DETAILED ACTION
This office action is in response to Applicant’s submission filed on 9/26/2025. Claims 21, 26, 29 -31, 36, and 39-40 were amended. Claims 22, 32 were canceled in the previous Office Action. Claims 21, 23-31, and 33-40 are pending in the application of which Claims 21, and 31 are independent and have been examined.
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 § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 21, and 31 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claims in question recite: “processing the first query to determine the first query is to be processed by a first component; processing the second query to determine the second query is to be processed by a second component; processing, using the first component, with respect to the first query to determine first response data; … processing, using the second component, with respect to the second query and the value to determine an action responsive to the natural language input; …” , which appears to lack sufficient written description. The corresponding Specification does not disclose “first component”, “second component” . Should applicant disagree, Examiner respectfully request to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Continued Examination Under 37 CFR 1.114
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 9/26/2025 has been entered.
Response to Arguments
Applicant’s arguments and amendments in the RCE filed on 9/26/2025 (herein “Amendment”) with respect to the 35 USC §101 rejection of claims 21, 23-31, and 33-40 raised in the previous office action have been fully considered but are not persuasive. Consequently, 35 U.S.C. 101 rejection is maintained.
Applicant set forth on page 8: “… The instant application is directed to improvements in the technical field of complex natural language input processing.”
Applicant furthers on page 9:” The instant application describes utilizing a trained component (e.g., a classifier) to classify whether a natural language input is a complex natural language input including multiple queries and, only if the input is classified as being complex, determine and process multiple queries in a natural language input.”
Examiner disagrees and like to indicate that all of the steps as claimed can be performed mentally by human. Responding to a complex query is what human do in their daily lives every day. Adding extra element such as a (generic) trained component would not integrates a judicial exception into a practical application. A trained component as recited is nothing more than a generic computer component used to apply a judicial exception.
Examiner fail to see a specific technical solution where human cannot perform mentally. In a complex (two portions example) query, there is a contextual information sharing between the queries and it is considered an ordinary process to use the information or response from the first one to augment or update or prepare the response for the second query. Furthermore, the newly added limitation, where the first portion may necessitate searching or digging up for response would still be in the realm of mental process/activity since human would also carry the same step. Furthermore, classifying the second portion can be argued that human can also do the same process or step as well.
Lastly, Applicant continues on the same page (9):” This excessively utilized computing resources when a received natural language input did not have multiple queries.”
Examiner: Claiming excessive utilization of computing resources is not, by itself, a valid basis for a patent eligibility rejection. Instead, the key focus should be on whether the claim describes a technological solution that improves the functioning of a computer or another technology. For example, a claim for a method that "analyzes a massive dataset" to find correlations would be abstract unless it specifies a new, specific, or technical way of analyzing the data.
Per MPEP 2106.04(d)(1): “The disclosed improvement should not be discussed in a general or conclusory manner.…” “For improvements to a particular field of technology- the claim must include the components or steps of the invention that provide the improvement described in the specification. The claim itself does not need to explicitly recite the improvement described in the specification (e.g., "thereby increasing the bandwidth of the channel").”
Furthermore, the “improvements” consideration under 2A, one should consider whether a claim integrates a judicial exception into a practical application, by considering whether the claimed invention pertains to an improvement in:
the functioning of the computer itself or,
any other technology or technical field.
consideration on whether the claim pertains to an improvement to technology instead of an improvement to the abstract idea itself.
As for item (1), it is not clear how processing a compound query can improve the functioning of the computer itself. Regarding item (2), examiner fails to see what other technology or technical field has been impacted or improved by the instant application. As noted earlier, processing a compound (multiple) queries are what human would do in their daily activities. Regarding item (3), examiner does not see that the claims of the instant application pertain to an improvement to a technology.
As per Charles Kim Memorandum issue on August 4, 2025, examiners are required in the case of a “close call” as to whether a claim is eligible, they should only make a rejection when it is more likely than not (i.e. more than 50%) that the claim is ineligible under 35 U.S.C. 101. As for this application, Examiner, does not believe we are at the tipping point and claim is directed toward the mental process grouping.
Consequently, considering the above, 101 rejection is maintained. See the guidance on improvements in MPEP 2106.04(a) and 2106.05(a). Furthermore, applicant is suggested to review “2024 Guidance Update on Patent Subject Matter Eligibility, Including on Artificial Intelligence” specially claim 2 where it finds even a trained ANN as ineligible.
Therefore, while all of the Applicant’s arguments and amendments filed in the Amendment with respect to USC §101, have been fully considered, they are not persuasive. Please see below for more detail including updated 101 rejection rationale.
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 21, 23 – 31, 33 - 40 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. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The flowchart in MPEP 2106, subsection III, is used to determine whether a claim satisfies the criteria for subject matter eligibility. For analysis purposes, one can follow the flowchart for subject matter eligibility.
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Step 1: The independent Claims is directed to statutory categories:
Step 1: Abstract Idea Groupings – MPEP 2106.04(a)(2)
The enumerated groupings of abstract ideas are defined as:
1) Mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations (see MPEP § 2106.04(a)(2), subsection I);
2) Certain methods of organizing human activity – fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) (see MPEP § 2106.04(a)(2), subsection II); and
3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).
Claim 21 is a method claim and directed to the process category of patentable subject matter.
Claim 31 is a system claim and directed to the machine or manufacture category of patentable subject matter.
Step 2A is a two-prong test.
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Step 2A, Prong One: Does the Claim recite a Judicially Recognized Exception? Abstract Idea? Are these Claims nevertheless considered Abstract as a Mathematical Concept (mathematical relationships, mathematical formulas or equations, mathematical calculations), Mental Process (concepts performed in the human mind (including an observation, evaluation, judgment, opinion), or Certain Methods of Organizing Human Activity (1-fundamental economic principles or practices (including hedging, insurance, mitigating risk), 2-commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), 3- managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) and fall under the judicial exception to patentable subject matter?)
The rejected Claims recite Mental Processes or Methods of Organizing Human Activity.
Step 2A, Prong Two: Additional Elements that Integrate the Judicial Exception into a Practical Application? Identifying whether there are any additional elements recited in the claim beyond the judicial exception(s), and evaluating those additional elements to determine whether they integrate the exception into a practical application of the exception. “Integration into a practical application” requires an additional element(s) or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. Uses the considerations laid out by the Supreme Court and the Federal Circuit to evaluate whether the judicial exception is integrated into a practical application.
The rejected Claims do not include additional limitations that point to integration of the abstract idea into a practical application. Accordingly, the rejected Claims are directed to the abstract idea that they recite.
Claim 21 is a generic automation of a mental process since a human agent can receive, determine, process, causing, evaluate, etc. Other than the mental process under the BRI, there is only the mention of a trained Model, which is considered to be generic processor. Trained Model is not invented nor improved by the applicant, and as such it is considered a generic processor/computer due to lack of specificity. With such a generic extra element, one cannot identify anything that can be relied upon as an improvement. Prong 2 of step 2A, in the 101 analysis, asks whether the abstract idea is integrated into a practical application. The answer is no in this instance because there is no technological solution in the Claim that “integrates” the abstract idea. The Claim only suggests that the abstract idea be applied. It does not describe an application.
Claim 21:
A computer-implemented method, comprising:
receiving first data representing a natural language input; [This is merely amount to a data gathering activity, by way of collecting information data related to a spoken language which a human agent can attentively listen and write it down on a piece of paper with a pen.]
using a trained component, determining the natural language input includes multiple queries, [This involves in determining that the input is composed of multiple portions, which can be considered as a mental exercise/process, where an input is divided into multiple queries/portions if warranted. The additional element of trained component does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea.]
wherein the trained component is configured using at least a first example natural language input including multiple queries and at least a second example natural language input including a single query; [This is similar to the previous limitation, where a human can determine if the natural language written down on the paper is of a single or multiple queries. Furthermore, the additional element of trained component does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea.]
based on the trained component determining the natural language input includes multiple queries, [This is amount to analyze the written query and determine that the query contains multiple (sub) queries, which is a mental process, since human can perform the same steps.]
determining that the natural language input corresponds to a first query and a second query, the first query represented by a first portion of the natural language input and the second query represented by a second portion of the natural language input; [Human can identify the first portion (subquery) is represented by the first query and similarly for the second portion, of which it is a mental process.]
processing the first query to determine the first query is to be processed by a first component; [Human can process/identify the nature of the first portion/query and decide what it takes to prepare response for it. The additional element of first component does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea.]
processing the second query to determine the second query is to be processed by a second component; [ Similarly, human can process/identify the nature of the second portion/query and decide what it takes to prepare response for it. The additional element of second component does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea.]
processing, using the first component, with respect to the first query to determine first response data; ; [Human can analyze the first portion and provide/determine answer/response to it. The additional element of first component does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea.]
determining, using the first response data, a value for a variable of the second query; [Human, can use the response of the first query as an inference to provide answer for the second query.]
processing, using the second component, with respect to the second query and the value to determine, an action responsive to the natural language input; and [Using the second query and the determine response for the inputted query, and perform an action appropriate to the query can be identified, which is considered mental process. The additional element of second component does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea.]
causing the action to be performed. [ Human can fulfil the response by performing the action appropriate to the query]
These limitations, under their broadest reasonable interpretation, cover performance of the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “Trained Component”, “processors”, and “memory” nothing in the claim element precludes the step from practically being performed in the mind. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements of using a “Trained Component”, “processors”, and “memory” to perform all of the above-mentioned steps. The use of a “Trained Component”, and “processors” is recited at a high-level of generality (i.e., as a generic computer/processor device performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component See MPEP2106.05(f) Mere Instructions to Apply an Exception [R-10.2019].
Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B: Search for Inventive Concept: Additional Element Do not amount to Significantly More: The limitations of "determining using a trained component, the natural language input,” is a well-understood, routine, and conventional machine components that and are being used for their well-understood, routine, and conventional and rather generic functions. Additionally, these limitations are expressed parenthetically and lack nexus to the claim language and as such are a separable and divisible mention to a machine. Merely reciting trained component without significantly more appears to be equivalent to a generic computer/processor to process a task that a human can process in their mind or with the aid of a paper/pen.
As mentioned, the only additional element to be considered, is the recitation of trained component. However, according to the as-filed specification Par. 0118, 0119, and 0151, it disavows specificity for the trained component used and referenced to “may include one or more machine learning models, including but not limited to, one or more neural networks, one or more probabilistic graphs, one or more decision trees, and others.”, which is attestation for trained component to be a generic model/component. Therefore, the cited additional element of trained component does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Accordingly, it is not sufficient to cause the Claim, as a whole, to amount to significantly/substantially more than the underlying abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements of using a “trained component”, “processors”, and “memory” to perform all of the above-mentioned steps. The use of a “trained component”, and “processors” is recited at a high-level of generality (i.e., as a generic computer/processor device performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component See MPEP2106.05(f) Mere Instructions to Apply an Exception [R-10.2019]. Also, in case of trained component, it is described in a broad manner such that it could include techniques that may be performed by a human, like a rule-based learning for example. The additional element of a “processor” and “memory, as cited the US PGPUB version of the as-filed specification in paragraphs 0192, 0193, 0197, and 0202 of the instant application appears to disclose a general-purpose computer component which are well-understood, routine and conventional elements. The use of an “computer and/or components of a computer” is recited at a high-level of generality (i.e., as a generic computer device performing a generic computer function of capturing input data, storing data and retrieval data) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
With respect to independent Claim 31, the additional component is a processor and memory which are not sufficient to make the claim as a whole to amount to substantially more than the underlying abstract idea.
The dependent claims do not add limitations that would either integrate the recited abstract idea into a practical application or could help the Claim as a whole to amount to significantly more than the Abstract idea identified for the Independent Claim:
Claims 23 and 33, recite: “… performing automatic speech recognition (ASR) processing on the audio data to generate ASR output data representing an ASR hypothesis; processing the ASR output data using the trained component to determine the natural language input corresponds to multiple queries; and using the ASR hypothesis to determine the first portion of the natural language input corresponding to the first query.” Human can attentively listen and note on a piece of paper as he hears the flow of utterance. This constitutes the ASR output data which also represent the hypothesis since human can transcribe the utterance as well. Even if the environmental condition affects the hearing ability of the human, then he can note down what could be the potential utterance (multiple versions) which represent the hypothesis of the utterance he heard. Human can relate each portion of the text he wrote down the respective portion of the utterance. The only additional elements are the recitation of “trained component”, and “automatic speech recognition” which in essence nothing more than a generic computer carrying the determination processing steps. Furthermore, an ASR is a "well-known routine and conventional" algorithm. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claims directed toward abstract idea. The claims are not patent eligible.
Claims 24 and 34, recite: “… determining that intent classification processing of the first data is likely to result in output failing to satisfy a threshold condition.” Human can identify the intent of the utterance he has heard and can classify or group the intent under proper grouping and if the intent determination is not with high confidence, he can declare it as such. All of these steps can be performed in the mind (mental process) and/or using a pen and paper. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim directed toward abstract idea. The claims are not patent eligible.
Claims 25 and 35, recite: “… determining a first semantic tag corresponding to the first portion of the natural language input; and determining a second semantic tag corresponding to the second portion of the natural language input, wherein determining the natural language input corresponds to the first query and the second query is based at least in part on the first semantic tag and the second semantic tag.” Human can write down the utterance and split it into two (or more) portions and based on the meaning of each portion add a label to each portion and identify the respective meaning/semantic label. Finally, the combination of the semantic labels would represent the original utterance. All of these steps can be performed in the mind (mental process) and/or using a pen and paper. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim directed toward abstract idea. The claims are not patent eligible.
Claims 26 and 36, recite:” … determining the first query corresponds to information retrieval processing, wherein the first component is configured to perform information retrieval processing; and performing information retrieval processing to determine the first response data, wherein the first response data represents an entity corresponding to the first query.” Human can decide that the first portion of the utterance relates to a query that needs additional information which he needs to fetch from other resources such as database or people. Consequently, he can obtain the required information from the resources he has access to. Finally, he can determine that the response is involved with the entity embedded in the first portion. All of these steps can be performed in the mind (mental process) and/or using a pen and paper. The additional element of first component does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim directed toward abstract idea. The claims are not patent eligible.
Claims 27 and 37, recite:” … determining entity data corresponding to the entity, wherein the action is based at least in part on the entity data.” Similarly, human can associate the entity information with the respective entity and determine that the result or output is partly associated with the entity in question. All of these steps can be performed in the mind (mental process) and/or using a pen and paper. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim directed toward abstract idea. The claims are not patent eligible.
Claims 28 and 38, recite: “… determining entity data corresponding to the entity; determining the entity data corresponds to the variable of the second query; and populating the variable using the entity data for purposes of determining the action.” Human can put down the two portions and if there is an unknown element leave it blank and try to populate it with appropriate information. As mention in the previous claim human can associate entity information with the entity. Furthermore, if the gap or the unfilled spot is in the second portion, he can identify that and finally fill or populate the gap with the appropriate information such as correct entity. Subsequently determining an appropriate action accordingly. All of these steps can be performed in the mind (mental process) and/or using a pen and paper. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim directed toward abstract idea. The claims are not patent eligible.
Claims 29 and 39, recite:” … generating a graph representation comprising: first node data corresponding to the first portion of the natural language input, second node data corresponding to the second portion of the natural language input, and connection data representing a result of processing of the first node data is to be used to update the second node data, wherein populating the variable comprises generating the updated second node data by replacing data representing the variable, in the second node data, with the entity data.” Human can provide a pictorial representation of utterance, by first splitting the utterance in n number pieces and provide the key component of the information as node and make connection between any two nodes based on their relationship (edge). Similarly based on the graph produced (knowledge graph) he can fill or populate the missing information. All of these steps can be performed in the mind (mental process) and/or using a pen and paper. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim directed toward abstract idea. The claims are not patent eligible.
Claims 30 and 40, recite:” … wherein the second component is configured to perform intent classification, and processing, using the second component, with respect to the second query and the value to determine the action responsive to the natural language input comprises: performing intent classification using the second component to determine intent data; and determining the action based at least in part on the intent data.” Human can use the query generated from the utterance he heard and separate first and second query of the compound query. Subsequently, he can classify the intent of the second query (a mental process activity) and assign intent data/information to the given query. Based on the intent information decide the appropriate action. All of these steps can be performed in the mind (mental process) and/or using a pen and paper. The additional element of second component does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing of the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim directed toward abstract idea. The claims are not patent eligible.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure. Ramachandra Iyer (US20190163838A1) where he teaches in Par. 0036:” In an embodiment, the one or more sub-queries 106 may be created by the response generation system 101 by splitting the multimodal user queries 105. Initially, the response generation system 101 may analyze the multimodal user queries 105, which is in the form of natural language, using one or more Natural Language Processing techniques to identify one or more distinct contexts in the multimodal user queries 105. Thereafter, the response generation system 101 may split the multimodal user queries 105 into the one or more sub-queries 106, such that, each of the one or more sub-queries 106 indicate distinct contexts of the multimodal user queries 105."
Examiner's Note: Examiner has cited particular columns and line numbers and/or paragraph numbers in the references applied to the claims above for the convenience of the applicant. Although the specified citations are representative of the teachings of the art and are applied to specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested from the applicant in preparing responses, to fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the Examiner.
In the case of amending the Claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DARIOUSH AGAHI whose telephone number is (408)918-7689. The examiner can normally be reached Monday - Thursday and alternate Fridays, 7:30-4:30 PT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Bhavesh Mehta can be reached on 571-272-7453. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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DARIOUSH AGAHI, P.E.
Primary Examiner
/DARIOUSH AGAHI/Primary Examiner, Art Unit 2656