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 .
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 – 17 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1: Is the claimed invention a statutory category of invention?
Claims 1, 16 – 17 are directed to a method / system / computer program for recommending test medium (Step 1, Yes).
Step 2A, Prong 1: Does the claim recite an abstract idea?
The limitation of steps: … a reception unit that receives the learning content from the external server and a determination unit that determines a learning medium on which to show the learning content.as drafted, is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of computer elements (i.e., an external server and a host terminal; a computer-readable storage medium, a computer). The claimed method akin to mental process of a teacher that select paper / computer-based content based on the student preference and test format. The mere nominal recitation of the computer elements performing these steps does not take the claim limitation outside of the mental processes grouping. Thus, the claim recites a mental process (Step 2A, Prong 1: yes).
Step 2A, Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application?
Per the 2019 Revised Patent Subject Matter Eligibility Guidance, if a claim as a whole integrates the recited judicial exception into a practical application of that exception, a claim is not "directed to" a judicial exception. Alternatively, a claim that does not integrate a recited judicial exception into a practical application is directed to the exception. Evaluating whether a claim integrates an abstract idea into a practical application is performed by a) identifying whether there are any additional elements recited in the claim beyond the abstract idea, and b) evaluating those additional elements individual and in combination to determine whether they integrate the abstract idea into a practical application, using one or more of the considerations laid out by the Supreme Court and the Federal Circuit. Exemplary considerations indicative that an additional element (or combination of elements) may have or has not been integrated into a practical application are set forth in the 2019 PEG.
Claim 1 recites the additional elements of: An information processing system comprising: an external server and a host terminal capable of communicating various kinds of information. Claim 16 requires “a host terminal capable of communicating various kinds of information with an external server”. Claim 17 requires “a computer-readable storage medium storing a program for causing a computer”. It is particularly noted that the use of an external server, a host and a host terminal and a computer "as a tool" to perform an abstract idea of a human teacher normally performed. Even in combination, the recited additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits, such as an improvement to a computing system, on practicing the abstract idea (STEP 2A, Prong 2: NO).
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception?
Claim 1 recites the additional elements of: An information processing system comprising: an external server and a host terminal capable of communicating various kinds of information. Claim 16 requires “a host terminal capable of communicating various kinds of information with an external server”. Claim 17 requires “a computer-readable storage medium storing a program for causing a computer” set forth above for Step 2A, Prong 2. Regarding these limitations: Applicant's specification describes these features in generic manner "… a computer of a system or apparatus that reads out and executes computer executable instructions (e.g., one or more programs) recorded on a storage medium (which may also be referred to more fully as a 'non-transitory computer-readable storage medium') to perform the functions of one or more of the above-described embodiment(s) and/or that includes one or more circuits ( e.g., application specific integrated circuit (ASIC)) for performing the functions of one or more of the above-described embodiment(s), and by a method performed by the computer of the system or apparatus by, for example, reading out and executing_ the computer executable instructions from the storage medium to perform the functions of one or more of the above described embodiment(s) and/or controlling the one or more circuits to perform the functions of one or more of the above-described embodiment(s). The computer may comprise one or more processors (e.g., central processing unit (CPU), micro processing unit (MPU)) and may include a network of separate computers or separate processors to read out and execute the computer executable instructions” in the Applicant’s specification, para. [0082]) and “Various services provided by the management server 107 are provided via the Internet 106. In the present embodiment, as an external server located outside of the host terminal 101, the management server 107 provides a learning service as one of such services” ([0031]). There is no indication in the Specification that Applicants have achieved an advancement or improvement in computer and server for selecting test format. Dependent claims 2 - 15 inherit the deficiencies of their respective parent claims through their dependencies and do not recite additional limitations sufficient to direct the claims to more than the claimed abstract idea, and are thus rejected for the same reasons.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1 – 4 and 16 – 17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by McGinley et al. (US 2006/0003306 A1).
Re claims 1, 16 - 17:
McGinley teaches 1. An information processing system (McGinley, Abstract) comprising:
an external server (McGinley, fig. 2; figs. 5 - 6) and
a host terminal capable of communicating various kinds of information with the external server (McGinley, fig. 2; figs. 5 – 6; [0057], “the processing center control and server system, the remote self-serve customer workstations, the on-line assessment workstations, and the reporting structure, with interconnections there between”), wherein
the external server has a transmission unit that transmits a learning content to the host terminal (McGinley, fig. 2; figs. 5 – 6; [0083], “This information in addition to the exam request information 57 allows the assessment communication server 63 to access the digital library 53 and construct the test selection menu 55, which is displayed via the Internet 59 at the administrator/teacher workstation 61”; [0090], “the plant site communication server downloads the selected exam in PDF format 71 to the customer workstation 61”), and
the host terminal has
a reception unit that receives the learning content from the external server (McGinley, [0083], “the exam request information 57 allows the assessment communication server 63 to access the digital library 53 and construct the test selection menu 55, which is displayed via the Internet 59 at the administrator/teacher workstation 61. The administrator/teacher selects a test and makes an assignment of that test to a group of students. Each assignment may have associated with it an identification number for the test”; [0085]; [0098]; [0100]) and
a determination unit that determines a learning medium on which to show the learning content (McGinley, [0037], “group and control level identification is made available on-line for web-based assessment testing, or downloaded for paper testing, or both”; [0075], “provides services, utilizing the internet, to a plurality of customers for the selection and delivery of on-line and paper-based standardized tests”).
16. An information processing method for controlling a host terminal capable of communicating various kinds of information with an external server (McGinley, Abstract; fig. 2; figs. 5 - 6), the method comprising the steps of:
receiving a learning content from the external server (McGinley, [0083], “the exam request information 57 allows the assessment communication server 63 to access the digital library 53 and construct the test selection menu 55, which is displayed via the Internet 59 at the administrator/teacher workstation 61. The administrator/teacher selects a test and makes an assignment of that test to a group of students. Each assignment may have associated with it an identification number for the test”; [0085]; [0098]; [0100]) and
recommending at least one of a paper medium and a digital medium as a learning medium on which to show the learning content (McGinley, [0037], “group and control level identification is made available on-line for web-based assessment testing, or downloaded for paper testing, or both”; [0075], “provides services, utilizing the internet, to a plurality of customers for the selection and delivery of on-line and paper-based standardized tests”).
17. A computer-readable storage medium storing a program for causing a computer (McGinley, Abstract; fig. 2; figs. 5 - 6) to
receive a learning content from the external server (McGinley, [0083], “the exam request information 57 allows the assessment communication server 63 to access the digital library 53 and construct the test selection menu 55, which is displayed via the Internet 59 at the administrator/teacher workstation 61. The administrator/teacher selects a test and makes an assignment of that test to a group of students. Each assignment may have associated with it an identification number for the test”; [0085]; [0098]; [0100]) and
recommend at least one of a paper medium and a digital medium as a learning medium on which to show the learning content (McGinley, [0037], “group and control level identification is made available on-line for web-based assessment testing, or downloaded for paper testing, or both”; [0075], “provides services, utilizing the internet, to a plurality of customers for the selection and delivery of on-line and paper-based standardized tests”).
Re claims 2 – 4:
2. The information processing system according to claim 1, wherein the host terminal further has a recommendation unit that recommends the learning medium determined by the determination unit as the learning medium on which to show the learning content (McGinley, [0037], “group and control level identification is made available on-line for web-based assessment testing, or downloaded for paper testing, or both”; [0075], “provides services, utilizing the internet, to a plurality of customers for the selection and delivery of on-line and paper-based standardized tests”; [0157]).
3. The information processing system according to claim 2, wherein the host terminal further has a reception unit that receives selection of whether to use the learning medium recommended by the recommendation unit (McGinley, [0037], “group and control level identification is made available on-line for web-based assessment testing, or downloaded for paper testing, or both”; [0075], “provides services, utilizing the internet, to a plurality of customers for the selection and delivery of on-line and paper-based standardized tests”; [0157]).
4. The information processing system according to claim 3, wherein the determination unit determines any one of a paper medium and a digital medium as the learning medium, and the recommendation unit recommends the paper medium or the digital medium determined by the determination unit (McGinley, [0037], “group and control level identification is made available on-line for web-based assessment testing, or downloaded for paper testing, or both”; [0075], “provides services, utilizing the internet, to a plurality of customers for the selection and delivery of on-line and paper-based standardized tests”; [0157]).
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 5 – 7 and 10 – 15 are rejected under 35 U.S.C. 103 as being unpatentable over McGinley et al. (US 2006/0003306 A1) In view of Rodrigue Bravo et al. (US 2021/0097876 A1, known herein as Rodrigue).
Re claims 5 – 7:
McGinley does not explicitly disclose recommended learning medium information based on a level of memorization required by the learning content, the recommended learning medium information indicating that either the paper medium or the digital medium is recommended.
Rodrigue teaches a method /system for choosing a test format or a test taker based at least in part upon how well, and/or how poorly, that test-taker has performed on that test format in the past. Also, technology applicable to a situation where a test includes multiple portions in multiple different formats, where the different portions of the test are weighted differently depending upon how well, or how poorly, the test-taker as respectively performed on the multiple different formats in the past (Rodrigue, Abstract). Rodrigue teaches 5. The information processing system according to claim 4, wherein the external server generates recommended learning medium information based on a level of memorization required by the learning content, the recommended learning medium information indicating that either the paper medium or the digital medium is recommended. 6. The information processing system according to claim 5, wherein the external server generates the recommended learning medium information based on a learning field of the learning content. 7. The information processing system according to claim 5, wherein the external server generates the recommended learning medium information based on a learning field of the learning content and an answer format of a task in the learning content (Rodrigue, fig. 6, “Essay”, “Multiple Choice”; fig. 7, “Paper Based”, “Computer Based”; fig. 8, “Computer Based”, “Student 4”, “Student 3”, “Paper Based”, “Student 2”, “Student 6”; [0058], “creating an essay (written by hand), making a test in paper, etc.)”; [0052], “There the teacher will be able to see how the student is performing on each subject on a given type of evaluation (computer based…)”; [0037], “the test bias format scores for the three subject matter areas”). Therefore, in view of Rodrigue, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system described in McGinley, by providing paper / computer based test based on student preference as taught by Rodrigue, in order to provide a test includes multiple portions in multiple different formats, where the different portions of the test are weighted differently depending upon how well, or how poorly, the test-taker as respectively performed on the multiple different formats in the past … may increase test taker grades by aligning test format with the respective talents of various test takers. Other embodiments may decrease test-taker grades by weighting heavily grades on test portions in test formats unfavorable to the respective test-takers (Rodrigue, Abstract).
Re claims 10 – 12, 15:
10. The information processing system according to claim 5, wherein the host terminal recommends at least one of the paper medium and the digital medium based on the recommended learning medium information generated by the external server (Rodrigue, fig. 6, “Essay”, “Multiple Choice”; fig. 7, “Paper Based”, “Computer Based”; fig. 8, “Computer Based”, “Student 4”, “Student 3”, “Paper Based”, “Student 2”, “Student 6”; [0058], “creating an essay (written by hand), making a test in paper, etc.)”; [0052], “There the teacher will be able to see how the student is performing on each subject on a given type of evaluation (computer based…)”; [0037], “the test bias format scores for the three subject matter areas”).
11. The information processing system according to claim 10, wherein the host terminal further has a learning unit that enables learning on the digital medium (McGinley, figs. 5 - 6).
15. The information processing system according to claim 11, wherein in a case where the paper medium is selected as the learning medium, the host terminal obtains a recommended print setting from the external server, the recommended print setting being made for each learning field of the learning content (McGinley, [0087], “The test is then printed from the customer workstation 61 via a customer, on-site, printer 73. Usually the test printout is in a form of an examination booklet including testing instructions, structured sections of questions, and instructions for filling out the student or examinee information, school, class, teacher, school district, state, test number and other data on a bubble sheet 753, i.e., paper multiple choice answer sheet”).
12. The information processing system according to claim 10, further comprising an image formation apparatus that prints on the paper medium (McGinley, [0087], “The test is then printed from the customer workstation 61 via a customer, on-site, printer 73. Usually the test printout is in a form of an examination booklet including testing instructions, structured sections of questions, and instructions for filling out the student or examinee information, school, class, teacher, school district, state, test number and other data on a bubble sheet 753, i.e., paper multiple choice answer sheet”).
Re claims 13 – 14:
McGinley does not explicitly disclose average score for paper test (constructed response) and average score for computer test (multiple choice). Rodrigue teaches 13. The information processing system according to claim 4, wherein the host terminal further has a display unit that displays a first average value of scores on a plurality of answers given to a plurality of tasks included in the learning content using the paper medium and a second average value of scores on a plurality of answers given to the plurality of tasks included in the learning content using the digital medium, and a selection unit that prompts selection of at least one of the paper medium and the digital medium with the first average value and the second average value being displayed by the display unit (Rodrigue, fig. 4, “YOUR RAW SCORE FOR LANGUAGE ARTS ESSAY: 82% YOUR RAW SCORE FOR LANGUAGE ARTS MUL T CHOICE: 82%”; [0056]). Therefore, in view of Rodrigue, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system described in McGinley, by providing the score for paper test (constructed response) and score for computer test (multiple choice) as taught by Rodrigue, so that the teacher lets Student A know about this individualized prospective weighting of test sections in advance so that Student A can adjust her study routine to work the hardest on multiple choice questions, which will be the majority of the basis of her eventual grade. Because Student A studies harder on multiple choice questions, her grades on the multiple choice section and the essay section turn out to be equal-in this example, both 82%-which means that Student A's grade on the test is 82% (Rodrigue, [0042]).
14. The information processing system according to claim 13, further comprising an image formation processing that scans the answers written on the paper medium (McGinley, [0099]; [0104]).
Claims 8 – 9 are rejected under 35 U.S.C. 103 as being unpatentable over McGinley et al. (US 2006/0003306 A1) In view of Rodrigue Bravo et al. (US 2021/0097876 A1, known herein as Rodrigue) as applied to claim 7 above, and further in view of “Remote Assessment Methods and Practices” by NYU, https://www.nyu.edu/faculty/teaching-and-learning-resources/remote-instruction-support/remote-assessment-methods-and-practices.html, from Internet Achieved Wayback Machine; 5/5/2021; known herein as NYU).
Re claims 8 – 9:
McGinley does not explicitly disclose 8. The information processing system according to claim 7, wherein in a case where the answer format is a multiple-choice format, the external server generates the recommended learning medium information indicating that the digital medium is recommended. 9. The information processing system according to claim 7, wherein in a case where the answer format is a description format, the external server generates the recommended learning medium information indicating that the paper medium is recommended.
NYU teaches 8. The information processing system according to claim 7, wherein in a case where the answer format is a multiple-choice format, the external server generates the recommended learning medium information indicating that the digital medium is recommended. 9. The information processing system according to claim 7, wherein in a case where the answer format is a description format, the external server generates the recommended learning medium information indicating that the paper medium is recommended (NYU, pg. 1, “*Paper-based exams … * Exams that require text and non-text responses e.g. math, formulas, equations, drawing, charts, graphs, etc.”; pgs. 4 – 5, “Design the online exam to occupy only the limited time allowed for the exam. The authors select test bank multiple-choice
questions consisting of a mix of theory and problem type questions. After gaining Internet access to the
exam, students have 90 minutes to complete 25 to 40 questions. The goal is for the “A” and “B” students to complete the exam with only a few minutes to spare”). Therefore, in view of NYU, it would have been obvious to one of ordinary skill in the art, before the effective filing date of the claimed invention, to modify the system described in McGinley, by selecting paper and computer-based test based on question type as taught by NYU, since paper-based exams require text and non-text responses e.g. math, formulas, equations, drawing, charts, graphs, etc.; wherein a computer-based multiple choice test can be quickly and efficiently graded by a computer.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JACK YIP whose telephone number is (571)270-5048. The examiner can normally be reached Monday thru Friday; 9:00 AM - 5:00 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, XUAN THAI can be reached at (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JACK YIP/ Primary Examiner, Art Unit 3715
Prosecution Insights