DETAILED ACTION
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 .
Status of Claims
This office action is in response to arguments and amendments entered on September 1, 2026 for the patent application 18/647,974 filed on April 26, 2024. Claims 1-5, 9, 14, 17, 19, and 21-22 are amended. Claims 16 and 20 are cancelled. Claims 23 and 24 are new. Claims 1-15, 17-19 and 21-24 are pending. The first office action of April 1, 2026 is fully incorporated by reference into this Final Office Action.
Information Disclosure Statement
The Information Disclosure Statement filed on September 16, 2026 has been considered. An initialed copy of the Form 1449 is enclosed herewith.
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 1-15, 17-19 and 21-24 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1 – “Statutory Category Identification”
Claim 1 is directed to “a method” (i.e. a process), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 1 “Abstract Idea Identification”
However, the claims are drawn to an abstract idea of “providing simulated operations,” in the form of “certain methods of organizing human activity,” in terms of managing personal behavior or relationships or interactions between people (including social activities, teaching and following rules or instructions), or reasonably in the form of “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion). Regardless, the claims are reasonably understood as either “certain methods of organizing human activity” or “mental processes,” which require the following limitations:
Per claim 1:
“retrieving non-flow-based content for two or more display presentations of the application;
retrieving flow-based controls for the two or more display presentations of the application,
wherein each particular retrieved flow-based control is associated with at least one particular display presentation and is selectable by the user being trained in order to direct the application to transition to the particular display presentation, and the non-flow-based content of each display presentation comprises one or more sets of data for display to the user being trained in one or more sections of the display presentation; and
generating each of a plurality of simulated display presentations for display to the user during training of the user by combining the flow-based controls and non-flow-based content retrieved in order to pre-render the plurality of simulated display presentations prior to training of the user such that the simulated display presentations do not require rendering when displayed to the user during training.”
These limitations simply describe a process of data gathering and manipulation, which is partially analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 2 – “Practical Application”
Furthermore, the claims do not include additional elements that either alone or in combination are sufficient to claim a practical application because to the extent that, e.g., “a first non-transitory machine-readable storage structure” and “a second non-transitory machine-readable storage structure,” are claimed, as these are merely claimed to generally link the use of a judicial exception to a particular technological environment or field of use. In other words, the claimed “providing simulated operations,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Step 2B – “Significantly More”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “a first non-transitory machine-readable storage structure” and “a second non-transitory machine-readable storage structure,” are claimed, these are generic, well-known, and conventional elements. As evidence that these are generic, well-known, and a conventional elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these 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), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Moreover, the elements of “a first non-transitory machine-readable storage structure” and “a second non-transitory machine-readable storage structure,” are best described in para. [0331] as follows: “[0331] FIG. 21 conceptually illustrates a computer system 2100 with which some embodiments of the invention are implemented. The computer system 2100 can be used to implement any of the above-described computers and servers. As such, it can be used to execute any of the above described processes. This computer system includes various types of non-transitory machine readable media and interfaces for various other types of machine readable media. Computer system 2100 includes a bus 2105, processing unit(s) 2110, a system memory 2125, a read-only memory 2130, a permanent storage device 2135, input devices 2140, and output devices 2145.”
These elements are reasonably interpreted as part of a generic computer having generic computer components which provides no details of anything beyond ubiquitous standard off-the-shelf equipment. Therefore, the Applicant’s own specification discloses ubiquitous standard equipment that is (1) generic, routine, conventional, and/or commercially available; and (2) does not provide anything significantly more. Thus, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-15, 17-19 and 21-24 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-15, 17-19 and 21-24 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1. Therefore, claims 1-15, 17-19 and 21-24 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Applicant submitted Declaration under 37 C.F.R. § 1.132
A declaration under 37 C.F.R. § 1.132 filed on September 1, 2026 related to claims 1-15, 17-19 and 21-24 has been fully considered, but is not persuasive.
In response to the declaration under 37 C.F.R. § 1.132, the Declarant respectfully states that:
“3. At the time of the invention, user-training applications suffered from several problems, including (i) maintenance difficulty and (ii) rendering speed.
4. Secondary applications often change their appearance (e.g., due to updates). In addition, the production environment data (e.g., inventory information, price information, etc.) used within the display presentations of the secondary applications will regularly be updated.
5. Previous user-training applications statically defined workflows through simulated display presentations of secondary applications. These simulated display presentations were defined using either images or an HTML structure. In either case, any changes to a display presentation in a secondary application (either appearance or incorporated data) meant that (i) a new simulated display presentation would need to be defined and (ii) any simulated workflows using that simulated display presentation would need to be updated.
6. By regularly checking for updates to the display presentations of the secondary application and retrieving both non-flow-based content and flow-based controls for display presentations from the actual display presentations of the secondary application, the present invention greatly improves the operation of the user-training application. The user-training is automatically kept up to date and can easily incorporate changes to the secondary application into its user-training workflows, with less compute time involved.
7. Previous user-training applications would render the images in the display presentations for a secondary application on the fly, which required compute time during a user training session and thereby slowed down the operation of the computer during that user training session.
8. The present invention pre-renders the simulated display presentations when generating the simulated display presentations from the retrieved non-flow-based content and the flow-based controls. This pre-rendering means that the simulated display presentations are ready to be displayed for a user before they are needed, and thus do not require rendering while a user navigates a simulated workflow.
9. The pre-rendering improves the operation of the computer on which the user-training application executes, as the computer can display the display presentations without the lag that would otherwise occur with rendering.”
The Examiner respectfully disagrees. First, the Declarant’s statements with regard to “At the time of the invention, user-training applications suffered from several problems” and “Previous user-training applications” are improper, since the 35 U.S.C. §101 analysis of subject-matter eligibility is a question of law, and not a question of fact.
Second, the Declarant’s statements are taken out of context with the entire claim scope. The claimed subject matter is for achieving an abstract idea of “providing simulated operations,” within the context of “providing simulated display presentations for display to the user during training of the user.” In other words, the claim scope is to achieve a mankind benefit and is not exclusively directed to “pre-rendering simulated display presentations.”
Finally, the Declarant’s statement “The pre-rendering improves the operation of the computer …” is conclusory and provides no evidence supporting the statement. Therefore, the declaration under 37 C.F.R. § 1.132, is not persuasive.
Response to Arguments
The Applicant’s remarks filed on September 1, 2026 related to claims 1-15, 17-19 and 21-24 are fully considered, but are not persuasive.
Claim Rejections - 35 U.S.C. § 101
The Applicant respectfully argues “As noted, the Office Action rejected claims 1-22 under §101. The Office Action asserted that the recitation of "a first storage structure" and "a second storage structure" does not preclude transitory elements such as data signals and carrier waves. Applicant has amended the claims to recite that these are "non-transitory machine-readable" storage structures. Accordingly, Applicant respectfully requests reconsideration of the rejection of claims 1-22 as directed to non-statutory subject mater. In the interview, the Examiner indicated that these amendments would overcome this aspect of the §101 rejection.”
The Examiner respectfully agrees. As such, the argument is persuasive. Therefore, this aspect of the rejections under 35 U.S.C. §101 are withdrawn.
The Applicant respectfully argues “However, these elements of the claims as amended (or pending, for that matter) could not actually be realistically performed in the mind. For instance, the claims recite retrieving non-flow-based content and flow-based controls of the application from non-transitory machine-readable storage structures. Retrieval of these application features are, by any reasonable interpretation, communication between computer components that are not (and cannot be) performed in the human mind. The human mind does not have access to computer storage structures, though Applicant notes that the Office Action leaves these out of the analysis despite their importance to the limitations. The "wherein" clause defines the nature of the flow-based controls and non-flow-based content and is thus itself obviously not an action that the human mind could perform.
Furthermore, the definitions of these types of data are inherently tied to the computer application; e.g., flow-based controls are selectable to direct the application to transition to particular display presentations. While the flow-based controls are selectable by users, this is an action taken through a computer interface and cannot be performed in the human mind. Finally, generating the simulated display presentations by combining the flow-based controls and non-flow-based content cannot be performed in the mind, as it necessitates the data stored in the computer.”
The Examiner respectfully disagrees. With respect to mental processes, actual mental performance of the abstract idea is not required. Further, the MPEP § 2106.04(a)(2)(III)(C) states that “claims can recite a mental process even if they are claimed as being performed on a computer” and that “examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and Applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept. In these situations, the claim is considered to recite “a mental process.” In the present case, the claim limitations perform steps that are performed on a generic computer and/or computer environment, and merely uses a computer as a tool to perform the concept. As such, the argument is not persuasive.
The Applicant respectfully argues “The Office Action also makes the assertion that the supposed abstract idea is not integrated into a practical application and that the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception. The Office Action asserts that nearly the whole claim belongs to the abstract idea and thus that the only remaining portions of the claim are the first and second (non-transitory machine-readable) storage structures. Analyzing the amended claims, it is clear that the supposed abstract idea (retrieving content and controls, generating simulated display presentations) is integrated into a practical application As recited in the claims, the method is for training a user of the application. This in itself is a "practical application."
Furthermore, the invention is a practical application that improves the functioning of a computer. Applicant notes that the Federal Circuit is very clear that improvements in computer technology that are therefore not directed to a judicial exception are not required to recite novel hardware structures, but rather can be improvements such as "increased flexibility, faster search times, and smaller memory requirements. Similarly, the amended claims specifically recite that the simulated display presentations are generated in order to pre-render the simulated display presentations prior to training such that the simulated display presentations do not require rendering when displayed to the user during training.
As indicated in Applicant's specification, this pre-rendering ensures that the display presentations are ready to be presented to a user before the presentations are needed, thereby saving compute time during the presentation of the simulation. Furthermore, along with this response, Applicant is submitting a subject matter eligibility declaration under 37 CFR $1.132. This declaration makes clear that pre-rendering saves compute time and thereby improves the operation of the computer on which the training application executes, because the computer can display the presentation without any lag that could occur due to rendering.
In addition, the subject matter eligibility declaration makes clear that the recited invention of retrieving non-flow-based content and flow-based controls from the storage structures to generate the display presentations (even irrespective of the pre-rendering) improves the operation of user-training applications, because the user-training application is kept up to date and can easily incorporate changes to the secondary application ("the application" as recited in the claims) into its workflows (i.e., the plurality of flows) through the display presentations. Given these improvements, Applicant respectfully submits that any abstract ideas supposedly present in the claims are clearly integrated into a practical application, and therefore that the claims recite patent-eligible subject matter.
The Examiner respectfully disagrees. The Applicant’s argument is misguided as to the proper analysis of a “Practical Application” as required under Step 2A, Prong 2. Specifically, the Applicant’s argument appears to describe claimed utility, which is not the test. Instead, the Applicant’s claims are not considered a “Practical Application,” because the claims do not provide any of the following:
An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e).
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Furthermore, there are also several factors that reasonably explain that the Applicant’s claims are not indicative of integration into a practical application, which include:
Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
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Here, the Applicant’s claims are not providing any technological advancement as described in the first five bulleted factors and, as described above in the rejection, the Applicant’s claims are merely claimed to use a computer as a tool to perform an abstract idea and to generally link the use of a judicial exception to a particular technological environment or field of use. As such, the argument is not persuasive. Finally, as previously stated above, the declaration under 37 C.F.R. § 1.132, is also not persuasive.
The Applicant respectfully argues ““In view of the above amendments and arguments, as well as the properly submitted subject matter eligibility declaration, Applicant respectfully requests reconsideration and withdrawal of the § 101 rejections. Applicant respectfully submits that all of the claims, namely claims 1-19 and 21-23, are in condition for allowance.”
The Examiner respectfully disagrees. Claims 1-15, 17-19 and 21-24 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. Therefore, the argument is not persuasive and for the reasons stated here and above, the rejections under 35 U.S.C. §101 are not withdrawn.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT P BULLINGTON whose telephone number is (313)446-4841. The examiner can normally be reached Mon.-Fri. 8:00-4:00.
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.
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/Robert P Bullington, Esq./
Primary Examiner, Art Unit 3715
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