DETAILED ACTION
Status of the Claims
The following is a Final Office Action in response to amendments and remarks filed 10 December 2025.
Claims 1-51 have been cancelled.
Claims 52-65 have been added.
Claims 52-65 are pending have been examined.
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
Applicants argue that the 35 U.S.C. 101 rejection under the Alice Corp. vs. CLS Bank Int’l be withdrawn; however the Examiner respectfully disagrees. The Examiner notes that in order to be patent eligible under 35 U.S.C. 101, the claims must be directed towards a patent eligible concept, which, the instant claims are not directed. Contrary to Applicants’ assertion that the claims are not an abstract idea of a certain method of organizing human activity, the Examiner notes that receiving learner and class data and generating visualization data is a function that teachers, administrators, educators, etc. have traditionally performed/provided for users/parents/students as a visual aide or tool of how to compare students and the student body. Next, the claims are not directed to a practical application of the concept. The claims do not result in improvements to the functioning of a computer or to any other technology or technical field. They do not effect a particular treatment for a disease. They are not applied with or by a particular machine. They do not effect a transformation or reduction of a particular article to a different state or thing. And they are not applied in some other meaningful way beyond the mere instructions to apply the judicial exception (i.e., receiving learner and class data and generating visualization data) with a generic computer or generic computing component. Here, again as noted in the previous rejection, mere instructions to apply an exception using a generic computer component cannot provide an inventive concept - MPEP 2016.05(f). The claim(s) is/are not patent eligible and the arguments are not persuasive.
This argument appears to be whether or not the use of computer or computing components for increased speed and efficiency integrates the claims into a practical application; however the Examiner respectfully disagrees. Nor, in addressing the second step of Alice, does claiming the improved speed or efficiency inherent with applying the abstract idea on a computer provide a sufficient inventive concept. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1278 (Fed. Cir. 2012) (“[T]he fact that the required calculations could be performed more efficiently via a computer does not materially alter the patent eligibility of the claimed subject matter.”); CLS Bank, Int’l v. Alice Corp., 717 F.3d 1269, 1286 (Fed. Cir. 2013) (en banc) aff’d, 134 S. Ct. 2347 (2014) (“[S]imply appending generic computer functionality to lend speed or efficiency to the performance of an otherwise abstract concept does not meaningfully limit claim scope for purposes of patent eligibility.” (citations omitted)). The claim(s) is/are not patent eligible and the arguments are not persuasive.
These arguments also appear to be that the claims are patent eligible due to the lack of any prior art rejections; however, the Examiner asserts that subject matter eligibility and novelty/non-obviousness are two separate inquires, neither being a benchmark for the other. See Amdocs Ltd. v. Openet Telecom, Inc., 841 F.3d 1288, 1311 (Fed. Cir. 2016) (“Novelty is the question of whether the claimed invention is new. Inventiveness is the question of whether the claimed matter is invention at all, new or otherwise. The inventiveness inquiry of § 101 should therefore not be confused with the separate novelty inquiry of § 102 or the obviousness inquiry of § 103.”). The claim(s) is/are not patent eligible and the arguments are not persuasive.
Claim Objections
Claims 60-65 are objected to because of the following informalities: The claims as recited depend from dependent claim 58 which appears to be a typographical error and the claims should be dependent from independent claim 59 (as evidenced by the claims repeating the same subject matter as dependent claims 53-64) . Appropriate correction is required.
Claim Rejections - 35 USC § 112
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 58 and 65 is/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. The claims recite the newly amended limitation “applying a plurality of predictive models” however there is no discussion, throughout the entirety of the specification and drawings (and priority documents), the use of any predictive models whatsoever. As such, the Examiner asserts this as evidence that the newly amended claims are new matter.
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 52-65 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims are directed to a process (an act, or series of acts or steps), a machine (a concrete thing, consisting of parts, or of certain devices and combination of devices), and a manufacture (an article produced from raw or prepared materials by giving these materials new forms, qualities, properties, or combinations, whether by hand labor or by machinery). Thus, each of the claims falls within one of the four statutory categories (Step 1). However, the claim(s) recite(s) recites receiving learner and class data and generating visualization data which is an abstract idea of organizing human activities.
The limitations of:
In claim 52: “determine, for each learner user in each class, a social connectedness value, an academic value, and an engagement value, wherein the social connectedness value is based on an amount of communication between respective leaner users in the class; determine for each learner user in each class, from the social connectedness value, the academic value, and the engagement value, a success index, indicative of the chances for success in the class of the learner user; determine a relative physical distance between learner users based on the social connectedness value for each learner user relative to another ;prepare a visualization for each class illustrating the success index for each learner user in the class, wherein the visualization also illustrates the social connectedness value as the relative distance between icons for learner users in the class,”
In claim 59: “determining, for each learner user in each class, a social connectedness value, an academic value, and an engagement value, wherein the social connectedness value is based on an amount of communication between respective leaner users in the class; determining, for each learner user in each class, from the social connectedness value, the academic value, and the engagement value, a success index for each leaner user, indicative of the chances for success in the class of the learner user; determine a relative physical distance between learner users based on the social connectedness value for each learner user relative to one another; prepare a visualization for each class illustrating the success index for each learner user in the class, wherein the visualization also illustrates the social connectedness value as the relative distance between icons for learner users in the class”
...as drafted, is a process that, under its broadest reasonable interpretation, covers organizing human activities--fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) but for the recitation of generic computer components (Step 2A Prong 1). That is, other than reciting “An electronic learning system, comprising: at least one data storage device storing performance data for a plurality of classes, each class comprising a plurality of learner users, wherein the performance data comprises academic, social and engagement data; and at least one processor in data communication with the at least one data storage device, the at least one processor adapted to::” in claim 52 (or “by the at least one processor,” in claim 59) nothing in the claim element precludes the step from the methods of organizing human interactions grouping. For example, but for the “the at least one processor adapted to” or “by the at least one processor” language, the “determine” and “prepare” steps in the context of this claim encompasses operations that would ordinarily take place in advising one to gather, analyze, and display learning activity data. The advice to gather, analyze, and display learning activity data involves gathering student data, which is teaching act, and monitoring student performance, which is an act ordinarily performed in the stream of teaching is a certain method of organizing human activities, specifically managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a method of organizing human activities, but for the recitation of generic computer components, then it falls within the “Certain Methods of Organizing Human Activities” grouping of abstract ideas (Step 2A, Prong One: YES). Accordingly, the claim(s) recite(s) an abstract idea.
This judicial exception is not integrated into a practical application (Step 2A Prong Two). The “at least one storage device” for storing learner data and “receive” steps and elements are simply extrasolution data gathering activities and the “display” step is simply the post solution data output.
Next, the claim only recites one additional element – using at least one processor to perform the steps. The at least one processor in the steps is recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of how to display gathered/generated data) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Specifically the claims amount to nothing more than an instruction to apply the abstract idea using a generic computer or invoking computers as tools by adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.04(d)(I) discussing MPEP 2106.05(f) (Step 2A Prong Two: NO).
Accordingly, the combination of these additional elements does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea, even when considered as a whole.
The claim does not include a combination of additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B). As discussed above with respect to integration of the abstract idea into a practical application (Step 2A Prong 2), the combination of additional elements of using at least one processor to perform the steps amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Reevaluating here in step 2B, the “at least one storage device,” “receive,” and “display” aspects which are insignificant extrasolution activities are also determined to be well-understood, routine and conventional activity in the field. The Symantec, TLI, and OIP Techs court decisions in MPEP 2106.05(d)(II) indicate that the mere receipt or transmission of data over a network is well-understood, routine, and conventional function when it is claimed in a merely generic manner (as is here). Therefore, when considering the additional elements alone, and in combination, there is no inventive concept in the claim. As such, the claim(s) is/are not patent eligible, even when considered as a whole (Step 2B: NO).
Claims 53-57 and 60-64 recite(s) the additional limitation(s) further including further limiting how the data is output (icon, colors, size, lines) which is/are insignificant post solution outputs which is/are not an inventive concept that meaningfully limits the abstract idea. Again, as discussed with respect to claims 52 and 59, the claims are simply limitations which are no more than mere instructions to apply the exception using a computer or with computing components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Even when considered as a whole, the claims do not integrate the judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Claims 58 and 65 recite(s) the additional limitation(s) further including further including the use of a predictive model, which is/are not an inventive concept that meaningfully limits the abstract idea. Again, as discussed with respect to claims 52 and 59, the claims are simply limitations which are no more than mere instructions to apply the exception using a computer or with computing components. Accordingly, the additional element(s) does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Even when considered as a whole, the claims do not integrate the judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Claims 52-65 are therefore not eligible subject matter, even when considered as a whole.
Conclusion
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 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to ANDREW B WHITAKER whose telephone number is (571)270-7563. The examiner can normally be reached on M-F, 8am-5pm, EST.
If attempts to reach the examiner by telephone are unsuccessful, the Examiner’s supervisor, Lynda Jasmin can be reached on (571) 272-6782. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from Patent Center. Status information for published applications may be obtained from Patent Center. Status information for unpublished applications is available through Patent Center for authorized users only. Should you have questions about access to Patent Center, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
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) Form at https://www.uspto.gov/patents/uspto-
automated- interview-request-air-form
/ANDREW B WHITAKER/Primary Examiner, Art Unit 3629