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 .
Application Status
Present office action is in response to amendment filed 01/26/2026. 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 Objections
Claim 6 is objected to because of the following informalities: Claim 6, line 30 should recite “… the display of the first user terminal device to display …” to avoid claim ambiguity.
Appropriate correction is required.
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, 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, information specifying an execution date of a test and the test and results of the test for each of the plurality of users;
[L4] 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;
[L5] outputting, by the server to the first user terminal device, information specifying the teaching material data included in the extracted learning information; and
[L6] 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), [L5] “outputting information” (i.e., data transmission) and [L6] “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”, [L6] “display the teaching material”); data transmission ([L2] “transmitting …a request for suggested teaching material”, [L5] “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 first argues that “even if amended claim 1 could be interpreted as reciting an abstract idea, the (alleged) abstract idea is clearly integrated into a practical application”, “[T]he claimed subject matter is not directed to (b) certain methods of organizing human activity” and that “the learning information stored in the storage has a specific data structure (i.e., includes information on an activation date of teaching material data, the teaching material data, result data, and an execution date of a test), and this information is used to efficiently obtain and control display of a suggested learning information most useful to a target user in response to a request therefrom. See, for example, Fig. 4.”, that “the technique recited in amended claim 1 achieves a specific technological improvement to the field of art to which the present application pertains and to computer-related technology in general” and that “the features recited in amended claim 1 when considered "as a whole" is directed to a particular improvement in providing server-side suggested teaching material data in response to a remote user request, and is thus not "directed to" a judicial exception itself, in a manner analogous to claim 1 of Example 37 and claim 1 of Example 40 of the USPTO 2019 Patent Eligibility Guidance (PEG)”. Applicant’s arguments have been fully considered but they are not persuasive as sown below.
In regard to the recitation of computer elements, for example, “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”, “first user interface”, “suggestion operator”, “second hardware processor”, as noted in the rejections above, the lack of details about these elements in the Specification (for example, (¶¶ 3, 4, 16, 17, 20, 24, 25, 27, 43, 64) indicates that the additional elements are generic, or part of generic computer elements performing or being used in performing the generic functions claimed. As is clear from the Specification, there is no indication that the operations or components recited in claim 1 require any specialized computer hardware or other inventive computer components, i.e., a particular machine, invoke any asserted inventive programming, or that the claimed invention is implemented using other than generic computer components to perform generic computer functions. See DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014) (“[A]fter Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.”). The Applicant does not direct attention to, and we do not see, where the Specification provides that each component acts in an abnormal manner or outside of its ordinary capacity. The Applicant does not contend that it invented any of the claimed components or their basic functions or that those components, claimed generally, were unknown in the art as of the time of the invention. See Affinity Labs of Texas, LLC v. Amazon.com, Inc., 838 F.3d 1266, 1270 (Fed. Cir. 2016). Is thus apparent that the claim merely links the abstract idea recited to a particular technological environment.
Contrary to Applicant’s assertion, claim 1 differs from exemplary claim 1 of Example 37 of the USPTO 2019 Patent Eligibility. Claim 1 of Example 37 was deemed patent-eligible because it provided a specific improvement over prior art systems by automatically rearranging icons based on a determined amount of use. See 2019 Eligibility Examples, 2–3. Thus, exemplary claim 1 of Example 37 addressed technological difficulties related to organization of program execution icons. See id. at 3. Applicant has neither identified nor demonstrated that the present claims provide such a specific improvement over prior art systems. In particular, Applicant does not explain how claim 1 matches the fact patterns of exemplary claim 1 of Example 37. It is also worth noting that the recitation of “in response to an input operation by a user to the suggestion operator, transmitting a request to the server for suggested teaching material” appears to be the only claim recitation that references an “icon”, namely the claimed “suggestion operator” (see figure 7, item 163). Data input via an icon is a generic conventional operation and no technological implementation details are recited. As noted earlier, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention”). Alice Corp., 573 U.S. at 223.
While Applicant asserts claim 1 is analogous to exemplary claim 1 of Example 40 of the USPTO 2019 Patent Eligibility, Applicant has neither identified nor demonstrated that the present claims provide network specific improvement over prior art systems. In particular, Applicant does not explain how integration of adaptive monitoring of network traffic data by additional elements of collecting network delay, packet loss, or jitter relating to network traffic passing through a network appliance in Example 40 relates to claim 1 that lack these features. In particular, the recitations of “a plurality of user terminal devices communicably connected to the server via a network” and “transmitting … a request for suggested teaching material” do not match the fact patterns of exemplary Example 40. Transmitting data is a generic conventional operation and no technological implementation details are recited. As noted earlier, “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention”). Alice Corp., 573 U.S. at 223.
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.
Prior Art Rejections
The prior art rejections of the claims are withdrawn in view of Applicant’s amendment and remarks.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
The prior art made of record and not relied upon is listed in the attached PTO
Form 892 and is considered pertinent to applicant's disclosure.
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/EDDY SAINT-VIL/Primary Examiner, Art Unit 3715
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