DETAILED ACTION
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 .
Response to Arguments
Applicant’s arguments and amendments, filed 9/11/26, with respect to the rejection(s) of the claim(s) under 35 U.S.C. 102(a)(2) have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of previous prior art.
Applicant's arguments with respect to the rejection of the claims under 35 U.S.C. 112(a) have been fully considered but they are not persuasive.
Applicant argued:
The disclosure thus sets two alternatives side by side: an intention generated by the method as a function of the content of the message, and an intention supplied as tagged content within the message itself. Claim 1 recites the former and excludes the latter. That is precisely the circumstance in which a negative limitation is adequately described.
A negative limitation need not appear in the specification in haec verba. In Inphi Corp. v. Netlist, Inc., 805 F.3d 1350 (Fed. Cir. 2015), the Federal Circuit rejected the contention that Santarus imposes a heightened standard requiring the specification to recite advantages or disadvantages, and held that the "reason" contemplated by Santarus "is provided, for instance, by properly describing alternative features of the patented invention." See also Santarus, Inc. v. Par Pharmaceutical, Inc., 694 F.3d 1344, 1351 (Fed. Cir. 2012); Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1347-48 (Fed. Cir. 2016); MPEP § 2163. The specification here does exactly what Inphi describes.
Two further passages confirm that a person of ordinary skill would read the generated intention as something other than the received data. First, the two examples in paragraph [0092] are commands the conversational agent does not send. The agent sends a text to be spoken and, in the choices embodiment, a list of choices; it does not send the word "repeat." The specification says the "repeat" intention is generated because "a text is vocalized" - that is, as a consequence of what the processing device has done, not as a consequence of what the message contained.
The Examiner respectfully disagrees and initially submits that even though “an intention” is a voice command as per the instant specification, “an intention” is not recited in claim 1. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Furthermore, Applicant has failed to provide any direct evidence of “an intention” being disclosed in the alternative. It is not clear how an intention generated by the method as a function of the content of the message, and an intention supplied as tagged content within the message itself are alternatives. Or how this relates to the claim limitations at issue, “said at least one voice command not being included in said plurality of data.” The limitations do not recite, said at least one voice command not being included in said message. Thus, the specification does not describe in any way what Inphi describes. Hence, lacking any clarity in the instant specification of a voice command not being included in said plurality of data or of an intention being in the alternative in said plurality of data, Applicant's arguments cannot be deemed persuasive.
Applicant seems to draw conclusions which are unsupported by the instant specification thus the claims contain 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, at the time the application was filed, had possession of the claimed invention. Therefore, the 35 U.S.C. 112(a) rejection is maintained as below.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1 and 8-9 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.
The claims recite the limitation, “said at least one voice command not being included in said plurality of data” however the Instant Specification does not provide any support for this limitation. Paragraph [0092] of the Instant Specification US PGPUB states, “The method can also determine and/or generate “intentions” as a function of the content of the message. An “intention” is a voice command that the user is likely to enunciate and that the processing method must be able to interpret. For example, when a text is vocalized, an intention is generated allowing the vocalization of the text to be repeated when requested by the user. Specifically, when the user says the “repeat” voice command (generated intention) the text is re-vocalized. In the same way, a “what are the choices?” intention can be generated by the method in order to allow vocalization of the list of choices.” And paragraphs [0101] and [0106] describe associating tags with intentions.
However, there is no mention of any “intention” or voice command not being included in a plurality of data in the Instant Specification. Thus, the claimed limitation, “said at least one voice command not being included in said plurality of data,” was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim Rejections - 35 USC § 103
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.
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.
Claim(s) 1-2 and 5-12 are rejected under 35 U.S.C. 103 as being unpatentable over Pugliese et al. (11,900,942).
As per claim 1, Pugliese et al. teaches a method for processing a message sent by a conversational agent, said message comprising a plurality of data, said method being implemented by a processing device and comprising:
receiving said message, wherein the message is a textual message;
determining, according to a type of said plurality of data detected via analysis of the plurality of data, at least one first datum to be vocalized and at least one second datum to be displayed, said first and second datums being included in said plurality of data;
determining, as a function of said plurality of data, at least one voice command that the user is likely to enunciate [col. 9, ll. 42-59 and col. 14, ll. 32-55], said at least one voice command not being included in said plurality of data [col. 10, ll. 15-18];
making said at least one voice command interpretable by the processing device [col. 10, ll. 19-27];
vocalizing said at least one first datum; and
displaying said at least one second datum [col. 8, ll. 14-col. 9, ll. 8].
But Pugliese et al. fails to explicitly teach controlling vocalization of said message (the same message), however, teaches wherein interpretation of said at least one voice command by the processing device causes the processing device to control vocalization of a message [Pugliese et al., col. 12, ll. 58-col. 13, ll. 7 and col. 14, ll. 11-24 and fig. 11].
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Pugliese et a. in order to provide a way to rapidly modernize and upgrade chatbots with more modern voice recognition capability without incurring the large time, institutional burden, and high costs of reprogramming chatbots.
As per claim 2, Pugliese et al. teaches the method according to claim 1, wherein the determining of said at least one first datum and said at least one second datum, and the vocalizing, are conditional upon a result of detecting a type of said received message [col. 9, ll. 22-38].
As per claim 5, Pugliese et al. teaches the method according to claim 1, wherein the vocalizing is followed by acquiring at least one third datum, called response datum, from a user [col. 9, ll. 51-64].
As per claim 6, Pugliese et al. teaches the method according to claim 1, wherein the vocalizing further comprises vocalizing at least one fourth datum, said fourth datum being determined as a function of said plurality of data [col. 10, ll. 40-64].
As per claim 7, Pugliese et al. teaches the method according to claim 6, wherein said fourth datum is determined as a function of said at least one first datum and/or of said at least one second datum [col. 13, ll. 23-39].
As per claim 10, Pugliese et al. teaches the method according to Claim 1, wherein the method further comprises: determining at least one user intention according to a content of said message, and wherein the vocalizing comprises vocalizing said at least one first datum, said at least one second datum and said at least one user intention [col. 1, ll. 43-59].
As per claim 11, Pugliese et al. teaches the method according to Claim 1, wherein said at least one voice command comprises a repeat command determined as a function of said at least one first datum to be vocalized, and wherein interpretation of said repeat command by the processing device causes the processing device to re-vocalize said at least one first datum [col. 7, ll. 29-55].
As per claim 12, Pugliese et al. teaches the method according to Claim 1, wherein said at least one voice command comprises a request for choices, and wherein interpretation of said request for choices by the processing device causes the processing device to vocalize a list of choices contained in said message [col. 12, ll. 33-42 and col. 14, ll. 58-67].
Claims 8-9 have similar limitations as to the rejected claims above therefore they are being rejected under the same rationale.
There are prior art made of record not relied upon but is considered pertinent to applicant's disclosure. See attached.
Conclusion
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 extension fee 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 RANODHI N SERRAO whose telephone number is (571)272-7967. The examiner can normally be reached Monday to Friday 8:00 am to 4:00 pm.
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, John Follansbee can be reached on (571) 272-3964. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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Ranodhi N. Serrao
/RANODHI SERRAO/Primary Examiner, Art Unit 2444
