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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09/15/2026 has been entered. Claims 1, 6 and 11 are amended. Claims 3, 5, 8, 10, 13 and 15 are cancelled. Claims 1-2, 4, 6-7, 9, 11-12 and 14 are currently pending in the application.
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 1-2, 4, 6-7, 9, 11-12 and 14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
Step 1: Statutory Category?
Independent claims 1, 6 and 11 respectively recites “a learning support system” (i.e. a machine), “a method” (i.e. a process) and “a non-transitory computer-readable storage medium” (i.e. a manufacture). As such, independent claims 1, 6 and 11 are each directed to a statutory category of invention within § 101, i.e., machine, process and manufacture. (Step 1: YES).
Step 2A – Prong 1: Judicial Exception Recited?
Independent claim 6, analyzed as representative of the claimed subject matter, is reproduced below. The limitations determined to be abstract ideas are shown in italics. The additional element(s) recited at a high level of generality are shown in bold. The limitation(s) determined to be extra-solution activity are underlined.
An information output method executed by a learning support system including a server and a plurality of user terminal devices communicably connected to the server via a network, the method comprising:
[L1] controlling, by a first user terminal device among the plurality of user terminal devices, a display of the first user terminal device to display a first user interface including a suggestion operator;
[L2] in response to an input operation by a user to the suggestion operator, transmitting by the first user terminal device, a request to the server for suggested teaching material;
[L3] storing, by the server in a storage of the server, learning information on a plurality of users of the plurality of user terminal devices, the learning information including (i) as first history information managed by the server, information specifying an activation date of teaching material data and the teaching material data for each of the plurality of users, and (ii) as second history information managed by the server, information specifying an execution date of a test and the test and results of the test for each of the plurality of users,
[L4] the server managing the learning information so as to exclude, from extractable teaching material data, teaching material data whose activation date is after the execution date of the test or is outside of a predetermined period before the execution date of the test;
[L5] in response to receipt of the request transmitted to the server from the first user terminal device, extracting, by the server from the learning information stored in the storage, learning information in which (i) a result of the test satisfies a predetermined condition and (ii) the activation date of teaching material data is earlier than and within a predetermined period before the execution date of the test the result of which satisfies the predetermined condition, based on the first history information and the second history information;
[L6] outputting, by the server to the first user terminal device, information specifying the teaching material data included in the extracted learning information; and
[L7] in response to receipt of the information for specifying the teaching material data from the server, controlling, by the first user terminal device, the display to display, as the suggested teaching material data, the teaching material included in the extracted learning information.
As per Elec. Power, 830 F.3d at 1355, “… selecting information, by content or source, for collection, analysis, and display does nothing significant to differentiate a process from ordinary mental processes, whose implicit exclusion from § 101 undergirds the information-based category of abstract ideas.”. Additionally, Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) held that “humans have performed steps of collecting data, recognizing certain data in the set, and storing recognized data”. Thus, other than reciting the “server”, “plurality of user terminal devices”, “network”, “first user terminal device”, “display of the first user terminal device”, “first user interface”, “suggestion operator” and “storage of the server” additional non-abstract elements in representative independent claim 6 above, under the broadest reasonable interpretation, at least the italicized claim limitations may be performed in the human mind, including observations, evaluations, and judgments and may also be characterized as a certain method of organizing human activity, i.e., managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). Accordingly, the claim recites an abstract idea under Step 2A: Prong 1. (Step 2A – Prong 1: YES).
Step 2A – Prong 2: Integrated into a Practical Application?
The computer component(s), namely the “server”, “plurality of user terminal devices”, “network”, “first user terminal device”, “display of the first user terminal device”, “first user interface”, “suggestion operator” and “storage of the server” are recited at a high level of generality (see published Specification (at least ¶ 3: electronic devices such as electronic dictionaries…; ¶ 4: An information processing apparatus according to an aspect includes a processor…; ¶ 16: … system 1 includes an electronic dictionary 10 and a server 20. The electronic dictionary 10 and the server 20 are communicably connected to each other via a network 30 …; ¶ 17: … FIG. 2 illustrates one electronic dictionary 10 as a representative. The electronic dictionary 10 includes a processor 11, a ROM 12, a RAM 13, a storage 14, an input device 15, a display device 16, and a communication device 17. These devices are connected to each other via a system bus 18. The electronic dictionary 10 may be an electronic device such as a personal computer (PC), a tablet terminal, or a smartphone in which an electronic dictionary application is installed …; ¶ 20: The storage 14 can operate as a storage unit. The storage 14 stores various programs such as an electronic dictionary control program used by the processor 11, parameters, and the like. The processor 11 controls the operation of the electronic dictionary 10 by executing various programs according to an input signal or the like from the input device 15 … teaching material processing program 141 can be, for example, a program for executing processing of displaying the content included in the teaching material data 142 on the display device 16 and processing of returning a response to an instruction from the user for the displayed content ; ¶ 24: The input device 15 includes an input key, a touch panel, and the like. Furthermore, the input device 15 may include a sound input device such as a microphone. In response to a user operation via the input device 15, a signal indicating the content of the user operation is input to the processor 11 via the system bus 18; ¶ 25: The display device 16 is a liquid crystal display, an organic EL display, or the like. The display device 16 may be provided integrally with the electronic dictionary 10 or may be provided separately from the electronic dictionary 10. Various images are displayed on the display device 16; ¶ 27: The server 20 is an information processing apparatus including a processor 21, a ROM 22, a RAM 23, a storage 24, and a communication device 25. These devices are connected to each other via a system bus 2; ¶ 43: a suggest button 163 is displayed on the top screen as an example. The suggest button 163 is a button selected by the user in a case where a suggestion of teaching material data useful for the learning by the user is received from the electronic dictionary 10; ¶ 64: Buttons and the like other than those illustrated in FIG. 10 may be displayed on the suggestion screen … The lack of details about the “server”, “plurality of user terminal devices”, “network”, “first user terminal device”, “display of the first user terminal device”, “first user interface”, “suggestion operator” and “storage of the server” indicates that the additional element(s) is/are generic, or part of generic computer elements performing or being used in performing the generic functions claimed. The additional elements [L1] “display a first user interface including a suggestion operator” (i.e., data presentation), [L2] “transmitting …a request for suggested teaching material” (i.e., data transmission), [L3] “storing learning information” (i.e., data gathering), [L6] “outputting information” (i.e., data transmission) and [L7] “display the teaching material” (i.e., data presentation) simply add insignificant extra-solution activity to the judicial exception, i.e., mere data presentation, data transmission and data gathering, each of which is generic. See OIP Techs. v. Amazon.com, 788 F.3d 1359, 1363 (Fed. Cir. 2015) (presenting offers to potential customers, gathering statistics generated based on the testing about how potential customers responded to the offers, and using statistics to calculate an optimized price are merely data gathering steps); Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324–25 (Fed. Cir. 2016) (noting that components such as an “interface,” “network,” and “database” are generic computer components that do not satisfy the inventive concept requirement); buySafe, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014) (stating “That a computer receives and sends information over a network — with no further specification — is not even arguably inventive”). No technological implementation details are recited. The claim limitations do not purport to improve the functioning of the “server”, “plurality of user terminal devices”, “network”, “first user terminal device”, “display of the first user terminal device”, “first user interface”, “suggestion operator” and “storage of the server”, do not improve the technology of the technical field, and do not require a “particular machine.” Rather, they are performed using generic computer components. Further, the claim fails to effect any particular transformation of an article to a different state. The recited steps in the claim fail to provide meaningful limitations to limit the judicial exception. In this case, the claim merely uses the claimed computer elements as a tool to perform the abstract idea.
Considering the elements of the claim both individually and as “an ordered combination” the functions implemented on the “server”, “plurality of user terminal devices”, “network”, “first user terminal device”, “display of the first user terminal device”, “first user interface”, “suggestion operator” and “storage of the server” at each step of the method are purely conventional. Each step performed in the claim does no more than require a generic computer to perform a generic computer function. Thus, the claimed elements have not been shown to integrate the judicial exception into a practical application as set forth in the Revised Guidance which references the Manual of Patent Examining Procedure (“MPEP”) §§ 2106.04(d) and 2106.05(a)–(c) and (e)–(h). Because the abstract idea is not integrated into a practical application, the claim is directed to the judicial exception. (Step 2A, Prong Two: NO).
Step 2B: Claim provides an Inventive Concept?
As discussed with respect to Step 2A Prong Two, the “server”, “plurality of user terminal devices”, “network”, “first user terminal device”, “display of the first user terminal device”, “first user interface”, “suggestion operator” and “storage of the server” in the claim amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. Because the published Specification, as noted above (for example, (¶¶ 3, 4, 16, 17, 20, 24, 25, 27, 43, 64) describes the “server”, “plurality of user terminal devices”, “network”, “first user terminal device”, “display of the first user terminal device”, “first user interface”, “suggestion operator” and “storage of the server” in general terms, without describing the particulars, the claim limitations may be broadly but reasonably construed as reciting conventional computer components and techniques, particularly in light of the published Specification sufficiently well-known that the specification does not need to describe the particulars of such additional element(s) to satisfy 35 U.S.C. § 112(a). See MPEP 2106.05(d), as modified by the USPTO Berkheimer Memorandum. Furthermore, the Berkheimer Memorandum, Section III (A)(1) explains that a specification that describes additional element(s) “in a manner that indicates that the additional element(s) is/are sufficiently well-known that the specification does not need to describe the particulars of such additional element(s) to satisfy 35 U.S.C. § 112(a)” can show that the elements are well understood, routine, and conventional); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so lacking in implementation details that it amounts to merely a generic component (software, hardware, or firmware) that permits the performance of the abstract idea, i.e., to retrieve the user-specific resources.” The generic description of the “server”, “plurality of user terminal devices”, “network”, “first user terminal device”, “display of the first user terminal device”, “first user interface”, “suggestion operator” and “storage of the server” indicates the steps are well-known enough that no further description is required for a skilled artisan to understand the process and that these computer components are all used in a manner that is well-understood, routine, and conventional in the field. In particular, the recited data presentation ([L1] “display a first user interface including a suggestion operator”, [L7] “display the teaching material”); data transmission ([L2] “transmitting …a request for suggested teaching material”, [L6] “outputting information”), and data gathering ([L3] “storing learning information”) are nothing more than well-understood, routine, and conventional activity because these limitations are not distinguished from generic, conventional data presentation, data transmission and data gathering with a computer. See Elec. Power Grp., 830 F.3d at 1356 (claims to gathering, analyzing, and displaying data in real time using conventional, generic technology do not have an inventive concept). Hence, the additional element(s) is/are generic, well-known, and conventional computing element(s). The use of the additional element(s) either alone or in combination amounts to no more than mere instructions to apply the judicial exception using generic computer component(s). Mere instructions to apply an exception using generic computer components cannot provide an inventive concept, and thus the claims are patent ineligible. (Step 2B: NO).
In regard to independent Claim 1:
Independent claim 1 recites a support system comprising: a server; and a plurality of user terminal devices communicably connected to the server via a network, wherein: each of the plurality of user terminal devices comprises: a display; and a first hardware processor configured to perform steps similar to those of representative claim 6. Accordingly, independent claim 1 is rejected for reasons similar to those previously explained when addressing representative claim 6.
In regard to independent Claim 11
Independent claim 11 recites a non-transitory recording medium having recorded therein a program for causing a computer recorded thereon for controlling a learning support system, the learning support system including a server and a plurality of user terminal devices communicably connected to the server via a network, and the program being executable by at least one hardware processor of the system to control the system to execute processes comprising steps similar to those of representative claim 6. Accordingly, independent claim 11 is rejected for reasons similar to those previously explained when addressing representative claim 6.
In regard to the dependent claims:
Dependents claims 2, 4, 7, 9, 12 and 14 include all the limitations of corresponding independent claims 1, 6 and 11 from which they depend and, as such, recite the same abstract idea(s) noted above for corresponding independent claims 1, 6 and 11. The dependent claims do not appear to remedy the issues noted above. As per MPEP §§ 2106.05(a)–(c), (e)–(h), none of the limitations of claims 2, 4, 7, 9, 12 and 14 integrates the judicial exception into a practical application. Additionally, while dependent claims 2, 4, 7, 9, 12 and 14 may have a narrower scope than corresponding independent claims 1, 6 and 11, no claim contains an “inventive concept” that transforms the corresponding claim into a patent-eligible application of the otherwise ineligible abstract idea(s). Therefore, dependent claims 2, 4, 7, 9, 12 and 14 are not drawn to patent eligible subject matter as they are directed to (an) abstract idea(s) without significantly more.
Response to Arguments
Rejections under 35 U. S. C. § 101
Applicant essentially argues that “features recited in amended claim 1 clearly achieve an improvement to the functioning of the underlying computer hardware, and are not merely an improvement to the (alleged) "abstract idea" itself”, that “by the automatic server-side management of the stored learning history information to exclude, from among extractable teaching material data, teaching material that is activated after a test, or more than a predetermined period before the execution date of the test, information of teaching material data that is unlikely to contribute to improvement of the academic ability can be efficiently excluded. And as discussed above, by efficiently excluding unnecessary information from being extracted in this way, it is possible to reduce bandwidth consumption when providing information across the system, as well as to reduce the amount of memory required to store, transmit, manage, and/or output the learning history information” and that “when considered as a whole and in an ordered combination, is now even more clearly directed to a practical application of any (alleged) "abstract idea" recited therein, and further, that the features recited in amended claim 1 realize a technical improvement to the underlying computer hardware itself (e.g., reduction in bandwidth consumption, and reduction in memory capacity requirements”. Applicant’s arguments have been fully considered but they are not persuasive as shown below.
Applicant’s assertions appear to rely on the fact that “amended claim 1 now more
positively recites that the server manages the first and second history information … so as to exclude, from extractable teaching material data, teaching material data whose activation date is after the execution date of the test or is outside of a predetermined period before the execution date of the test”. However, the scope of and “managing the learning information so as to exclude, from extractable teaching material data, teaching material data whose activation date is after the execution date of the test or is outside of a predetermined period before the execution date of the test” are not technological improvements, but improvements to information for specifying teaching material data included in extracted learning information, the abstract idea itself. Indeed, tests and lessons are generally limited to particular content, for example, as desired by an educator administering a test and by a student preparing for said test. Representative claim 6 recites displaying data, transmitting data, storing data, excluding data, outputting data and displaying data. The displaying (data presentation), transmitting (data transmission), storing (data gathering), and outputting data (data presentation) are insignificant extra-solution activities. Considered as a whole, these functions have commonly been found to be directed to an abstract idea. See, e.g. Alice, 573 U.S. at 225 (using a computer-implemented system “to obtain data, adjust account balances, and issue automated instructions” did not result in claim being non-abstract); Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347 (Fed. Cir. 2014) held that “humans have performed steps of collecting data, recognizing certain data in the set, and storing recognized data”; Univ. of Fla. Research Found., Inc. v. General Elec. Co., 916 F.3d 1363, 1368 (Fed. Cir. 2019) (claims “directed to the abstract idea of ‘collecting, analyzing, manipulating, and displaying data’”); Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344–45 (Fed. Cir. 2018) (recognizing that information “is an intangible” and that “the collection, organization, and display of two sets of information on a generic display device is abstract absent a ‘specific improvement to the way computers [or other technologies] operate’”) (brackets in original); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1093–94 (Fed. Cir. 2016) (determining “that the ‘realm of abstract ideas’ includes ‘collecting information, including when limited to particular content’” as well as analyzing and presenting information); Bridge & Post, Inc. v. Verizon Commc’ns, Inc., 778 F. App’x 882, 886–87 (Fed. Cir. 2019) (obtaining information, analyzing the information, and presenting customized information based on the analyzed information determined to be directed to an abstract idea); Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988 (Fed. Cir. 2014) (claims directed to organizing, storing, and transmitting information determined to be directed to an abstract idea).
Representative claim 6 does not recite technological implementation details or “a particular way of programming or designing the software . . . , but instead merely claim[s] the resulting system[].” Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1241 (Fed. Cir. 2016). S F.3d 1229, 1241 (Fed. Cir. 2016). Specifically, as indicated in the rejections above, the lack of details about the recited “server”, “plurality of user terminal devices”, “network”, “first user terminal device”, “display of the first user terminal device”, “first user interface”, “suggestion operator” and “storage of the server” indicates that the additional element(s) are generic, or part of generic computer elements performing or being used in performing the generic functions claimed. See originally filed Specification as published (¶¶ 3, 4, 16, 17, 20, 24, 25, 27, 43, 64). Representative claim 6 does not recite how the generically recited “server”, “plurality of user terminal devices”, “network”, “first user terminal device”, “display of the first user terminal device”, “first user interface”, “suggestion operator” and “storage of the server” perform the claim steps. “As many cases make clear, even if a process of collecting and analyzing information is ‘limited to particular content’ or a particular ‘source,’ that limitation does not make the collection and analysis other than abstract.” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1168 (Fed. Cir. 2018). The “character of [the] information simply invokes a separate category of abstract ideas.” Id.; see also In re Mohapatra, 842 F. App’x 635, 638 (Fed. Cir. 2021) (“A claim does not cease to be abstract for section 101 purposes simply because the claim confines the abstract idea to a particular technological environment in order to effectuate a real-world benefit.”). Contrary to applicant’s arguments, representative claim 6, is directed to an abstract idea.
Additionally, The Examiner does not find any indication in the Specification, including applicant’s referenced ¶¶ 76, 77, that the claimed invention effects a transformation or reduction of a particular article to a different state or thing. Nor does the Examiner find anything of record that attributes an improvement in computer technology or functionality to the claimed invention or that otherwise indicates that the claimed invention “appl[ies], rel[ies] on, or use[s] the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception.” (See 2019 Guidance at 54–55). The additional elements when considered separately or in combination do not add significantly more to the exception.
In light of the foregoing, the Examiner maintains that each of Applicant’s pending claims 1-2, 4, 6-7, 9, 11-12 and 14 considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application and does not include an inventive concept.
Conclusion
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/EDDY SAINT-VIL/Primary Examiner, Art Unit 3715
