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 .
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims of U.S. Patent No. 18,142,411. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims are directed to a broader embodiment of the patented claims.
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.
Step 1
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1-12 are directed to a method, and, claims 13-20 are directed towards an apparatus; thus, each of the pending claims are directed to a statutory category of invention.
Step 2A Prong One
Claim 1, representative of the claimed invention, recites the steps of receive an user experience data from an input device; identify at least a learning datum as a function of the user experience data; generate growth data; determine at least one post action plan as a function of the at least a learning datum and the growth data; create a user interface data structure, wherein the user interface data structure comprises the at least one post action plan; and transmit the at least one post action plan and the user interface data structure.
The limitations above, as drafted, recite a process that, under its broadest reasonable interpretation, encompass mental processes. The claimed steps recite several steps that include observations, evaluations, judgments and opinions, and “can be performed in the human mind, or by a human using a pen and paper” which have been considered by the courts to be a mental process. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). The courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer").
Accordingly, the claim recites an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional elements of a processor and a memory. Claim 11 recites the additional elements of a processor. The processor and memory are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function of receiving information, performing calculations, and providing/transmitting information) such that it amounts to no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. 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 of using a processor to perform the steps of “receive an user experience data from an input device; identify at least a learning datum as a function of the user experience data; generate growth data; determine at least one post action plan as a function of the at least a learning datum and the growth data; create a user interface data structure, wherein the user interface data structure comprises the at least one post action plan; and transmit the at least one post action plan and the user interface data structure” 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.
Thus, even considering the additional elements in combination, the claims do not include elements that are significantly more than the judicial exception.
Step 2B
Limitations that the courts have found to qualify as “significantly more” when recited in a claim with a judicial exception include:
i. Improvements to the functioning of a computer, e.g., a modification of conventional Internet hyperlink protocol to dynamically produce a dual-source hybrid webpage, as discussed in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258-59, 113 USPQ2d 1097, 1106-07 (Fed. Cir. 2014) (see MPEP § 2106.05(a));
ii. Improvements to any other technology or technical field, e.g., a modification of conventional rubber-molding processes to utilize a thermocouple inside the mold to constantly monitor the temperature and thus reduce under- and over-curing problems common in the art, as discussed in Diamond v. Diehr, 450 U.S. 175, 191-92, 209 USPQ 1, 10 (1981) (see MPEP § 2106.05(a));
iii. Applying the judicial exception with, or by use of, a particular machine, e.g., a Fourdrinier machine (which is understood in the art to have a specific structure comprising a headbox, a paper-making wire, and a series of rolls) that is arranged in a particular way to optimize the speed of the machine while maintaining quality of the formed paper web, as discussed in Eibel Process Co. v. Minn. & Ont. Paper Co., 261 U.S. 45, 64-65 (1923) (see MPEP § 2106.05(b));
iv. Effecting a transformation or reduction of a particular article to a different state or thing, e.g., a process that transforms raw, uncured synthetic rubber into precision-molded synthetic rubber products, as discussed in Diehr, 450 U.S. at 184, 209 USPQ at 21 (see MPEP § 2106.05(c));
v. Adding a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application, e.g., a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350-51, 119 USPQ2d 1236, 1243 (Fed. Cir. 2016) (see MPEP § 2106.05(d)); or
vi. Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment, e.g., an immunization step that integrates an abstract idea of data comparison into a specific process of immunizing that lowers the risk that immunized patients will later develop chronic immune-mediated diseases, as discussed in Classen Immunotherapies Inc. v. Biogen IDEC, 659 F.3d 1057, 1066-68, 100 USPQ2d 1492, 1499-1502 (Fed. Cir. 2011) (see MPEP § 2106.05(e)).
Claims 1 and 11 are not similar to any of these limitations.
Limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include:
i. Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f));
ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d));
iii. Adding insignificant extra-solution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea such as a step of obtaining information about credit card transactions so that the information can be analyzed by an abstract mental process, as discussed in CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011) (see MPEP § 2106.05(g)); or
iv. Generally linking the use of the judicial exception to a particular technological environment or field of use, e.g., a claim describing how the abstract idea of hedging could be used in the commodities and energy markets, as discussed in Bilski v. Kappos, 561 U.S. 593, 595, 95 USPQ2d 1001, 1010 (2010) or a claim limiting the use of a mathematical formula to the petrochemical and oil-refining fields, as discussed in Parker v. Flook, 437 U.S. 584, 588-90, 198 USPQ 193, 197-98 (1978) (MPEP § 2106.05(h)).
Claims 1 and 11 recite additional elements that are regarded as “apply it” as seen in the Step 2A Prong 2 discussion above. The claims do not set forth a solution to a problem rooted in technology (e.g., technical solution), as determining an action plan predate the use of computers.
Looking at the limitations of claims 1 and 11 as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology, effects a transformation of subject matter to a different state or thing, applies the use of a particular machine, integrate the abstract idea into a practical application or provide any meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.
Therefore, claims 1 and 11 are not patent eligible.
The dependent claims further describe the abstract idea and do not recite a practical application or significantly more than the judicial exception. None of dependent claims 2-12 or 14-20 recite any further additional elements.
Dependent claims 2-3 and 12-13 recite an input device and similarly claims 10 and 20 recite a graphical user interface, these are generic computing elements that do not provide significantly more than the abstract idea or provide a practical application. Claims 5, 7, 15, and 17 recites a trained machine learning model. The machine learning model is implemented as a tool to perform an abstract idea. See MPEP 2106.05(f): “[u]se of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.” An example where the courts have found the additional elements to be mere instruction to apply an exception, because they do no more than merely invoke computers or machinery as a tool to perform an existing process includes a commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223 (MPEP 2106.05(f)(2)). The use of a machine learning model emulates what the practitioner does in analyzing patient data and developing an action plan. Thus, even considering the additional elements in combination, the claims do not include elements that are significantly more than the judicial exception. Dependent claims 4, 6, 8, 9, 14, 16, 18, and 19 also further narrow the scope of the same abstract idea in independent claim 1 by further limiting the same abstract idea as claims 1 and 11.
Thus, claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Patent Application Publication 2018/0353108 to Prate in view of U.S. Patent Application Publication 2018/0349483 to Carlisle et al.
As to claims 1 and 11, Prate discloses an apparatus for post action planning, the apparatus comprising:
at least a processor (Prate [0006] see processor);
a memory communicatively connected to the at least a processor (Prate [0006] see a computer processor, a memory and an operating system), wherein the memory contains instructions configuring the at least a processor to;
receive the user experience data from the input device (Prate “user activity data” [0007])
identify at least a learning datum as a function of the user experience data (Prate “contextual data” [0008]);
determine at least one post action plan as a function of the at least a learning datum (Prate see “In the above embodiment, the system itself provides the artificial intelligence for processing the user data activity and providing automated suggestions to users. In the above embodiment, the system itself acts as the “life coach” [0240], see also claim 2 “an analysis and suggestion process, arranged to analyse the user input data together with the contextual data and determine suggestions based on the user input data and the contextual data.”).
create a user interface data structure, wherein the user interface data structure comprises the at least one post action plan (Prate [0240] and [0293] see suggestions; and
transmit the at least one post action plan and the user interface data structure (Prate [0240] and [0293]).
However, Prate does not explicitly teach generate growth data; receiving a plurality of growth data and training a post action machine learning model as a function of the learning datum and the growth data. Carlisle discloses generate growth data; receiving a plurality of growth data and training a post action machine learning model as a function of the learning datum and the growth data (Carlisle [0437]-[0438] see “ratings may be awarded and tracked based on one or more of a growth (e.g., increasing growth of the user's personal network, achieving personal growth goals, etc.” and [0489)
It would have been obvious to one of ordinary skill in the art before the effective date to generate growth data to train a post action machine learning model as in Carlisle in the coaching system of Prate to improve plan accuracy.
As to claim 2, see the discussion of claim 1, additionally, Prate discloses the apparatus wherein receiving the user experience data further comprises receiving the user input device through an experience smart assessment (Prate [0007] and [0008]).
As to claims 3 and 12, see the discussion of claim 1, additionally, Prate discloses the apparatus wherein the apparatus further comprises an input device, the input device configured to receive the user experience data (Prate [0007] and [0008]).
As to claims 4 and 14, see the discussion of claim 1, additionally, Prate discloses the apparatus wherein identifying the at least a learning datum as a function of the user experience data further comprises receiving the at least a learning datum from a user through a learning smart assessment, wherein the processor is configured to generate the learning smart assessment a function of the user experience data (Prate [0007] and [0008]).
As to claims 5 and 15, see the discussion of claim 4, however, Prate does not explicitly teach the apparatus wherein generating the learning smart assessment as a function of the user experience data comprises generating the learning smart assessment using a machine learning model, wherein generating the learning smart assessment using the machine learning model comprises:
receiving assessment training data comprising a plurality of user experience data correlated to a plurality of smart assessments;
training an assessment machine learning model as a function of the assessment training data; and
generating the learning smart assessment as a function of the assessment machine learning model.
Carlisle discloses generating the learning smart assessment as a function of the user experience data comprises generating the learning smart assessment using a machine learning model, wherein generating the learning smart assessment using the machine learning model comprises:
receiving assessment training data comprising a plurality of user experience data correlated to a plurality of smart assessments (Carlisle [0321], [0323], [0333]);
training an assessment machine learning model as a function of the assessment training data (Carlisle [0321], [0323], [0333]); and
generating the learning smart assessment as a function of the assessment machine learning model (Carlisle [0321], [0323], [0333]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to generate growth data to train a post action machine learning model as in Carlisle in the coaching system of Prate to improve plan accuracy.
As to claims 6 and 16, see the discussion of claim 1, however, Prate does not explicitly teach the apparatus wherein the learning datum comprises positive learning datum and negative learning datum. Carlisle discloses the apparatus wherein the learning datum comprises positive learning datum and negative learning datum (Carlisle [0437]-[0438]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to consider positive and negative learning datum as in Carlisle in the coaching system of Prate to improve the quality of the generated plan.
As to claims 7 and 17, see the discussion of claim 1, additionally, Carlisle discloses the apparatus wherein identifying the at least a learning datum comprises identifying the at least a learning datum using a machine learning model (Carlisle [0321], [0323], [0333]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize a machine learning model to identify a learning datum as in Carlisle in the coaching system of Prate to improve the quality of the generated plan.
As to claims 8 and 18, see the discussion of claim 1, however, Prate does not explicitly teach the apparatus wherein the growth data comprises a growth score, the growth score comprising a numerical score of a user. Carlisle discloses wherein the growth data comprises a growth score, the growth score comprising a numerical score of a user (Carlisle [0437]-[0438]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to determine a numerical growth score as in Carlisle in the coaching system of Prate to better apprise the user of their health status.
As to claims 9 and 19, see the discussion of claim 1, additionally, Prate discloses the apparatus wherein the at least one post action plan contains a plurality of individual action plans, wherein each of the plurality of individual action plans contains an individual predictive growth score (Prate [0291]-[0295]).
As to claims 10 and 20, see the discussion of claim 1, additionally, Prate discloses the apparatus further comprising a graphical user interface (GUI) communicatively connected to the at least a processor, the GUI configured to:
receive the user interface data structure; and display the at least one post action plan as a function of the user interface data structure (Prate [0291]-[0295]).
As to claim 13, see the discussion of claim 11 however, Prate does not explicitly teach method wherein the input device is configured to receive at least audio data. Carlisle discloses wherein the input device is configured to receive at least audio data. Carlisle (Carlisle [0058]-[0059] and [0275]).
It would have been obvious to one of ordinary skill in the art before the effective filing date to utilize audio data as in Carlisle in the coaching system of Prate to improve ease of use.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Patent Application Publication 2019/0336314 to Sedghi
U.S. Patent Application Publication 2017/0301255 to Lee et al.
U.S. Patent Application Publication 2018/0308473 to Scholar
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Eliza Lam whose telephone number is (571)270-7052. The examiner can normally be reached Monday-Friday 8-4:30PST.
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/ELIZA A LAM/Primary Examiner, Art Unit 3686