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 .
Status of Claims
This action is in reply to the claims filed on 10/09/2025.
Claims 1, 6-8, 13-14, and 19-20 are amended.
Claims 2, 4-5, 9, 11-12, 15, and 17-18 are cancelled.
Claims 1, 3, 6-8, 10, 13-14, 16, and 19-20 are currently pending and have been examined.
Claim Rejections- 35 U.S.C. § 112(a)
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, 3, 6-8, 10, 13-14, 16, and 19-20 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.
Independent claims 1, 8, and 14 recite “receiving, by a computing system and via a first application programming interface (API), information regarding the user from a front-end channel” and “transmitting, by the computing device, the information regarding the user from the front-end channel to an analytic server via a second API”. However, the Specification as filed does not describe a first and second API, receiving information via an API by a front-end channel, or transmitting information via an API to an analytic server. Accordingly, these limitations are considered to be new matter.
Dependent claims 3, 6, 7, 10, 13, 16, 19, and 20 inherit the deficiencies of the independent claims and are also rejected. Appropriate correction is required.
Claim Rejections- 35 U.S.C. § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 3, 6-8, 10, 13-14, 16, and 19-20 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 pre-AIA the applicant regards as the invention.
Claims 1, 8, and 14 recite the limitation "the speech message" in lines 10, 16, and 11 respectively. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, this limitation will be treated as recited “a speech message”.
Dependent claims 3, 6, 7, 10, 13, 16, 19, and 20 inherit the deficiencies of the independent claims and are also rejected.
Appropriate correction is required.
Claim Rejections- 35 U.S.C. § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 3, 6-8, 10, 13-14, 16, and 19-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Under Step 1 of the subject matter eligibility (SME) analysis described in MPEP 2106.03, the instant claims fall within the four statutory categories of invention identified by 35 U.S.C. 101. In the instant case, claims 1, 3, and 6-7 are directed to a method, claims 8, 10, and 13 are directed to a system, and claims 14, 16, and 19-20 are directed to a manufacture. Claims 1, 8, and 14 are parallel in nature, therefore, the analysis will use claim 1 as the representative claim.
In Step 2A Prong One, it must be considered whether the claims recite a judicial exception. Claim 1, as exemplary, recites abstract concepts including: receiving information regarding a user ... the information entered via a chat ... in a natural language conversation with the user; transmitting ... the information regarding the user ... to output intention information, the intention information determined by: converting a speech message into a computer-readable text message; analyzing the computer-readable text message to determine intention information of the user corresponding to the information regarding the user; accessing relevant business knowledge ... based at least in part on the intention information; and determining one or more actions based on the intention information and the relevant business knowledge; receiving the intention information ...; determining one or more actions based on the intention information, the one or more actions including a first action that indicates provisioning the service product according to the information regarding the user; and transmitting an instruction ... according to the first action ... to provision the service product, the service product comprising creating a lead based on a product interest selected by the user.
These recited limitations set forth the abstract idea of “provisioning a service product”, which falls within the “Certain Methods of Organizing Human Activities” grouping of abstract ideas as it relates to commercial interactions of sales activities or behaviors. These limitations also recite mental processes such as “engage in a natural language conversation with the user”, “obtain intention information, the intention information determined by: converting speech into a computer-readable text message; analyzing the computer-readable text message to determine intention information ... ; accessing relevant business logic ... based at least in part on the intention information; and determining one or more actions based on the intention information and the relevant business knowledge”, etc. The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. See MPEP 2106.04(a)(2)(III)(C). Accordingly, claims 1, 8, and 14 recite an abstract idea. See MPEP 2106.04.
In Step 2A, Prong Two Examiners evaluate whether the claim recites additional elements that integrate the judicial exception into a practical application. Instant claims 1, 8, and 14 recite additional elements including: an electronic processor; a computing system, a first application programming interface (API); a chat interface configured to engage in a natural language conversation; a front-end channel; a second API; an analytic server; an artificial intelligence (AI) service; transmitting an instruction to an orchestration server ... to cause the a service provisioning module of the orchestration server to provision; a computerized system; a machine-readable storage medium in electronic communication with the one or more electronic processors; instructions stored in the machine-readable storage medium and executable by the one or more electronic processors; and a non-transitory machine-readable storage medium encoded with instructions.
The use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. MPEP 2106.05(f). Each of identified additional elements are recited at a high level of generality and used in their ordinary capacity. The combination of these additional elements is no more than mere instruction to apply an exception with a generic computer (i.e. a generic cloud computing system). Accordingly, even in combination, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. See MPEP 2106.05. Claims 1, 8, and 14 are thus directed to an abstract idea.
Under Step 2B of the SME analysis, if it is determined that the claims recite a judicial exception that is not integrated into a practical application of that exception, it is then necessary to evaluate the additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself).
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as discussed above with respect to integration of the abstract idea into a practical application, the additional element(s) individually and in combination are merely being used to apply the abstract idea to a general computer components. For the same reason, the elements are not sufficient to provide an inventive concept. The combination of a front-end channel connected to an API, analytic server connected to a second API, and orchestration server for provisioning a product based on stored business logic is a well-understood and widely used architecture.
Therefore, the additional elements, alone or in ordered combination, there is no inventive concept in the claim, and thus claims 1, 8, and 14 are not patent eligible.
Dependent claims 3-4, 10-11, and 16-17 recite additional elements including: storing ... in a customer information database of the orchestration server; and business knowledge stored in a knowledge management system of the orchestration server. Similar to the additional elements identified above, the database, system. and “storing” are described in ordinary terms and merely used as a tool in performance of the abstract idea. Furthermore, storing information in memory has been repeatedly considered a well-understood, routine, and conventional computer activity by the Courts (see MPEP 2106.05(d)(II)). Accordingly, claim(s) 3-4, 10-11, and 16-17, considered both individually and as a combination, is/are ineligible.
Dependent claim(s) 6, 7, 13, 19 and 20 do not aid in the eligibility of the independent claims. These claims merely further define the abstract idea without reciting any further additional elements. Thus dependent claims 7, 13, and 20 are also ineligible.
Claim Rejections - 35 U.S.C. § 103
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.
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 factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-2, 7-8, 13-14, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Galitsky (US 2021/0103703 A1) in view of Swett et al. (US 12,086,826 B1).
Claim 1 ̶ Galitsky discloses a method for provisioning a service product, the method being implemented by an electronic processor (¶ [0389]), and comprising:
receiving, by a computing system and via a first application programming interface (API), information regarding a user on a front-end channel (¶ [0097]; ¶ [0098] “conversational user interface (UI)”), the information entered via a chat interface configured to engage in natural language conversation with the user (¶ [0197 “An autonomous agent intervenes in a natural manner at utterance 1605.”);
transmitting, by the computing device, the information regarding the user from the front-end channel to an analytic server via a second API (¶ [0198] “The system analyzes the utterances and determines a response that addresses the needs of the user”; ¶ [0203] “accessing, from a conversation between a user device and a computing device, a sequence of utterances”), the analytic server comprising an artificial intelligence (AI) service configured to output intention information (¶ [0098] “Natural language processing (NLP) and machine learning (ML) algorithms combined with other approaches can be used to classify end user intent.”; ¶ [0201] “determining a user's intent, or conversational action, which is performed in part via natural language classification”), the intention information determined by:
converting a speech message into a computer-readable text message (¶¶ [0057]-[0058] “For example, classification model 120 can be trained to detect a presence of particular features within one or more utterances or within a communicative discourse tree generated from the utterances.”; ¶ [0391] “voice recognition”);
analyzing the computer-readable text message to determine intention information of the user corresponding to the information regarding the user (¶ [0055] “the autonomous agent can monitor a sentiment of the utterances in dialogue 170”; ¶ [0098] “Natural language processing (NLP) and machine learning (ML) algorithms combined with other approaches can be used to classify end user intent.”);
accessing relevant business knowledge stored in an orchestration server based at least in part on the intention information (¶ [0383] “In certain aspects, order orchestration module 2622 enables the management of business processes associated with each order and applies business logic to determine whether an order should proceed to provisioning”); and
determining one or more actions based on the intention information and the relevant business knowledge (¶ [0098] “An intent is essentially, a mapping of customer input to a unit of work that the backend should perform. Therefore, based on the phrases uttered by the user in the chatbot, these are mapped that to a specific and discrete use case or unit of work, for e.g. check balance, transfer money and track spending”);
receiving the intention information from the analytic server (¶ [0198] “The system ... determines a response that addresses the needs of the user”);
determining one or more actions based on the intention information, the one or more actions including a first action that indicates provisioning the service product according to the information regarding the user (¶ [0382] “At operation 2640, information regarding the order is communicated to an order orchestration module 2622. Order orchestration module 2622 may utilize the order information to orchestrate the provisioning of services and resources for the order placed by the customer.”); and
transmitting an instruction to an orchestration server according to the first action to cause a service provisioning module of the orchestration server to provision the service product (¶ [0382] “At operation 2640, information regarding the order is communicated to an order orchestration module 2622” and “In some instances, order orchestration module 2622 may orchestrate the provisioning of resources to support the subscribed services using the services of order provisioning module 2624.”).
Galitsky does not disclose the following limitations, however Swett – which like Galitsky is directed to presenting recommendations based on user intent – teaches:
the service product comprising creating a lead based on a product interest selected by the user (Swett: Col 41, ll. 5-10 “As mentioned above, the service provider can provide, among other services, ... onboarding services”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the onboarding services as taught by Swett in the method of Galitsky in order to make the onboarding experience personalized and frictionless when compared to traditional onboarding methods (Swett: Col 47, ll. 15-20).
Claim 2 – The combination of Galitsky in view of Swett teaches the method according to claim 1, Galitsky discloses, further comprising:
transmitting the information regarding the user to the analytic server (¶ [0056] “Autonomous agent 102 can interact with user device 160, for example, in a dialogue session. An example of a method for facilitating such a dialogue is discussed with respect to FIG. 20. Autonomous agent 102 can monitor a sentiment of the conversation of dialogue 170”); and
analyzing the information regarding the user by an artificial intelligence (Al) service of the analytic server (¶ [0056] “Autonomous agent 102 can monitor a sentiment of the conversation of dialogue 170 and determine a change in sentiment”; ¶ [0057] “In some cases, autonomous agent 102 can use machine learning techniques”).
Claim 7 – Galitsky discloses the method according to claim 1. Galitsky does not disclose the following limitations, however Swett – which like Galitsky is directed to presenting recommendations based on user intent – teaches: wherein the service product further comprises at least one of: providing the user with an onboarding process; creating a customer account for the user (Swett: Col 45, ll. 30-50); providing the user with education resources based on the intention information.
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the onboarding services as taught by Swett in the method of Galitsky in order to make the onboarding experience personalized and frictionless when compared to traditional onboarding methods (Swett: Col 47, ll. 15-20).
Claim 8 and 13 which are directed to a system, recite limitations that are parallel in nature as those addressed above for method claims 1 and 7. Claim 8 is therefore rejected for the same reasons as set forth above for claims 1 and 7, respectively.
Claim 14 and 20 which are directed to a non-transitory computer-readable medium, recite limitations that are parallel in nature as those addressed above for method claims 1 and 7. Claims 14 and 20 therefore rejected for the same reasons as set forth above for claims 1 and 7, respectively.
Claims 3, 6, 10, 16, and 18-19 are rejected under 35 U.S.C. 103 as being unpatentable over Galitsky in view of Swett, and further in view of Nishant et al. US 2019/0012390 A1.
Claim 3 – The combination of Galitsky in view of Swett teaches the method according to claim 1, Galitsky discloses, further comprising storing the information regarding the user and the corresponding intention information of the user in a ... information database of the orchestration server (¶ [0378]; ¶ [0380] “At operation 2636, the order is stored in order database 2618. Order database 2618 can be one of several databases operated by cloud infrastructure system 2602 and operated in conjunction with other system elements.”).
Galitsky does not disclose a customer information database, however Nishant – which like Galitsky is directed to identifying user intent using a chat bot – teaches, storing the information regarding the user and the corresponding intention information of the user in a customer information database (Nishant ¶ [0079] “Database(s) 140 may be configured to store automated chat conversation dialog for a conversation session. In some examples, database(s) 140 may store state data related to the conversation dialog (e.g., ConversationID, user selections, web page/website information, user actions on a web page during the conversation session, etc.)”; ¶ [0116] “At step 424, query engine 316 may store the query results in database(s) 140, and database(s) 140 may update the intent history for user 106.”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the customer information database as taught by Nishant in the method of Galitsky in order to provide a proactive system capable of predicting a user’s next move and providing the user with a best answer, rather than a list of all possible answers (Nishant ¶ [0030]).
Claim 6 – The combination of Galitsky in view of Nishant teaches the method according to claim 1. Galitsky further discloses, further comprising analyzing the identified business knowledge ... to determine relevancy of the identified business knowledge to the intention information of the user (¶ [0383] “In certain aspects, order orchestration module 2622 enables the management of business processes associated with each order and applies business logic to determine whether an order should proceed to provisioning.”).
Galitsky does not disclose analyzing ... by the AI service, however Nishant further teaches, analyzing the identified business knowledge by the AI service to determine relevancy (Nishant ¶ [0074] “Chat bot 132 may be configured to read and analyze user input via chat bot interface 150, and generate conversational answer(s) to the user input, by further processing via intent analysis system 136 and query system 138.”; ¶ [0077] “Query system 138 may also be configured to perform an automated search of relevant content among content source(s) 128 upon a determination to proceed with the automated search”).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have included the AI service as taught by Nishant in the method of Galitsky in order to provide a proactive system capable of predicting a user’s next move and providing the user with a best answer, rather than a list of all possible answers (Nishant ¶ [0030]).
Claim 10 which are directed to a system, recite limitations that are parallel in nature as those addressed above for method claim 3. Claim 10 is therefore rejected for the same reasons as set forth above for claim 3.
Claims 16 and 19, which are directed to a non-transitory computer-readable medium, recite limitations that are parallel in nature as those addressed above for method claims 3 and 6. Claim(s) 16 and 19 are therefore rejected for the same reasons as set forth above for claims 3 and 6.
Response to Arguments
Applicant's arguments filed 10/09/2025 with respect to the 35 U.S.C. § 101 rejections have been fully considered but they are not persuasive.
On page 8 of the Remarks, Applicant argues “amended claim 1 recites a specific, unconventional arrangement of components that provides a technology-based solution for automated, frictionless customer onboarding”. Specifically, Applicant argues “the claimed architecture –which separates user-facing intent analysis in an analytic server from backend resource management in an orchestration server—and the specific workflow—a back-and-forth communication loop where the orchestration server provides business knowledge to the analytic server to inform the final action determination—is an unconventional arrangement”.
The Examiner respectfully disagrees. If the additional element (or combination of elements) is a specific limitation other than what is well-understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility. If, however, the additional element (or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility. The analysis as to whether an element (or combination of elements) is widely prevalent or in common use is the same as the analysis under 35 U.S.C. 112(a) as to whether an element is so well-known that it need not be described in detail in the patent specification. MPEP 2106.05(d).
The arrangement of a front-end server and a backend server communicating back-and-forth is the usual arrangement for a standard business website (Jason, et al. “Distinction between API and Frontend-Backend.”, pg. 1). The orchestration server coordinates workflows across devices (“accessing relevant business knowledge stored in an orchestration server...”/“transmitting an instruction to the orchestration server according to the first action...”), which is how ordinary orchestration servers operate. Applicant’s Specification at ¶ [0074] explains that “well-known circuits, processes, algorithms, structures, and techniques have been shown without necessary detail in order to avoid obscuring configurations”. The Specification does not describe the orchestration server, analytic server, service provisioning module, or their arrangement in any relevant technical detail and instead only recites desired outcomes (e.g. the analytic server as being configured to x, y, z), without details as to how the servers actually performs the stated functions or how they are arranged. Accordingly, one of ordinary skill in art would conclude that these are well-known structures and techniques. For at least these reasons, the Examiner is maintaining the § 101 rejections.
Applicant's arguments filed 10/09/2025 with respect to the 35 U.S.C. § 102/103 have been fully considered but they are not persuasive. On page 9 of the Remarks, Applicant argues “Swett only mentions ‘onboarding services’ and is silent on ‘a lead based on a product interest selected by the user.’”
The Examiner respectfully disagrees. Applicant’s specification does not provide a special definition for “a lead”, however this term is understood to refer to an entity that might buy from you. Notably, in Applicant’s specification the creation of the lead is performed by the customer onboarding system (¶ [0059]). Swett in col 41, ll. 5-10 describes “the service provider can provide ... onboarding services”. Col 45, ll. 35-50 of Swett clarifies these onboarding services: “In some examples, onboarding can involve presenting various questions, prompts, and the like to a potential user 1014 to obtain information that can be used to generate a profile for the potential user 1014. In at least one example, the service provider can provide limited or short-term access to its services prior to, or during, onboarding (e.g., a user of a peer-to-peer payment service can transfer and/or receive funds prior to being fully onboarded, a merchant can process payments prior to being fully onboarded, etc.). In at least one example, responsive to the potential user 1014 providing all necessary information, the potential user 1014 can be onboarded to the service provider”. Swett describes generating a profile for a potential user (creating a lead) while that potential user accesses services (selected product interest). Accordingly, the Examiner maintains that the combination of Galitsky in view of Swett teach the aforementioned, and all other elements of amended claims 1, 8, and 14. The dependent claims similarly remain rejected as no deficiencies have been identified in their respective rejections.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Jason, et al. (NPL Reference U) describes a standard business website comprising a front-end, back-end, database, and API.
Stanik, Martin. (NPL Reference U) describes a common setup for web applications including a front end, load balance, multiple application servers, and distributed database, where communication is facilitated with an API.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KENNEDY A GIBSON-WYNN whose telephone number is (571)272-8305. The examiner can normally be reached M-F 8:30-5:30 PM.
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/K.G.W./Examiner, Art Unit 3688
/Jeffrey A. Smith/Supervisory Patent Examiner, Art Unit 3688
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