CTNF 18/175,845 CTNF 92080 DETAILED ACTION Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia 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 § 101 07-04-01 AIA 07-04 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 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. Using the subject matter eligibility test from page 74621 of the Federal Register Notice titled “2014 Interim Guidance on Patent Subject Matter Eligibility,” a two-step process is performed. Under step 1, the claims are analyzed to determine if the claim is directed to a process, machine, article of manufacture, or composition of matter. In this case, claims 1-10 are directed to a method, which is a process; claims 11-17 are directed to a system, which is a machine or an article of manufacture; claims 18-20 are directed to a computer program product, which is a machine or an article of manufacture. Step 2A (part 1 of the Mayo test), using the guidance from pages 50-57 of the Federal Register Vol. 84 No. 4 from Monday, January 7, 2019, requires applying a two-prong inquiry. In Prong One, examiners evaluate whether the claim recites a judicial exception, determining if the claim is directed to a law of nature, a natural phenomenon, or an abstract idea. In this case, claim 1 recites identifying an active communication, determining a context, searching historical communications, analyzing the searched historical communications, and generating a recommendation, which are mental processes. In Prong Two, examiners evaluate whether the judicial exception is integrated into a practical application that imposes a meaningful limit on the judicial exception. In this case, there are no additional limitations that would integrate the abstract idea into a practical application. Step 2B (part 2 of the Mayo test) requires analyzing the claims to determine if they recite additional elements that amount to significantly more than the judicial exception. In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea itself. Regarding claim 1 , identifying an active communication, determining a context, searching historical communications, analyzing the searched historical communications, and generating a recommendation are mental processes, which is an abstract idea. For example, a human could identify that they are in a conversation and determine the context, then could think of previous conversations with similar topics, and could recommend an emoji or meme to share. There are no additional limitations that would integrate the abstract ideas into a practical application or constitute significantly more. Regarding claims 2, 5-7, 14-15, and 19-20 , the limitations are further clarifications of the above abstract ideas. Regarding claim 3 , building context using natural language or speech processing are mental processes, which are abstract ideas without integration into a practical application and without significantly more. Regarding claim 4 , determining if a response is expected is a mental process, which is an abstract idea without integration into a practical application and without significantly more. Regarding claim 8 , presenting the context and recommendation are mental processes, which are abstract ideas without integration into a practical application and without significantly more. For example, a human could use speech or pen and paper to present the information. Regarding claim 9 , storing data is mere extrasolution activity, and does not integrate the abstract ideas into a practical application or constitute significantly more. Regarding claim 10 , receiving a response to use content and providing the content are mental processes, which are abstract ideas without integration into a practical application and without significantly more. For example, a human could use speech or pen and paper to present the information. Regarding claim 11 , identifying an active communication, determining a context, searching historical communications, analyzing the searched historical communications, generating a recommendation, and presenting the recommendation are mental processes, which is an abstract idea. For example, a human could identify that they are in a conversation and determine the context, then could think of previous conversations with similar topics, and could recommend an emoji or meme to share. Additional limitations of processor and memory are generic computing components, and do not integrate the abstract ideas into a practical application or constitute significantly more. Regarding claim 12 , selecting a device is a mental process, which is an abstract idea without integration into a practical application and without significantly more. Regarding claim 13 , determining where to search is a mental process, which is an abstract idea without integration into a practical application and without significantly more. Regarding claim 16 , providing the content is a mental process, which is an abstract idea without integration into a practical application and without significantly more. For example, a human could use speech or pen and paper to present the information. Regarding claim 17 , comparing data is a mental process, which is an abstract idea without integration into a practical application and without significantly more. Regarding claim 18 , identifying an active communication, determining a response is expected, determining a context, searching historical communications, analyzing the searched historical communications, generating a recommendation, presenting the recommendation, receiving a response to use data, and providing content are mental processes, which is an abstract idea. For example, a human could identify that they are in a conversation and determine the context, then could think of previous conversations with similar topics, and could recommend an emoji or meme to share. Additional limitations of processor and computer readable storage medium are generic computing components, and do not integrate the abstract ideas into a practical application or constitute significantly more. The limitations of the claims, taken alone, do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements individually. Applicable case law cited in the Federal Register includes, but is not limited to: Alice Corp. , 134 S. Ct. at 2355-56, Digitech Image Tech., LLC v. Electronics for Imaging, Inc. , 758 F.3d 1344 (Fed. Cir. 2014), Benson , 409 U.S. at 63. See "Preliminary Examination Instructions in view of the Supreme Court Decision in Alice Corporation Pty. Ltd. v. CLS Bank International, et al. ," dated June 25, 2014, and the Federal Register notice titled "2014 Interim Guidance on Patent Subject Matter Eligibility" (79 FR 74618). Claim Rejections - 35 USC § 102 07-06 AIA 15-10-15 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 (i.e., changing from AIA to pre-AIA) 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. 07-07-aia AIA 07-07 The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action: A person shall be entitled to a patent unless – 07-08-aia AIA (a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention. 07-15-aia AIA Claim(s) 1-4, 7 , is/are rejected under 35 U.S.C. 102 (a)(1) as being anticipated by Kim et al. (US 2016/0210117 A1), hereinafter referred to as Kim . Regarding claim 1 , Kim teaches: A computer-implemented method, comprising: identifying an active communication between multiple users (para [0061], where the first user is in dialogue with another party); determining a context of the active communication (para [0055], [0075], [0145-151], where dialogue situation information is determined); searching historical communications for a similar context to the context of the active communication (para [0056], [0096], [0127], [0159], where similar dialogue situations are retrieved from a database); analyzing the searched historical communications for digital content that is relevant to the context (para [0142], [0158], where the retrieved utterances are stored in pairs of utterance-sticker); and generating a recommendation to use the digital content in the active communication based on the similar context (Fig. 4, para [0176-177], where stickers are recommended based on the retrieved context). Regarding claim 2 , Kim teaches: The computer-implemented method of claim 1, wherein the context comprises a topic of the active communication (para [0055], where the dialogue situation, interpreted as the topic, is obtained through dialogue act analysis, and para [0130-131], where a theme is also considered a topic). Regarding claim 3 , Kim teaches: The computer-implemented method of claim 1, wherein determining the context of the active communication comprises building the context using at least one of natural language processing and speech processing (para [0090], [0149], where natural language processing is performed to analyze the dialogue situation). Regarding claim 4 , Kim teaches: The computer-implemented method of claim 1, further comprising determining, using natural language processing, if a response is expected from a user (para [0138-139], where the system determines whether it is the user's turn to speak or not). Regarding claim 7 , Kim teaches: The computer-implemented method of claim 1, wherein the analyzing comprises identifying previously shared content relevant to the context (para [0158], where the retrieved utterances are those in which a sticker has been used) . Claim Rejections - 35 USC § 103 07-20-aia AIA 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. 07-21-aia AIA Claim (s) 6 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim, in view of Filoti et al. (US 2020/0218745 A1), hereinafter referred to as Filoti . Regarding claim 6 , Kim teaches: The computer-implemented method of claim 1, Kim does not teach: wherein searching the historical communications comprises searching publicly available data. Filoti teaches: wherein searching the historical communications comprises searching publicly available data (para [0055], where the source is publicly available). Kim in view of Vaculin teaches using a database in Kim para [0157-159]. However, the claim recites publicly available data. Filoti teaches publicly available sources in para [0055]. Filoti para [0055] recognizes that different sources for data are available, including training databases, and are within the level of ordinary skill in the art. It also demonstrates that the result of using another source would have been predictable. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the database of Kim in view of Vaculin with the publicly available source of Filoti where the result of the substitution would predictably allow for receiving data . 07-21-aia AIA Claim (s) 5, 8-11, 13-14, 16, and 18-20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim, in view of Vaculin et al. (US 2019/0348063 A1), hereinafter referred to as Vaculin . Regarding claim 5 , Kim teaches: The computer-implemented method of claim 1, Kim does not teach: wherein searching the historical communications comprises searching stored communications between the multiple users. Vaculin teaches: wherein searching the historical communications comprises searching stored communications between the multiple users (para [0062], where previous conversations with the same individual are searched). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kim by using the stored data of Vaculin (Vaculin para [0062]) in the database of Kim (Kim para [0159]) in order to find previous conversations with the same individual when searching for conversations of a similar topic (Vaculin para [0062]). Regarding claim 8 , Kim teaches: The computer-implemented method of claim 1, Kim does not teach: further comprising presenting the context of the active communication along with the recommendation. Vaculin teaches: further comprising presenting the context of the active communication along with the recommendation (para [0065], where the user is informed of the mood of an individual, along with providing suggestions). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kim by using the context of Vaculin (Vaculin para [0065]) in the recommendation of Kim (Kim para [0176-177]) in order to determine what suggestion to make based on the context (Vaculin para [0065]). Regarding claim 9 , Kim teaches: The computer-implemented method of claim 1, Kim does not teach: further comprising storing the active communication with the context in a database. Vaculin teaches: further comprising storing the active communication with the context in a database (para [0067], where the conversation data is used to learn new rules, and stored in the knowledge base). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kim by using the storage of Vaculin (Vaculin para [0067]) in the database of Kim (Kim para [0159]) in order to continuously improve the baseline rules in the knowledge base (Vaculin para [0067]). Regarding claim 10 , Kim teaches: The computer-implemented method of claim 1, further comprising: Kim does not teach: receiving a user response to use the digital content in the active communication in response to the recommendation; and providing the content to the multiple users in the active communication in response to receiving the user response to use the data. Vaculin teaches: receiving a user response to use the digital content in the active communication in response to the recommendation (para [0043], where the user accepts the suggestion); and providing the content to the multiple users in the active communication in response to receiving the user response to use the data (para [0044], where the suggestion is integrated into the conversation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kim by using the user selection of Vaculin (Vaculin para [0043]) for the recommendation of Kim (Kim para [0176-177]) in order to provide feedback for future interactions and analysis (Vaculin para [0067]). Regarding claim 11 , Kim teaches: A system, comprising: a processor having an associated memory, wherein the associated memory contains instructions (Fig. 3 elements 11-12, para [0072], where a processor and memory are used), which, when executed, cause the processor to: identify an active communication between a user and at least one additional participant (para [0061], where the first user is in dialogue with another party); build a context of the active communication (para [0055], [0075], [0145-151], where dialogue situation information is determined); search historical communications for a similar context to the context of the active communication (para [0056], [0096], [0127], [0159], where similar dialogue situations are retrieved from a database); analyze the searched historical communications for digital content that is relevant to the context (para [0142], [0158], where the retrieved utterances are stored in pairs of utterance-sticker); generate a recommendation to use the digital content in the active communication based on the similar context (Fig. 4, para [0176-177], where stickers are recommended based on the retrieved context); and Kim does not teach: present the recommendation and the context to the user. Vaculin teaches: present the recommendation and the context to the user (para [0065], where the user is informed of the mood of an individual, along with providing suggestions). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kim by using the context of Vaculin (Vaculin para [0065]) in the recommendation of Kim (Kim para [0176-177]) in order to determine what suggestion to make based on the context (Vaculin para [0065]). Regarding claim 13 , Kim in view of Vaculin teaches: The system of claim 11, wherein the instructions, which, when executed, further cause the processor to determine the historical communications to search based on the context of the active communication (Kim para [0157-159], where the database is searched for situations having the most similar context). Regarding claim 14 , Kim in view of Vaculin teaches: The system of claim 13, wherein the historical communications comprise prior communications between the user and the at least one additional participant (Vaculin para [0062], where previous conversations with the same individual are searched). Regarding claim 16 , Kim in view of Vaculin teaches: The system of claim 11, wherein the instructions, which, when executed, further cause the processor to provide the digital content to the at least one additional participant in response to receiving a user response to use the digital content (Vaculin para [0043-44], where the user accepts the suggestion and the suggestion is integrated into the conversation). Regarding claim 18 , Kim teaches: A computer program product, the computer program product comprising a computer readable storage medium having program instructions embodied therewith (para [0184], where computer readable media is used), the program instructions executable by a processor, to cause the processor to: identify an active communication between a user and at least one additional participant (para [0061], where the first user is in dialogue with another party); determine that a response is expected from the user (para [0138-139], where the system determines whether it is the user's turn to speak or not); build a context of the active communication (para [0055], [0075], [0145-151], where dialogue situation information is determined); search historical communications for a similar context to the context of the active communication (para [0056], [0096], [0127], [0159], where similar dialogue situations are retrieved from a database); analyze the searched historical communications for digital content that is relevant to the context (para [0142], [0158], where the retrieved utterances are stored in pairs of utterance-sticker); generate a recommendation to use the digital content in the active communication based on the similar context (Fig. 4, para [0176-177], where stickers are recommended based on the retrieved context); Kim does not teach: present the recommendation and the context to the user; receive a user response to use the data in the active communication in response to the recommendation; and provide the content to the at least one additional participant in the active communication in response to receiving the user response to use the data. Vaculin teaches: present the recommendation and the context to the user (para [0065], where the user is informed of the mood of an individual, along with providing suggestions); receive a user response to use the data in the active communication in response to the recommendation (para [0043], where the user accepts the suggestion); and provide the content to the at least one additional participant in the active communication in response to receiving the user response to use the data (para [0044], where the suggestion is integrated into the conversation). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kim by using the user selection of Vaculin (Vaculin para [0043]) for the recommendation of Kim (Kim para [0176-177]) in order to provide feedback for future interactions and analysis (Vaculin para [0067]). Regarding claim 19 , Kim in view of Vaculin teaches: The computer program product of claim 18, wherein the recommendation and the context are presented to the user through a user interface that is unobservable by the least one additional participant (Vaculin para [0065], where the alerts and suggestions are provided to the user through the local system). Regarding claim 20 , Kim in view of Vaculin teaches: The computer program product of claim 18, wherein the recommendation comprises multiple items of digital content that are selectable by the user (Fig. 4, para [0079-81], where multiple stickers are recommended) . 07-21-aia AIA Claim (s) 12 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim, in view of Vaculin, and further in view of Peterson et al. (US 2016/0373884 A1), hereinafter referred to as Peterson . Regarding claim 12 , Kim in view of Vaculin teaches: The system of claim 11, Kim in view of Vaculin does not teach: wherein the instructions, which, when executed, further cause the processor to select a device to present the recommendation and the context to the user based on a user experience threshold. Peterson teaches: wherein the instructions, which, when executed, further cause the processor to select a device to present the recommendation and the context to the user based on a user experience threshold (para [0053], where the device to present audio is determined based on a threshold distance, interpreted as the user experience threshold). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kim in view of Vaculin by using the device selection of Peterson (Peterson para [0053]) to select the output device of Kim in view of Vaculin (Kim Fig. 2 element 21), so that the system will automatically determine where to present audio based on distance between devices (Peterson para [0053]) . 07-21-aia AIA Claim (s) 15 and 17 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kim, in view of Vaculin, and further in view of Filoti . Regarding claim 15 , Kim in view of Vaculin teaches: The system of claim 13, Kim in view of Vaculin does not teach: wherein the historical communications comprise publicly available data. Filoti teaches: wherein the historical communications comprise publicly available data (para [0055], where the source is publicly available). Kim in view of Vaculin teaches using a database in Kim para [0157-159]. However, the claim recites publicly available data. Filoti teaches publicly available sources in para [0055]. Filoti para [0055] recognizes that different sources for data are available, including training databases, and are within the level of ordinary skill in the art. It also demonstrates that the result of using another source would have been predictable. Therefore, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have substituted the database of Kim in view of Vaculin with the publicly available source of Filoti where the result of the substitution would predictably allow for receiving data. Regarding claim 17 , Kim in view of Vaculin teaches: The system of claim 11, Kim in view of Vaculin does not teach: wherein analyzing the searched historical communications for digital content that is relevant to the context comprises comparing the context to tagged metadata of the digital content. Filoti teaches: wherein analyzing the searched historical communications for digital content that is relevant to the context comprises comparing the context to tagged metadata of the digital content (para [0062-63], where the context metadata is compared to metadata from a table). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the system of Kim in view of Vaculin by using the metadata comparison of Filoti (Filoti para [0062-63]) for the similarity comparison of Kim in view of Vaculin (Vaculin para [0049]) in order to search and identify any pertinent annotations from the knowledge base (Filoti para [0062]) . Conclusion 07-96 AIA The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 11,106,870 B2 Claim 1 teaches making suggestions based on contextual factors; US 2022/0309413 A1 para [0027] teaches making recommendations to an agent based on matching parameters from a call context with that from a repository . Any inquiry concerning this communication or earlier communications from the examiner should be directed to BRYAN S BLANKENAGEL whose telephone number is (571)270-0685. The examiner can normally be reached 8:00am-5:30pm. 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, Richemond Dorvil can be reached at 571-272-7602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /BRYAN S BLANKENAGEL/Primary Examiner, Art Unit 2658 Application/Control Number: 18/175,845 Page 2 Art Unit: 2658 Application/Control Number: 18/175,845 Page 3 Art Unit: 2658 Application/Control Number: 18/175,845 Page 4 Art Unit: 2658 Application/Control Number: 18/175,845 Page 5 Art Unit: 2658 Application/Control Number: 18/175,845 Page 6 Art Unit: 2658 Application/Control Number: 18/175,845 Page 7 Art Unit: 2658 Application/Control Number: 18/175,845 Page 8 Art Unit: 2658 Application/Control Number: 18/175,845 Page 9 Art Unit: 2658 Application/Control Number: 18/175,845 Page 10 Art Unit: 2658 Application/Control Number: 18/175,845 Page 11 Art Unit: 2658 Application/Control Number: 18/175,845 Page 12 Art Unit: 2658 Application/Control Number: 18/175,845 Page 13 Art Unit: 2658 Application/Control Number: 18/175,845 Page 15 Art Unit: 2658 Application/Control Number: 18/175,845 Page 16 Art Unit: 2658 Application/Control Number: 18/175,845 Page 17 Art Unit: 2658
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