DETAILED ACTION
This Office action is in response to the applicant's filing of 12/18/2024.
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
Preliminary amendments, filed on 12/18/2024, amended claims 1, 3, 11, 13, 21, and 23 and canceled claims 2, 12, and 22. Claims 1, 3-11, 13-21, and 23-32 are pending and have been examined.
Information Disclosure Statement
The information disclosure statement(s) (IDS) submitted on 03/10/2025 has/have been considered by the examiner.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 3-11, 13-21, and 23-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 11,669,923. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in U.S. Patent No. 11,669,923 recite the entirety of limitations of claims 1, 3-11, 13-21, and 23-32 of the instant application. For example, in the instant application independent claims 1, 11, and 21 are anticipated by claims 1, 9, and 17 of U.S. Patent No. 11,669,923 because claims 1, 9, and 17 of U.S. Patent No. 11,669,923 recite additional features such as “determining, with a secure education application, if a submitted text document is likely written by a user based on one or more writing characteristic values of the student profile associated with the user by reading the student profile associated with the user on the student profile database and comparing the writing characteristics values to corresponding values of the submitted text document;” wherein in the instant application claim 1, 11, and 21 do not recite these features and are essentially broader than claims 1, 9, and 17 of U.S. Patent No. 11,669,923. Therefore claim 1 of U.S. Patent No. 11,669,923 is in essence a “species” of the generic invention of the instant application claim 1. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Claims 3-10 (Dependent on claim 1), claims 13-20 (Dependent on claim 11), and claims 23-32 (Dependent on claim 21) do not cure the deficiencies of the independent claims. Appropriate correction is required.
Claims 1, 3-11, 13-21, and 23-32 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-26 of U.S. Patent No. 12,175,550. Although the claims at issue are not identical, they are not patentably distinct from each other because the claims in U.S. Patent No. 12,175,550 recite the entirety of limitations of claims 1, 3-11, 13-21, and 23-32 of the instant application. For example, in the instant application independent claims 1, 11, and 21 are anticipated by claims 1, 9, and 17 of U.S. Patent No. 12,175,550 because claims 1, 9, and 17 of U.S. Patent No. 12,175,550 recite additional features such as “determining, with a secure education application, if a submitted text document is likely authored by the user based on one or more writing characteristic values of the student profile associated with the user by comparing the writing characteristics values to values of the submitted text document;” wherein in the instant application claims 1, 11, and 21 do not recite these features and are essentially broader than claims 1, 9, and 17 of U.S. Patent No. 12,175,550. Therefore claim 1 of U.S. Patent No. 12,175,550 is in essence a “species” of the generic invention of the instant application claim 1. It has been held that a generic invention is “anticipated” by a “species” within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993). Claims 3-10 (Dependent on claim 1), claims 13-20 (Dependent on claim 11), and claims 23-32 (Dependent on claim 21) do not cure the deficiencies of the independent claims. Appropriate correction is required.
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, 3-11, 13-21, and 23-32 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 judicial exception (i.e., a law of nature, natural phenomenon, or abstract idea) without significantly more.
Step 1: In a test for patent subject matter eligibility, claims 1, 3-11, 13-21, and 23-32 are found to be in accordance with Step 1 (see 2019 Revised Patent Subject Matter Eligibility), as they are related to a process, machine, manufacture, or composition of matter. Claims 1, 3-11, and 13-20 recite a system; and claims 21-32 recite a method. When assessed under Step 2A, Prong I, they are found to be directed towards an abstract idea. The rationale for this finding is explained below:
Step 2A, Prong I: Under Step 2A, Prong I, claims 1, 11, and 21 are directed to an abstract idea without significantly more, as they all recite a judicial exception. Claims 1, 11, and 21 recite limitations directed to the abstract idea including electronically tracking an amount of time since the application was last used on the device by a user; and electronically providing one or more of the plurality of portions of educational content in order, the one or more of the plurality of portions and the order in which the one or more of the plurality of portions are provided being based on the amount of time since the application was last used by the user. These further limitations are not seen as any more than the judicial exception. Claims 1, 11, and 21 recite additional limitations including “maintaining an education content database having a plurality of portions of educational content on one or more subjects on a memory of a server; generating a student profile database on the non-transitory computer readable medium, the student profile database having one or more student profiles that include identification data that identifies a user associated with the student profile and evaluation data that valuates a proficiency of the user in at least one of the subjects; with a secure education application; on a computing device”. Tracking an amount of time when a user last used an application in order to provide educational content in an order based on the amount of time when the user last used the application is considered to be an abstract idea, specifically, certain methods of organizing human activity; such as commercial interactions, advertising, marketing, and sales because the claims are directed to providing educational content based on user’s usage of an application. Tracking an amount of time when a user last used an application in order to provide educational content in an order based on the amount of time when the user last used the application is also considered to be an abstract idea, specifically, Mental Processes such as concepts performed in the human mind (including an observation, evaluation, judgment, opinion) because the claims are directed to tracking an amount of time when the user last used the application and providing educational content according to an order based on the tracked amount of time. Therefore, under Step 2A, Prong I, claims 1, 11, and 21 are directed towards an abstract idea.
Step 2A, Prong II: Step 2A, Prong II is to determine whether any claim recites any additional element that integrate the judicial exception (abstract idea) into a practical application. Claims 1, 11, and 21 recite additional limitations including “maintaining an education content database having a plurality of portions of educational content on one or more subjects on a memory of a server; generating a student profile database on the non-transitory computer readable medium, the student profile database having one or more student profiles that include identification data that identifies a user associated with the student profile and evaluation data that valuates a proficiency of the user in at least one of the subjects; with a secure education application; on a computing device”. The additional limitations reciting – “with a secure education application; on a computing device” are recited in a manner that merely uses the computer (i.e. application and computing device) as the tool to perform the abstract idea. These additional elements in claims 1, 11, and 21 are not found to integrate the judicial exception into a practical application because alone, and in combination, these additional elements are seen as adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f), adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g), and generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h). The additional limitations do no more than link the judicial exception to a particular technological environment or field of use, i.e. computing device, and therefore do not integrate the abstract idea into a practical application. The courts decided that although the additional elements did limit the use of the abstract idea, the court explained that this type of limitation merely confines the use of the abstract idea to a particular technological environment and this fails to add an inventive concept to the claims (See Affinity Labs of Texas v. DirecTV, LLC,). Under Step 2A, Prong II, this claim remains directed towards an abstract idea.
Step 2B: Claims 1, 11, and 21 recite additional limitations including “maintaining an education content database having a plurality of portions of educational content on one or more subjects on a memory of a server; generating a student profile database on the non-transitory computer readable medium, the student profile database having one or more student profiles that include identification data that identifies a user associated with the student profile and evaluation data that valuates a proficiency of the user in at least one of the subjects; with a secure education application; on a computing device”. The additional limitations reciting – “with a secure education application; on a computing device” do not integrate the judicial exception (abstract idea) into a practical application because of the analysis provided in Step 2A, Prong II. Independent claims 1, 11, and 21 also recite – “maintaining an education content database having a plurality of portions of educational content on one or more subjects on a memory of a server; generating a student profile database on the non-transitory computer readable medium, the student profile database having one or more student profiles that include identification data that identifies a user associated with the student profile and evaluation data that valuates a proficiency of the user in at least one of the subjects.” However, merely reciting maintaining/generating a database (i.e. education content or student profile) on a memory/medium of a server do not result in the claims amount to significantly more than the judicial exception because it is simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo. For example, the courts have noted that “electronic recordkeeping” (See: Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log)) and “Storing and retrieving information in memory” (See: Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93) are computer functions that are well‐understood, routine, and conventional. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements listed amount to no more than mere instructions to apply an exception using a generic computer component. In addition, the applicant’s specifications describe “any computing device” (See page 13 of Applicant’s originally filed specification) or “any conventional computer memory known in the art” (See page 22 of Applicant’s originally filed specification), for implementing the computing device/memory, which do not amount to significantly more than the abstract idea of itself, which is not enough to transform an abstract idea into eligible subject matter. There is no improvement in the functioning of the computer or technological field, and there is no transformation of subject matter into a different state. Under Step 2B in a test for patent subject matter eligibility, these claims are not patent eligible.
Dependent claims 3-10, 13-20, 23-32 further recite the system of claims 1 and 11 and the method of claim 21, respectively. Dependent claims 3-10, 13-20, 23-32 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation fail to establish that the claims are not directed to an abstract idea:
Under Step 2A, Prong I, these additional claims only further narrow the abstract idea set forth in claims 1, 11, and 21. For example, claims 3-10, 13-20, 23-32 further describe the limitations for using artificial intelligence for tracking an amount of time when a user last used an application in order to provide educational content in an order based on the amount of time when the user last used the application – which is only further narrowing the scope of the abstract idea recited in the independent claims.
Under Step 2A, Prong II, for dependent claims 3-10, 13-20, 23-32, there are no additional elements introduced. Thus, they do not present integration into a practical application, or amount to significantly more.
Under Step 2B, dependent claims do not include any additional elements that are sufficient to amount to significantly more than the judicial exception. Additionally, there is no improvement in the functioning of the computer or technological field, and there is no transformation of subject matter into a different state. As discussed above with respect to integration of the abstract idea into a practical application, the additional claims do not provide any additional elements that would amount to significantly more than the judicial exception. Under Step 2B, these claims are not patent eligible.
Allowable Subject Matter
Claims 1, 3-11, 13-21, and 23-32 are allowable over the art.
The Examiner failed to find prior art to teach “electronically provides one or more of the plurality of portions of educational content in an order on the computing device, the one or more of the plurality of portions and the order in which the one or more of the plurality of portions are provided being based on the amount of time since the application was last used on the device by the user.”
The following U.S. patent are cited to further show the best domestically patented prior art found by the examiner:
Koppel et al. (US 2016/0275804): Koppel teaches a secure education system (and the corresponding secure education device; and method) (abstract; Fig 1, 4, 5), the system comprising: a non- transitory computer readable education content database including a plurality of portions of educational content including tests and lessons on a plurality of subjects (abstract; Fig 1, 4, 5); a non-transitory computer readable student profile database including a plurality of student profiles that include identification data that identifies a person associated with the student profile and evaluation data that valuates an academic proficiency of the person in at least one of the plurality of subjects (para [0057]-[0060], [OO65], [0074], [0087], [0088]); and a computing device having a non-transitory computer readable memory storing a secure education application, the application providing one or more of the plurality of portions of educational content to a user on the computing device (para [0021], [0022], [0039], [0055]), wherein the application dynamically determines which of the plurality of the portions to provide and an order in which the one or more of the plurality of portions are provided based on one of the student profiles that is associated with the user (para [0022], [0023], [0060], [0070], [0073], [0097], [0101]-[0103], [0111], [0137], [0138)).
Stewart, John Cary. (“An Evaluation of the Application of Stylometry and the Keystroke Biometric to Identify Verification of Online Test-Takers”. Pace University. ProQuest Dissertations Publishing, 2013.): Stewart discloses generating a profile for the author and each test text was then attributed to the author profile with the greatest similarity. From their analysis, the researchers reported a 70% accuracy in using n-grams of 3 to 6 and concluded that 120 tweets per user is a critical threshold level in ascribing any degree of authorship. (page 22). Van Haltern, however, used high counts of linguistic features as the profile for authorship verification of eight authors with nine text samples of approximately a page and half each. These feature counts were normalized based on text length and the degree of difference (as measured by standard deviation) from the mean determined from a reference profile. The raw score was then determined from a weighted calculation of the differences between sample and author score for each feature. Haltem postulated that this made it possible to more heavily weight those features that exhibit a count that 35 varies considerably from the norm. Using a combination of lexical and syntactic features, the system was successfully able to determine the correct author for 97% of the texts in the corpus. Van Haltern reported the False Reject Rate (FRR) as 0 and the False Acceptance Rate (FAR at 8.1%). (page 34-35).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Azam Ansari, whose telephone number is (571) 272-7047. The examiner can normally be reached from Monday to Friday between 8 AM and 4:30 PM.
If any attempt to reach the examiner by telephone is unsuccessful, the examiner's supervisor, Waseem Ashraf, can be reached at (571) 270-3948.
Another resource that is available to applicants is the Patent Application Information Retrieval (PAIR). Information regarding the status of an application can be obtained from the (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAX. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pairdirect.uspto.gov. Should you have questions on access to the Private PAIR system, please feel free to contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free).
Applicants are invited to contact the Office to schedule either an in-person or a telephonic interview to discuss and resolve the issues set forth in this Office Action. Although an interview is not required, the Office believes that an interview can be of use to resolve any issues related to a patent application in an efficient and prompt manner.
Sincerely,
/AZAM A ANSARI/
Primary Examiner, Art Unit 3621
December 13, 2025