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 entered on April 8, 2026 for the patent application 18/767,799 originally filed on July 9, 2024. Claims 1, 11-13 and 18-20 are amended. Claims 1-20 are pending. The first office action of March 10, 2026 is fully incorporated by reference into this Final Office Action.
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 “unit” 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 “unit” 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:
Per claim 12:
“a facial recognition module”
“a lockdown test monitor 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 12-18 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 12 recites the following:
“a facial recognition module”
“a lockdown test monitor 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 claim 12 to perform the claimed functions. As such, claim 12 is rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement. Claims 13-18 are also rejected under 35 U.S.C. § 112(a), based on their respective dependencies to claim 12.
Claim 18 recites the following limitations: “first logic,” “second logic,” and “third logic.” Specifically, these limitations are not adequately described in the specification as originally filed and forms the basis of the rejection. As such, the limitations are reasonably rejected under a theory of new matter. Therefore, claim 18 is rejected under 35 U.S.C. § 112(a), as failing to comply with the written description requirement.
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 12-20 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 12 recites the following:
“a facial recognition module”
“a lockdown test monitor 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, claim 12 is 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 13-18 are also rejected 35 U.S.C. § 112(b), based on their respective dependencies to claim 12.
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”
Claim 1 is directed to “a method” (i.e. a process), claim 12 is directed to “an automated online proctoring system” (i.e. a machine), and claim 19 is directed to “a computer program product” (i.e. a machine), 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 “online proctoring,” 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:
“receiving inputs corresponding to a student typing on a keyboard and/or manipulating a computer mouse;
receiving eye-tracking information corresponding to movements of the student's eyes;
using an AI system to evaluate the received inputs and eye-tracking information, and calculate a trust score indicative of academic integrity; and
using the AI system to provide guidance to the student during the test for improving a submission input by the student during the test.”
Per claim 12:
“a facial recognition module configured to identify a human student;
a lockdown test monitor module configured to prevent the student from viewing material on a computer monitor that is outside of a test display while a test is being administered; and
an AI system configured to:
receive inputs corresponding to the student typing on a keyboard and/or manipulating a computer mouse integrated with the computer monitor,
receive eye-tracking information corresponding to movements of the student's eyes,
evaluate the received inputs and eye-tracking information,
calculate a trust score that characterizes an authenticity and originality of a submission by the student during the test, and
generate and display guidance to the student during the test for improving a submission input by the student during the test.”
Per claim 19:
“receiving inputs corresponding to a student typing on a keyboard and/or manipulating a computer mouse;
receiving eye-tracking information corresponding to movements of the student's eyes;
using an AI system to evaluate the received inputs and eye-tracking information, and calculate a trust score indicative of academic integrity; and
using the AI system to generate and display guidance to the student during a test for improving a submission input by the student during the test.”
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., “an AI system” and “one or more input devices,” 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 “online proctoring,” 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. “an AI system” and “one or more input devices,” 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 “an AI system” and “one or more input devices,” are described in paras. [0021], [0023], [0024] and [0064] as follows:
“[0021] In operation 102, an AI system is used to consider monitored aspects of activities of a student taking a test to calculate a trust score indicative of academic integrity, the aspects including at least user interaction with one or more input devices, and eye movements of the student.”
“[0023] The AI system may have at least one AI model trained to perform a respective portion or all of the functionality disclosed herein. The AI system may also include hardware components, such as a computer for running the AI modules such as a server, network server, etc., and/or particular hardware and/or software modules of said computer; a computer on which the test is taken and/or particular hardware and/or software modules of said computer; etc. See, e.g., FIGS. 2-3, which are described in more detail below. Accordingly, an AI system may have multiple AI modules that provide independent, overlapping, cooperating, and/or pipelined functionality. For example, one AI model may be used to perform a particular function, such as eye movement tracking, while another AI model performs the functions to generate the guidance. Moreover, an AI system may include a computer that runs the AI model(s), where said computer is in communication with the computer on which the test is being taken, e.g., via a network.”
“[0024] Any known AI platform or set of platforms may be used, and integrated to create the automated online proctoring system that implements the method 100.”
“[0064] AI Assistance: The system incorporates AI assistance powered by advanced, publicly available, large language models (LLM), typically based on the Generative Pretrained Transformer (GPT) AI methodology, such as Open AI's GPT-4 or Anthropic's Claude Opus, to offer personalized feedback and support to students. Through an intuitive interface, students can engage in a dialogue with the AI, receiving guidance and suggestions without compromising academic autonomy.”
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 utilizing commercially available software.
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 2-11, 13-18 and 20 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-11, 13-18 and 20 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1, 12 or 19. Therefore, claims 1-20 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Claims 19-20 are further rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter.
Claim 19 recites “a computer program product.” The specification as originally filed does not provide that “a computer program product” can only be of a non-transitory embodiment. Though one of ordinary skill in the art would recognize that this limitation includes elements such as a hard-drive, the limitation also encompasses transitory elements such as data signals and carrier waves, which are non-statutory per se. As the broadest reasonable interpretation of the claim includes non-statutory embodiments, the claim is rejected as being non-statutory subject matter. Therefore, claim 19 is rejected under 35 U.S.C. § 101 as being non-statutory subject matter. Claim 20 is also rejected under 35 U.S.C. § 101 as being non-statutory subject matter, based on its respective dependency to claim 19.
Response to Arguments
The Applicant’s arguments filed on April 8, 2026 related to claims 1-20 are fully considered, but are not persuasive.
Claim Interpretation
The Applicant respectfully argues “The rejection alleges claim 12 invokes 35 U.S.C. section 112(f) (pre-AIA 35 U.S.C. section 112, sixth paragraph) by virtue of reciting, "a facial recognition module" and "a lockdown test monitor module." NFOA at 3.
While Applicant respectfully disagrees that this limitation invokes the means-plus-function interpretation of section 112, Applicant notes that claim 12 has been amended in a manner believed to obviate the interpretation of the claimed limitations under 35 U.S.C. section 112(f). No new matter has been added.”
The Examiner respectfully disagrees. The Examiner respectfully suggest removing the “module” language to overcome the invocation. Therefore, the argument is not persuasive and the 35 U.S.C. §112(f) invocation is not withdrawn.
Rejections under 35 U.S.C. § 112(a)
The Applicant respectfully argues “Applicant does not concede that the subject matter encompassed by any of claims 12-18, and their respective dependents as originally presented fails to comply with the provisions of 35 U.S.C. section 112. Rather, claim 12 has been amended solely to facilitate expeditious prosecution thereof, and the right to pursue additional claims, including the subject matter originally encompassed by claims 12-18, and their respective dependents, in this or future applications is reserved.
Accordingly, Applicant submits that the limitations recited in the rejected claims are fully enabled by the pending specification as originally filed. Moreover, although Applicant in no way concedes to the rejection, Applicant submits that the limitations recited in the rejected claims are sufficiently described in the application "such that one of ordinary skill in the art can reasonably conclude that the inventor invented the claimed subject matter including how to program the disclosed 'modules,' per claim 12 to perform the claimed functions." NFOA at 4.
For any of the foregoing reasons, the rejection has been overcome. Accordingly, Applicant respectfully requests reconsideration and allowance of claims 12-18.”
The Examiner respectfully disagrees. The Examiner’s rejection is based on “the written description requirement” not “a lack of enablement” (please see above). Therefore, the argument is moot and the 35 U.S.C. §112(a) rejection is not withdrawn.
Rejections under 35 U.S.C. § 112(b)
‘The Applicant respectfully argues “It follows that if one skilled in the art were to us an AI system to receive inputs corresponding to a student typing on a keyboard and/or manipulating a computer mouse, and receive eye-tracking information corresponding to movements of the student's eyes, in addition to evaluate the received inputs and eye-tracking information, and calculate a trust score indicative of academic integrity, the claim would be infringed. Accordingly, the claim is sufficiently definite to apprise one skilled in the art of its scope. Again, some latitude in the manner of expression and the aptness of terms should be permitted even though the claim language is not as precise as the examiner might desire.
Moreover, even if the scope were not ascertainable from the claim itself (though it is in this case), Applicant respectfully reminds the Examiner that a claim is not indefinite merely because its scope is not ascertainable from the claims. Ex Parte Dan, supra. Rather, '[a] claim is indefinite if, when read in light of the specification, it does not reasonably apprise those skilled in the art of the scope of the invention. Here, the specification provides several approaches falling within the scope of the claim. According to an example which is presented without limitation on the claims, paragraphs 0033-0038 of the application as filed illustrate possible approaches falling within the claims.”
The Examiner respectfully disagrees. Paras. [0033]-[0038] do not overcome the rejection. Furthermore, one with ordinary skill in the art would have provided more clarification in the specification to provide clarity and definiteness in the claims. For example, para. [0064] provides the following:
“[0064] AI Assistance: The system incorporates AI assistance powered by advanced, publicly available, large language models (LLM), typically based on the Generative Pretrained Transformer (GPT) AI methodology, such as Open AI's GPT-4 or Anthropic's Claude Opus, to offer personalized feedback and support to students. Through an intuitive interface, students can engage in a dialogue with the AI, receiving guidance and suggestions without compromising academic autonomy.”
Here, the plurality of choices of publicly available artificial intelligence models makes the claims indefinite, since it is unclear what the claim language is referencing. As such, the argument is not persuasive. Therefore, rejections under 35 U.S.C. §112(b) are not withdrawn.
The Applicant respectfully argues “Claims 18-20 has each been amended in a manner believed to obviate the rejection. No new matter has been added. Accordingly, withdrawal of the rejection is respectfully requested.”
The Examiner respectfully agrees. As such, the argument is persuasive. Therefore, the rejections under 35 U.S.C. §112(b) pertaining to claims 18-20 are withdrawn. However, now that a single statutory class has been established for claims 19-20, the Applicant’s amendments have necessitated a new rejection under 35 U.S.C. §101 (please see above).
Claim Rejections under 35 U.S.C. § 101
The Applicant respectfully argues “As in Ex parte Desjardins, the embodiments claimed in the present application do in fact improve the functioning of a computer. Reference is first made to 0003-0004 of the present application, which state:
"The digital transformation of the educational sector, though being a significant boon to universal access to education, has simultaneously posed notable challenges. Among these, ensuring academic integrity and the legitimacy of students' work in remote learning environments has become paramount. Contemporary online proctoring solutions offer limited efficacy, thereby underscoring the necessity for an evolved, comprehensive system that amalgamates robust verification of academic honesty with facilitating a conducive learning environment.
Moreover, in the rapidly evolving landscape of digital education, traditional online proctoring solutions often fall short in providing comprehensive support to students who struggle with initiating and structuring their written work, which can inadvertently drive them towards academic dishonesty."
The Examiner respectfully disagrees. The Applicant’s argument points to a human element of education. No advancement in the functioning of a computer is present. As such, the argument is not persuasive.
The Applicant respectfully argues “Applicant also respectfully submits that the claims do not recite a judicial exception, and therefore should be deemed as eligible subject matter, e.g., as outlined by Example 39 of "July 2024 Subject Matter Eligibility Examples" (referred to herein as the "Subject Matter Eligibility Examples"). There, Example 39 pertains to a method of training a model to perform facial detection, and provides valuable guidance on how claims, like claims 1, 12, and 19, should be evaluated with respect to subject matter eligibility. More specifically, Applicant submits that the limitations recited in claims 1, 12, and 19 are eligible "because [they do] not recite a judicial exception." See Step 2A-Prong 1 as shown on p. 9 of the Subject Matter Eligibility Examples.”
The Examiner respectfully disagrees. Although “the examples” consist of hypothetical cases that may parallel Supreme Court decisions and Federal Circuit decisions, the examples are not considered precedential and are not fully considered as binding precedent on the USPTO. That being said, the Applicant’s argument with regard to “Example 39” does not super cede the Examiner’s subject-matter eligibility analysis using precedential Supreme Court decisions and Federal Circuit decisions. As such, the argument is not persuasive.
The Applicant respectfully argues “Following the reasoning provided in Example 39, Applicant notes that the present claims 1, 12, and 19 do not recite any mathematical relationships, formulas, or calculations. For instance, Example 39 explains that "[w]hile some of the limitations may be based on mathematical concepts, the mathematical concepts are not recited in the claims." Applicant respectfully submits that the same is true here. Looking to claims 1, 12, and 19, some of the limitations recited therein involve obtaining the digital form of physical movements that are made by a student, evaluating the digital information using an AI system, and then using the evaluated digital information to calculate a trust score. Claim 11 (which depends from claim 1) has also been amended to include limitations therein that involve updating training data based on feedback received from educators, and using the updated training data to re-train the AI system. While some of these points may arguably be based on mathematical concepts, the mathematical concepts themselves are not recited in the claims. It follows that the claims do not recite any mathematical judicial exceptions.”
The Examiner respectfully disagrees. The 35 U.S.C. §101 rejection never mentions any mathematical judicial exceptions. However, the rejection cites the following judicial exceptions: “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), and/or “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion). As such, the argument is not persuasive.
The Applicant respectfully argues “Applicant thereby submits that claims 1, 12, and 19 do not recite a mental process and cannot be considered "abstract ideas" either. As outlined in Example 39 of the Subject Matter Eligibility Examples, evaluating digital data is not something that can be performed "in the human mind", much less using the evaluated digital data to train a model. In other words, the steps recited in the claims have been explicitly classified in the Subject Matter Eligibility Examples as not including abstract ideas. Returning again to Example 39, the USPTO explains that the sample "claim does not recite a mental process because the steps are not practically performed in the human mind." (emphasis added) For instance, the limitations recited in the sample claim of Example 39 include creating information used to train a model (i.e., "creating a first training set" and "creating a second training set"), as well as actually training the model (i.e., "training the [model] in a first stage using the first training set" and "training the [model] in a second stage using the second training set").
In view of the foregoing arguments, it is apparent that claims 1, 12, and 19 "does not recite a mental process because the steps are not practically performed in the human mind." (emphasis added) Again, it is unreasonable to assert that claims 1, 12, and 19 can reasonably be performed in the human mind or done using pen/paper as alleged, because they simply cannot.”
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 Appellant 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 “Further still, it can be concluded that claims 1, 12, and 19 do not involve organizing human activity. Returning again to Example 39, the USPTO explains that the sample "claim does not recite any method of organizing human activity such as a fundamental economic concept or managing interactions between people." (emphasis added) The same is true looking to the limitations recited in each of claims 1, 12, and 19.”
The Examiner respectfully disagrees. It is true the Applicant’s claims do not consist of “a fundamental economic concept,” which is listed as an example of “certain methods of organizing human activity.” Instead, the Applicant’s claims have been identified in terms of managing personal behavior or relationships or interactions between people (including social activities, teaching and following rules or instructions). Specifically, “proctoring exams” is clearly on point with managing personal behavior (including teaching and following rules or instructions). As such, the argument is not persuasive.
The Applicant respectfully argues “In conclusion, Applicant respectfully submits that the claims are patent eligible because they do not recite a judicial exception. As discussed above, the present claims do not involve any (i) mathematical relationships, (ii) abstract ideas, or (iii) organizing human activity. Accordingly, Applicant respectfully requests withdrawal of the rejection of claims 1-20 under 35 U.S.C. § 101.”
The Examiner respectfully disagrees, as discussed here and above in the rejection. As such, the argument is not persuasive. Therefore, 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 on 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.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Robert P Bullington, Esq./
Primary Examiner, Art Unit 3715
Prosecution Insights