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 01/30/2026. Claims 1, 2, 7, 9, 10, 14, 15 and 20 are amended. Claims 1-20 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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
In regard to independent claim 20 analyzed as representative claim:
Step 1: Statutory Category?
Independent Claim 20 recites “a computer-implemented method”. Independent Claim 20 falls within the “process” category of 35 U.S.C. § 101.
Step 2A – Prong 1: Judicial Exception Recited?
The Independent Claim 20/Revised 2019 Guidance Table below identifies in italics the specific claim limitations found to recite an abstract idea and in bold the additional (non-abstract) claim limitations that are generic computer components.
Independent Claim 20
Revised 2019 Guidance
A computer-implemented method comprising:”
A method (method) is a statutory
subject matter class. See 35 U.S.C.
§ 101 (“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.”).
[L1] receiving, by one or more processors, one or more first inputs selecting an interest level from among a plurality of interest levels for each of a set of topics;
The “one or more processors” is an additional non-abstract limitation.
Selecting an interest level from among a plurality of interest levels for each of a set of topics …” could be performed as a mental process, i.e., concept performed in the human mind or using pencil and paper (including an observation, evaluation, judgment, opinion) and a “[c]ertain method[] of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” to the extent that a person could verbally, manually and/or in writing make a selection of an interest level.
[L2] determining, by the one or more processors, displayable information describing a subset of the set of topics based on the one or more first inputs, the displayable information including one or more media segments;
The “one or more processors” is an additional non-abstract limitation.
Determining displayable information describing a subset of the set of topics …” could be performed as a mental process, i.e., concept performed in the human mind or using pencil and paper (including an observation, evaluation, judgment, opinion) and a “[c]ertain method[] of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” to the extent that a person could mentally determine information.
[L3] generating, by the one or more processors, a sequence for the displayable information for the subset of topics using the one or more first inputs and defined ordering criteria;
The “one or more processors” is an additional non-abstract limitation.
Generating a sequence for the displayable information for the subset of the set of topics …” could be performed as a mental process, i.e., concept performed in the human mind or using pencil and paper (including an observation, evaluation, judgment, opinion) and a “[c]ertain method[] of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” to the extent that a person could in writing generate information.
[L4] generating, by the one or more processors, a digital demonstration including a demo tour region and a content region using the one or more first inputs and the defined ordering criteria, the content region including a digital tour for a topic of the sequence for the displayable information, the demo tour region including a set of topic cards graphically indicating an interactable customized outline of the subset of topics; and
The “one or more processors” is an additional non-abstract limitation.
Generating a … demonstration including a demo tour region and a content region using the one or more first inputs and the defined ordering criteria …” could be performed as a mental process, i.e., concept performed in the human mind or using pencil and paper (including an observation, evaluation, judgment, opinion) and a “[c]ertain method[] of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” to the extent that a person could in writing generate information.
[L5a] presenting, by the one or more processors, for display in a graphical user interface on a client device, the digital demonstration including the sequence of the displayable information for the subset of topics in the demo tour region and the content region including:
The “one or more processors”, “graphical user interface” and “client device” are additional non-abstract limitations.
Presenting the digital demonstration including the sequence of the displayable information for the subset of topics in the demo tour region and the content region (i.e., data presentation) is an additional element which adds insignificant extra-solution activity to the judicial exception. See 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see also MPEP § 2106.05(g).
[L5b] presenting the digital tour for each topic of the subset of topics, the digital tour providing information relating to the topic in the digital demonstration, the digital tour including a sequence of steps that describe subtopics of the topic, the digital tour including a plurality of images and a plurality of tour elements overlayed at defined locations on the plurality of images, the defined ordering criteria including a first sequence of the set of topics and a second sequence of the steps within the topic.
Presenting the digital tour for each topic of the subset of topics … (i.e., data presentation) is an additional element which adds insignificant extra-solution activity to the judicial exception. See 2019 Memorandum, 84 Fed. Reg. at 55 n.31; see also MPEP § 2106.05(g).
It is apparent that, other than reciting the “one or more processors”, “graphical user interface” and “client device” are additional non-abstract limitations noted in the Independent Claim 20/Revised 2019 Guidance Table above, nothing in the claim precludes the steps from practically being performed by a human as a certain method of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions), in the mind, and/or using pen and paper. The mere nominal recitation of the “one or more processors”, “graphical user interface” and “client device” and automation of a manual process does not take the claim out of the certain method of organizing human activity, and mental processes groupings. Accordingly, the claim recites an abstract idea under Step 2A: Prong 1.
Step 2A – Prong 2: Integrated into a Practical Application?
The body of the claim, as noted in the Independent Claim 20/Revised 2019 Guidance Table above, recites the additional limitations of the “one or more processors”, “graphical user interface” and “client device”. The published Specification provides supporting exemplary descriptions of generic computer components: at least ¶ 69: … input device 214 may include any device for inputting information into the computing system 200. In some implementations, the input device 214 may include one or more peripheral devices. For example, the input device 214 may include a keyboard, a pointing device, microphone, an image/video capture device (e.g., camera), a touchscreen display integrated with the output device 216, etc. The output device 216 may be any device capable of outputting information from the computing system 200. The output device 216 may include one or more of a display (LCD, OLED, etc.), a printer, a haptic device, audio reproduction device, touch-screen display, a remote computing device, etc. In some implementations, the output device is a display which may display electronic images and data output by a processor of the computing system 200 for presentation to a user, such as the processor 204 or another dedicated processor; ¶ 142: … various implementations are described as having particular hardware, software, and user interfaces. However, the present disclosure applies to any type of computing device that can receive data and commands, and to any peripheral devices providing services…; ¶ 146: … apparatus may be specially constructed for the required purposes, or it may comprise a general-purpose computer selectively activated or reconfigured by a computer program stored in the computer…; ¶ 150: … the structure, algorithms, and/or interfaces presented herein are not inherently related to any particular computer or other apparatus. Various general-purpose systems may be used with programs in accordance with the teachings herein, or it may prove convenient to construct more specialized apparatus to perform the required method blocks…; ¶ 151: … modules, routines, features, attributes, methodologies, and other aspects of the disclosure can be implemented as software, hardware, firmware, or any combination of the foregoing. Also, wherever a component, an example of which is a module, of the specification is implemented as software, the component can be implemented as a standalone program, as part of a larger program, as a plurality of separate programs, as a statically or dynamically linked library, as a kernel loadable module, as a device driver, and/or in every and any other way known now or in the future. Additionally, the disclosure is in no way limited to implementation in any specific programming language, or for any specific operating system or environment. The lack of details about the “one or more processors”, “graphical user interface” and “client device” indicates that the above-mentioned additional element(s) is/are generic computer components, performing generic functions. See 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 claim does not recite (i) an improvement to the functionality of a computer or other technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55. The claimed invention merely implements the abstract idea using instructions executed on generic computer components, as shown in bold above, and as supported in the above noted pertinent portions of the Specification. The instant claim merely uses a programmed computer as a tool to perform an abstract idea. See MPEP § 2106.05(f). The Additional limitations [L5a], [L5b] (i.e., data presentation), as shown in Table One, reflect the type of extra-solution activity (i.e., in addition to the judicial exception) the courts have determined insufficient to transform judicially excepted subject matter into a patent-eligible application when they are claimed in a merely generic manner. See MPEP § 2106.05(g); see, e.g., Mayo, 566 U.S. at 72–73; 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); see also Elec. Power, 830 F.3d at 1354 (“[W]e have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.”). The instant claim as a whole merely uses computer instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. The claim limitations amount to merely indicating a field of use or technological environment (a computer) in which to apply a judicial exception and, as such, cannot integrate the judicial exception into a practical application. See MPEP § 2106.05(h). Hence, as per MPEP §§ 2106.05(a)–(c), (e)–(h), the additional elements in claim 20, namely the “one or more processors”, “graphical user interface” and “client device” do not, either individually or in combination, integrate the abstract idea into a practical application. Because the abstract idea is not integrated into a practical application, the claim is directed to the judicial exception. (Step 2A, Prong 2: NO).
Step 2B: Claim provides an Inventive Concept?
As discussed with respect to Step 2A Prong Two, the additional elements in the claim amount 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. The fact that the Specification does not further describe the “one or more processors”, “graphical user interface” and “client device” 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 to satisfy 35 U.S.C. § 112(a). See MPEP 2106.05(d), as modified by the USPTO Berkheimer Memorandum. Hence, the additional element(s) is/are generic, well-understood, routine, and conventional computing elements. 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 components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept, and thus the claim is patent ineligible. (Step 2B: NO).
In regard to independent Claim 1:
Independent claim 1 recites a computer-implemented method of generating a digital demonstration for a subject matter similar to claim 20, comprising elements substantially similar (See Spec., ¶¶ 69, 142, 146, 150-151) performing steps substantially similar in scope to those of representative claim 20. As a result, claim 1 is rejected similarly to claim 20.
In regard to the dependent claims:
Dependent claims 2-13 and 15-19 include all the limitations of respective independent claims 1 and 14 from which they depend and as such recite the same abstract idea(s) noted above for independent claims 1 and 14. None of the additional claim activities is used in some unconventional manner nor does any produce some unexpected result. Claims 2-13 and 15-19 only provide more detailed limitations of the abstract idea, which do not make the abstract idea(s) any less abstract. Any additional claim element(s) is/are each recited as a generic component being used according to its conventional purpose in a conventional manner (See Spec., ¶¶ 69, 142, 146, 150-151). The Examiner fails to see any claim activity used in some unconventional manner nor does any produce some unexpected result. An invocation to use known technology in the manner it is intended to be used for its ordinary purpose is both generic and conventional. As per MPEP §§ 2106.05(a)–(c), (e)–(h), none of the limitations of claims 2-13 and 15-19 integrates the judicial exception into a practical application. While dependent claims 2-13 and 15-19 may have a narrower scope than independent claims 2-13 and 15-19, 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 2-13 and 15-19 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 argues the instant claims are analogous to USPTO eligibility Example 2 and 37. Applicant’s arguments are not persuasive.
Example 2 references DDR Holdings which was “necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks,” from patent-ineligible claims that broadly and generically require the use of a computer and the Internet to perform an abstract business practice. DDR Holdings, 773 F.3d at 1257–58. Namely, the court held that the claims at issue “specify how interactions with the Internet are manipulated to yield a desired result—a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink.” Id. at 1258. The Examiner fails to see and Applicant fails to establish any solution to necessarily rooted in computer technology analogous to the patent-eligible claims in DDR Holdings. Instead, at best, the instant claims require “one or more processors”, “graphical user interface” and “client device” to perfor generic functions as expected.
The instant claims are not analogous to example 37. Claim 2 in Example 37 does not recite any judicially excepted subject matter (JESM) because the claimed “determining the amount of use of each icon [is performed] by tracking how much memory has been allocated to each application associated with each icon.” 2019 Guidance Examples at 3. On the other hand, the claimed “determining” and “generating” steps are JESM. There is no meaningful similarity between claimed “determining” and “generating” steps (JESM) and Example 37’s claimed determination of icon usage by tracking usage of memory (not JESM).
In light of the foregoing, the Examiner maintains that each of Applicant’s pending claims 1-20 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.
Rejections Under 35 U. S. C. § 103
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.
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/EDDY SAINT-VIL/Primary Examiner, Art Unit 3715
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