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
The amendment filed July 7, 2026 has been entered. Claims 1-20 remain pending in the application. Claims 1-20 are noted as amended. Applicant’s amendments to the specification and claims have overcome the previous 112(b) rejections of claims 1-7, 9-17, and 19-20 set forth in the Non-Final Office Action mailed April 10, 2026 and the rejections therein have been withdrawn. Claims 8 and 18 stand rejected under 35 U.S.C. 112(b) as discussed below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8 and 18 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 8 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: repeating the steps of claim 1 of scoring a first and second performance submission in accordance with a first item and a second item, respectfully. The omission of the step renders the claim indefinite as it is unclear how or where the “predetermined number” of first and second items comes from and is implemented. Specifically, claim 1, from which claim 8 depends, only recites a first item and a second item without reciting additional items. While claim 1 does recite the test having a plurality of test questions, it is unclear which would be a subsequent second item after the first second item as the process states “in accordance with the scoring, selecting, from the plurality of unique test items of the item bank, one of a more difficult and a less difficult item as a second item” so at least an additional selection must occur for a “predetermined number” to be possible. This lack of clarity renders the claim indefinite.
Claim 18 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being incomplete for omitting essential steps, such omission amounting to a gap between the steps. See MPEP § 2172.01. The omitted steps are: repeating the steps of claim 11 of scoring a first and second performance submission in accordance with a first item and a second item, respectfully. The omission of the step renders the claim indefinite as it is unclear how or where the “predetermined number” of first and second items comes from and is implemented. Further, claim 11, from which claim 18 depends, only recites a first item and a second item. While claim 11 does recite the test having a plurality of test questions, it is unclear which would be a subsequent second item after the first second item as the process states “in accordance with the scoring, selecting, from the plurality of unique test items of the item bank, one of a more difficult and a less difficult item as a second item” so at least an additional selection must occur for a “predetermined number” to be possible. This lack of clarity renders the claim indefinite.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Claims 1, 11, and 20 recite a process, a computer system for performing the process, and a computer program product including the process, the process including the steps of rendering a test having a plurality of test questions ('items') sourced from an item bank that includes a plurality of unique test items; scoring a first performance submission received from a candidate computing device in accordance with a first item sourced from the item bank that is presented to the candidate computing device; in accordance with the scoring, selecting, from the plurality of unique test items of the item bank, one of a more difficult item and a less difficult item as a second item; scoring a second performance submission received from the candidate computing device in accordance with the selected one of the more difficult item and the less difficult item at the second item; generating a candidate performance profile based at least on the first performance submission and the second performance submission received; and assigning one of a conclusive fail status and a conclusive pass status for the test based on the candidate performance profile as generated. The recited steps, under their broadest reasonable interpretation, are rendering a test having a plurality of questions from an item bank, scoring a first submission, selecting a second item based on the scoring of the first submission, scoring the second submission, generating a performance profile based on the submissions, and assigning one of a conclusive fail and a conclusive pass based on the profile. The recited steps, as drafted, are a process that is a method of applying an abstract idea, specifically mental processes (evaluation (scoring the first and second submissions; generating a candidate performance profile), judgement (rendering the test; selecting a second item; assigning one of a fail and a pass status) and/or certain methods of organizing human activity in the form of teaching (rendering the test; scoring the submissions; selecting a second item; generating a performance profile; assigning one of a fail and a pass). If claim limitations, under their broadest reasonable interpretation, include a mental process and/or certain methods of organizing human activity, the limitations fall under the abstract ideas judicial exception and therefore recite ineligible subject matter. Accordingly, claims 1, 11, and 20 recite abstract ideas.
The judicial exception is not integrated into a practical application because the claims do not recite additional elements that are significantly more than the judicial exception or meaningfully limit the practice of the judicial exception. The additional elements are a test delivery server computing system communicatively coupled within a distributed network computing system [claim 11]; one or more processors [claims 11 and 20]; and a memory storing instructions executable in the one or more processors [claims 11 and 20]; and the submission received from a candidate computing device; the first item is presented to the candidate computing device; the second performance received in real time from the candidate computing device; and wherein the test comprises a target subset of the plurality of unique test items for presenting to the candidate computing device and one of the conclusive fail status and the conclusive pass status for the test is assigned prior to scoring the target subset. The additional elements are insignificant extra-solution activity and instructions for applying the judicial exception with a generic computing device as, under their broadest reasonable interpretation, the additional step(s) is/are merely displaying content on a device, transmitting data across a network (see MPEP 2106.05(d)(II)), and defining the data being manipulated (a target subset) (see MPEP 2106.05(g)) wherein the assigning the status is an abstract idea as discussed above. The other additional elements of a candidate computing device, a distributed network system, one or more processors, and a memory are generic computer components for performing the above method, per MPEP 2106.05(f). Under their broadest reasonable interpretation, the additional elements are generic components of a computing device used to apply the abstract idea. As such, these additional elements are interpreted as merely instructions to apply the judicial exception. Accordingly, the additional elements and steps do not integrate the abstract idea into a practical application because they do not impose any meaningful limitations on practicing the abstract idea. Therefore, the claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above, the additional step(s) of receiving the first submission from a candidate computing device, presenting the first item to the device, and defining the composition of the test is/are insignificant extra-solution activity performed during the abstract idea. The additional elements of a candidate computing device, a distributed network system, one or more processors, and a memory used to perform the process are generic computing components/device used to apply the judicial exception and therefore fall under the “apply it” limitation of the judicial exception and do not amount to significantly more per MPEP 2106.05(f). Further, the limitations, taken in combination, add nothing that is not already present when looking at the elements taken individually. As such, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, under their broadest reasonable interpretation, the additional elements do not meaningfully limit the practice of the abstract idea and do not amount to significantly more than the judicial exceptions. Therefore, claims 1, 11, and 20 are not directed to eligible subject matter as they are directed to abstract ideas without significantly more.
Claims 2-10 and 12-19 are dependent from claims 1 and 11, respectively, and include all the limitations of the independent claims. Therefore, the dependent claims recite the same abstract idea. The limitations of the dependent claims fail to amount to significantly more than the judicial exception. For example:
The limitations of claims 2-6, 8-9, 12-16, and 18-19 recite clarification of the assignment criteria and the types of data used/comprising the test items, the classification of the items, and the candidate performance profile. The limitations, under their broadest reasonable interpretation, are merely setting criteria for the mental processes and defining/selecting a type of data to be manipulated which, per MPEP 2106.05(g), is insignificant extra-solution activity. The limitations fail to provide any teaching that integrates the judicial exceptions into a practical application or amounts to significantly more than the judicial exceptions. For this reason, the analysis performed on the independent claims is also applicable on these claims.
The limitations of claims 7, 10, and 17 recite further abstract ideas including concluding the test (judgment MP; CMOHA) and selecting the first item in accordance with a first level of difficulty, the difficulty selected based upon prior performance (judgment MP; CMOHA). As the limitations are further abstract ideas, the limitations cannot meaningfully limit or amount to significantly more than the abstract ideas of the independent claims. The additional elements of the dependent claims are further insignificant extra-solution activities including defining the type of test. The limitations fail to provide any teaching that integrates the judicial exceptions into a practical application or amounts to significantly more than the judicial exceptions. For this reason, the analysis performed on the independent claims is also applicable on these claims.
Accordingly, claims 2-10 and 12-19 are directed to abstract ideas without significantly more and are not drawn to eligible subject matter.
Response to Arguments
Applicant's arguments, see Remarks, filed July 7, 2026, with respect to the rejection(s) of claim(s) 1-20 under 35 U.S.C. 101 have been fully considered but they are not persuasive. Applicant’s arguments are as follows: A) under Step 2A, prong one, the claims do not recite judicial exceptions as the claims are directed to a technical solution for adaptive testing (see Remarks pages 12-16), B) the claims integrate the judicial exceptions into a practical application by providing a concrete technical improvement through dynamic and real-time data processing and by providing tangible results of reduced test length, enhanced assessment accuracy, and improved item bank security (see pages 17-18), and C) the claims amount to significantly more when considered together as they represent a non-conventional and non-generic arrangement of elements and a technical improvement over conventional computer use and in distributed network examination systems (see pages 18-19). Regarding argument A, Examiner respectfully notes that Applicant’s analysis is not commensurate with the scope of Step 2A, prong one which is directed to determining if the claim under its broadest reasonable interpretation recites a judicial exception (See MPEP 2106.04) rather than a determination of a technical solution/practical application which is the analysis under prong 2 and the overall analysis of Step 2A is for determining if the claim is directed to the judicial exception. Applicant’s arguments of technical solutions and use of computing devices are not relevant to the analysis under prong one as claims that require a computer, or machine may still recite mental processes and certain activity between a person and a computer may fall within the CMOHA grouping per MPEP 2106.04(a)(2). The steps of rendering the test, scoring the first and second submissions, generating a candidate performance profile, selecting a second item, assigning one of a fail and a pass status could be performed by humans without a computer. Therefore, as discussed above, the claims recite judicial exceptions as under their broadest reasonable interpretation the claim limitations recite mental processes and certain methods of organizing human activity.
Regarding argument B, Applicant argues the claimed invention provides the following technical improvements: reducing the number of items needed and minimizing exposure of content, reduced test length, and enhanced assessment accuracy. The claimed improvements are presented in a conclusory manner and are not technical improvements but improvements experienced by a test taker or user as there is no evidence provided of improved computer functioning or other technological improvement (see MPEP 2106.04(d)(1)). While the claims may provide a “tangible result”, the improvement is not a technical improvement and is not evidence of a practical integration. Further, assuming Applicant’s arguments include the improvements discussed in the analysis under prong one, the claimed improvements of real time performance and dynamically updating the content and determinations are inherent efficiency improvements from applying computing technology to perform the steps which is why the hardware elements and implementation are mere instructions to apply the exceptions and do not amount to a practical application or significantly more per MPEP 2106.05(f). Therefore, the claims do not include additional elements that amount to a practical application, and under step 2A analysis, as discussed above, the claims are directed to judicial exceptions.
Regarding argument C, the claim limitations have been considered in combination but do not add anything that is significantly more than the judicial exception. Specifically, per MPEP 2106.05 and 2106.05(a), the inventive concept and/or significantly more must be furnished by an element or combination of elements recited in addition to/beyond the judicial exception and the judicial exception alone cannot provide a technical improvement. The improvement must be provided by one or more additional elements or the additional elements in combination with the recited judicial exception. In the instant application, the only additional elements are the computing hardware/components, using the generic computing components to perform the judicial exceptions, and defining the test as including a target subset of the test items. As discussed above, the use of computing components and displaying the results are mere instructions to apply the judicial exceptions and the inherent efficiency improvements from applying computing technology to perform the steps have been found by the court to not amount to a practical application or an inventive concept/significantly more per MPEP 2106.05(f). Applicant’s claim of a non-conventional and non-generic arrangement of elements is merely conclusory and not supported by the specification or claims. Further, Applicant’s listed elements, on page 19, are entirely judicial exceptions, as discussed above, which cannot amount to significantly more than themselves alone or in combination with each other, but for the recitation of “dynamically” and “in real time”, which have been discussed above, and the assigning the status “prior to scoring a target subset of test items”. As discussed above, the assigning the status, under its broadest reasonable interpretation, is a mental process and certain method of organizing human activity. Defining the step as occurring before scoring the target subset does not provide a non-conventional or non-generic arrangement as the step is still a mental process and/or CMOHA and the determination to make the assignment prior to scoring would be a further mental process (judgement) and the order of the steps does not inherently provide some technological improvement or other non-conventional benefit that would amount to an inventive concept or significantly more. Therefore, as discussed above, the claims are directed to judicial exceptions without significantly more, and the claims stand rejected under 35 U.S.C. 101.
Applicant’s arguments, see Remarks, filed July 7, 2026, with respect to the rejection(s) of claim(s) 1-20 under 35 U.S.C. 103 have been fully considered and are persuasive. Specifically, Applicant’s argument that the “non-mastered” classification of Capone is not equivalent to the “conclusive fail status” of the instant application and the focus on a construct level and jumping between constructs of an assessment of Capone differs from the assignment of the status prior to scoring a target subset of the instant application. Further, Ferreira and Capone fail to teach generating the candidate performance profile in real-time and assigning the status prior to scoring the target subset as argued by Applicant. Further, no further searched or cited references teaches the elements of a “conclusive fail status” and providing the status prior to scoring a target subset or motivation to modify Ferreira to accomplish such limitations. Therefore, the rejections of claims 1-20 under 35 U.S.C. 103 has been withdrawn.
Conclusion
Accordingly, claims 1-20 are rejected.
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.
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/CORRELL T FRENCH/Examiner, Art Unit 3715
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