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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 June 23, 2026 has been entered.
Status of Claims
This office action is in response to arguments and amendments entered on June 23, 2026 for the patent application 18/239,955 originally filed on August 30, 2023. Claims 1, 8 and 9 are amended. Claims 1-9 are pending. The first office action of November 18, 2025 and the second office action of April 3, 2026 is fully incorporated by reference into this Non-Final Office Action.
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 1-9 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1 – “Statutory Category Identification”
Claim 1 is directed to “a teacher data editing support system” (i.e. “a machine”), claim 8 is directed to “a teacher data editing support method” (i.e. “a process”), and claim 9 is directed to “a teacher data editing support program” (i.e. “a process”), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 1 “Abstract Idea Identification”
However, the claims are drawn to an abstract idea of “data editing,” either in the form of “certain methods of organizing human activity,” in terms of managing personal behavior or relationships or interactions between people (including social activities, teaching and following rules or instructions), or reasonably in the form of “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion). Regardless, the claims are reasonably understood as either “certain methods of organizing human activity” or “mental processes,” which require the following limitations:
Per claim 1:
“receive teacher data including discriminatory factors as variables that potentially cause
discrimination, a feature as a variable to be used for prediction, and a correct answer,
calculate a contribution, as an index, indicating contribution of the discriminatory factors to the correct answer,
display evaluation information indicating a relationship between a degree of change of the correct answer in the teacher data and a degree of deviation of the correct answer from an initial value or a discrimination degree based on the contribution,
accept a designation of how much the correct answer is changed, change the correct answer in the teacher data in response to the designation, and output the changed teacher data, and
generate an artificial intelligence (AI) model using the changed teacher data.”
Per claim 8:
“receiving teacher data including discriminatory factors as variables that potentially cause discrimination, a feature as a variable to be used for prediction, and a correct answer;
calculating a contribution as an index indicating contribution of the discriminatory factors to the correct answer;
visually presenting evaluation information indicating a relationship between a degree of changing the correct answer in the teacher data and a degree of deviation of the correct answer from an initial value or a discrimination degree based on the contribution;
accepting designation of how much the correct answer is changed;
changing the correct answer in the teacher data in response to the designation; and
outputting the changed teacher data for generating an intelligence (AI) model.”
Per claim 9:
“receiving teacher data including discriminatory factors as variables that potentially cause discrimination, a feature as a variable to be used for prediction, and a correct answer;
calculating a contribution as an index indicating contribution of the discriminatory factors to the correct answer;
visually presenting evaluation information indicating a relationship between a degree of changing the correct answer in the teacher data and a degree of deviation of the correct answer from an initial value or a discrimination degree based on the contribution;
accepting designation of how much the correct answer is changed;
changing the correct answer in the teacher data in response to the designation; and
outputting the changed teacher data for generating an intelligence (AI) model.”
These limitations simply describe a process of data gathering and manipulation, which is analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 2 – “Practical Application”
Furthermore, the applicants claimed elements of “a processor,” “a memory,” and “an apparatus having a processing device,” are merely claimed to generally link the use of a judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) to (1) a particular technological environment or (2) field of use, per MPEP §2106.05(h); and are applying the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, per MPEP §2106.05(f). In other words, the claimed “data editing,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Step 2B – “Significantly More”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “a processor,” “a memory,” and “an apparatus having a processing device,” are claimed, these are generic, well-known, and conventional data gather computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the Applicant’s claimed “a processor,” is best described as “a processing device” in para. [0040] as follows:
“[0040] The processing device includes, for example, a central processing unit (CPU), a micro processing unit (MPU), a graphics processing unit (GPU), a field-programmable gate array (FPGA), or the like. Various functions of the teacher data editing support system 1 are implemented by the processing device reading various programs and data stored in the storage device and executing the programs.”
As such, the Applicant’s claimed “a processor,” is reasonably interpreted as either a processor or a computer which is further reasonably interpreted to be a generic, well-known, and conventional data computing element.
Likewise, the Applicant’s claimed “a memory,” is best described as “a storage device” in para. [0042] as follows:
“[0042] The storage device is a device that stores programs and data, and is, for example, a random access memory (RAM), a read only memory (ROM), or a non-volatile semiconductor memory (NVRAM).”
Again, the Applicant’s claimed “a memory,” is reasonably interpreted as a form of data storage which is further reasonably interpreted to be a generic, well-known, and conventional data computing element.
Finally, the Applicant’s claimed “an apparatus having a processing device,” is not described with any detail in the written description of the specification as originally filed. Regardless, “a calculator including a processor,” is described in para. [0104] of the Applicant’s written description as originally filed, provides the following: “[0104] FIG. 25 is a conceptual diagram illustrating a hardware configuration example of the calculator. A calculator 2500 corresponds to each of the calculators 100-1, 100-2, and 100-3 illustrated in FIG. 24. The calculator 2500 includes a processor 2501, a main storage device 2502, a sub storage device 2503, and a network interface 2504. The processor 2501 corresponds to the above-described processing device. The main storage device 2502 and the sub storage device 2503 correspond to the above-described storage device. The network interface 2504 is a device for communication with an external device or the like via the network NW illustrated in FIG. 24.” As such, this is broadly described and reasonably interpreted as either a processor or a computer which describes a generic computer component that is commonly provided in commercially available computers.
Therefore, the Applicant’s own specification discloses ubiquitous standard equipment that is (1) generic, routine, conventional, and/or commercially available; and (2) does not provide anything significantly more. Thus, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-7 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-7 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1. Therefore, claims 1-9 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject-matter.
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 1-9 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
Claims 1, and substantially similar limitations in claims 8 and 9, recite the following limitation: “generate an artificial intelligence (AI) model using the changed teacher data..” This limitation is not adequately described in the specification as originally filed and forms the basis of the rejection. As such, the limitation is reasonably rejected under a theory of new matter. Therefore, claims 1, 8 and 9 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Claims 2-7 are also rejected under 35 U.S.C. § 112(a), based on their respective dependencies to claim 1.
Response to Arguments
The Applicant’s arguments filed on June 23, 2026 related to claims 1-9 are fully considered, but are not persuasive.
Rejections Under 35 U.S.C. § 101
The Applicant respectfully argues “Applicant respectfully submits that at least Applicant's independent claims 1 and 9, as presented herein, are directed to patent-eligible subject matter under 35 U.S.C. § 101 for at least the following reasons.
When considering claim 1 as a whole, as required, the claim sets forth an improvement to the field of machine learning by automatically adjusting training data to lessen the contributions that discriminatory factors in the training data have on a model to reduce occurrences of discriminatory decisions and unfairness made by a model trained by the adjusted training data.
Consideration of improvements is relevant to the eligibility analysis regardless of the technology of the claimed invention. That is, the consideration applies equally whether it is a computer-implemented invention, an invention in the life sciences, or any other technology. See, e.g., Rapid Litigation Management V. CellzDirect, Inc., 827 F.3d 1042, 119 USPQ2d 1370 (Fed. Cir. 2016). MPEP Section 2106.05(a) II (emphasis added).
The presently claimed invention edits teacher (i.e., training) data for machine learning in order to reduce biased or sensitive decisions by machine learning models. Because historical human activity data used for training may contain past discrimination (such as bias based on age or gender), models trained on such data risk inheriting and amplifying unfair judgments. Claim 1 also sets forth generating an artificial intelligence (AI) model using the changed teacher data.”
The Examiner respectfully disagrees. The Applicant’s argument is not commensurate with the scope of the claims. Specifically, “machine learning” is not claimed. Furthermore, the limitation of “generating an artificial intelligence (AI) model using the changed teacher data,” does not reasonably appear in the written description of the specification as originally filed. Finally, “Rapid Litigation Management V. CellzDirect, Inc.” was based on a patent-ineligible law of nature—that hepatocytes are capable of surviving multiple freeze-thaw cycles—and that the patented process lacks the requisite inventive concept, which is not relevant here. As such, the argument is not persuasive.
The Applicant respectfully argues “As discussed previously, the improvement is a technical solution to a technical problem, as explained in the specification. Existing fairness-improvement techniques have limitations. Some approaches assume that increasing the amount of training data improves fairness, which is not always true-especially if the added data still reflects sensitive attributes. See Para. [0006] of the pre-grant publication corresponding to the present application (US 2024/0212517). Other methods can adjust labels to improve fairness but are limited to binary classification problems and cannot handle tasks like regression. Id. To address these shortcomings, the presently claimed invention changes the correct answer in the teaching data to reduce sensitive or discriminatory determinations made by machine learning models, beyond the constraints of prior methods.
Further, claim 1 has been amended to set forth "generate an artificial intelligence (AI) model using the changed teacher data" integrates the alleged abstract idea into a practical application of the alleged abstract idea under the Step 2A Prong Two analysis. Generating an Al model is neither a mental process or a method of organizing human activity. Rather, at least this limitation is an additional limitation demonstrates integration of the alleged abstract idea into a practical application. That is the automatically adjusted (i.e., changed) training data is used to generate an AI model.
The improvement is also recited in the claims. For example, claim 1 recites "calculate a contribution, as an index, indicating contribution of the discriminatory factors to the correct answer, [...] accept a designation of how much the correct answer is changed, change the correct answer in the teacher data in response to the designation, and output the changed teacher data, and generate an artificial intelligence (AI) model using the changed teacher data."
In this respect, we note that this potential technical effect solves the technical problem of inherent bias and discrimination in training data and, in doing so, goes beyond the alleged abstract idea and goes beyond merely using a computer as a tool.
Further, claim 1 does not merely recite only the idea of a solution or outcome (i.e., the claim fails to recite details of how a solution to a problem is accomplished). Rather, claim 1 covers a particular solution to a problem or a particular way to achieve a desired outcome, as described above.
The MPEP also states:
In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. V. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)).
Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field. Id.”
The Examiner respectfully disagrees. First, arguments with regard to “address these shortcomings,” and “prior methods,” are best suited for arguing rejections under 35 U.S.C. §§ 102 and 103. The test for 35 U.S.C. § 101 subject-matter eligibility requires claims to be examined using the “two-part Mayo test” for determining subject-matter eligibility, as previously performed above. As such, the argument is not proper for facilitating a 35 U.S.C. § 101 subject-matter eligibility discussion.
Second, the Applicant is misconstruing the proper analysis under 35 U.S.C. § 101. Merely overcoming “these shortcomings,” and “prior methods,” clearing the claims of any 35 U.S.C. §§102 or 103 rejections, is not evidence of subject-matter eligibility under 35 U.S.C. §101.
Third, the Applicant’s argument is not commensurate with the scope of the claims. Specifically, “machine learning” is not claimed. Furthermore, the limitation of “generating an artificial intelligence (AI) model using the changed teacher data,” does not reasonably appear in the written description of the specification as originally filed.
Finally, the Applicant’s argument is misguided as to the proper analysis of a “Practical Application” as required under Step 2A, Prong 2. Specifically, the Applicant’s argument appears to describe claimed utility, which is not the test. Instead, the Applicant’s claims are not considered a “Practical Application,” because the claims do not provide any of the following:
An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
Applying or using 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, as discussed in MPEP § 2106.05(e).
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Furthermore, there are also several factors that reasonably explain that the Applicant’s claims are not indicative of integration into a practical application, which include:
Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
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Here, the Applicant’s claims are not providing any technological advancement as described in the first five bulleted factors and, as described above in the rejection, the Applicant’s claims are merely claimed to use a computer as a tool to perform an abstract idea and to generally link the use of a judicial exception to a particular technological environment or field of use. As such, the argument is not persuasive.
The Applicant respectfully argues “Even further, the improvement set forth in claim 1 is not to the alleged abstract idea itself. Additionally, this is not a case like Alice Corp. Pty. Ltd. V. CLS Bank Int'l, 573 U.S. 208, 216, 110 USPQ2d 1976, 1980 (2014) where the computer is merely used as a tool to perform an existing process. Rather, computers/processors are necessarily integral to machine learning and adjusting training data.
Thus, Applicant's claim 1 is not directed to an abstract idea because claim 1 includes additional elements that integrate the alleged abstract idea into a practical application of the abstract idea demonstrated by a particular improvement to the field of machine learning by automatically adjusting training data to lessen the contributions that discriminatory factors in the training data have on a model to reduce occurrences of discriminatory decisions and unfairness made by a model trained by the adjusted training data. Therefore, under the Step 2A Prong Two analysis, claim 1 is not directed to an abstract idea and the rejection of the claims under 35 U.S.C. § 101 should be withdrawn.”
The Examiner respectfully disagrees. The Applicant’s claimed “a processor,” “a memory,” and “an apparatus having a processing device,” are merely generic, well-known, and a conventional data gathering computing elements (or an equivalent term), and quite possibly a commercially available product such as a personal computer or smartphone. The Applicant is not providing any advancement in technology with regard to “a processor,” “a memory,” and “an apparatus having a processing device.” As such, the argument is not persuasive. Therefore, the rejection of claims 1-9 under 35 U.S.C. §101 is not withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT P. BULLINGTON whose telephone number is (313) 446-4841. The examiner can normally be reached on Monday through Friday from 8 A.M. to 4 P.M. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Peter Vasat, can be reached on (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is (571) 273-8300.
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/Robert P Bullington, Esq./ Primary Examiner, Art Unit 3715
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