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 .
The text of those sections of Title 35, U.S. Code not included in this action can be found in a prior Office action.
Response to Amendments and Arguments
Applicant substantially amended all independent claims by deleting several previously presented limitations and adding different limitations to shift the claimed inventions to distinct inventions. Although it is improper to shift a claimed invention to a distinct invention after receiving an office action, the examiner treats the amendment filed on 07/14/2026 as bona fide response and examines merit of the amended claims.
Regarding an outstanding rejection under 35 U.S.C. 101, applicant argued (Remarks, 7-10) that amended independent claims integrated any recited judicial exception into a practical application because the claims reflect disclosed improvement to machine learning technology. In particular, applicant argued that the disclosure describes a two-stage mechanism to generate turn-level labels and sentence-level labels.
By reviewing amended independent claims, the examiner believed that claimed inventions defined by independent claims are still directed to an abstract idea. Fig. 1 of the cited Chintagunta reference shows labelled dialog text between a doctor and a patient (Note, Fig. 1 in the cited prior reference to Chintagunta is the same drawing of Fig. 11 in the instant application. The independent claims are related to various labels illustrated in Fig. 11).
A method defined by claim 1 could be interpreted as a person reads a transcribed text from a conversation between a doctor and a patient. The person adds labels to the transcribed text to indicate which parts were spoken by the doctor and which parts were spoken by a patient as illustrated below:
receiving text (a medical assistant receives text that contains a dialog between a doctor and a patient);
labelling, with a trained first model, turn-level labels for turns of the text (the medical assistant labels dialog turns by indicating which sections in the dialog text were doctor’s explanations and what sections were patient’s questions; Note, a claimed “a trained first model” is interpreted as assistant’s language knowledge in his mind, which was trained in an elementary school);
generating, using the trained first model, sentence-level labels for sentences within the turns (the medical assistant also labels each sentence in the sections in the doctor’s explanations / sentences in patient’s questions);
labelling, with a second model trained on the sentence-level labels, components of the text with discourse structure labels (the medical assistant also labeled some words (claimed “components”) of the dialog, e.g., a doctor’s suggestion: “need a blood test” or “taking a medicine” etc.);
generating, with at least one of the first OR the second model a document comprising the labeled components, the labeled components organized according to the discourse structure labels (the medical assistant finishes his work by generating a complete medical record with various labels including dialog turn level labels, sentence level labels, a summary of doctor’s suggestions, which are claimed “labelled components”).
As illustrated above, a method defined by claim 1 is still directed to an abstract idea (labelling a dialog text by human). The rejection under 101 to independent claims are maintained.
Applicant added a new dependent claim 31 and argued (Remarks, pages 9-10) that limitations recited in the new dependent claim 31 quantified improvement. Applicant stated claim 31 is not directed to a mental process.
By reviewing the newly added claim 31, the examiner agrees that the newly added claim 31 is not directed to an abstract idea.
Regarding outstanding rejections under 35 U.S.C. §102 and §103, applicant substantially amended independent claims by deleting certain limitations and adding new limitations. Applicant argued (Remarks, pages 10-12) that the previously cited Chintagunta reference does not teach all limitations in the amended independent claims. In particular, applicant argued that the cited Chintagunta reference is directed to the generation of summaries and the synthesis of summarization training data, not to a two-stage classification pipeline in which a turn level model's output trains a sentence-level model to label discourse structure.
In response, the examiner notices that Chintagunta reference was a published research paper co-authored by the instant inventors. Chintagunta focuses on generating a summary using labelled dialog texts (Chintagunta, section 5, datasets). The amended independent claims shift inventions to labeling the dialog text. Chintagunta does not focus on labelling the dialog text.
After performing update searches, the examiner discovered several prior art references. In the following rejection over prior art references, the examiner cites a new reference to reject amended independent claims. Applicant's arguments regarding the amended claims have been considered but are moot because the arguments do not apply to the new ground rejections necessitated by the amendment.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
The Manual of Patent Examining Procedure (MPEP) provides detailed rules for determining subject matter eligibility for claims in §2106. Those rules provide a basis for the analysis and finding of ineligibility that follows. MPEP §2106(III) states that examiners should determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the flowchart in this section.
Claims 1 and 23-30 are rejected under 35 U.S.C. §101. The claimed invention is directed to unpatentable subject matter because the claimed invention recites a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The examiner analyzes the instant claims according to a flowchart for subject matter eligibility test for products and processes (MPEP 2106).
Eligibility Step 1 (MPEP 2106.03, Statutory category):
Claims 1, 23-27 and 30 are directed to a method, claim 28 is directed to a non-transitory computer readable medium and claim 29 is directed to an apparatus. The claims 1, 23-27 and 30 fall into one of the four statutory categories of invention (YES branch of step 1).
Eligibility Step 2A, Prong One (does a claim recites a judicial exception?) (MPEP 2106.04(a) – (c)):
Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception (See a flowchart in MPEP 2106.04(II)(A)). In the prone one of the two prong inquiry, the above limitations recited in claims are directed to at least one of groups of abstract ideas (MPEP 2106.04(a), “Mathematical concepts”, “Certain methods of organizing human activity”, “Mental Processes”). It should be noted that these groupings are not mutually exclusive, i.e., some claims recite limitations that fall within more than one grouping or sub-grouping (MPEP 2106.04(a)(2)).
Although claims 1 and 23-30 are directed to one of the four statutory categories of invention (MPEP 2106.03), independent claims recite a number of steps of (“receiving …”, “labelling …” and “generating …”). These limitations fall into a judicial exception (MPEP 2106.04 (II), “laws of nature”, “natural phenomena” and “abstract idea”). The Supreme Court has explained that the judicial exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and technological work", and are thus excluded from patentability because "monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it." Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980. It should be noted that there are no bright lines between the types of exceptions, and that many of the concepts identified by the courts as exceptions can fall under several exceptions (MPEP 2106.04 (I) and (II)).
In light of the disclosure (e.g., Fig. 11 or Fig. 15), a claimed invention is related to labelling a dialog text between a doctor / a patient. The claimed invention could be performed by a human as explained above (in a section of response to argument). If a method of claim 1 were patented, a medical assistant would infringe the patent if he / she is doing a routine job. Claim 28 is directed to a computer readable medium. Claim 29 is directed to a device. Although these claims include generic computer elements (a processor / a memory), the claims include similar features as method claim 1. The added generic computer elements just links a judicial except to a technological environment / using a generic computer as a tool.
Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception (See a flowchart in MPEP 2106.04(II)(A)). In the prone one of the two prong inquiry, the above limitations recited in claims are directed to at least one of groups of abstract ideas (MPEP 2106.04(a), “Mathematical concepts”, “Certain methods of organizing human activity”, “Mental Processes”). It should be noted that these groupings are not mutually exclusive, i.e., some claims recite limitations that fall within more than one grouping or sub-grouping (MPEP 2106.04(a)(2)).
The courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper” to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir.2011). If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75,674. If the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept.
As illustrated above, claim limitations could be interpreted as an assistant summarize a conversation between a doctor and a patient. Independent claims 28 and 29, although directed to different categories, include similar features. Generally linking a judicial exception with a particular technological area or just recite an equivalent of “apply it” does NOT integrate a judicial exception into a practical application. Dependent claims 23-27 and 30 recite limitations related to various aspects of conversations between the doctor and a patient. These additional limitations also fail to integrate the judicial exception into a practical application.
In these situations, the claim is considered to recite a mental process. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” The claims therefore recited an abstract idea, despite the fact that the claimed steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504.
Since the claimed invention falls into a judicial exception according above analysis, a claim that is directed to a judicial exception must be evaluated to determine whether the claim recite additional elements that integrate the judicial exception into a practical application (MPEP 2106.04(II)(A)(2)). Prong Two asks whether the claim recite additional elements that integrate the judicial exception into a practical application. In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. Court in Gottschalk v. Benson ‘‘held that simply implementing a mathematical principle on a physical machine, namely a computer was not a patentable application of that principle. Accordingly, after determining that a claim recites a judicial exception in Step 2A Prong One examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception in Step 2A Prong Two. For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B. If there are no additional elements in the claim, then it cannot be eligible.
MPEP §2106.05 describes step 2B test to determine whether a claim amounts to significantly more. The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014). The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept (See MPEP §2106.05(I)(A)). It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2B. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception is not in itself an inventive concept and does not guarantee eligibility.
The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept. By considering limitations recited in the instant claims, the claims do not improve the functions of a computer, or any other technology or technical field. The claims also do not apply the judicial exception with, or by use of, a particular machine. The claims also do not have effecting a transformation or reduction of a particular article to a different state or thing. The claims fail to include a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application. The recited “processor” / “memory” are well-understood, routine and conventional in the field. Therefore, that recited element does not amount to significantly more than an abstract idea.
Please notes simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984. The court also found “adding insignificant extra-solution activity to the judicial exception” or “generally linking the use of the judicial exception to a particular technological environment or field of use” is not enough to be qualify as “significantly more” considerations.
By reviewing limitations recited in the claims, none of the limitations meet the significantly more considerations. Therefore, claims are directed to unpatentable subject matter (MPEP §2106, flowchart, Step 2B, NO branch.
Claim Rejections - 35 USC § 112
The following is a quotation 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 35 U.S.C. 112 (pre-AIA ), first paragraph:
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 1-8, 10-14 and 23-31 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 pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Applicant amended all independent claims by adding many new limitations. In particular, applicant added a new limitation:
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The original disclosure mentions many different models (“machine learning model”, “large language model”, “transformer-based model”, “generative learning model”, “a language model”, “turn-level model”, “sentence level model” etc.). The specification does not specific which model is “a second model”. Based on a best understanding, it appears a claimed “a second model trained on the sentence-level labels” refers to “a sentence level model” (Spec. [0036], [0049]). The trained sentence level model is used to refine sentence labels (Spec. [0049], [0052]). The original disclosure does NOT support using a sentence level model to label “components of text with discourse structure labels”.
The amended independent claims further recite:
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As explained above, the original disclosure mentions various models but does not specific which model is “a first model” or “a second model”. Based on a best understanding, it appears a claimed “a first model” refers a turn-level model and “a second model” refers to a sentence level model. However the original disclosure does not describe using a turn-level model OR a sentence-level model to generate a document with discourse structure labels.
Dependent claims 2-8, 101-4 and 23-31 depend from claim 1 and include all limitations of claim 1. These dependent claims are also rejected.
In the following rejection over prior art references, the examiner interprets claim limitations based on a best understanding in light of the original disclosure.
Applicant amended claim 10 by replacing “at least one machine learning model” with “wherein the first or second model” include…
By reviewing the disclosure (Spec. [0084-0113]), the claimed features in claim 10 is related to an auto-charting component (Fig. 1, #120). Since a claimed “a first model” refers to “a turn level model” and a claimed “a second model” refers to “a sentence level model”, the original disclosure does NOT support the amended claim 10. Claims 11-14 depend from claim 10 and include all limitations of claim 10. Claims 11-14 are also rejected.
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 2-8 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.
Applicant deleted many limitations in an amendment filed on 07/14/2026. Deleting limitation causes insufficient antecedent basis issue for certain recited terms.
For example, claim 2 recites “the turn-level model”, “the sentence level model”. Since applicant deleted a limitation “wherein the at least one machine learning model includes a turn-level model and a sentence-level model and further comprising training the tum-level model and the sentence-level model (without markings for the deleted limitations), the recited the turn-level model” and “the sentence level model” have insufficient antecedent basis. Claims 3-8 depend from claim 2 and include limitations of claim 2. Therefore, claims 3-8 are also rejected.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 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 –
(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.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 28 and 29 are rejected under 35 U.S.C. §102 (a)(1) as being anticipated Yim (US PG Pub. 2022/0189486, referred to as Yim).
Yim discloses generating labelled data from conversations between a clinician and a patient (Yim, [0101-0102], a labelling module to generate labelled text between a clinician and a patient; see an illustration in Fig. 5). Yim further discloses training different classifiers for classifying relevant sentences (Yim, [0098-0099], [0100-0101], [0109]) and identify sentences (Yim, [0095], a first classifier for identifying sentences). The classifier also identifies sentences from a clinician or from a patient (Yim, [0110], Fig. 16, a block of text from Speech2text is separated with text from clinician or from patient and labeled as statement, question and answer). The examiner replicates Fig. 16 from Yim reference below:
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Regarding claims 1, 28 and 29, Yim discloses a method, a computer readable medium and an apparatus of speech signal processing using artificial intelligence (Yim, [0101-0102], [0116], Fig. 19, a computer implemented question / answer system for labeling discourse between a clinician and a patient; also see Fig. 14), comprising:
receiving text (Yim, Fig. 16, using Speech2Text to generate text from a dialog between a clinician with a patient);
labelling, with a trained first model, turn-level labels for turns of the text (Yim, [0095-0098], using a first classifier module and a second classifier module to identify sentences from a clinician or from patient, see, Fig. 18A);
generating, using the trained first model, sentence-level labels for sentences within the turns (Yim, [0095-0098], [0121-0122], using 1st classifier, 2nd classifier, 3rd classifier to identify sentences; [0110], identifying sentences from a clinician or from a patient; Fig. 16; [0109]);
labelling, with a second model trained on the sentence-level labels, components of the text with discourse structure labels (Yim, Fig. 16, generating labels for sentences as “Statement”, “Questions” or “Answers”, which are discourse structure);
generating, with at least one of the first OR the second model a document comprising the labeled components, the labeled components organized according to the discourse structure labels (Yim, Fig. 4 and Fig. 16 shows the labeled components organized according to the discourse structure labels).
Claim Rejections - 35 USC § 103
Claims 23-27 and 30 are rejected under 35 U.S.C. 103 as being unpatentable over Yim in view of Chintagunta et al. (“Medically Aware GPT-3 as a Data Generator for Medical Dialogue Summarization”, referred to as Chintagunta), and further in view of Joshi et al. (“Dr. Summarize: Global Summarization of Medical Dialogue by Exploiting Local Structures”, a reference submitted in an IDS, referred to as Joshi)
Chintagunta is a published research paper co-authored by the inventors. Chintagunta discloses using a GPT-3 model (a transformer model) to generate a summary for a conversation between a doctor and a patient (see Fig. 1). The limitations recited in independent claims are related to features of Fig. 11 in this application, which is the same drawing of Fig. 1 in the cited Chintagunta reference.
Joshi is another published research paper co-authored by the inventors. Joshi discloses generating summary by analyzing conversations between a doctor and a patient using deep learning model (Joshi, Section 1, Introduction, Section 6, Experiments). Joshi discloses explicitly / implicitly many features defined by dependent claims.
Regarding dependent claims 23-27 and 30, Yim discloses using various classifiers to label conversation texts with different labels (Yim, Fig. 16). Yim does not explicitly disclose limitations in these dependent claims, which are related to contents of a dialog. Claims recites limitations related to contents in the documents, i.e., conversations between a doctor / a patient (e.g., claim 23, extracting medical terms, claim 24, extracting reason for encounter, claim 25, prompting a model), all claimed features are either explicitly or implicitly disclose in inventor’s published papers.
Chintagunta discloses limitations of claim 23,
extracting medical entities from the text (Chintagunta, section 4.1, medically aware GPT-3, algorithm 1, extracting medical terms); and
extracting affirmation status of the extracted medical entities (Chintagunta, comparing summaries from GPT-3 and medical aware GPT-3-ENG, affirmation medical terms are correct).
Chintagunta further discloses limitations of claim 24,
generating a reason for encounter based on a first message in the text (Chintagunta, Section 3, Fig. 1, has a headache).
Chintagunta further discloses limitations of claim 25,
submitting at least one prompt including the text to a generative artificial intelligence (Chintagunta, page 76, prompts submitted to GPT-3 for generating summarization).
Dependent claims 26-27 and 30 are related to summarization contents from a conversation between a doctor and a patient. Although these features are implied in the cited Chintagunta, the examiner further cites another inventor’s published paper by Joshi, which shows more examples of generating various summaries from different conversations between doctors and patients.
Yim, Chintagunta and Joshi and are related to processing a conversation between a doctor and a patient. It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to modify Yim with Chintagunta and Joshi’s teaching to obtain more details about various contents in the labeled text. One having ordinary skill in the art would have been motivated to make such a modification to obtain better results (Chintagunta, Section 4.1). In addition, since all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods, and in the combination each element merely would have performed the same function as it did separately. “A combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. ___, 82 USPQ2d at 1395 (2007). One of ordinary skill in the art would have recognized that the results of the combination were predictable.
Examiner’s Note
Claims 2-8, 10-14 and 31 are not rejected over prior art references. These dependent claims may be allowable if overcome rejections under 35 U.S.C. 112(a) and 112(b) set forth in this office action and rewrite in an independent form by including limitations from base claims.
Conclusion
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 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jialong He, whose telephone number is (571) 270-5359. The examiner can normally be reached on Monday – Friday, 8:00AM – 4:30PM, EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Pierre Desir can be reached on (571) 272-7799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIALONG HE/Primary Examiner, Art Unit 2659
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