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 .
Reissue Applications
2. Reissue application 18/107,371 was filed 02/08/2023 as a reissue of Application 16/417,359 filed on 05/20/2019 which issued as US 10,916,121 on 02/09/2021, which is claims priority to provisional application 62/674,176, filed on 05/21/2018.
3. Because the instant reissue application was filed on or after September 16, 2012, the statutory provisions of the America Invents Act (“AIA ”) will govern this reissue proceeding and all references to 35 U.S.C. 251 and 37 CFR 1.172, 1.175, and 3.73 are to the current provisions. 37 CFR 1.171 through 1.178 are rules directed to reissue.
4. This action is responsive to communications filed on 02/09/2026. Claims 1-42 are pending. Claims 22-42 are newly added claims.
Reissues
5. Applicant is reminded of the continuing obligation under 37 CFR 1.178(b), to timely apprise the Office of any prior or concurrent proceeding in which Patent No. US 10,916,121 B2 is or was involved. These proceedings would include any trial at the Patent Trial and Appeal Board, interferences, reissues, reexaminations, supplemental examinations, and litigation.
Applicant is further reminded of the continuing obligation under 37 CFR 1.56, to timely apprise the Office of any information which is material to patentability of the claims under consideration in this reissue application.
These obligations rest with each individual associated with the filing and prosecution of this application for reissue. See also MPEP §§ 1404, 1442.01 and 1442.04.
Claim Interpretation
7. The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
8. The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
9. This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are:
In claim 1:
“a processing circuit to: receive…a user request for information…determine, using natural language processing, an intent and one or more entities…generate a response to the user request based on the intent and the one or more entities…”
In claim 2:
“the user interface generates a recommendation based on one or more rules…”
In claim 17:
“a false alarm reduction system configured to receive the information from the plurality of sensors and determine if the information relates to a false alarm”
“a virtual maintenance manager configured to: receive…a user request…determine, using natural language processing, an intent and one or more entities…generate, a response to the user request based on the intent and the one or more entities…”
Claim 18:
“the virtual maintenance manager generates a recommendation based on one or more rules…”
In claim 22:
“processing circuit to: receive…a user request…determine, using natural language processing, an intent and one or more entities…generate, a response to the user request based on the intent and the one or more entities…”
Claim 23:
“the false alarm reduction system generates the recommendation based on one or more rules…”
In claim 38:
“a false alarm reduction system configured to receive the information from the plurality of sensors and determine if the information relates to a false alarm”
“a virtual maintenance manager configured to: receive…a user request…determine, using natural language processing, an intent and one or more entities…generate, a response to the user request based on the intent and the one or more entities…”
Claim 39:
“the virtual maintenance manager generates a recommendation based on one or more rules…”
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
10. 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.
11. Claims 1-10, 17-31, and 38-42 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. Specifically, the disclosure does not provide adequate structure to perform the claimed functions of determining, using natural language processing, an intent and one or more entities associated with the user request and generating a response to the user request based on the intent and the one or more entities. The patent specification does not disclose a specific algorithm that provides the sufficient structure to perform these steps. The “natural language processing” does not specify a specific algorithm and is not deemed to be sufficient structure.
12. Claims 11-16 and 32-37 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. Specifically, the disclosure does not provide sufficient detail of how the determination of an intent and one or more entities and how the generating of a response, based on the intent and one or more entities is achieved. There is no discussion of how the natural language processing determines the intent and entities or how the response is generated based on the determined intent and entities.
13. 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.
14. Claims 1-10, 17-31, and 38-42 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.
The claim limitations noted above under the 35 U.S.C. 112(f)/6th paragraph section invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification is devoid of adequate structure to perform the claimed function. The specification and claim refer to “natural language processing” for performing the function of determining an intent and entities associated with the user request and generating a response based on the intent and the one or more entities; however, there is not a specific algorithm for performing these functions. These functions can be performed in a number of ways but the specification does not provide sufficient details where one of ordinary skill in the art would understand how to perform those functions.
Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
15. Claims 11-16 and 32-37 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.
The written description fails does not provide sufficient detail of how the determination of an intent and one or more entities and how the generating of a response, based on the intent and one or more entities is achieved. There is no discussion of how the intent and entities are determined or how the response is generated based on the intent and entities. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Response to Arguments
16. Applicant's arguments filed 02/09/2026 have been fully considered but they are not persuasive.
Claim Interpretation
17. Regarding claim 1, Applicant argues “a processing circuit” does not invoke 35 USC 112(f). Regarding claim 2, Applicant argues the user interface is not a generic placeholder citing MPEP 2181(I)(C). Regarding claim 17, Applicant argues the “false alarm reduction system” receives information from a plurality of sensors and determines if it relates to a false alarm and the “virtual maintenance manager” performs the function of managing maintenance perform additional acts. Regarding claim 18, Applicant argues the “virtual maintenance manager” is not a generic placeholder, but rather a non-generic component performing all the acts in claim 17 in addition to generating a recommendation based on one or more rules. Applicant argues figure 5 shows the virtual maintenance manager as a component of the processing circuit. Regarding claim 22, Applicant disagrees that the processing circuit does not invoke 35 USC 112(f). With respect to claim 23, Applicant argues the “false alarm reduction system” reduces false alarms by generating recommendations based on one or more rules, wherein the one or more rules are associated with the one or more entities. Regarding claim 38, Applicant argues the claim recites additional acts for performing the functions of maintenance and reducing false alarms. Regarding claim 39, Applicant argues the virtual maintenance manager is a non-generic component capable of performing all of the acts recited including generating a recommendation based on one or more rules. Applicant is modified by sufficient acts for performing the specified function and cites figure 5 as showing the virtual maintenance manager as a component of the processing circuit.
Examiner disagrees.
Regarding claim 1, a processor alone is not capable of performing the functions of receiving a user request for a recommendation to reduce a number of false alarms, where an intent and one or more entities associated with the user request are determined using natural language processing and generating a response to the request based on the intent and one or more entities. Examiner maintains the interpretation under 35 USC 112(f)/6th paragraph because the claim limitation(s) use generic placeholders coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Examiner finds that some special programming is needed for the processor to perform the recited functions. The natural language processor is described as software executed by a processor. See column 28, lines 13-28. Thus, as noted in the rejections above, these elements are interpreted under 35 USC 112 6th/(f) as the specially programmed processor described in the specification. Since a general purpose processor is not capable of performing these functions alone, it does not denote sufficient structure as it requires special programming. Applicant is reminded that “as originally described in Katz, ‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general-purpose computer.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015). “Katz held that a standard microprocessor can serve as sufficient structure for ‘functions [that] can be achieved by any general purpose computer without special programming.’” EON Corp., 785 F.3d at 621, 114 USPQ2d at 1714 quoting In re Katz Interactive Call Processing Patent Litig. (Ronald A. Katz Tech. Licensing, LP v. Am. Airlines, Inc.), 639 F.3d 1303, 1316, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011). “In cases involving a computer-implemented invention, we have held that the structure must be more than a general purpose computer or a microprocessor, … unless, in the rare circumstance, any general purpose computer without any special programming can perform the function.” Alfred E. Mann Found. for Scientific Research v. Cochlear Corp., 841 F.3d 1334, 1342, 123 USPQ2d 1669, 1675 (Fed. Cir. 2016)(citations omitted). Examiner finds that an ordinary processor cannot perform the entire claimed functions noted above without special programming. Thus, the interpretation is maintained.
Regarding claim 2, Applicant argues the user interface is not a generic placeholder; however, the user interface alone is not sufficient for generating a recommendation based on one or more rules. Column 16, lines 27-29 recite, “User interface module 480 provides the recommendations from recommendation generator module 470 to a user.” Column 25 further describes the recommendation generator module. Thus, the user interface alone is not sufficient structure to perform the recited function of generating a recommendation based on one or more rules.
Regarding claims 17, 23 and 38, Applicant argues the “false alarm reduction system” receives information from a plurality of sensors and determines if it relates to a false alarm and the “virtual maintenance manager” performs the function of managing maintenance perform additional acts. Examiner maintains the interpretation under 35 USC 112(f)/6th paragraph because the claim limitation(s) use generic placeholders coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Examiner finds that some special programming is needed for the false alarm reduction system to perform the recited functions. The false alarm reduction system utilizes several “modules” executed by a system. See column 28, lines 45-49. The “virtual maintenance manager” is described as an “expert system” including a knowledge base and an inference engine. See columns 27-28. Thus, as noted in the rejections above, these elements are interpreted under 35 USC 112 6th/(f) as the specially programmed systems/processors described in the specification. Since a generic system is not capable of performing these functions alone, it does not denote sufficient structure as it requires special programming. Applicant is reminded that “as originally described in Katz, ‘special programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general-purpose computer.” EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015). “Katz held that a standard microprocessor can serve as sufficient structure for ‘functions [that] can be achieved by any general purpose computer without special programming.’” EON Corp., 785 F.3d at 621, 114 USPQ2d at 1714 quoting In re Katz Interactive Call Processing Patent Litig. (Ronald A. Katz Tech. Licensing, LP v. Am. Airlines, Inc.), 639 F.3d 1303, 1316, 97 USPQ2d 1737, 1747 (Fed. Cir. 2011). “In cases involving a computer-implemented invention, we have held that the structure must be more than a general purpose computer or a microprocessor, … unless, in the rare circumstance, any general purpose computer without any special programming can perform the function.” Alfred E. Mann Found. for Scientific Research v. Cochlear Corp., 841 F.3d 1334, 1342, 123 USPQ2d 1669, 1675 (Fed. Cir. 2016)(citations omitted). Examiner finds that an ordinary processor cannot perform the entire claimed functions noted above without special programming. Thus, the interpretation is maintained.
Regarding claims 18 and 39, the “the virtual maintenance manager” is not capable of performing the functions of recommendation generation alone. The virtual maintenance manager alone does not denote sufficient structure as it requires special programming (i.e. via a recommendation module).
Regarding claim 22, Applicant disagrees that the processing circuit does not invoke 35 USC 112(f). As noted above, the processing circuit alone does not denote sufficient structure. See the remarks with respect to claim 1 above.
Rejections under 35 USC 112(a)/first paragraph
18. Applicant argues the 112(a) rejections are moot upon withdrawing the 112(f) interpretation. For reasons outlined above, Examiner disagrees.
Applicant argues even if “natural language processing” were subject to 112(f), the specification discloses sufficient structure citing figure 5 where the natural language processing 484 is a component of the processing circuit within the memory. Applicant argues the processing circuit and memory are described in detail as in column 15, lines 49-column 16, line 14. Applicant argues the specification does not need to disclose a particular structure for performing the function as long as sufficient material or acts are disclosed. Citing column 26, lines 50-54, Applicant argues the patent describes acts performed to accomplish the natural language processing function.
Examiner disagrees.
The argument that the processing circuit with memory is disclosed and the disclosure for the particular structure for performing a function is not necessary is inaccurate. MPEP 2181 states, "‘[S]pecial programming’ includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer." EON Corp., 785 F.3d at 623, 114 USPQ2d at 1715 (citations omitted). "Examples of such coextensive functions are ‘receiving’ data, ‘storing’ data, and ‘processing’ data—the only three functions on which the Katz court vacated the district court’s decision and remanded for the district court to determine whether disclosure of a microprocessor was sufficient." 785 F.3d at 622, 114 USPQ2d at 1714. Thus, "[a] microprocessor or general purpose computer lends sufficient structure only to basic functions of a microprocessor. All other computer-implemented functions require disclosure of an algorithm." Id., 114 USPQ2d at 1714. Thus, if Applicant’s argument is that any processor can perform these functions, then the limitations could be read on by any generic processor. It is not sufficient that only acts are performed without a disclosure of the structure.
Regarding claims 11-16 and 32-27, Applicant argues column 26, lines 42-60 and column 28, lines 6-28 provide detail on how the intent and entities are determined and how the generating of the response is achieved. While these portions provide examples of what an intent or entity parameter may be, it does not disclose the algorithm used to arrive at this determination and is not sufficient disclosure of how the intent and entities are determined and how a response is achieved.
Thus, the rejections under 35 USC 112(a)/first paragraph are maintained.
Rejections under 35 USC 112(b)/second paragraph
19. Applicant argues figure 6, column 28, lines 6-60 describe the specific acts for performing the natural language processing function, how the intent and entities are determined, and how the generating of a response is achieved.
Examiner disagrees.
Column 28, describing figure 6 discloses a process flow and references processing a query using NLP software; however, there is no disclosure of the specific algorithm used to process the query. This is not a sufficient disclosure. Thus, the rejections are maintained.
Conclusion
17. THIS ACTION IS MADE FINAL. 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.
18. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHNA SINGH DESAI whose telephone number is (571)272-4099. The examiner can normally be reached M-F 7:30-4PM 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, Alexander Kosowski can be reached on 571-272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/RACHNA S DESAI/Reexamination Specialist, Art Unit 3992
Conferees:
/William H. Wood/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992