DETAILED ACTION
Introduction
1. This office action is in response to Applicant’s submission filed on 10/17/2025. Claims 1-14 are pending in the application and have been examined.
Notice of Pre-AIA or AIA Status
2. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
3. The Appeal Brief filed 10/17/2025 has been entered and fully considered. Applicant’s arguments with respect to the rejections under 35 USC 101 and 35 USC 103 are not found persuasive for the following reasons.
With regard to the rejection under 35 USC 101, applicant argues that the claims are not directed to an abstract idea, because they cannot all be done in the human mind. However, if they can be done with the human mind, and pencil and paper, the claims recite an abstract idea. Further, reciting hardware components at a high-level of generality such that the claim amounts no more than mere instructions to apply the exception using a generic computer component do not tie the abstract idea to a practical application. Accordingly, the rejection under 35 USC 101 is maintained.
With regard to the rejection under 35 USC 103, the arguments presented are rendered moot based on the new ground of rejection based on U.S. Pat. App. Pub. No. 20160196354 (SRINIVASAN et al., hereinafter “SRINIVASAN”)
Finality of Present Rejection
4. The finality of the rejection issued 2/13/2025 is hereby withdrawn, and a new, final office action is being issued. The finality is based on the improperly labeled amendment filed 2/4/2025. The claim feature “causing a search to be performed using the modified user query” was added to Claim 1, but was not underlined as required by US patent practice. See MPEP 714. The final rejection of 2/13/2025 rejected the claims including only the amendments as properly marked, and this final rejection rejects the claims including both the properly and improperly marked features.
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.
5. Claims 1-14 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Independent Claims 1, 7, and 8 recite various limitations that, but for the recitation of generic computer components (i.e. a memory, a processor, a computer-readable storage medium), can be performed in the human mind or with pen and paper. The claims under their broadest reasonable interpretation cover the concept of giving a voice command, listening for a response, and then changing the original command. (see MPEP 2106.04(a)(2) III).
This judicial exception is not integrated into a practical application because the claims only recite elements in the form of “a memory” and "a processor." These elements are used to perform the claimed methods and steps and are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because they do not include subject matter that could not be performed by a human, as discussed above with respect to integration of the abstract idea into a practical application, the additional element of using the generic computing elements to perform the claimed elements amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
Regarding claims 2 and 10, these claims further limit the elements of claims 1 and 8 by reciting the generic term for the type of device triggers the announcement from the specific device. However, this does not preclude the limitations from being performed in the human mind or by pen and paper. Similar to claim 1 above, no additional elements beyond the use of generic computing elements are claimed, therefore the judicial exception is not integrated into a practical application nor are the claim elements sufficient to amount to significantly more than the judicial exception. Therefore, claims 2 and 10 are not patent eligible.
Regarding claims 3 and 11, these claims further limit the elements of claims 1 and 8 by reciting transmitting the modified user query to a search engine; and receiving data from the search engine in response to the modified user query. However, this does not preclude the limitations from being performed in the human mind or by pen and paper. Similar to claim 1 above, no additional elements beyond the use of generic computing elements are claimed, therefore the judicial exception is not integrated into a practical application nor are the claim elements sufficient to amount to significantly more than the judicial exception. Therefore, claims 3 and 11 are not patent eligible.
Regarding claims 4 and 12, these claims further limit the elements of claims 1 and 8 by reciting providing the data from the search engine to the user via a user interface. However, this does not preclude the limitations from being performed in the human mind or by pen and paper. Similar to claim 1 above, no additional elements beyond the use of generic computing elements are claimed, therefore the judicial exception is not integrated into a practical application nor are the claim elements sufficient to amount to significantly more than the judicial exception. Therefore, claims 4 and 12 are not patent eligible.
Regarding claims 5 and 13, these claims further limit the elements of claims 1 and 8 by reciting the announcement comprises an address for the specific device, and the step of modifying the user query comprises the step of modifying the user query to include the address for the specific device. However, this does not preclude the limitations from being performed in the human mind or by pen and paper. Similar to claim 1 above, no additional elements beyond the use of generic computing elements are claimed, therefore the judicial exception is not integrated into a practical application nor are the claim elements sufficient to amount to significantly more than the judicial exception. Therefore, claims 5 and 13 are not patent eligible.
Regarding claims 6 and 14, these claims further limit the elements of claims 1 and 8 by reciting the announcement comprises an identification of the specific device, and the step of modifying the user query comprises the step of modifying the user query to include the identification for the specific device. However, this does not preclude the limitations from being performed in the human mind or by pen and paper. Similar to claim 1 above, no additional elements beyond the use of generic computing elements are claimed, therefore the judicial exception is not integrated into a practical application nor are the claim elements sufficient to amount to significantly more than the judicial exception. Therefore, claims 6 and 14 are not patent eligible.
Regarding claim 9, this claim further limit the elements of claim 8 by reciting the circuitry comprises a light sensor or the microphone. However, this does not preclude the limitations from being performed in the human mind or by pen and paper. Similar to claim 8 above, no additional elements beyond the use of generic computing elements are claimed, therefore the judicial exception is not integrated into a practical application nor are the claim elements sufficient to amount to significantly more than the judicial exception. Therefore, claim 9 is not patent eligible.
Claim Rejections - 35 USC § 103
6. 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 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.
7. Claim 7 is rejected under 35 U.S.C. 103 as unpatentable over PCT Pat. App. Pub. No. WO2019216779 (Stefanski et al., hereinafter “Stef”) in view of U.S. Pat. App. Pub. No. 20150088518 (Kim et al., hereinafter “Kim”).
With regard to Claim 7, Stef describes:
A method for modifying an audible user query, the method comprising the steps of:
receiving an announcement from a specific device in response to the specific device hearing the audible user query from the user; (Paragraph 108 describes that each of a plurality of available devices respond to a request for an answer.)
transmitting the modified user query to a search engine; (Paragraph 93 describes that the user command can be sent to a search engine.)
receiving data from the search engine in response to the modified user query; (Paragraph 93 describes that the search engine provides the requested data.)
providing the data from the search engine to the user via a user interface, (Paragraph 93 of Stef describes that the data is provided via an interface.)
wherein the generic term for the type of device triggers the announcement from the specific device; (Paragraph 102 describes that a message may be sent to all devices of the proper type within a distance.) and
wherein the announcement comprises an address or an identification for the specific device, (Paragraph 105 describes that each device provides its location.) and
Stef does not explicitly describe:
“receiving the audible user query from a user which has a generic term for a type of device;
modifying the audible user query with information received in the announcement;
the step of modifying the user query comprises the step of modifying the user query to include the address or identification for the specific device.”
However, Kim describes:
receiving the audible user query from a user which has a generic term for a type of device; (Paragraph 55 describes that a user command includes information from which the control device determines a type of device.)
modifying the audible user query with information received in the announcement; (Claim 2 describes that the user command includes control information that identifies the device and is incorporated into the command to the device.)
the step of modifying the user query comprises the step of modifying the user query to include the address or identification for the specific device. (Claim 2 describes that the user command includes control information that identifies the device and is incorporated into the command to the device.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the command structure as described by Kim into the system of Stef to allow the user directly command other devices, as described in paragraph 55 of Kim.
8. Claims 1-6 and 8-14 are rejected under 35 U.S.C. 103 as unpatentable over Stef in view of Kim and further in view of U.S. Pat. App. Pub. No. 20160196354 (SRINIVASAN et al., hereinafter “SRINIVASAN”)
With regard to Claim 1, Stef describes:
“A method for modifying an audible user query, the method comprising the steps of:
receiving an announcement from a specific device in response to a specific device’s detecting the audible user query from the user; (Paragraph 108 describes that each of a plurality of available devices respond to a request for an answer.)
modifying the audible user query with information received in the announcement.” (Paragraph 109 describes that the request is modified based on the responses from the devices.)
Stef does not explicitly describe “receiving the audible user query from a user which has a generic term for a type of device; and
causing a search to be performed using the modified user query.”
However, Kim describes in Paragraph 55 describes that a user command includes information from which the control device determines a type of device.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the command reception as described by Kim into the system of Stef to allow for direct control by the user, as described in paragraph 55 of Kim.
Stef in view of Kim does not explicitly describe “causing a search to be performed using the modified user query.”
However, paragraph 49 of SRINIVASAN describes that a query may be modified based on user input.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the modified query as described by SRINIVASAN into the system of Stef in view of Kim to allow the user to remove irrelevant input, as described in paragraph 49 of SRINIVASAN.
With regard to Claim 2, Stef describes “the generic term for the type of device triggers the announcement from the specific device.” Paragraph 102 describes that a message may be sent to all devices of the proper type within a distance.
With regard to Claim 3, Stef describes:
“transmitting the modified user query to a search engine; (Paragraph 93 describes that the user command can be sent to a search engine.) and
receiving data from the search engine in response to the modified user query.” (Paragraph 93 describes that the search engine provides the requested data.)
With regard to Claim 4, Stef describes “providing the data from the search engine to the user via a user interface.” Paragraph 93 of Stef describes that the data is provided via an interface.
With regard to Claim 5, Stef describes “the announcement comprises an address for the specific device. (Paragraph 105 describes that each device provides its location)
However, Stef does not explicitly describe “the step of modifying the user query comprises the step of modifying the user query to include the address for the specific device.” In this regard, Claim 2 of Kim describes that the user command includes control information that identifies the device and is incorporated into the command to the device.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the command structure as described by Kim into the system of Stef to allow for direct control by the user, as described in paragraph 55 of Kim.
With regard to Claim 6, Stef describes “the announcement comprises an identification of the specific device.” (Paragraph 105 describes that each device provides its location)
However, Stef does not explicitly describe “the step of modifying the user query comprises the step of modifying the user query to include the identification for the specific device.” In this regard, Claim 2 of Kim describes that the user command includes control information that identifies the device and is incorporated into the command to the device.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the command structure as described by Kim into the system of Stef to allow for direct control by the user, as described in paragraph 55 of Kim.
With regard to Claim 8, Stef describes:
“An apparatus for modifying an audible user query, the apparatus comprising:
circuitry receiving an announcement from a specific device in response to the specific device’s detecting the audible user query from the user; (Paragraph 108 describes that each of a plurality of available devices respond to a request for an answer.)
Stef does not explicitly describe “a microphone receiving the audible user query from a user which has a generic term for a type of device; and
logic circuitry configured to modify the audible user query with information received in the announcement to form a modified user query, and to cause a search to be performed using the modified user query.”
However, Kim describes:
a microphone receiving the audible user query from a user which has a generic term for a type of device; (Paragraph 44 describes microphone 104 for receiving the voice command. Paragraph 55 describes that a user command includes information from which the control device determines a type of device.)
“logic circuitry configured to modify the audible user query with information received in the announcement to form a modified user query” (Claim 2 describes that the user command includes control information that identifies the device and is incorporated into the command to the device.)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the query modification as described by Kim into the system of Stef to allow for better feedback for the user, as described in paragraph 55 of Kim.
Stef in view of Kim does not explicitly describe “cause a search to be performed using the modified user query.”
However, paragraph 49 of SRINIVASAN describes that a query may be modified based on user input.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the modified query as described by SRINIVASAN into the system of Stef in view of Kim to allow the user to remove irrelevant input, as described in paragraph 49 of SRINIVASAN.
With regard to Claim 9, Stef describes “the circuitry comprises a light sensor or the microphone.” Paragraph 20 describes a microphone for receiving nearby sounds.
With regard to Claim 10, Stef describes “the generic term for the type of device triggers the announcement from the specific device.” Paragraph 108 describes that each of a plurality of available devices respond to a request for an answer.
With regard to Claim 11, Stef describes:
“a transmitter configured to transmit the modified user query to a search engine; (Paragraph 93 describes that the user command can be sent to a search engine.)
and
a receiver configured to receive data from the search engine in response to the modified user query.” (Paragraph 93 describes that the search engine can send data to the user device.)
With regard to Claim 12, Stef describes “a graphical user interface configured to provide the data from the search engine to the user.” Paragraph 93 of Stef describes that the data is provided via an interface. Paragraph 111 describes that a display can show information received from user queries.
With regard to Claim 13, Stef describes “the announcement comprises an address for the specific device, (Paragraph 105 describes that each device provides its location) and
However, Stef does not explicitly describe “the logic circuitry is configured to modify the user query by modifying the user query to include the address for the specific device.”
In this regard, Claim 2 of Kim describes that the user command includes control information that identifies the device and is incorporated into the command to the device.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the command structure as described by Kim into the system of Stef to allow for direct control by the user, as described in paragraph 55 of Kim.
With regard to Claim 14, Stef describes “the announcement comprises an identification of the specific device, (Paragraph 105 describes that each device provides its location, which would uniquely identify it.) and
However, Stef does not explicitly describe “the logic circuitry is configured to modify the user query by modifying the user query to include the address for the specific device.”
In this regard, Claim 2 of Kim describes that the user command includes control information that identifies the device and is incorporated into the command to the device.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to include the command structure as described by Kim into the system of Stef to allow for direct control by the user, as described in paragraph 55 of Kim.
Conclusion
9. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
U.S. Pat. No. 7,814,096 (Roy et al.) also describes a device that modifies and uses a search query entered by a user.
10. 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.
11. Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD TRACY whose telephone number is (571)272-8332. The examiner can normally be reached Monday-Friday 9 AM- 5PM.
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, 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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/EDWARD TRACY JR./Examiner, Art Unit 2656
/BHAVESH M MEHTA/Supervisory Patent Examiner, Art Unit 2656