DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . This office action is responsive to the Amendment filed January 16, 2026 (herein referred to as “Amendment”). As directed by the Amendment Claims 1, 2, 4, 5, 7, 9-12, 14, 15 are amended. Claim 8 is cancelled and therefore Claims 1-7 and 9-20 are pending and have been fully considered.
Claim Objections
Claim 1 and 4 are objected to because of the following informalities. Concerning line 13 of Claim 1, Examiner suggests amending “at a user profile” to read --at the user profile--.
Further, concerning line 2 of Claim 4, Examiner suggests amending “updating performance a history” to read --updating a performance history--. 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.
Claim 1-7 and 9-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
STEP 1:
a. Independent Claim 1 is directed toward a method, Claim 15 is directed toward a system, and Claim 16 is directed toward a non-transitory memory medium (i.e., a system).
b. Therefore, the independent Claim 1 along with the corresponding dependent Claims 2-7 and 9-20 are directed to a statutory category of invention under Step 1.
STEP 2A, Prong 1:
Under Step 2A, Prong 1, the claims are analyzed to determine whether one or more of the claims recites subject matter that falls within one of the following groups of abstract ideas:
(1) mental processes,
(2) certain methods of organizing human activity, and/or
(3) mathematical concepts.
In this case, the independent Claim 1 is are directed to an abstract idea without significantly more. Specifically, the claims, under their broadest reasonable interpretation cover certain mental processes. The language of independent Claim 1 is used for illustration:
Independent Claim 1: A method in an apparatus, the method comprising:
maintaining a repertoire of musical pieces at a user profile;
{{{a person may mentally think about, for example, a collection of musical pieces}}}
receiving a user performance of a musical piece;
{{{a person may mentally gather, for example, performances of the musical piece}}}
analyzing the user performance of the musical piece;
{{{a person may mentally think about, for example, performances of the musical piece}}}
determining based on analyzing the performance whether the user performance of the musical piece fulfills at least one predetermined criterion; and
{{{a person may mentally think about, for example, performances of the musical piece in relation to preestablished criterion}}}
based on the user performance of the musical piece fulfilling the at least one predetermined criterion, storing the musical piece into the repertoire;
{{{a person may mentally note, for example, placement of the musical piece within the aforementioned collection of musical pieces}}}
determining for each musical piece in the repertoire a number of past performances and/or a time elapsed from the last performance;
{{{a person may mentally think about, for example, past performances of the musical piece}}}
determining whether the musical piece should be removed from the repertoire based on the number of past performances and/or the time elapsed from the last performance;
{{{a person may mentally think about, for example, removing the musical piece from the repertoire}}}
removing the musical piece from the repertoire based on the determination whether the musical piece should be removed from the repertoire
{{{a person may mentally think about, for example, removing the musical piece from the repertoire}}}
In summary, Claim 1 amounts to managing a list of musical pieces for practice based upon evaluation and usage history, which can all be performed mentally or with a pen and paper, and therefore fall within the category of mental processes. Additionally, Claim 1 recites managing a repertoire based upon evaluation and usage history, which constitutes organizing and managing human activity, which also fall under the category of abstract ideas. Therefore, independent Claim 1 recites at least one abstract idea.
STEP 2A, Prong 2:
Under Step 2A, Prong 2, the claims are analyzed to determine whether the claim, as a whole, integrates the abstract idea into a practical application. As noted in the 2019 PEG, it must be determined whether any additional elements in the claim beyond the abstract idea integrate the exception into a practical application in a manner that imposes a meaningful limit on the judicial exception. The courts have indicated that additional elements such as merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application”; see at least MPEP § 2106.04(d).
In this case, Claim 1 includes additional elements including an apparatus, a processor, a memory, and an interface. The mental processes judicial exception is not integrated into a practical application, as the noted elements are a generic computer implementation, performing typical functions such as receiving data, storing information, and executing instructions. The claim does not recite any improvement to computer technology, signal processing technology, or musical performance analysis technology. Rather, the processor and memory are used as tools to perform the abstract idea. Therefore, the claim does not integrate the abstract idea into a practical application. See MPEP § 2106.04(d).
However, taken alone, the mere additional of computer elements does not integrate the abstract idea into a practical application. Furthermore, looking at the additional limitation(s) as an ordered combination or as a whole, the limitations add nothing significant that is not already present when looking at the elements taken individually. Because the additional elements, do not integrate the abstract idea into a practical application by imposing meaningful limits on practicing the abstract idea, independent Claim 1 is directed to an abstract idea.
STEP 2B:
Under Step 2B, the claims do not include any additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application in Step 2A, Prong Two, the method steps of Claim 1 do not add significantly more, as the claim merely applies the abstract idea on a generic computer. Limiting the use of the abstract idea to a particular environment or field of use cannot provide an inventive concept.
Because the claims fail to recite anything sufficient to amount to significantly more than the judicial exception, independent Claim 1 is patent ineligible under 35 U.S.C. 101.
Dependent Claims 2-7, 9-20 have been given the full two-part analysis, including analyzing the additional limitations, both individually and in combination. Dependent Claims 2-7, 9-20, when analyzed both individually and in combination, are also patent ineligible under 35 U.S.C. § 101 based on same analysis as above. The additional limitations recited in the dependent claims fail to establish that the dependent claims are not directed to an abstract idea. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea. Accordingly, dependent Claims 2-7 and 9-20 are patent ineligible.
Therefore, Claims 1-7, and 9-20 are patent ineligible under 35 U.S.C. 101.
Response to Arguments
Applicant's arguments filed January 16, 2026 have been fully considered but they are not persuasive.
First, Applicant asserts that because the limitations of Claim 1 are now connected to a portion of the apparatus that the limitations are not directed to an abstract idea. As presented herein, Examiner submits that the courts have indicated that additional elements such as merely using a computer to implement an abstract idea, adding insignificant extra solution activity, or generally linking use of a judicial exception to a particular technological environment or field of use do not integrate a judicial exception into a “practical application”. Claim 1 amounts to managing a list of musical pieces for practice based upon evaluation and usage history, which can all be performed mentally or with a pen and paper, and therefore fall within the category of mental processes. Additionally, Claim 1 recites managing a repertoire based upon evaluation and usage history, which constitutes organizing and managing human activity, which also fall under the category of abstract ideas.
Additionally, Applicant asserts that the steps of Claim 1 cannot be practically performed in the human mind for at least the reason that they are recited as being performed by specific components of the apparatus. Examiner submits that the mental processes judicial exception is not integrated into a practical application, as the noted elements are a generic computer implementation, performing typical functions such as receiving data, storing information, and executing instructions. The claim does not recite any improvement to computer technology, signal processing technology, or musical performance analysis technology. Rather, the processor and memory are used as tools to perform the abstract idea.
Furthermore, Applicant asserts that the additional elements of the claimed invention amount to significantly more than the judicial exception, since the subject matter of Claim 8 is now incorporated into independent Claim 1, rendering Claim 1 allowable over the prior art. Examiner submits that the Section 101 rejections have nothing to do with consideration of allowability over the prior art. The additional limitations recited in the dependent claims fail to establish that the dependent claims are not directed to an abstract idea. The additional limitations of the dependent claims, when considered individually and as an ordered combination, do not amount to significantly more than the abstract idea.
Allowable Subject Matter
Claims 1-7 and 9-20 are allowable over the prior art.
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.
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/GRANT MOUBRY/Primary Examiner, Art Unit 3747