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 the amendment filed 12/10/2025. Claims 1-2, 4-10, 12-16 are amended. Claims 3 and 11 are cancelled. Claims 1-2, 4-10 and 12-16 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, 4-10 and 12-16 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 9, analyzed as representative claim:
Step 1: Statutory Category?
Independent Claim 9 recites “A method for guiding reading or writing comprises:”. Independent Claim 9 falls within the “process” category of 35 U.S.C. § 101.
Step 2A – Prong 1: Judicial Exception Recited?
The Independent Claim 9/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 9
Revised 2019 Guidance
A computer-implemented method for guiding reading or writing using an apparatus comprising a processor and a memory, the method comprising:
A method (process) 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.”).
The “processor” and “memory” are additional non-abstract limitations, namely, generic computer components.
[L1a] by the processor, reading a text …
The “processor” is an additional non-abstract limitation, namely, a generic computer component.
“Reading a text …” 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/educator/student could read the text based on observation, evaluation, judgment, opinion.
[L1b] by the processor, … a text received from a user terminal;
The “user terminal” is an additional non-abstract limitation, namely, a generic computer component.
The limitation “text received…” is an additional element that adds insignificant extra-solution activity to the judicial exception, e.g., mere data gathering. See
January 2019 Memorandum, 84 Fed.
Reg. 55, n. 31.
[L2] by the processor, dividing the text into sentences;
The “processor” is an additional non-abstract limitation, namely, a generic computer component.
Abstract: “dividing the text into sentences” 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/educator/student could divide the text into sentences based on observation, evaluation, judgment, opinion, using reading comprehension or writing rules.
[L3] by the processor, comparing keywords between the sentences
The “processor” is an additional non-abstract limitation, namely, a generic computer component.
Abstract: “comparing keywords between the sentences” 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/educator/student could compare keywords between the sentences based on observation, evaluation, judgment, opinion, reading comprehension or writing rules.
[L4] by the processor, extracting a keyword type from the keywords
The “processor” is an additional non-abstract limitation, namely, a generic computer component.
Abstract: “extracting a keyword type from the keywords” 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/educator/student could extract a keyword type from the keywords based on observation, evaluation, judgment, opinion, using reading comprehension or writing rules.
[L5] by the processor, classifying a type of a structure for a single sentence or types of connection structures for at least two sentences into a superstructure or a substructure by matching the keyword type with each of types which are modeled in advance;
The “processor” is an additional non-abstract limitation, namely, a generic computer component.
Abstract: “classifying … by matching …” 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/educator/student could classify a type of a structure for a single sentence or types of connection structures for at least two sentences into a superstructure or a substructure by matching the keyword type with each of types which are modeled in advance based on observation, evaluation, judgment, opinion, using reading comprehension or writing rules.
[L6] by the processor, constructing a sentence analysis map for analyzing the text according to each of the modeled types
The “processor” is an additional non-abstract limitation, namely, a generic computer component.
Abstract: “constructing a sentence analysis map …” 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/educator/student could construct a sentence analysis map based on observation, evaluation, judgment, opinion, using reading comprehension or writing rules.
[L7] by the processor, generating guide information based on the classified type or types by referring to the sentence analysis map
The “processor” is an additional non-abstract limitation, namely, a generic computer component.
Abstract: “generating guide information …” 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/educator/student could generate guide information based on observation, evaluation, judgment, opinion, using reading comprehension or writing rules.
[L8a] by the processor, guiding the reading or the writing for the text
The “processor” is an additional non-abstract limitation, namely, a generic computer component.
Abstract: “guiding the reading or the writing for the text ” 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/educator/student could guide the reading or the writing for the text based on observation, evaluation, judgment, opinion, using reading comprehension or writing rules.
[L8b] providing the generated guide information to the user terminal, wherein the superstructure comprises a topic or a combination of a premise and the topic, and the substructure comprises a support;
The “user terminal” is an additional non-abstract limitation, namely, a generic computer component.
“Providing the generated guide information to the user terminal” is an additional element that adds insignificant extra-solution activity to the judicial exception, e.g., mere data gathering/transmitting. See January 2019 Memorandum, 84 Fed. Reg. 55, n. 31.
The published Specification discloses “[T]he present invention relates to a method and apparatus for guiding improvements of abilities for reading and writing of a text …” (¶ 1), and “an objective to provide a method and apparatus for guiding improvements of reading and writing abilities of a user …”. (¶ 15). Based at least on the above, it is apparent that other than reciting the additional non-abstract limitations of the “processor”, “memory” and “user terminal” noted in the Independent Claim 9/Revised 2019 Guidance Table above, nothing in the claim precludes the steps from practically being performed by a human, in the mind, and/or using pen and paper. The mere nominal recitation of the “processor”, “memory” and “user terminal” does not take the claim out of the method of organizing human activity and mental processes groupings. Accordingly, the claim recites a judicial exception (Step 2A, Prong One: YES).
Step 2A – Prong 2: Integrated into a Practical Application?
The body of the claim, as noted in the Independent Claim 9/Revised 2019 Guidance Table above, recites the additional limitations of the “processor”, “memory” and “user terminal”. The published Specification provides supporting exemplary descriptions of generic computer components, for example: ¶ 58: The apparatus for guiding improvements of reading and writing 100 is a server computer …; ¶ 67: The user terminal 200 is a communication device that uses wired or wireless Internet such as a smartphone or tablet owned by the user and performs a login to the apparatus for guiding improvements of reading comprehension and writing composition 100 through network connection according to the user's operation; ¶ 107: The control part 170 is a processor that collectively controls operations of the respective parts of the apparatus for guiding improvements of reading comprehension and writing composition 100; ¶ 181: As shown in FIG. 16, the hardware structure of the apparatus for guiding improvements of reading comprehension and writing composition 100 comprises a processor 1000, a memory 2000, a user interface 3000, a database interface 4000, a network interface 5000, and a web server 6000; ¶ 183: The user interface 3000 is configured to provide an input and an output interface to a user by using a graphical user interface (GUI); ¶ 184: The database interface 4000 is configured to provide an interface between a database and a hardware structure; ¶ 185: The network interface 5000 is configured to provide a network connection between devices connected by a user; ¶ 186: The web server 6000 is configured to provide means for a user to access the hardware structure over a network; ; ¶ 190: the present invention comprises a processor, such as a central processing unit (CPU) or microprocessor, which performs the respective functions, or is implemented by the processor, and two or more of the components can be combined into a single component capable of performing all the behaviors or functions of the combined two or more components. The lack of details about the “processor”, “memory” and “user terminal” indicates that the above-mentioned additional elements are generic, or part of generic computer elements performing or being used in performing the generic functions claimed. The claim does not change the way in which each of the recited “processor”, “memory” and “user terminal” performs its tasks, the claim simply uses each component for its ordinary purpose to carry out the abstract idea of guiding improvements of reading and writing abilities of a user. 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.”); see also Cyberfone Sys., LLC v. CNN Interactive Grp., Inc., 558 F. App’x 988, 992 (Fed. Cir. 2014) (claims directed to organizing, storing, and transmitting information determined to be directed to an abstract idea). 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 originally filed 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 noted above, [L1b] “text received” (i.e., data gathering) and [L8b] “providing the generated guide information” (i.e., transmitting data) reflect the type of extra-solution activity (i.e., activities 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., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (“We have held that mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.”’ (alterations in original) (quoting In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989))); see 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”); see also BSG Tech LLC v. BuySeasons, Inc., 899 F.3d 1281, 1288 (Fed. Cir. 2018) (“[A]n improvement to the information stored by a database is not equivalent to an improvement in the database’s functionality.”); further see Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015) (“Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”).); also see cf. Berkheimer, 881 F.3d at 1367 (a parser that determines and extracts parts of documents and reassembles the parts into composite output files by parsing data structures to transform data from source to object code did not improve computer functionality).
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 9, namely the “processor”, “memory” and “user terminal” 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 element(s) 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.
Because the published Specification, as noted above (¶¶ 58, 67, 107, 181, 183, 184, 185, 186, 190) describes the “processor”, “memory” and “user terminal” in general terms, without describing the particulars, the recited claim element(s) and functions may be broadly but reasonably construed as reciting conventional computer component(s) and technique(s), 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 elements “in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements 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.”; Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) (claims to extracting data from documents, recognizing information in the extracted data, and storing recognized data provided data collection, recognition, and storage that humans always have performed and doing so with conventional, generic computer technology did not provide 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 components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. Therefore, the judicially excepted subject matter cannot be transformed into a patent-eligible application, and thus the claims are patent ineligible. (Step 2B: NO).
In regard to independent Claim 1:
Independent claim 1 is a computer-implemented apparatus counterpart to the method of claim 9. The apparatus falls within the “machine” category of 35 U.S.C. § 101. The computer-implemented apparatus is claimed as for guiding reading or writing, comprising: a processor, a memory storing program code which, when executed by the processor, is configured to cause the apparatus to perform steps comparable to those of method Claim 9. In addition to reciting the “processor” and “memory”, similarly to method Claim 9, claim 1 additionally recites a “user terminal”. As a result, independent claim 1 is rejected similarly to representative independent Claim 9.
In regard to the dependent claims:
Dependent claims 2, 4-8, 10 and 12-16 include all the limitations of corresponding independent claims 1 and 9 from which they depend and as such recite the same abstract idea(s) noted above for claims 1 and 9. None of the additional claim limitations, for example, the “apparatus… stor[ing] sentence structure model and the additional model” recites technological implementation details for any of the additional limitation steps, but instead they recite only results desired by any and all possible means. 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, 4-8, 10 and 12-16 integrates the judicial exception into a practical application. While dependent claims 2, 4-8, 10 and 12-16 may have a narrower scope than the representative claim, 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, 4-8, 10 and 12-16 are not drawn to patent eligible subject matter as they are directed to (an) abstract idea(s) without significantly more.
Response to Arguments
Claim Rejections - 35 USC § 101
Applicant’s arguments have been fully considered but they are not persuasive.
Step 2A- Prong 1: Judicial Exception Recited?
Applicant’s arguments emphasize that “As amended, claim 9 no longer recites a judicial exception under Step 2A, Prong 1”, that “the amended claim now recites specific, technical, and computer-implemented operations”, that “Each of technical features in claim 9 requires algorithmic text processing, modeling type(s) of structure for sentence(s) structured model comparison, and automated classification”, that “[T]he claimed features address a technical problem in computerized reading and writing abilities improvements, not a human behavioral or organizational problem”, that “[C]laim 9 recites a specific technological implementation that uses modeled sentence structures” and that “[T]his represents an improvement in computer-implemented text-analysis systems, rather than an abstract idea”. Applicant’s arguments are not persuasive.
It is first important to note that, as per the instant disclosure “the model is defined and identified by a data structure or a template”. See published Specification (¶ 80). Additionally, “[T]he sentence structure model modeling part 121 is configured to model the 14 types of 1-stage sentence text, 2-stage sentence text and 3-stage sentence text into 3 compressed types of 2-stage sentence text as shown in FIG. 4 (that is, 1 type connected by a progress type linking word of ‘by the way’, another 1 type connected by a reverse type linking word of ‘but, and the other 1 type connected by a conclusion type linking word of ‘therefore’), and store the 3 compressed types”. See published Specification (¶ 111). While Applicant asserts “algorithmic text processing, modeling type(s) of structure for sentence(s) structured model comparison, and automated classification”, “technical features”, “address[ing] a technical problem” and “a specific technological implementation”, the computer-implemented steps in independent claim 9 are claimed in terms of their functionality and, as discussed above, the claim functions align with those performed by a person when reading and/or writing text using pen and paper and/or in the mind. In particular, as noted in the Independent Claim 9/Revised 2019 Guidance Table above and contrary to Applicant’s arguments, humans have long read data, compared data, extracted/determined data types, classified data by matching, constructed data maps, generated guidance and provided guidance. Applicant fails to indicate and the Examiner fails to see what “technical problem” the claim addresses. Additionally, the claim steps do not provide any specific details regarding what or how any of the claim steps is performed such that the generic step of “providing the generated guide information to the user terminal” required by the claim represents an improvement as asserted. To the extent that Applicant asserts “these functions cannot be performed in a person’s mind” because the claim requires computer components, Applicant is respectfully reminded that when an additional element in a claim is a “computer,” the relevant question is not whether the claim requires the computer to accomplish a recited function. (Alice, 573 U.S. at 223.) Rather, “the relevant question” is whether the claim does more than simply “instruct the practitioner to implement the abstract idea” on a computer. (Id. at 225.) The mere recitation of a computer in the claim, and/or words simply saying “apply” the abstract idea “with a computer,” will not transform the abstract idea into a patent-eligible invention.” (Id. at 223.) In short, the sheer introduction of a computer into the claim is not enough to “impart patent eligibility.” (Id.). As noted in Versata Dev. Grp., Inc. v. SAP Am., Inc., 793 F.3d 1306, 1335 (Fed. Cir. 2015), “Courts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.”.
Step 2B: Claim provides an Inventive Concept?
Applicant’s arguments emphasize that “[T]he rejection asserts that the claims merely apply an abstract idea using generic computer components”, that “this
characterization disregards the non-conventional and non-routine combination of operations, that recited in claim 9”, which “includes specific technical features such as: modeling and storing types of structure and connection structure for sentences, constructing a sentence analysis map, algorithmically extracting keywords and keyword types, matching the keyword types with the modeled structures, and automatically classifying text into superstructure or substructure to generate guide information”. Applicant additionally argues “[T]his ordered combination is not well-understood, routine, or conventional, and no factual evidence has been provided to support such a finding, as required under Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018)” and that “[E]ven if a processor is generic, the claimed arrangement of operations constitutes a technical improvement in computerized text-analysis, consistent with BASCOM and DDR Holdings. Accordingly, Claim 9 contains an inventive concept and satisfies Step 2B”. Applicant’s arguments are not persuasive.
Claim 9 recites computing structures including the “processor”, “memory” and “user terminal”. The Specification describes these structures generically. For example, the Specification describes “the hardware structure of the apparatus for guiding improvements of reading comprehension and writing composition 100 comprises a processor 1000, a memory 2000, a user interface 3000, a database interface 4000, a network interface 5000, and a web server 6000”. The Specification also describes
the “user terminal 200 is a communication device that uses wired or wireless Internet such as a smartphone or tablet owned by the user”. It is apparent that these components are all described in the Specification at a high level of generality and without any indication that any specialized computing equipment is required. While Applicant asserts “non-conventional and non-routine combination of operations”, Applicant has not indicated and the Examiner fails to see how the recited additional elements in claim 9, namely the “processor”, “memory” and “user terminal” constitute “non-conventional and non-routine combination of operations”. Claim 9 does not improve an existing technological process, but rather uses existing components to perform the abstract idea. Unlike the arrangement of elements (i.e., installation of a filtering tool at a specific location) in BASCOM, 827 F.3d at 1349–50 (or the distributed architecture described in Amdocs (Israel) Ltd. v. Openet Telecom, 841 F.3d 1288, 1300 (Fed. Cir. 2016)), Claim 9 does not recite a non-conventional and non-routine arrangement of known elements. Instead, claim 9 merely recites generic computer components performing the claim steps. The claim recites data gathering, data gathering/transmitting, which the courts have recognized as insignificant extra-solution activities (see MPEP § 2106.05(g)). The improvement, if any, in claim 9 is to the abstract idea.
To the extent that Applicant’s emphasis on “specific technical features” is indicated by “constructing a sentence analysis map” and “automatically classifying text into superstructure or substructure to generate guide information”, as noted earlier, “the model is defined and identified by a data structure or a template”. See published Specification (¶ 80). Additionally, humans have long mapped data and humans have also long provided guidance based on analysis results. It is apparent the focus of the claim is on a process that itself qualifies as an “abstract idea” for which computers are invoked merely as a tool rather than Applicant’s asserted “specific technical features”.
In regard to Applicant’s Berkheimer’s arguments, Applicant does not direct our attention to any portion of the Specification indicating that any of the claimed “processor”, “memory” and “user terminal” performs anything other than well understood, routine, and conventional functions, such as receiving data and providing data. See Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016) (“Nothing in the claims, understood in light of the [S]pecification, requires anything other than off-the-shelf, conventional computer, network, and display technology for gathering, sending, and presenting the desired information.”); see also Alice, 573 U.S. at 224–26 (receiving, storing, sending information over networks insufficient to add an inventive concept); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) (“That a computer receives and sends the information over a network—with no further specification—is not even arguably inventive.”). At best, Appellant’s claimed subject matter simply uses generic computing components to perform the abstract idea of guiding improvements of reading and writing abilities of a user. As noted above, the use of a generic computer system does not alone transform an otherwise abstract idea into patent-eligible subject matter. As our reviewing court has observed, “after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, 773 F.3d at 1256 (citing Alice, 573 U.S. at 223). The well-understood, routine, conventional nature of each of the additional claim elements is further supported by Applicant’s Specification, as discussed above. See Berkheimer v. HP Inc., 890 F.3d 1369, 1370 (Fed. Cir. 2018); see also Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (explaining that “a patent need not teach, and preferably omits, what is well known in the art”); see also USPTO, Memorandum on Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) at 3 (Apr. 19, 2018), available at https://www.uspto.gov/sites/default/files/documents/ memo-berkheimer-20180419.pdf (explaining that a specification that describes additional elements “in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements 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.”). Claim 9 merely implements the judicial exception using generic computer elements to perform well-understood, routine, and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. See FairWarning, 839 F.3d at 1096 (“[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent eligible subject matter.”); see also OIP Techs., 788 F.3d at 1363 (claims reciting, inter alia, sending messages over a network, gathering statistics, using a computerized system to automatically determine an estimated outcome, and presenting offers to potential customers found to merely recite “‘well-understood, routine conventional activit[ies],’ either by requiring conventional computer activities or routine data-gathering steps” (alteration in original)).
In addition to the earlier references to BASCOM, Applicant does not explain how, and the Examiner fails to see how, Applicant’s claim 9 parallels the claims in BASCOM, which recited a “non-conventional and non-generic arrangement of known, conventional pieces” within a network, the arrangement of elements being “a technical improvement over [the] prior art ways of filtering.” BASCOM, 827 F.3d at 1350.
In BASCOM, the Federal Circuit determined that “its particular arrangement of elements is a technical improvement over prior art ways of filtering such content.” Id. The patent at issue “claim[ed] a technology based solution (not an abstract-idea-based solution implemented with generic technical components in a conventional way) to filter content on the Internet that overcomes existing problems with other Internet filtering systems.” Id. at 1351. The court determined that “[b]y taking a prior art filter solution (one-size-fits-all filter at the ISP server) and making it more dynamic and efficient (providing individualized filtering at the ISP server), the claimed invention represents a ‘software-based invention[ ] that improve[s] the performance of the computer system itself.’” Id.
In the instant case, there is no such improvement to the claimed computer components themselves. The claim simply recites the functional results to be achieved by conventional computer components. As noted earlier, Applicant does not direct our attention to any portion of the Specification indicating that any of the claimed “processor”, “memory” and “user terminal” performs anything other than well understood, routine, and conventional functions, such as receiving data and providing data.
In addition to the earlier references to DDR, Applicant does not explain how, and the Examiner fails to see how, Applicant’s claim 9 parallels the claims in DDR Holdings. In DDR Holdings, the court found that the “claimed solution [was] necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.” Id. at 1257. “In particular, the ‘399 patent’s claims address the problem of retaining website visitors that, if adhering to the routine, conventional functioning of Internet hyperlink protocol, would be instantly transported away from a host’s website after ‘clicking’ on an advertisement and activating a hyperlink.” Id. As previously noted, Applicant does not direct our attention to any portion of the Specification indicating that any of the claimed “processor”, “memory” and “user terminal” performs anything other than well understood, routine, and conventional functions, such as receiving data and providing data. “Guiding improvements of reading and writing abilities of a user”
§ 101 Rejection of independent Claim 1
Applicant’s arguments have been fully considered but they are not persuasive. As noted in the rejections above, independent claim 1 is a computer-implemented apparatus counterpart to the method of claim 9. The apparatus falls within the “machine” category of 35 U.S.C. § 101. The computer-implemented apparatus is claimed as for guiding reading or writing, comprising: a processor, a memory storing program code which, when executed by the processor, is configured to cause the apparatus to perform steps comparable to those of method Claim 9. In addition to reciting the “processor” and “memory”, similarly to method Claim 9, claim 1 additionally recites a “user terminal”. For these reasons, independent claim 1 is rejected similarly to representative independent Claim 9.
§ 101 Rejection of the dependent claims
Claims 2, 5, 7, 10, 13 and 15
Steps involving “keyword comparison, keyword-type extraction, type matching, model-based analysis, and automatic superstructure/substructure classification” have long been performed by humans for the purpose of guiding reading or writing. Whether performed by a person or the claimed computer components, the above noted steps represent the abstract idea, itself. The abstract idea alone cannot integrate itself into a practical application and “[t]he abstract idea itself cannot supply the inventive concept.” Trading Techs. Int’l, Inc. v. IBG LLC, 921 F.3d 1378, 1385 (Fed. Cir. 2019); see also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151 (Fed. Cir. 2016) (“[A] claim for a new abstract idea is still an abstract idea.”); BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1290 (Fed. Cir. 2018) (The abstract idea itself (i.e., the ineligible concept to which the claim is directed) “cannot supply the inventive concept that renders the invention “significantly more' than that ineligible concept.”).
Claims 8 and 16 - Structural Models (14 + 2 types)
Applicant’s assertion that “a predetermined set of 14 structural models plus 2 additional models stored for classification, forming a specific data architecture that the Examiner has not shown to be conventional under Berkheimer” is misplaced. As noted earlier, “the model is defined and identified by a data structure or a template”. See published Specification (¶ 80). The breaking down of text into desired part/structures have long been performed by humans. For example, humans have long broken down information to create document templates. It is apparent that these steps performed using generic computer components, for example, the “processor”, “memory” and “user terminal” are ‘well-understood, routine, conventional activit[ies]’ previously known to the industry.”); cf. Berkheimer, 881 F.3d at 1367 (a parser that determines and extracts parts of documents and reassembles the parts into composite output files by parsing data structures to transform data from source to object code did not improve computer functionality); Content Extraction and Transmission LLC v. Wells Fargo Bank, Nat’l Ass’n, 776 F.3d 1343, 1347–48 (Fed. Cir. 2014) (claims to extracting data from documents, recognizing information in the extracted data, and storing recognized data provided data collection, recognition, and storage that humans always have performed and doing so with conventional, generic computer technology did not provide an inventive concept).
Claims 4, 6, 12 and 14 - Technical Outcomes
Applicant’s arguments are unpersuasive for at least the reasons noted above for claims 8 and 16.
Combined Technical Integration
Applicant’s asserts that “The combined use of predefined models, multi-stage identification, type matching, and automated guidance creates a specialized technical system (per Enfish, McRO, Finjan), not an abstract idea.”. Appellant's contentions are unsubstantiated by any persuasive evidence on this record and, therefore, are mere lawyer argument and conclusory statements that are entitled to little probative value. See In re Geisler, 116 F.3d 1465, 1470 (Fed. Cir. 1997); see also Enzo Biochem, Inc. v. Gen Probe, Inc., 424 F.3d 1276, 1284 (Fed. Cir. 2005) ("Attorney argument is no substitute for evidence."). Nonetheless, as shown below, the fact pattern addressed in each of the cited decisions does not apply here.
In Enfish, the Federal Circuit held that Enfish’s claims are patent-eligible because these claims provide “a specific improvement to the way the computers operate, embodied in the self-reference table,” i.e., “an improvement of an existing technology [that] is bolstered by the specification’s teachings that the claimed invention achieves other benefits over conventional databases, such as increased flexibility, faster search times, and smaller memory requirement.” Enfish, 822 F.3d at 1335. The Examiner does not find any parallel between the instant claims and the claims at issue in Enfish. Applicant’s claims do not focus on a particular data structure analogous to Enfish’s self-referential table. In particular, there is no mention in the instant claims of a database storage device that includes a self-referential database table of the type found by the Enfish court to improve the way a computer stores and retrieves data in memory.
The claims in McRO recited a "specific ... improvement in computer animation" using "unconventional rules" that related "sub-sequences of phonemes, timings, and morph weight sets" to automatically animate lip synchronization and facial expressions for three-dimensional characters that only human animators could previously produce. McRO, 837 F.3d at 1302 03, 1307---08, 1313-15. In McRO, "the incorporation of the claimed rules" improved an existing technological process. Id. at 1314. In contrast to the claims in McRO, the instant claims do not improve an existing technological process. See Alice, 134 S. Ct. at 2358 (explaining that "the claims in Diehr were patent eligible because they improved an existing technological process").
In Finjan, the Court held that claims to a “behavior-based virus scan” were a specific improvement in computer functionality and hence not directed to an abstract idea. 879 F.3d at 1304. The claimed technique of scanning enabled “more flexible and nuanced virus filtering” and detection of potentially dangerous code. Id. This was done by “scanning a downloadable and attaching the results of that scan to the downloadable itself in the form of a ‘security profile.’” Id. at 1303. The security profile included the information about potentially hostile operations produced by a “behavior-based” virus scan, as distinguished from traditional, “code-matching” virus scans that are limited to recognizing the presence of previously-identified viruses, typically by comparing the code in a downloadable to a database of known suspicious code. Id. at 1304. This behavior-based scan was a new type of file that when attached to a downloadable allowed the computer to do more to protect itself than in the past. The instant claims present no such new type of processing to create a file that improves computer performance. Instead, the claims are conventional data gathering, processing, analysis and transmission of data. They may improve information provided, but this is not an improvement to the computer.
Step 2B Deficiency
Applicant’s arguments that “[N]o evidence is provided in the office action that these operations or data structures are routine or conventional, contrary to Berkheimer” and that “each dependent claim recites specific, technical, and non-conventional limitations that integrate any alleged abstract idea into a practical application and provide an inventive concept” have been addressed above and not repeated herein.
In view of the foregoing, the Examiner maintains that each of Applicant’s pending claims 1-2, 4-10 and 12-16 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.
Claim Rejections - 35 USC § 102 and 35 USC § 103
The previous claim rejections under 35 USC § 102 and 35 USC § 103 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDDY SAINT-VIL whose telephone number is (571)272-9845. The examiner can normally be reached Mon-Fri 6:30 AM -6:00 PM.
Examiner interviews are available via telephone, in-person, 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, PETER VASAT can be reached on (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/EDDY SAINT-VIL/Primary Examiner, Art Unit 3715