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 .
Detailed Action
This Final Office Action is in response to Applicant’s filing of 11/19/2025.
The effective filing date of the present application is 08/13/2021.
Claims 1 – 20 are pending.
Response to Amendment
Applicant's reply and remarks of 11/19/2025 have been entered.
The examiner will address applicant's remarks at the end of this office action.
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 9 – 12 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.
Claims 9 – 11 each recite the limitation "...the request..." in respective recitations back to the method of claim 1. There is insufficient antecedent basis for this limitation in the claim. Amended claim 1 does not define a request.
Claims 10 and 12 recites the limitation "...the author..." in respective recitations back to the method of claim 1. There is insufficient antecedent basis for this limitation in the claim. Amended claim 1 does not define an author.
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.
At Step 1 of eligibility analysis, the claims recite a method and a system; thus, all claims fall within one of the four statutory categories as required.
At Step 2A, Prong One, of eligibility analysis, the claims set forth a method for generating an ordered conversation from predefined blocks in order to interact with a backend system; they describe a user interacting (conversing) via an interface with a computer. As recited, the claims describe a “method to facilitate messaging between a plurality of users”. A conversation (messages) or an interaction are examples of social activities, (herein, for a plurality of users). Thus, the claims describe managing personal behavior or relationships or interactions between people. This is a sub-grouping of certain methods of organizing human activity and an abstract idea. The Examiner notes that the above sub-grouping encompasses both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people, and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the “certain methods of organizing human activity” grouping. The number of people involved in the activity is not dispositive as to whether a claim limitation falls within this grouping. Instead, the determination should be based on whether the activity itself falls within one of the sub-groupings. The activity identified earlier to be a method for generating an ordered conversation from predefined blocks in order to interact with a backend system. Therefore, the Examiner has concluded the claims recite the identified judicial exception.
Claim 1, which is illustrative of claims 13 and 17, contains those elements that define these abstract ideas, (and are highlighted below):
A method, comprising: receiving, as an input to a software-implemented graphical programming environment to be executed by at least one processor, a definition of a trigger event for a conversation script, wherein the graphical programming environment identifies an extension to associate with the definition from a collection of extensions, wherein the extension comprises executable logic to generate and provide an input to a backend software system;
accessing, using the graphical programming environment, a database to identify a set of pre-defined conversation blocks based at least in part on the definition of the trigger event,
displaying, in a user interface of the graphical programming environment, the set of conversation blocks for user selection in the user interface of the graphical programming environment, wherein conversation blocks in the set of conversation blocks correspond to respective reusable blocks of executable code to implement respective portions of a transaction flow;
receiving, through the user interface of the graphical programming environment, a selection of a plurality of conversation blocks from the set of conversation blocks;
receiving, through the user interface of the graphical programming environment, configurations for one or more of the plurality of conversation blocks; and
receiving, through the user interface of the graphical programming environment, a definition of an ordering of the plurality of conversation blocks to define an automation flow for a transaction; and
generating, by the graphical programming environment, a conversation script from (i) the definition of the trigger, (ii) the selection of the plurality of conversation blocks, (iiii) the configurations for the one or more of the plurality of conversation blocks, and (iv) the definition of the ordering, wherein the conversation script incorporates the respective reusable blocks of executable code associated with the plurality of conversation blocks, and the conversation script is generated to interoperate with a messaging application, wherein the messaging application is to facilitate digital messaging between a plurality of users, the messaging application receives a message from a human user through a user interface of the messaging application, and the conversation script is to parse the message and use the message to: autonomously initiate the automation flow of the transaction with a backend software system based on content of the message to generate a result from the backend software system for presentation to one or more human users in the messaging application.
At Step 2A, Prong Two, of analysis, the Examiner has determined that the identified abstract idea (judicial exception) is not integrated into a practical application because the additional elements are merely instructions to apply the abstract idea to a computer, as described in MPEP 2106.05(f). Further, in MPEP 2106.05(f) it is noted that "[use] of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general-purpose computer or computer components after the fact to an abstract idea does not integrate a judicial exception into a practical application or provide significantly more.” Therefore, according to the MPEP, this is not solely limited to computers but includes other technology that, recited in an equivalent to “apply it,” is a mere instruction to perform the abstract idea on that technology.
Claims 1, 13, and 17, recite only the following additional elements:
a software-implemented graphical programming environment to be executed by at least one processor;
a collection of extensions; wherein the extension comprises executable logic to generate and provide an input to a backend software system;
reusable blocks of executable code to implement respective portions of a transaction flow;
user interface of the graphical programming environment;
a messaging application, wherein the messaging application is to facilitate digital messaging;
one or more non-transitory computer-readable media comprising instructions;
memory;
one or more processors.
These elements are merely instructions to apply the abstract idea to a computer, per MPEP 2106.05(f). Applicant has only described generic computing elements in their disclosure, at Specification [0247 – 0258] and Figure 1. Notably disclosed is: “In general, servers and other computing devices of backend system 5604 or application server 5606 may include electronic computing devices operable to receive, transmit, process, store, or manage data and information associated with system 5600.” See [0251]. Further, the claims aptly describe an interaction occurring between a plurality of users to be performed using the generically defined devices detailed above. “The system 100 may allow a person to initiate (e.g., via a channel 114) a conversation between the person and one or more other people and/or one or more computing systems (e.g., backend systems 116).” Therefore, the claims are fittingly directed to the abstract idea.
At Step 2B of analysis, the Examiner has determined that the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exceptions because they do not amount to more than simply instructing one to practice the abstract idea by using generically recited devices to perform the steps that define the abstract ideas. As discussed above, the additional elements of (a software-implemented graphical programming environment to be executed by at least one processor; a collection of extensions; wherein the extension comprises executable logic to generate and provide an input to a backend software system; reusable blocks of executable code to implement respective portions of a transaction flow; user interface; a messaging application to facilitate digital messaging; one or more non-transitory computer-readable media comprising instructions; memory; one or more processors), are recited at a high level of generality and are instructions to apply the exception on a computer. See MPEP 2106.05(f).
Dependent claims 2, 4, 5, 14, 16, 18, and 20, contain limitations that are further recitations to the same abstract idea found in claims 1, 13, and 17. References to conversation blocks are further recitations to one of a plurality of users participating in (interacting) generating a conversation. Furthermore, these claims include recitations that amount to no more than using a computer as a tool to perform the abstract idea, utilizing an interface, program flow and a backend system. This does not render the claims as being patent eligible. See MPEP 2106.04(d) and 2106.05(f).
Dependent claims 3, 6 – 8, 10 – 12, 15, and 19, contain limitations that are further recitations to the same abstract idea found in claim 1. References to extensions comprising logic, API calls, robotic automation scripts, an interface (and displaying on an interface), a messaging app, and a backend system, are further recitations to the broadly defined computer invoked to perform the abstract idea. This does not render the claims as being patent eligible. See MPEP 2106.04(d) and 2106.05(f).
Dependent claim 9 contains a limitation that is a further recitation to the same abstract idea found in claim 1. A reference to a catalog for an organization is a further recitation to facets of the conversation used by the user (a member of the organization) and utilizes a computer environment to perform the abstract idea. This does not render the claims as being patent eligible. See MPEP 2106.04(d).
Therefore, for the reasons cited above, claims 1 – 20 are directed to an abstract idea without integration into a practical application and without reciting significantly more.
Claims Distinguished over Prior Art
Regarding newly amended claims; prior art does not teach nor suggest a system or method as claimed. Based upon the amendments to the claims and upon further search, the Examiner maintains the conclusion discussed within the Office Action filed 05/19/2025. Accordingly, all pending claims continue to be distinguished over prior art.
Noting that patentability of any claimed invention under 35 U.S.C. §§ 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101, the Examiner points to other rejections within this Office Action.
Response to Arguments
Applicant's arguments filed 11/19/2025 have been fully considered but they are not persuasive. Applicant first discusses rejection of all prior claims under 35 U.S.C. § 101. See page 1 of Remarks. Applicant argues the claims are “…directed to a specific technological improvement, namely, enhancing the functionality of messaging applications (e.g., applications similar to popular applications such as Slack, Teams, WhatsApp, etc.) with custom-generated conversation scripts.” See page 2. Applicant adds that “…the claims are more specifically related to the use of a specialized graphical programming system that enables the custom generation of such specialized conversation scripts, where the graphical programming system generates these specialized executables in an autonomous manner…” Page 2. Based on the reasoning that follows, the Examiner respectfully disagrees with Applicant’s arguments.
Analysis at Step 2A, Prong Two, distinguishes claims that are “directed to” the recited judicial exception from claims that are not “directed to” the recited judicial exception. Evaluation at Prong Two requires the use of the considerations (e.g. improving technology, effecting a particular treatment or prophylaxis, implementing with a particular machine, etc.). Further, the Prong Two analysis considers the claim as a whole. That is, the limitations containing the judicial exception as well as the additional elements in the claim besides the judicial exception need to be evaluated together to determine whether the claim integrates the judicial exception into a practical application.
Applicant has only described generic computing elements in their disclosure, (not a specialized programming system as argued). See Specification [0247 – 0258]. Notably disclosed is: “In general, servers and other computing devices of backend system 5604 or application server 5606 may include electronic computing devices operable to receive, transmit, process, store, or manage data and information associated with system 5600.” See [0251]. Adding the use of popular applications such as Slack, Teams, WhatsApp, etc., further serve to show how the method can be performed in a generic computer environment, identified at MPEP 2106.04, as Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea. Applicant’s arguments are not persuasive.
Applicant next argues that the claims are clearly directed to a purely technological solution that specifically arises out of computing technology, and adds, the claimed solution “clearly enhances the functionality of computing technology…”. Page 2. This argument is not persuasive. Applicant has not disclosed, defined, or introduced any technological problem that the claimed invention provides a technical improvement for. Applicant’s claims seek to perform a method of generating a conversation script, and utilizes a generic computer environment, identified above. As a result, the claims are mere instructions to apply the abstract idea to a computer. Because the Specification does not set forth any improvement to the disclosed technology, and the claims do not recite any steps or components that may show any improvement to this technology, the Examiner must conclude the claims do not show an improvement to technology.
Applicant next argues that the claims provide an inventive concept. See page 3. Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself. As detailed above, the additional elements of are recited at a high level of generality and are instructions to apply the exception on a computer. See MPEP 2106.05(f). Applicant’s argument is not persuasive.
Applicant adds a remark that the claims nonetheless provide an inventive concept as evidenced by “the Office Action’s own acknowledgment that the claims recite subject matter distinguished over the prior art.” The Examiner respectfully disagrees with Applicant and finds this argument not persuasive and misplaced. “Nor is it enough for subject matter eligibility that claimed techniques be novel and nonobvious in light of prior art, passing muster under 35 U.S.C. §§ 102 and 103.” See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 89–90 (2012). “The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty.” SAP AMERICA, INC. v. INVESTPIC, LLC 3. Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1315 (Fed. Cir. 2016).
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DON EDMONDS whose telephone number is (571) 272-6171. The examiner can normally be reached M-F 8am-4pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Sarah Monfeldt can be reached at (571) 270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SARAH M MONFELDT/Supervisory Patent Examiner, Art Unit 3629
DONALD J. EDMONDS
Examiner
Art Unit 3629