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 .
Response to Amendment
In response to the Office Action mailed April 28, 2026, applicant submitted an amendment filed on July 28, 2026, in which the applicant amended and requested reconsideration.
Response to Arguments
Applicants argue that the prior art cited fails to teach the claims in combination with dynamically generating, from the pool of words, a subset of the pool of words with a predetermined phonetic balance based on the goals for the speech test by selecting a word from the pool of words and evaluating the effect of the word on the phonetic balance of the subset of the pool of words. Applicants’ arguments are persuasive and the art rejection has been withdrawn. However, the 101 rejection remains.
Applicant’s arguments regarding the 101 is not persuasive because although paragraphs 44-46 describe limitations of conventional speech audiometry, including the cost and limited availability of specialized equipment and professionals, the limited availability of validated speech materials, and the inability of average word scores to provide detailed information about subject specific errors, the claim does not require that the updated auditory profile actually configure a hearing device, select a therapy exercise, and/or perform rehabilitation. Instead, claim 1 terminates with updating the profile and states only that the profile “is to be used” for device fitting, therapy, or rehabilitation. Furthermore, the cited paragraphs do not expressly explain how the claimed dynamic selection of words based on phonetic balance eliminates the identified equipment or personnel requirements, reduces subject discomfort, avoids list memorization, or improves the accuracy of device fitting or therapy. As such, the cited disclosure supports the intended future use and potential benefits of the invention but does not establish that the claimed information selection and profile updating steps are to integrate an alleged abstract idea into a particular practical application or recite a technological improvement. Merely reciting a desired result without restricting how that result is technologically accomplished, amounts to no more than mere instructions to apply the exception. Accordingly, the 101 rejection is maintained.
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 1-11, 13-14, 16-27 and 32-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
The claims are directed to a mathematical algorithm (dynamically generating a subset of words within a predetermined phonetic balance/distribution and applying a search algorithm), mental processing (a human selecting a balanced word list from a data pool and administer/assemble a test) and data collection. The claims recite collecting and analyzing data using a search algorithm to generate a subset of words and a test set, which falls within the mental processing, human activity and mathematical processing/algorithm category, which is non-statutory.
It is noted that the judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements which are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element 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 does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements 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. The claims are not patent eligible.
According to Step 1, it includes determining whether the claims fall within a statutory category. The claims include a method, therefore the claims fall within a statutory category. Step 2A Prong one, includes evaluating whether the claims recite a judicial exception. The claims recite a judicial exception, therefore an evaluation is done to determine if the claims fit into one of the categories. As explained, the claims fit into the mental processing, human activity and mathematical algorithm concept. Prong 2B is used to evaluate whether the claims recite additional elements that integrate the exception into a practical application. As explained the judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements which are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claims are non-statutory.
The claims are not tied to a specific device, does not improve signal processing, does not improve speech testing hardware and does not provide a technical transformation, which is merely generic data handling and generic use of an algorithm conventional testing steps. The claims merely process data and outputs a word list.
The dependent claims recite similar language, such as selecting and organizing words using an algorithm, which is all part of the mental processing/organizing human activity category and the mathematical algorithm category, which is non-statutory.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. This information has been detailed in the PTO 892 attached (Notice of References Cited).
Tiede discloses a hearing test method and device.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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 JAKIEDA R JACKSON whose telephone number is (571)272-7619. The examiner can normally be reached Mon - Fri 6:30a-2:30p.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Washburn can be reached at 571.272.5551. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JAKIEDA R JACKSON/Primary Examiner, Art Unit 2657
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