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 .
Applicant’s amendment to claim 16 is acknowledged. The rejection of claim 16 under 35 U.S.C. 112 is withdrawn.
Claims 1-7, 9, 13-23, 27 are pending.
Response to Arguments
Applicant's arguments filed 3 February 2026 regarding the rejection under 35 U.S.C. 101 have been fully considered but they are not persuasive.
Applicant argues at page 9 first paragraph of the response:
“Applicant submits that the Office Action improperly characterizes the alleged abstract idea too broadly, and not consistently with the above. The presently claimed combination of features is not simply directed to an abstract idea nor would the human mind be properly equipped to perform the claim limitations. Rather, the presently claimed combination of features recite identifying related content objects and determining their usage information and a rating value which could not be practically analyzed by a human mind. In other words, the presently claimed combination of features performs the technical function of analyzing metadata of content objects and determining usage data and as well as rating values (i.e. a new metric) for harvested content object. This is a technical improvement of an education system and, given the complexity and sheer amount of data to be combined, cannot be practically performed in or by the human mind.”
In response the examiner is not persuaded. Identifying related content objects, determining their usage information and a rating value are mere observations/evaluation/judgments/opinions commonly performed by human users. As written, there seems to be no specific technical operations required to be performed by any particular machine.
Applicant argues at page 9 third paragraph of the response:
“Further, Applicant submits that it would be clear that such an amount of data pertaining to the metadata, content object and usage information is not able to be a mental process but requires the specialized technology of an improved/modified electronic education system far beyond merely a general computer executing general computer instructions.”
In response the examiner is not persuaded. As written the claims do not set forth any specialized technology of any electronic education system. In fact claim 1 merely refers to “an electronic educational system” at lines 4-5 reciting learning content is “usable in an electronic educational system to provide electronic learning”.
Applicant argues at page 10 second paragraph of the response:
“The presently claimed combination of features demonstrates a technology rooted solution to a computer network-centric problem, specifically a networked electronical education system, and thus amounts to significantly more than mental processes. The problem associated with traditional systems do not provide the richer content of the harvested content objects that enable instructors to create high quality courses more quickly as described in, for example, paragraph 100. Further the presently claimed combination of features is extensive, automatic and integrated into a practical application such that it does not pre-empt any alleged abstract idea.”
In response the examiner points out applicant seem to argue limitations not reflected in the claim language. Nothing in the claims as written set forth any solution to a computer network-centric problem. The additional limitations of “retrieving metadata…, wherein the usage information comprises a rating value of the harvested content object” are mere insignificant extra solution activities (see MPEP 2106.05(g)) because they do not impose any meaningful limits on practicing the abstract idea.
Applicant argues at page 10 third paragraph of the response:
“For example, the presently claimed combination of attributes recite features that provide the ability to synchronise usage information amongst various repositories as detailed in, for example, paragraph 124. Further, the determination of similarity of usage information at this scale is not practical and is infeasible by a human mind. Such features offer an ability of an electronic education system to quickly and efficiently access and synchronize usage information and metadata via the use of an improved metric for rating content. Applicant submits that these technological improvements allow the electronic educational system to be able to adapt in an automatic and real-time manner.”
In response the examiner points out applicant argues limitations not reflected in the claim language. As written no claim requires determining similarity of usage information or synchronization of any information. The now added “wherein…” clause merely describes what the usage information include thus is mere descriptive material that does not set forth any practical aspect of the claimed invention.
For all the reasons discussed above, the rejection of all pending claims under 35 U.S.C. 101 is maintained.
Applicant’s request that the non-statutory double patenting be held in abeyance until allowable subject matter has been determined is acknowledged.
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 1-7, 9, 13-23, 27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Analysis of patentability of claim 1: Step 1: claim 1 recites a method thus is one of the statutory categories of invention.
Step 2A Prong 1: Claim 1 recites: identifying a content object.. identifying metadata.., These limitations are processes that, under their broadest reasonable interpretation, covers performance of the limitation by a human user, but for the recitation of generic electronic educational system. That is, other than reciting "an electronic educational system to provide electronic learning", the claimed elements fall within the mental processes grouping of abstract ideas. Nothing in the claim element precludes the steps from practically being performed by a human user with the aid of pen and paper. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, then it falls within the "Mental Processes' grouping of abstract ideas (concepts performed in the human mind including an observation, evaluation, judgment, and opinion).
Step 2A Prong 2: The judicial exception is not integrated into a practical application because the additional element "retrieving the metadata... wherein the usage information comprises a rating value of the harvested content object " are considered mere insignificant extra solution activity (see MPEP 2106.05(g)). The recitation of retrieving metadata does not integrate the mental process into a practical application, does not improve any technology or technical field, does not apply the judicial exception with or by use of a particular machine, does not add unconventional steps that confine the claim to a particular useful application, does not include other meaningful limitations beyond linking the use of the judicial exception to a particular technological environment. The now added limitation “wherein the usage information comprises a rating value of the harvested content object” does not impose any meaningful limits on practicing the abstract idea.
Step 2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The additional element "storing a harvested content object..." is recognized by the courts as well-understood, routine, and conventional activities when they are claimed in a merely generic manner. (See MPEP 2106.05(d)(II) (iv). Note the wherein clause at the last line of the claim merely describes the learning content as "comprises usage information for the content object" thus does not amount to significantly more than the judicial exception. The now added clause “wherein the usage information comprises a rating value of the harvested content object” does not amount to significantly more than the judicial exception since it does not seem to affect how the claimed method operates.
Claim 1 is not patent eligible.
Claims 14, 15 essentially correspond to a computer program product and server to apply the abstract idea of method claim 1 thus are non- statutory for the same reasons discussed in claim 1 above.
Claims 2, 16 merely include "generating information " considered insignificant extra solution activity (see MPEP 2106.05(g)). Note the "if the harvested content object.. " seem to be mere hypothetical thus does not amount to significantly more than the judicial exception.
Claims 3, 17 merely further describe the metadata retrieving operation, considered insignificant extra solution activity (see MPEP 2106.05(g)).
Claims 4, 18 merely further describe the learning content, considered insignificant extra solution activity (see MPEP 2106.05(g)).
Claims 5, 19 merely recite recognizing a LMS type of harvested content and performing a corresponding action, considered insignificant extra solution activity (see MPEP 2106.05(g)).
Claims 6, 20 merely further describe the LMS type, considered insignificant extra solution activity (see MPEP 2106.05(g)).
Claims 7, 21 merely further describe the action, considered insignificant extra solution activity (see MPEP 2106.05(g)).
Claims 9, 23 merely further describe the learning content, considered insignificant extra solution activity (see MPEP 2106.05(g)).
Claims 13, 27 merely further describe the learning content as "comprising at least one of....", considered insignificant extra solution activity (see MPEP 2106.05(g)).
As discussed above, no claim is patent eligible.
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 1-7, 9, 13-23, 27 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of parent U.S. Patent No. 18198574. Although the claims at issue are not identical, they are not patentably distinct from each other because they are mere obvious variations of each other.
Claim 1 of the instant application merely differs from claim 1 of the U.S. Patent by omitting the last limitation of claim 1 of the U.S. Patent and by reciting "wherein the learning content comprises usage information for the content object". However it is obvious to remove limitations to broaden a claim. Note the last limitation of claim 1 of the instant application "wherein the learning content comprises usage information for the content object" is recited in claim 8 of the U.S. Patent. The now added “wherein …” clause merely include descriptive material not affecting how the method operates.
Thus claim 1 of the instant application is anticipated by or obvious over claim 8 of the U.S. Patent.
Claims 2-7, 9 of the instant application are duplicates of claims 2-8 of the U.S. Patent.
Claim 13 of the instant application merely differs from claim 18 of the U.S. Patent by reciting a method instead of S server in the preamble.
Claim 14 of the instant application merely corresponds to a computer program product for method claim 1 without the last limitation thus similarly map to claim 1 of the U.S. Patent.
Claims 15-23, 27 of the instant application recite limitations similar to claims 1-9, 13 in form of servers, thus similarly map to claims 12-18 of the U.S. Patent.
All pending claims map to claims of the parent U.S. Patent 12198574 as shown in the previous Office action.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Gilbert et al (US 20070016650 A1) teach systems and methods for collaborative authorship of content for a distributed delivery system are provided. The system comprises a server configured to store and regulate access to one or more course materials developed by one or more authors, wherein the one or more course materials comprise information to be taught to a student. The system further comprises one or more client computer systems configured to communicate with said server, each of the one or more client computer systems comprising a display configured to show a hierarchy of course materials, a messaging module configured to send and receive content-related event messages to and from the server, and a user interface module configured to update the display in accordance with content-related events. The server is configured to send event messages to the one or more client computer systems. In some embodiments, the one or more client computer systems are configured to synchronize content with the server.
Wit et al (US 8374980 B2) teach mManagement of a user's continued attention to distance learning content using a general purpose computer having a central processing unit and an operating system configured to run multiple program applications concurrently. A memory stores the distance learning content. A distance learning module comprises code executable on the central processing unit, as one of the multiple program applications. The distance learning module presents the distance learning content to a user and is operable to interrupt a presentation of the distance learning content in response to prescribed events concerning another one of the multiple program applications. A method executing on a computer that an concurrently run multiple applications identifies events concerning an application other than the distance learning application, processes the identified events so as to identify a prescribed event among the identified events, and interrupts the presentation of the distance learning content in response to the prescribed event.
Roy, Devshri, Sudeshna Sarkar, and Sujoy Ghose. "A comparative study of learning object metadata, learning material repositories, metadata annotation & an automatic metadata annotation tool." Advances in Semantic Computing 2.2010 (2010): 103-126.
Abstract: One of the most important components of an e-learning system is the learning material. The popularity of e-learning has led to the development of many learning object repositories that store high quality learning materials specifically created for e-learning. High quality learning materials are expensive to create. So it is very important to ensure reuse of learning materials. Reuse of learning materials are made possible by semantically tagging them with standard metadata. In this chapter, we present a comparative study of available learning object metadata and learning object repositories. The learning material can be tagged either manually or automatically. Manual annotation is a time consuming and expensive process. We have explored the feasibility of tagging learning materials automatically with a set of IEEE LOM metadata specification. Here, we present a standard classification approach using probabilistic neural network to automatically identify the topic of the learning material. The classifier is tested and the result shows a fair degree of accuracy.
Hatala, Marek, et al. "The interoperability of learning object repositories and services: standards, implementations and lessons learned." Proceedings of the 13th international World Wide Web conference on Alternate track papers & posters. 2004.
Abstract- Interoperability is one of the main issues in creating a networked system of repositories. The eduSource project in its holistic approach to building a network of learning object repositories in Canada is implementing an open network for learning services. Its openness is supported by a communication protocol called the eduSource Communications Layer (ECL) which closely implements the IMS Digital Repository Interoperability (DRI) specification and architecture. The ECL in conjunction with connection middleware enables any service providers to join the network. EduSource is open to external initiatives as it explicitly supports an extensible bridging mechanism between eduSource and other major initiatives. This paper discusses interoperability in general and then focuses on the design of ECL as an implementation of IMS DRI with supporting infrastructure and middleware. The eduSource implementation is in the mature state of its development as being deployed in different settings with different partners. Two applications used in evaluating our approach are described: a gateway for connecting between eduSource and the NSDL initiative, and a federated search connecting eduSource, EdNA and SMETE.
Hatala, Marek, et al. "Secure communication layer for scalable networks of learning object repositories." E-Learning Networked Environments and Architectures: A Knowledge Processing Perspective. London: Springer London, 2010. 276-305.
Abstract. The eduSource Communication Layer (ECL) defines a set of services, middleware, and communication conventions that enable repositories and tools to communicate with each other. ECL was designed and implemented within the scope of the recommendations in the IMS DRI specification. The ECL has been deployed world-wide and connects repositories in Canada, USA, Australia, UK and Europe. In this chapter we describe the design of ECL, its architecture and middleware components. In the second part we describe novel ECL security infrastructure (ECL-SI) for web services that provides the security framework for object repositories based on a trust federation. The security solution defines security profiles, infrastructure services, and middleware component for a low-barrier adoption by existing repositories. Although this infrastructure can scale to large networks it is particularly sensitive to the needs of medium and small organizations, which have complex attributes and accessing policies.
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 UYEN T LE whose telephone number is (571)272-4021. The examiner can normally be reached M-F 9-5.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ajay M Bhatia can be reached at 5712723906. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/UYEN T LE/Primary Examiner, Art Unit 2156 15 July 2026
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