DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16th, 2013 is being examined under the first inventor to file provisions of the AIA .
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 05/04/2026 has been entered.
The status of the claims is as follows.
Claims 1, 8, and 15 are amended and Claims 4-5, 11-12 and 18-19 are cancelled. Claims 1-3, 6-10, 13-17, and 20 are currently pending.
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, 6-10, 13-17, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Regarding Claim 1,
(Step 1): Claim 1 recites a system comprising at least one hardware processor, thus a machine, one of the four statutory categories of patentable subject matter.
(Step 2A Prong 1): However, Claim 1 further recites to train a next response prediction (NRP) machine learning model on a training dataset comprising a plurality of entries which falls in the mathematical concept grouping of abstract ideas;
apply … to determine a level of significance of each utterance in the dialog with respect to performing an NRP task over the dialog, which constitutes the evaluation of each utterance in the dialog within the context of a given NRP task in order to determine a level of significance to assign to each utterance, thus corresponding to a mental process which can be done mentally or by pen and paper;
predicting … a next utterance at a specified point in the dialog which constitutes the evaluation of the dialog at specified points to determine a prediction of the next utterance relative to specified point, thus corresponding to a mental process which can be done mentally or by pen and paper;
determining the level of significance comprises: executing … to generate a first prediction probability for a target utterance which constitutes the evaluation of the dialog containing a select utterance to determine a first probability associated with predicting the target utterance given the dialog, thus corresponding to a mental process which can be done mentally or by pen and paper;
modifying the input dialog context by removing the utterance; re-executing … on the modified input dialog context to generate a second prediction probability for the target utterance; which constitutes the evaluation of the dialog without the select utterance to determine a second probability associated with predicting the target utterance given the modified dialog, thus corresponding to a mental process which can be done mentally or by pen and paper;
computing a difference between the first prediction probability and the second prediction probability as the level of significance of the utterance, which constitutes the evaluation of the two probabilities to determine a computed difference, thus corresponding to a mental process which can be done mentally or by pen and paper;
assign a score to each of the utterances in the dialog, based, at least in part, on the determined level of significance, which constitutes the evaluation of the determined level of significance of each utterance to determine each utterance’s assigned score, thus corresponding to a mental process which can be done mentally or by pen and paper;
and select one or more of the utterances for inclusion in an extractive summarization of the dialog, based, at least in part, on the assigned scores, which constitutes the evaluation of the assigned scores to determine a selection of utterances, thus corresponding to a mental process which can be done mentally or by pen and paper. Thus, Claim 1 recites an abstract idea.
(Step 2A Prong 2): The claim does not recite any additional elements which integrate the abstract idea into a practical application, because the additional elements consist of:
a) at least one hardware processor and a non-transitory computer-readable storage having stored thereon program instructions, the program instructions executable by the at least one hardware processor to:, which is implementing an abstract idea on generic computer components (MPEP 2106.05(f))
b) receive, as input, a two-party multi-turn dialog which is insignificant extra-solution activity of data collection (MPEP 2106.05(g))
c) apply the trained NRP machine learning model to the dialog to …, which is implementing an abstract idea on generic computer components (MPEP 2106.05(f))
d) via the trained NRP machine learning model from a provided set of candidate utterances, which is implementing an abstract idea on generic computer components (MPEP 2106.05(f))
e) based on an input dialog context comprising a sequence of utterances appearing in the dialog before the specified point, which merely recites the particular technological environment or field of use in which the abstract idea is to be performed (MPEP 2106.05(h))
f) executing the trained NRP machine learning model on the input dialog …, which is implementing an abstract idea on generic computer components (MPEP 2106.05(f))
g) re-executing the trained NRP machine learning model on the input dialog …, which is implementing an abstract idea on generic computer components (MPEP 2106.05(f))
and thus, the claim is directed to the abstract idea of determining and arbitrarily scoring the significance of utterances in a dialog, as well as selecting utterances for inclusion in an extractive summary depending on their score.
(Step 2B): The additional elements, taken alone or in combination, cannot provide significantly more than the abstract idea itself, because element a), c), d), f) and g) (via MPEP 2106.05(f), “apply it on a computer”) cannot provide an inventive concept, element b) is well-understood, routine, and conventional (by MPEP 2106.05(d), “transmitting or receiving data over a network”), and element e) (via MPEP 2106.05(h)) cannot integrate the abstract idea into a practical application or provide significantly more than the abstract idea itself. Thus, Claim 1 is subject-matter ineligible.
Claims 2 and 7, dependent upon Claim 1, merely recite the particular technological environment or field of use in which the abstract idea is to be performed, i.e., customer service field of use and data used in the mental processes, which by MPEP 2106.05(h) cannot integrate the abstract idea into a practical application or provide significantly more than the abstract idea itself.
Claims 3 and 6, dependent upon Claim 1, merely recite additional steps of the abstract idea (Claim 3: predicting previous utterances at a specified point in the dialog; Claim 6: selecting utterances with score exceeding a threshold) but no new additional elements (MPEP 2106.05(f); Claim 6 only repeats the selecting/”apply it on a computer” limitation of Claim 1) and thus no new additional elements which, alone or in combination, could integrate the abstract idea into a practical application or provide significantly more than the abstract idea itself.
Claims 8-10, 13-14 recite the method performed by the system of Claims 1-3, 6 and 7, and are thus rejected for reasons set forth in the rejection of Claims 1-3, 6 and 7, respectively. Similarly, Claims 15-17, 20 recite a computer program product comprising the non-transitory computer readable medium of Claims 1-3, and 7 respectively, and are thus rejected for reasons set forth in the rejection of Claims 1-3 and 7, respectively.
Response to Arguments
The Examiner acknowledges the Applicant’s amendments to Claims 1, 8, and 15.
Applicant’s arguments filed May 4th, 2026, traversing the rejection of claims 1-3, 6-10, 13-17, and 20 under 35 U.S.C. § 101 have been fully considered, but are not fully persuasive.
Applicant alleges, on pages 10 and 11 of the Remarks, that the claimed advance of independent claims 1, 8, and 15, as amended, recite limitations that cannot be performed in the human mind, nor do they merely reflect mental processes. Rather, they require trained machine learning models, probabilistic inference, controlled input perturbation, and comparative re-execution of the trained model. A human cannot "mentally" re-run a trained NRP model, generate probabilistic outputs, or compute probability degradation resulting from systematic removal of dialog inputs. Accordingly, the amended claims do not fall within the "mental process" grouping of abstract ideas.
Examiner respectfully disagrees. Examiner maintains that mere application of the trained NRP machine learning model does not mean applicant’s limitations do not constitute a mental process. Applicant’s recited limitations, as amended, are still centered around the abstract idea of determining a level of significance of utterances in the dialog in the given context of a select NRP task. One could mentally assign different scores for each utterance in a given passage representative of their potential importance to the dialog’s meaning, such as mentally noting that certain utterances (filler words, for example) are to be assigned lower scores. Simply “applying the trained NRP machine learning model” to execute the abstract idea constitutes the additional element of implementing aforementioned abstract idea on generic computing components (via MPEP 2106.05(f), “apply it on a computer”). As a result, inferencing by a machine learning model over a given input dialog to output a level of significance is simply the mental process abstract idea of determining an outputted level of significance by analyzing utterances in the dialog with respect to performing the NRP task. Further limitations are directed to the abstract idea of evaluating the input dialog context given the inclusion of a target utterance to determine a first and second prediction probability, wherein the prediction probability is generated by the trained NRP machine learning model. One could reasonably read over a dialog once with the select utterance included and once with the select utterance removed to determine in each situation the likelihood they could correctly guess the target next utterance. Thus, such evaluation of the dialogues including and excluding a select utterance to determine the probability of predicting the target utterance in each situation falls under the mental process evaluation grouping of abstract ideas. Again, execution of such an abstract idea through specifically a trained NRP machine learning model constitutes the additional element of implementing aforementioned abstract idea on generic computing components (via MPEP 2106.05(f), “apply it on a computer”).
Applicant alleges, on page 11 of the Remarks, that the claimed advance of independent claims 1, 8, and 15, as amended, recite limitations that integrate the alleged abstract idea into practical application.
Examiner respectfully disagrees. Examiner notes that applicant’s recited improvements in technology may be recited in the specification, but that current claim language fails to recite such improvements. Applicant claims recited improvements such as (1) identifying salient dialog utterances based on measured degradation int rained model prediction performance in order to (2) improve automated extractive summarization extractive summarization accuracy and thus (3) quantify influence via NRP model-derived probability decline, however such intended improvements are not positively recited in the claim language.
Applicant alleges, on page 12 of the Remarks, that the amended claims recite an inventive concept due to the limitations not being well understood, routine, or conventional.
Examiner respectfully disagrees. The claim language as amended simply recites an abstract idea of determining and arbitrarily scoring the significance of utterances in a dialog, as well as selecting utterances for inclusion in an extractive summary depending on their score. The remaining additional elements consist of:
a) at least one hardware processor and a non-transitory computer-readable storage having stored thereon program instructions, the program instructions executable by the at least one hardware processor to:, which is implementing an abstract idea on generic computer components (MPEP 2106.05(f))
b) receive, as input, a two-party multi-turn dialog which is insignificant extra-solution activity of data collection (MPEP 2106.05(g))
c) apply the trained NRP machine learning model to the dialog to …, which is implementing an abstract idea on generic computer components (MPEP 2106.05(f))
d) via the trained NRP machine learning model from a provided set of candidate utterances, which is implementing an abstract idea on generic computer components (MPEP 2106.05(f))
e) based on an input dialog context comprising a sequence of utterances appearing in the dialog before the specified point, which merely recites the particular technological environment or field of use in which the abstract idea is to be performed (MPEP 2106.05(h))
f) executing the trained NRP machine learning model on the input dialog …, which is implementing an abstract idea on generic computer components (MPEP 2106.05(f))
g) re-executing the trained NRP machine learning model on the input dialog …, which is implementing an abstract idea on generic computer components (MPEP 2106.05(f))
The additional elements a), c), d), f) and g) are well understood, routine and conventional via MPEP 2106.05(f), “apply it on a computer”, element b) via MPEP 2106.05(d), “transmitting or receiving data over a network”, and element e) via MPEP 2106.05(h)). Thus, Claim 1 is subject-matter ineligible.
The rejection of Claim 1 under 35 U.S.C. § 101 has been maintained. Similarly, the rejection of Claims 8 and 15 under 35 U.S.C. § 101 have been maintained.
The rejection of Claims 2-3 and 6-7 under 35 U.S.C. § 101, which depend directly or indirectly from Claim 1, have been maintained. The rejection of Claims 9-10 and 13-14, which depend directly or indirectly from Claim 8, have been maintained. Rejection of Claims 16-17 and 20, under 35 U.S.C. § 101, which depend directly or indirectly from Claim 15, have been maintained.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JONATHAN J KIM whose telephone number is (571) 272-0523. The examiner can normally be reached 9-6.
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/JONATHAN J KIM/Examiner, Art Unit 2141
/MATTHEW ELL/Supervisory Patent Examiner, Art Unit 2141
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