DETAILED ACTION
This action is in response to the amendment filed 2 December 2025.
Claims 1, 3, and 6 are pending and have been examined; claims 2, 4, and 5 have been cancelled by Applicant.
This action has been made FINAL.
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 .
Response to Arguments
35 USC §101
Applicant's arguments filed 2 December 2025 have been fully considered, but are moot in light of Applicant’s amendments.
However, since the claimed amendments now invoke other rejections (e.g., 112(a) and 112(b), as shown below), Examiner will address the pertinent arguments.
Applicant argues “Step 1: The claimed subject matter is directed to a statutory category The claimed subject matter of claims 1, 3, and 6 are directed to a statutory category of a machine. Therefore, the claims satisfy Step 1 of the subject matter eligibility test. Claim 1 expressly recites "A learning and development operations management system, comprising:" multiple components that collectively form an integrated computing system. The recited components are a structural part of the claimed machine. The claim is not
directed to the result of "managing learning operations" in the abstract. The claim 1 is directed to a multi-component system architecture implemented through interacting subsystems. The claim further recites that the system comprises, among others, "a learning participant, content, and records intake system," "a learning and development project management system," "a learning and development measurements, records, and reporting system," "a learning impact measurement and evaluative system," "a learning and development content and resources capacity management system," and "a learning strategy records and implementation system." The claimed systems are not standalone software "modules," as characterized by the Examiner. They are expressly claimed as constituent systems that form the overall "learning and development operations management system". The claim also recites that these components are "temporally and functionally enhanced and interconnected as an integrated system," which further clarifies that the claimed system is a machine composed of multiple operatively coupled subsystems. Examiner respectfully disagrees.
As stated in the MPEP 2106.03 I “ Products that do not have a physical or tangible form, such as information (often referred to as "data per se") or a computer program per se (often referred to as "software per se") when claimed as a product without any structural recitations”; “As the courts' definitions of machines, manufactures and compositions of matter indicate, a product must have a physical or tangible form in order to fall within one of these statutory categories. Digitech, 758 F.3d at 1348, 111 USPQ2d at 1719. Thus, the Federal Circuit has held that a product claim to an intangible collection of information, even if created by human effort, does not fall within any statutory category. Digitech, 758 F.3d at 1350, 111 USPQ2d at 1720 (claimed "device profile" comprising two sets of data did not meet any of the categories because it was neither a process nor a tangible product). Similarly, software expressed as code or a set of instructions detached from any medium is an idea without physical embodiment. See Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449, 82 USPQ2d 1400, 1407 (2007); see also Benson, 409 U.S. 67, 175 USPQ2d 675 (An "idea" is not patent eligible). Thus, a product claim to a software program that does not also contain at least one structural limitation (such as a "means plus function" limitation) has no physical or tangible form, and thus does not fall within any statutory category. Another example of an intangible product that does not fall within a statutory category is a paradigm or business model for a marketing company. In re Ferguson, 558 F.3d 1359, 1364, 90 USPQ2d 1035, 1039-40 (Fed. Cir. 2009) (emphasis added)”.
The only recitations of the claimed a learning participant, content, and records intake system, a learning and development project management system, a learning and development content and resources capacity management system, and a learning strategy records and implementation system occur in paragraph [0038] :“In preferred embodiments of the present invention, the learning and development operations management system will comprise: (1) a learning and development program participant, content, and records intake system; (2) a learning and development project management system; (3) a learning and development program project management system; (4) a learning and development programs measurements data, records, and data and records reporting system; (5) a learning and development program impact measurement data, feedback, and evaluative system; (6) a learning and development programs content and resources capacity management system; and (7) a learning and development programs strategy implementation and records system, further such that the systems are temporally and functionally enhanced and interconnected as an integrated learning and development content and practice operations management system”. There is no other recitation of the claim elements in the disclosure.
The limitation of learning and development measurements, records, and reporting system is recited in only paragraph [0030] “The reporting system includes a reporting manager that accesses a configuration in a reporting database, and according to the configuration fetches records from the learning intake database and the projects database. The reporting manager and its configuration provide a method for generating the queries and query parameters that are specific to the type of user requesting reports, by fetching the user type and user record details from the user database. The reporting interface is an interface that facilitates a user requesting reports and provides visual representations of the resulting datasets of records fetched from the learning request database, or the learning project database, or the capacity database, or the learning strategy database, or any combination thereof”.
The limitation recites a learning impact measurement and evaluative system in only paragraph [0027] “As depicted in FIG. 3 herein, a preferred embodiment of the present invention includes a learning impact system consisting of a learning impact manager, a learning impact interface, a learning impact engine, and a database. The learning impact manager is a component that computes the performance and impact of the learning projects, attributing the delivery of the project to changes in underlying ROI metrics, according to a customizable configuration…The learning impact engine queries learning impact measurements and an impact configuration from the database to compute an impact score, which is an estimate of the fraction of the change in the specified metric that is attributable to the delivery and use of the learning project”.
However Applicant’s disclosure states at [0025] “In a particular preferred embodiment of the present invention, the comprehensive system will comprise a learning objectives module, a learning requests module, a learning investments module, a learning projects module, a learning solutions module, and a learning insights module”. There is no structure associated or described in respect to these modules, nor to any of the clamed systems.
Applicant’s specification provides the following evidence that the claimed systmes are merely software per se with no physical and tangible form - first, paragraph [006] states “The present disclosure offers and provides an effective and efficient system that prioritizes and optimizes synergy between different hardware components and functional modules within the system”; this shows that modules, in Applicants specification, are considered to be functional and differentiated from hardware components.
Secondly, Applicant’s specification states that “In a preferred embodiment of the present invention, the learning and development operations management system may be seamlessly overlaid over, or readily supplant, prior existing alternate learning and development management systems, tools, and records without material interruption in operations or substantial data loss” (paragraph [0038]). Hardware cannot be ‘overlaid over’ existing systems.
Finally, there is NO recitation of the claimed system being performed with or on any type of hardware (e.g., CPU, computer, processor, microprocessor, ASIC, circuit, FPGA, etc.). The only mention of ‘computers’ is in reference to external devices (e.g., as stated in paragraphs [0025]-[0027]). As such, the claimed system has no physical or tangible form, and thus does not fall within any statutory category.
However, the newly amended limitations of an intake manager configured to, a projects manager configured to, a projects interface configured to, a reporting manager configured to, the reporting system configured to, a reporting interface configured to, a learning impact manager configured to, a capacity database configured to store, can be interpreted under 35 USC 112(f) as means plus function. However, as noted below, the 112(f) interpretation triggers 112(a) and 112(b) rejections in light of the 112(f) invocation and lack of corresponding structure, material, or acts for performing the entire claimed function that clearly link the structure, material, or acts to the function.
As such, the 101 rejections of the claims as being directed to software per se is withdrawn.
In respect to Applicant’s further arguments, made on pages 13 – 19 of Applicant’s response, in respect to the claims not being directed to an abstract idea, it is noted that such a rejection was not made by Examiner in the previous action (i.e., no rejection under 35 USC 101 in respect to a judicial exception was made), so Applicant’s arguments regarding said are moot.
35 USC §112(a)
Applicant's arguments filed 2 December 2025 have been fully considered but they are not persuasive.
Applicant makes various arguments, on pages 8 – 10 in respect to the “Claim Objections under 35 U.S.C. §112”, particularly arguing that the claimed invention and specification provides for and shows “how that the subsystems interconnect through shared state, shared databases, and cross-system workflows”, and that “[t]he amended claim 1 recites that the integration is achieved "through at least one shared database, or through an overlay or supplanting of prior existing alternate learning and development (L&D) management systems and records."”. Examiner respectfully disagrees.
It is first noted that the claims were rejected, not objected to, under 35 USC 112(a). Further, the rejection was not made in respect to the claimed ‘integration’; the 112(a) rejection was in respect to the claimed wherein the systems are temporally and functionally enhanced, and the lack of support in Applicant’s specification. Applicant’s arguments fail to address the rejected claims or show were evidence of possession of the claimed wherein the systems are temporally and functionally enhanced is to be found in Applicant’s disclosure, nor do the claim amendments overcome the 112(a) rejection.
The 112(a) rejection of the claims is maintained.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitations are: an intake manager configured to, a projects manager configured to, a projects interface configured to, a reporting manager configured to, the reporting system configured to, a reporting interface configured to, a learning impact manager configured to, a capacity database configured to store in claim 1.
Because these claim limitations are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, they are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have these limitations interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, and 6 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
Claim limitations of “intake manager configured to, a projects manager configured to, a projects interface configured to, a reporting manager configured to, the reporting system configured to, a reporting interface configured to, a learning impact manager configured to, and a capacity database configured to store” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed functions, or clearly link the structure, material, or acts to the functions. Applicant’s filed disclosure fails to provide for any structure, material or acts for performing the claimed function (noting that the specification merely recites ‘modules’ performing functions with no further structural description), nor does Applicant’s disclosure provide for an algorithm for performing the claimed specific computer function1.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1, 3, and 6 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
It has been held that to satisfy the written description requirement, a patent specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention. (See, e.g., Moba, B.V. v. Diamond Automation, Inc., 325 F.3d 1306, 1319, 66 USPQ2d 1429, 1438 (Fed. Cir. 2003); Vas-Cath, Inc. v. Mahurkar, 935 F.2d at 1563, 19 USPQ2d at 1116). Further, it has been held that a showing of possession alone does not cure the lack of a written description. An applicant shows possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. (Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997)).
Claim 1 recites the limitation “wherein the systems are temporally and functionally enhanced and interconnected as an integrated learning and development operations management system”, however Examiner is unable to find sufficient detail to conclude that the inventor had possession of the claimed invention in Applicant’s disclosure. Other than in the Background and Summary sections of Applicant’s disclosure, the only description or mention of wherein the systems are temporally and functionally enhanced occurs at paragraph [0038]:
“In preferred embodiments of the present invention, the learning and development operations management system will comprise: (1) a learning and development program participant, content, and records intake system; (2) a learning and development project management system; (3) a learning and development program project management system; (4) a learning and development programs measurements data, records, and data and records reporting system; (5) a learning and development program impact measurement data, feedback, and evaluative system; (6) a learning and development programs content and resources capacity management system; and (7) a learning and development programs strategy implementation and records system, further such that the systems are temporally and functionally enhanced and interconnected as an integrated learning and development content and practice operations management system. In a particular preferred embodiment, the learning and development operations management interconnected systems are interconnected through at least one shared database. In a preferred embodiment of the present invention, the learning and development operations management system may be seamlessly overlaid over, or readily supplant, prior existing alternate learning and development management systems, tools, and records without material interruption in operations or substantial data loss. In a particular preferred embodiment, the learning and development programs project management system provides substantially real-time translations of learning and development program content, reports, and records to a language selected by the user, supervisor, L&D team member, or systems administrator” (emphasis added).
As shown by the emphasized portion of the paragraph, above, there is merely a mention of wherein the systems are temporally and functionally enhanced, and is no more than a statement of a result that one might achieve if one made that invention2. There is no description of HOW this enhancement occurs, or how one would achieve said enhancement. As such, Applicant has failed to show possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention.
Claims 3 and 6 depend on claim 1, have and are rejected using the same rationale.
Claims 1, 3, and 6 are further rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement.
As stated in the 112(b) rejection, above, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. Applicant’s specification merely recites modules that perform a function, and fails to provide for any corresponding structure for performing the said functions3.
Conclusion
The prior art made of record and not relied upon considered pertinent to Applicant’s disclosure.
Koepper; David J. et al. US 7024154 B1 Training tracking system and method of use
Packard; Ronald Jay et al. US 8838015 B2 Systems and methods for producing, delivering and managing educational material
Ashman, Jr.; Ward US 8337209 B2 Computerized systems and methods for self-awareness and interpersonal relationship skill training and development for improving organizational efficiency
Madhavan; Anand et al. US 9940606 B2 Correlating jobs with personalized learning activities in online education platforms
Caucci; Sam US 20190311449 A1 Method And System For Generating And Monitoring Training Modules
THIS ACTION IS MADE FINAL. 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALAN S MILLER whose telephone number is (571)270-5288. The examiner can normally be reached on M-F 10am-6pm. Examiner’s fax phone number is (571) 270-6288.
Examiner interviews are available via telephone and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Beth Boswell can be reached at (571) 272-6737. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ALAN S MILLER/Primary Examiner, Art Unit 3625
1 See MPEP 2181 II, subsections A. and B.
2 See MPEP 2163 II. A. 3. (i): “Thus, the written description requirement may be satisfied through disclosure of function and minimal structure when there is a well-established correlation between structure and function. In contrast, without such a correlation, the capability to recognize or understand the structure from the mere recitation of function and minimal structure is highly unlikely. In this latter case, disclosure of function alone is little more than a wish for possession; it does not satisfy the written description requirement. See Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406 (written description requirement not satisfied by merely providing “a result that one might achieve if one made that invention”); In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984) (affirming a rejection for lack of written description because the specification does “little more than outline goals appellants hope the claimed invention achieves and the problems the invention will hopefully ameliorate”).
3 See MPEP 2181 IV. “Merely restating a function associated with a means-plus-function limitation is insufficient to provide the corresponding structure for definiteness. See, e.g., Noah, 675 F.3d at 1317, 102 USPQ2d at 1419; Blackboard, 574 F.3d at 1384, 91 USPQ2d at 1491; Aristocrat, 521 F.3d at 1334, 86 USPQ2d at 1239. It follows therefore that such a mere restatement of function in the specification without more description of the means that accomplish the function would also likely fail to provide adequate written description under section 112(a) or pre-AIA section 112, first paragraph”.