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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/13/2026 has been entered. Claims 1, 3, 7, and 8 are amended. Claim 2 is cancelled. Claims 1 and 3-9 are currently pending in the application.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1 and 3-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
In regard to independent claim 7 analyzed as representative of the claimed subject matter:
Step 1: Statutory Category?
Independent Claim 7 recites “A computer implemented method comprising:”. Independent Claim 7 falls within the “process” category of 35 U.S.C. § 101.
Step 2A – Prong 1: Judicial Exception Recited?
The Independent Claim 7/Revised 2019 Guidance Table below identifies in italics the specific claim limitations found to recite an abstract idea, in bold the additional (non-abstract) claim limitations that are generic computer components and underline limitations representing extra or post-solution activity.
Independent Claim 7
Revised 2019 Guidance
A behavior support method executed in a behavior support device that supports behavior change of a subject, the behavior support method comprising:
A process (method) is a statutory
subject matter class. See 35 U.S.C.
§ 101 (“Whoever invents or
discovers any new and useful
process, machine, manufacture, or
composition of matter, or any new
and useful improvement thereof,
may obtain a patent therefor, subject
to the conditions and requirements of
this title.”).
The “behavior support device” is an additional non-abstract limitation.
[L1a] based on a storage unit comprising a computer-readable storage medium storing a frame that defines a plurality of behavior change techniques, each behavior change technique being associated with a respective predetermined vector quantifying its action on one or more behavior change factors of a plurality of behavior change factors, wherein the predetermined vector comprises numerical values representing intensity of action on each behavior change factor, and wherein the predetermined vector is absent personal information of the subject and a plurality of message groups, each of which is linked to a behavior change technique of the plurality of behavior change techniques, and each message group includes one or more messages,
The “storage unit comprising a computer-readable storage medium” and “frame” are additional non-abstract limitations.
“Storing a frame that defines a plurality of behavior change techniques …” is an additional element that adds insignificant extra-solution activity to the judicial exception, e.g., mere data gathering. See January 2019 Memorandum, 84 Fed. Reg. 55, n. 31.
Alternatively, “storing … a plurality of behavior change techniques …”” could be performed as a mental process, i.e., concept performed in the human mind or using pencil and paper (including an observation, evaluation, judgment, opinion) and a “[c]ertain method[] of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” to the extent that a person could memorize or write down information.
[L1b] selecting from among the plurality of behavior change techniques that, according to the frame, act only on a single respective behavior change factor, the selected techniques together covering all of the plurality of behavior change factors;
The “frame” is an additional non-abstract limitation.
“Selecting from among the plurality of behavior change techniques that act only on a specific behavior change factor a plurality of behavior change techniques …”” could be performed as a mental process, i.e., concept performed in the human mind or using pencil and paper (including an observation, evaluation, judgment, opinion) and a “[c]ertain method[] of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” to the extent that a person could visually, and/or verbally, and/or in writing select/filter information.
[L2] extracting a message from each of the message groups associated with the selected behavior change techniques, and
“Extracting a message from each of one or more message groups of a plurality of respective message groups…” could be performed as a mental process, i.e., concept performed in the human mind or using pencil and paper (including an observation, evaluation, judgment, opinion) and a “[c]ertain method[] of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” to the extent that a person could extract information through observation of presented information.
[L3a] generating a message set including the extracted message
“Generating a message set …” could be performed alternatively as a mental process, i.e., concept performed in the human mind or using pencil and paper (including an observation, evaluation, judgment, opinion) and a “[c]ertain method[] of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” to the extent that a person could generate a message set verbally and/or in writing.
[L3b] wherein the messages are extracted by: preferentially choosing high-impact messages from each of the one or more message groups based on historical response data;
“Preferentially choosing high-impact messages from each of the one or more message groups” could be performed alternatively as a mental process, i.e., concept performed in the human mind or using pencil and paper (including an observation, evaluation, judgment, opinion) and a “[c]ertain method[] of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” to the extent that a person could choose/filter high-impact messages as part on evaluation, judgment, opinion.
[L3c] maintaining a predefined probability of random selection to avoid bias;
“Maintaining a predefined probability of random selection” could be performed alternatively as a mental process, i.e., concept performed in the human mind or using pencil and paper (including an observation, evaluation, judgment, opinion), a “[c]ertain method[] of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)”, and mathematical concepts to the extent that a person could maintain a predefined probability of random selection as part on evaluation, judgment, opinion and/or using a particular formula (see originally filed specification, ¶ 34).
[L3d] performing control so that the message in the message set is output to the subject in one or more batches
“[O]utput … the message in the message set… to the subject …” is an additional element that adds insignificant extra-solution activity to the judicial exception, e.g., data output/presentation. See January 2019 Memorandum, 84 Fed. Reg. 55, n. 31.
Alternatively, ““output … the message in the message set… to the subject in one or more batches” could be performed alternatively as a mental process, i.e., concept performed in the human mind or using pencil and paper (including an observation, evaluation, judgment, opinion) and a “[c]ertain method[] of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions)” to the extent that a person could provide/output the message verbally and/or in writing.
The claimed invention relates to behavioral science. See originally filed Specification, ¶ 3. By definition, behavioral science studies human behavior through systematic experimentation to understand, predict, and influence actions. It is apparent that, other than reciting the “behavior support device”, “storage unit comprising a computer-readable storage medium” and “frame” are additional non-abstract limitations noted in the Independent Claim 7/Revised 2019 Guidance Table above, nothing in the claim precludes the steps from practically being performed by a human as a certain method of organizing human activity. . . managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions), in the mind, and/or using pen and paper. The mere nominal recitation of the “behavior support device”, “storage unit comprising a computer-readable storage medium” and “frame” and automation of a manual process does not take the claim out of the certain method of organizing human activity and mental processes groupings. Accordingly, the claim recites an abstract idea under Step 2A: Prong 1. (Step 2A – Prong 1: YES).
Step 2A – Prong 2: Integrated into a Practical Application?
The body of the claim, as noted in the Independent Claim 7/Revised 2019 Guidance Table above, recites the additional limitations of the “behavior support device”, “storage unit comprising a computer-readable storage medium” and “frame”. The originally filed Specification provides supporting exemplary descriptions of generic computer components: at least pages: ¶ 17: FIG. 1 is a table illustrating a frame in which behavior change factors are associated with behavior change techniques in a matrix form; ¶ 34: a reinforcement learning method such as the Epsilon-Greedy method may be used to extract a message from each message group …; ¶ 68: The behavior support device 10 is an information processing device that provides the terminal 20 with a message using a nudge based on a behavior change factor that encourages behavior change of a subject; ¶ 69: The terminal 20 is a terminal used by a subject for behavior change, and it is sufficient that the terminal 20 is, for example, various information devices such as a smartphone, a mobile phone, a tablet, and a personal computer. The terminal 20 is something that can use a function for receiving messages such as short messages and e-mails, for example, various social network services (SNSs) such as LINE (registered trademark); ¶ 70: each device in the behavior support system 1 (e.g., each of the behavior support device 10 and the terminal 20) has a processor 11 such as a CPU (Central Processing Unit) corresponding to an arithmetic unit, a storage device 12, a communication device 13, and an input/output device 14. These components are connected to each other via a bus so as to be able to transmit and receive data; ¶ 71: … a CPU (Central Processing Unit), and is a control unit that performs control related to the execution of a program stored in the storage device 12, and the operation and processing of data. The processor 11 receives various input data from the input/output device 14 and/or the communication device 13, and outputs (e.g., displays) an operation result of the input data to the input/output device 14, stores it in the storage device 12, or transmits it via the communication device 13; ¶ 72: The storage device 12 is at least one of a memory, an HDD (Hard Disk Drive), and an SSD (Solid State Drive). The storage device 12 of the behavior support device 10 may store a behavior support program executed by the processor 11. The storage device 12 may be referred to as a “storage unit” or the like; ¶ 77: The behavior support program can be stored in a storage medium. The storage medium on which the program is stored may be a non-transitory computer readable medium. The non-transitory storage medium is not particularly limited, but may be, for example, a storage medium such as a USB memory or a CD-ROM. The storage unit 103 can be implemented using the storage device 12. The lack of details about the “behavior support device”, “storage unit comprising a computer-readable storage medium” and “frame” indicates that the above-mentioned additional elements are generic, or part of generic computer elements performing or being used in performing the generic functions claimed. The claim does not change the way in which each of the recited “behavior support device”, “storage unit comprising a computer-readable storage medium” and “frame” performs its tasks, the claim simply uses each component for its ordinary purpose to carry out the abstract idea of supporting behavior change of a subject. See Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1331 (Fed. Cir. 2017) (“The claimed mobile interface is so lacking in implementation details that it amounts to merely a generic component (software, hardware, or firmware) that permits the performance of the abstract idea, i.e., to retrieve the user-specific resources.”). The claim does not recite (i) an improvement to the functionality of a computer or other technology or technical field (see MPEP § 2106.05(a)); (ii) a “particular machine” to apply or use the judicial exception (see MPEP § 2106.05(b)); (iii) a particular transformation of an article to a different thing or state (see MPEP § 2106.05(c)); or (iv) any other meaningful limitation (see MPEP § 2106.05(e)). See 84 Fed. Reg. at 55. The claimed invention merely implements the abstract idea using instructions executed on generic computer components, as shown in bold above, and as supported in the above noted pertinent portions of the originally filed Specification. The instant claim merely uses a programmed computer as a tool to perform an abstract idea. See MPEP § 2106.05(f). The additional limitations noted above, [[L1a] “storing a plurality of message groups…” (i.e., data gathering) and [L3d] “[O]utput … the message in the message set… to the subject in one or more batches” (i.e., output/presentation) reflect the type of extra-solution activity (i.e., activities in addition to the judicial exception) the courts have determined insufficient to transform judicially excepted subject matter into a patent-eligible application when they are claimed in a merely generic manner. See MPEP § 2106.05(g); see, e.g., CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011) (“We have held that mere ‘[data-gathering] step[s] cannot make an otherwise nonstatutory claim statutory.”’ (alterations in original) (quoting In re Grams, 888 F.2d 835, 840 (Fed. Cir. 1989))); see also Elec. Power, 830 F.3d at 1354 (“[W]e have recognized that merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.”). The instant claim as a whole merely uses computer instructions to implement the abstract idea on a computer or, alternatively, merely uses a computer as a tool to perform the abstract idea. The claim limitations amount to merely indicating a field of use or technological environment (a computer) in which to apply a judicial exception and, as such, cannot integrate the judicial exception into a practical application. See MPEP § 2106.05(h). Hence, as per MPEP §§ 2106.05(a)–(c), (e)–(h), the additional elements in claim 7, namely the “behavior support device”, “storage unit comprising a computer-readable storage medium” and “frame” do not, either individually or in combination, integrate the abstract idea into a practical application. Because the abstract idea is not integrated into a practical application, the claim is directed to the judicial exception. (Step 2A, Prong 2: NO).
Step 2B: Claim provides an Inventive Concept?
As discussed with respect to Step 2A Prong Two, the additional element in the claim amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies here in Step 2B, i.e., mere instructions to apply an exception using generic computer components cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The fact that the Specification does not further describe the “behavior support device”, “storage unit comprising a computer-readable storage medium” and “frame”, indicates that the additional element is sufficiently well-known that the specification does not need to describe the particulars of such additional element to satisfy 35 U.S.C. § 112(a). See MPEP 2106.05(d), as modified by the USPTO Berkheimer Memorandum. Hence, the additional elements are generic, well-understood, routine, and conventional computing elements. The use of the additional element either alone or in combination amounts to no more than mere instructions to apply the judicial exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept, and thus the claim is patent ineligible. (Step 2B: NO).
In regard to independent Claim 1:
Independent claim 1 recites “a behavior support system, which falls within the “machine” category of 35 U.S.C. § 101. The claim recites a behavior support system that supports behavior change of a subject, the behavior support system comprising generic computer elements performing steps similar to those of representative independent Claim 7. As a result, independent claim 1 is rejected similarly to representative independent Claim 7.
In regard to independent Claim 8:
Independent claim 8 is a computer-readable non-transitory storage medium, which falls within the “manufacture” category of 35 U.S.C. § 101. The claim recites a computer-readable non-transitory storage medium storing program that a computer which supports behavior change of a subject is caused to execute, the behavior support program causing the computer to execute steps similar to those of representative independent Claim 7. As a result, independent claim 8 is rejected similarly to representative independent Claim 7.
In regard to the dependent claims:
Dependent claims 3-6 and 9 include all the limitations of independent claim 1 from which they depend and as such recite the same abstract idea(s) noted above for claim 1. None of the additional claim activities is used in some unconventional manner nor does any produce some unexpected result. An invocation to use known technology in the manner it is intended to be used for its ordinary purpose is both generic and conventional. As per MPEP §§ 2106.05(a)–(c), (e)–(h), none of the limitations of claims 3-6 and 9 integrates the judicial exception into a practical application. While dependent claims 3-6 and 9 may have a narrower scope than independent Claim 1, no claim contains an “inventive concept” that transforms the corresponding claim into a patent-eligible application of the otherwise ineligible abstract idea(s). Therefore, dependent claims 3-6 and 9 are not drawn to patent eligible subject matter as they are directed to (an) abstract idea(s) without significantly more.
Response to Arguments
Claim Interpretation ~ 35 USC § 112 (f)
The instant claims are no longer interpreted under 35 U.S.C. § 112(f) in view of Applicant’s amendment.
Claim Rejection - 35 USC § 101
Applicant’s arguments have been fully considered but they are not persuasive.
Applicant first argues that “[T]he amended claims are patent-eligible under § 101 because they are directed to a non-abstract, technical solution to inefficiencies in behavior-support systems”, that “[W]ith respect to Step 2A (Prong 1), the frame represents a technical mechanism that uses predetermined vectors comprising numerical values representing intensity of actions on behavior change factors and that are absent personal information of a subject” and that “This is not a mental
process or pen-and-paper method; it requires automated, multi-factor optimization impossible for humans to perform reliably due to cognitive limits (akin to DDR Holdings, where rule-based systems were found to be patent eligible under § 101)”. Applicant’s arguments are not persuasive.
It is first important to note that rule-based systems are akin to McRO, not DDR Holdings. In DDR Holdings, LLC v. Hotels.com, 773 F.3d 1257 (Fed. Cir. 2014), the court found that the “claimed solution [was] necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.”. Nonetheless, as per the instant disclosure, the “frame” is a table … in which behavior change factors are associated with behavior change techniques in a matrix form”. See instant FIG. 1. Storing a data structure “representing intensity of actions on behavior change factors and that are absent personal information of a subject” does not address a technical problem. Humans have long gathered information to provide advice to other humans without personal information about the other humans. For example, a person monitoring a customer line can advise another person (a customer) waiting on that customer line on, for example, “what window to go to for service” without knowing any personal information of the customer. The additional elements recited in representative claim 7 are the “behavior support device”, “storage unit comprising a computer-readable storage medium” and “frame”. As previously noted, the Examiner fails to see any problem specifically arising in the realm of computer networks analogous to the situation in DDR Holdings. Additionally, there is no indication, whether in the Specification (originally filed, ¶¶ 17, 34, 68, 69, 70-72, 77) or elsewhere of record, that the “storing a frame that defines a plurality of behavior change techniques …” requires any specialized computer hardware or other inventive computer components or that it invokes any allegedly inventive programming. Furthermore, Applicant does not contend that the additional elements recited in representative claim 7 are anything other than conventional generic computer components. Moreover, there is no evidence that the “storage unit comprising a computer-readable storage medium” stores a frame/table any better than a conventional generic storage element. The limitation “storing” is an extra-solution activity. See Bancorp Servs., L.L.C. v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1278 (Fed. Cir. 2012), aff’g 771 F. Supp. 2d 1054, 1065 (E.D. Mo. 2011) (explaining that “[s]toring, retrieving, and providing data . . . are inconsequential data gathering and insignificant post solution activity”). Contrary to Applicant’s DDR argument, “… after Alice, there can remain no doubt: recitation of generic computer limitations does not make an otherwise ineligible claim patent-eligible.” DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir. 2014). See also Alice Corp., 573 U.S. at 223 (“[M]ere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea ‘while adding the words “apply it”’ is not enough for patent eligibility.”) (citation omitted).
Applicant then argues that “[W]ith respect to Step 2A (Prong 2), the amended claims are integrated into a practical application through the behavior support device's non-generic functionality. The generation unit solves a technical problem (inefficient resource use) by algorithmically ensuring comprehensive coverage of behavior factors-a task inherently prone to, that “This mirrors McRO where automation of rules was deemed patent-eligible”. Applicant’s arguments are unpersuasive.
The Examiner fails to find in the instant specification any reference to “inefficient resource use”. Additionally, as noted above, humans have long adopted techniques that work with a particular group of people to other groups of people. In regard to Applicant’s “human error” remark, as previously noted, “[R]elying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible.” OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015). Additionally, Applicant has not shown how the “performing control so that the messages in the message set are output to the subject in one or more batches” step, as recited in representative claim 1, allows computers to produce an outcome that previously only could be produced by an intuitive process by humans. Furthermore, Applicant’s McRO analogy remark disregards a critical component of patent-eligibility and a component of McRO’s patent-eligible claim. McRO’s claimed rules are not merely specific but, moreover, include specific additional elements. 837 F.3d at 1314 (“The preemption concern arises when the claims are not directed to a specific invention and instead improperly monopolize [the abstract idea. Patent eligibility analysis thus] prevent[s] patenting of claims that abstractly cover results where it matters not by what process or machinery the result is accomplished.” (quotation marks and citations omitted)). Namely, the patent-eligibility of McRO’s claim turns upon the included rules implementing a specific organization of data elements (“creat[ing] a keyframe at a point that no phoneme is being pronounced” (id. at 1307)) that imparted the argued improvement to a computer’s lip-synch animation. Id. at 1306–07, 1311, 1314–15. McRO did not pin patent eligibility on merely, for example, finding “the claims are limited to rules with specific characteristics.” Id. at 1313. Rather, McRO also found the specific rules extend beyond the claimed abstract ideas, which were mathematics (id. at 1312, 1314) and what animators do mentally (id. at 1313–14). Tellingly, in dicta, McRO even noted that the specific rules extend beyond unclaimed abstract ideas of organizing information into a new form and carrying out a fundamental economic practice. Id. at 1315. In short, patent-eligibility arose from the claim combining the abstract idea with specific additional elements (implementation by a specific organization of data elements). In particular, the court explained that “an animator’s process was driven by subjective determinations . . . [of] what the animated face should look like at key points in time” (id. at 1314) whereas, rather, the claimed specific rules “define morph weight sets as a function of the timing of phoneme sub-sequences” (id. at 1313). The court further explained that “animators would initially set keyframes at the point a phoneme was pronounced to . . . [set] a starting point for further fine tuning” and “[t]his activity . . . would not be within the scope of the [claimed specific rules].” Id. at 1314. In short, the claimed timing organization of data elements was unrelated to the mental process of animators and thus an additional element; the claimed timing organization was not the abstract timing organization of an animator’s mental process.
As discussed above, Applicant has not shown any claiming of specific additional elements, e.g., a claimed specific relationship of the additional elements and judicially excepted subject matter. Even if (arguendo) the claim requires a specifically-limited “frame”, the claimed judicially excepted subject matter entirely includes the claimed steps. Any purported “technological result” derives from the claimed judicially excepted subject matter and accordingly does not confer patent-eligibility. See SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163 (Fed. Cir. 2018) (“[An] advance [that] lies entirely in the realm of abstract ideas . . . is ineligible for patenting.”).
In sum, Applicant cannot show patent-eligibility without showing the claimed additional elements are specific enough to prevent preemption of claimed judicially excepted subject matter. Applicant does not show such specificity.
In view of the foregoing, the Examiner maintains that each of Applicant’s pending claims 1 and 3-9 considered as a whole, is directed to a patent-ineligible abstract idea that is not integrated into a practical application, and does not include an inventive concept.
Conclusion
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/EDDY SAINT-VIL/Primary Examiner, Art Unit 3715