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 .
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 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) 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):
(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). The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) 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). The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) 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 “configured to” are being interpreted under 35 U.S.C. 112(f), except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “configured to” are not being interpreted under 35 U.S.C. 112(f), 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), 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:
“a user interface module”
“a motivation-stress module”
“a cognitive module”
“a prompt module”
“a learner response module”
“a feedback module”
“a feedback module”
“a biometric analysis module”
Because these claim limitations are being interpreted under 35 U.S.C. 112(f), 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), applicant may: (1) amend the claim limitation(s) to avoid them being interpreted under 35 U.S.C. 112(f) (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitations recite sufficient structure to perform the claimed function so as to avoid them being interpreted under 35 U.S.C. 112(f).
Claim Rejections - 35 USC § 112
Claims rejected under 35 U.S.C. § 112(a)
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.
Claims 1-20 are rejected under 35 U.S.C. 112(a) 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 at the time the application was filed, had possession of the claimed invention.
When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.
Claim 1 recites the following:
“a user interface module”
“a motivation-stress module”
“a cognitive module”
Claim 4 recites the following:
“a prompt module”
“a learner response module”
Claim 8 recites the following:
“a feedback module”
Claim 9 recites the following:
“a biometric analysis module”
Claim 11 recites the following:
“a user interface module”
“a motivation-stress module”
“a cognitive module”
“a prompt module”
“a learner response module”
“a feedback module”
Claim 16 recites the following:
“a feedback module”
Claim 17 recites the following:
“a biometric analysis module”
These limitations are not adequately described in the specification as originally filed and forms the basis of the rejection. Specifically, the specification fails to disclose the hardware and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed functions in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter. Furthermore, the specification does not provide a disclosure of the hardware and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed “modules,” per claims 1, 4, 8, 9, 11, 16 and 17 to perform the claimed functions. As such, claim 1, 4, 8, 9, 11, 16 and 17 are rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Claims 2-10, 12-18 and 20 are also rejected under 35 U.S.C. § 112(a), based on their respective dependencies to claim 1, 11 or 19.
Claims rejected under 35 U.S.C. § 112(b)
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.
Claims 1-20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Per MPEP §2181, to satisfy the definiteness requirement under 35 U.S.C. 112(b) or 35 U.S.C. 112, second paragraph, the written description must clearly link or associate the corresponding structure, material, or acts to the claimed function. Telcordia Techs., Inc. v. Cisco Systems, Inc., 612 F.3d 1365, 1376, 95 USPQ2d 1673, 1682 (Fed. Cir. 2010). A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph is appropriate if the written description fails to link or associate the disclosed structure, material, or acts to the claimed function, or if there is no disclosure (or insufficient disclosure) of structure, material, or acts for performing the claimed function. Donaldson, 16 F.3d at 1195, 29 USPQ2d at 1850. A bare statement that known techniques or methods can be used would not be a sufficient disclosure to support a means-plus-function limitation. Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 953, 83 USPQ2d 1118, 1123 (Fed. Cir. 2007).
A rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph may be appropriate in the following situations when examining means-plus-function claim limitations under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(1) when it is unclear whether a claim limitation invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(2) when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and there is no disclosure or there is insufficient disclosure of structure, material, or acts for performing the claimed function; and/or
(3) when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph is invoked and the supporting disclosure fails to clearly link or associate the disclosed structure, material, or acts to the claimed function.
Claim 1 recites the following:
“a user interface module”
“a motivation-stress module”
“a cognitive module”
Claim 4 recites the following:
“a prompt module”
“a learner response module”
Claim 8 recites the following:
“a feedback module”
Claim 9 recites the following:
“a biometric analysis module”
Claim 11 recites the following:
“a user interface module”
“a motivation-stress module”
“a cognitive module”
“a prompt module”
“a learner response module”
“a feedback module”
Claim 16 recites the following:
“a feedback module”
Claim 17 recites the following:
“a biometric analysis module”
As such, 35 U.S.C. 112(f) is invoked and there is no disclosure or there is insufficient disclosure of structure, material, or acts for performing the claimed functions. Accordingly, the metes and bounds of the claim are not clear. Therefore, claims 1, 4, 8, 9, 11, 16 and 17 are rejected 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claims 2-10, 12-18 and 20 are also rejected 35 U.S.C. § 112(b), based on their respective dependencies to claim 1, 11 or 19.
Claim 19 recites “a method” and “the system.” Per M.P.E.P. § 2173.05(p): A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph. See In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed. Cir. 2011). In Katz, a claim directed to “A system with an interface means for providing automated voice messages...to certain of said individual callers, wherein said certain of said individual callers digitally enter data” was determined to be indefinite because the italicized claim limitation is not directed to the system, but rather to actions of the individual callers, which creates confusion as to when direct infringement occurs. In re Katz, 639 F.3d at 1318 (citing IPXL Holdings v. Amazon.com, Inc., 430 F.2d 1377, 1384, 77 USPQ2d 1140, 1145 (Fed. Cir. 2005), in which a system claim that recited “an input means” and required a user to use the input means was found to be indefinite because it was unclear “whether infringement... occurs when one creates a system that allows the user [to use the input means], or whether infringement occurs when the user actually uses the input means.”); < Ex parte Lyell, 17 USPQ2d 1548 (Bd. Pat. App. & Inter. 1990) (claim directed to an automatic transmission workstand and the method of using it held ambiguous and properly rejected under 35 U.S.C. 112, second paragraph).
In Applicant’s case, claim 19 is reciting “a method” and “the system.” Because Applicant is claiming two separate statutory classes together in a single claim, claim 19 is deemed indefinite. Therefore, claim 19 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 20 is also rejected under 35 U.S.C. § 112(b), based on its respective dependency to claim 19.
Claim 16 recites the limitation “a feedback module.” The limitation is originally introduced in claim 11. As such, the subsequent limitation is either (1) not following antecedent basis (i.e. “[[a]] the feedback module”); or (2) is intended to be a new limitation which ambiguously conflicts with the previous limitation of claim 11. Therefore, claim 16 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 19 recites the limitation “the system.” The limitation is not introduced in claim 19. As such, the limitation is lacking antecedent basis. Therefore, claim 19 is rejected under 35 U.S.C. § 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Claim 20 is also rejected under 35 U.S.C. § 112(b), based on its respective dependency to claim 19.
Claim Rejections - 35 USC § 101
35 U.S.C. § 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1 – “Statutory Category Identification”
Claims 1 and 11 are directed to “a system” (i.e. “a machine”), and claim 19 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 adaptive test preparation,” either 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:
“displays one or more questions to the user to prompt the user to answer each of the one or more questions; and
assess the user's motivation-stress,
assess a relative skills level of the user to provide adaptive content based on test-taking anxieties and stresses exacerbated by learning gaps and
providing comprehensive data analysis reports with progressive learning steps.”
Per claim 11:
“displays one or more questions to the user to prompt the user to answer each of the one or more questions;
assess the user's motivation-stress and to assess an affective motivational state,
assess a relative skills level,
provide adaptive content, via a tutor model;
provide an adaptive prompt including the one or more questions; and
receive at least one user-input answer and to determine if the user-input answer is correct; and
generate dynamic feedback corresponding to the user-input answer and to display the dynamic feedback,
wherein provides a means for an educator to access and utilize a plurality of student data to assess student metrics including student's progress,
wherein identifying features of the plurality of student metrics to improve instructional practices, and wherein provides a means of comparing data sets across a population of students.”
Per claim 19:
“presenting a prompt to a user, the prompt including at least one questions;
assessing, via a motivation-stress module, the motivation-stress of the user;
assessing, via a cognitive module, a relative skill level of the user;
receiving, via an motivation-stress module, one or more biometrics from one or more biometric sensors, the biometrics to determine an affective and motivational state of the user;
presenting, via a tutor model, a scaffolding related to the prompt to display guidance related to the prompt; and
receiving, via a learner response module, a response to each of the at least one questions and displaying, via a feedback module, feedback related to the response.”
These limitations simply describe a process of data gathering and manipulation, which is 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 applicants claimed elements of “at least one user computing device” and “one or more biometric sensors,” is merely claimed to generally link the use of a judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) to (1) a particular technological environment or (2) field of use, per MPEP §2106.05(h); and are applying 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, per MPEP §2106.05(f). In other words, the claimed “providing adaptive test preparation,” 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. “at least one user computing device” and “one or more biometric sensors,” are claimed, these are generic, well-known, and conventional data gather computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing 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.
Specifically, the Applicant’s claimed “at least one user computing device” as described in at para. [0064] of the Applicant’s written description as originally filed, provides the following:
“[0064] FIG. 1 illustrates an example of a computer system 100 that may be utilized to execute various procedures, including the processes described herein. The computer system 100 comprises a standalone computer or mobile computing device, a mainframe computer system, a workstation, a network computer, a desktop computer, a laptop, or the like. The computing device 100 can be embedded in another device, e.g., a mobile telephone, a personal digital assistant (PDA), a mobile audio or video player, a game console, a Global Positioning System (GPS) receiver, or a portable storage device (e.g., a universal serial bus (USB) flash drive).”
As such, “at least one user computing device” is broadly and reasonably interpreted to be any generic, well-known, and conventional data processing element.
Likewise, the Applicant’s claimed “one or more biometric sensors,” as described in at para. [0096] of the Applicant’s written description as originally filed, provides the following:
“[0096] In some embodiments, the biometric analysis module 226 may be in communication with a device integration module 228 to analyze biometric information captured by biometric sensors, a camera, or similar devices.”
As such, “one or more biometric sensors,” is broadly and reasonably interpreted to be any generic, well-known, and conventional data gathering element.
Therefore, the Applicant’s own specification is disclosing 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 2-10, 12-18 and 20 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-10, 12-18 and 20 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1, 11 or 19. Therefore, claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject-matter.
Allowable Subject Matter
Claims 1-20 contain allowable subject matter. The closest prior art of record is U.S. PG Publication 2015/0325138 to Selinger, et al. (hereinafter referred to as “Selinger”). However, Selinger does not explicitly teach “adaptive test preparation” nor “a student model includes a motivation-stress module and a cognitive module, the motivation-stress module to assess the user's motivation-stress, the cognitive module to assess a relative skills level of the user to provide adaptive content, via a tutor model, based on test-taking anxieties and stresses exacerbated by learning gaps and providing comprehensive data analysis reports with progressive learning steps,” per independent claims 1, 11 or 19. Therefore, claims 1-20 are allowable subject matter, if no other statutory rejections remain. In the present case, claims 1-20 stand rejected under 35 U.S.C. §§101, 112(a) and 112(b).
Conclusion
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 on Monday through Friday from 8 A.M. to 4 P.M. 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