes wireless connection and connection to social media services of a user, therefore, the posting to social media is possible and/or enabled. It is noted that the actual posting of stimulus to social media by the user is not positively recited and therefore does not further limit the claim ] . In re claim 16, Koukoumidis discloses a system [Fig. 5 # 5 00] comprising: a processor [Fig . 8 # 1108 ] ; and, a memory [Fig. 8 # 1 1 0 4 ] ; wherein the memory includes a storage to store plurality of data groups of claim 1 [ Fig. 8, #1111 ] ; wherein the memory further comprises a stimulus generation engine [Fig. 8 #1 12 0] , which, when executed on the processor, performs an operation that generates a stimulus, the operation comprising: generating a stimulus; and, transmitting the stimulus to a user's device [Figs. 1, 4, 5, 8 #414, ¶33,41, 42, among others, the server computing devices 508 implements method 100 by processing the input data in operation 104, determine the response stimulus in 106, store the input data and response stimulus in operation 108, and finally provide the response stimulus back to the user in operation 11 0 ]. In re claim 17, Koukoumidis discloses a system [Fig. 5 #500] comprising: a user device [Fig. 1 #155] comprising a processor [Fig. 8 #1108] and a memory [Fig. 8 #1104] ; wherein the memory includes a storage to store plurality of data groups of claim 1 [Fig. 8, #1111] ; wherein the memory further comprises a stimulus generation engine [Fig. 8, #1120] which, when executed on the processor, performs an operation that generates a stimulus, the operation comprising: generating a stimulus; and, displaying the stimulus on the user's device screen [ Figs. 1, 4, 5, 8 #414, ¶33,41, 42, among others, the server computing devices 508 implements method 100 by processing the input data in operation 104, determine the response stimulus in 106, store the input data and response stimulus in operation 108, and finally provide the response stimulus back to the user in operation 11 0 ] . Claim Rejections - 35 USC § 103 The following is a quotation of 35 U.S.C. § 103 which forms the basis for all obviousness rejections set forth in this Office action: A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made. The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. § 103 are summarized as follows: 1. Determining the scope and contents of the prior art. 2. Ascertaining the differences between the prior art and the claims at issue. 3. Resolving the level of ordinary skill in the pertinent art. 4. Considering objective evidence present in the application indicating obviousness or nonobviousness . This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR § 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. § 102(b)(2)(C) for any potential 35 U.S.C. § 102(a)(2) prior art against the later invention. Claims 12 and 14 are rejected under 35 U.S.C. § 103 as being unpatentable over Meisner in view of US Publication No. 2007 / 0134633 by Chan et al. (“ Chan ”). In re claim 12, Meisner lack s , but Chan teaches wherein the stimulus is displayed on a user's device screen for a predetermined amount of time [ ¶¶125-12 7 ] . Meisner and Chan are both considered to be analogous
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Prosecution Timeline

Aug 21, 2023
Application Filed
Mar 20, 2026
Non-Final Rejection — §101, §102, §103 (current)

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4y 1m
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