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 Amendment
This Action is in response to the Amendment filed January 2, 2026. Claims 1, 8 and 15 are amended. Claims 1, 4-8, 11-15 and 18-20 are pending and have been examined in this application. The Information Disclosure Statements (IDSs) filed on January 7, 2026 has been acknowledged.
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.
Claims 1, 4-8, 11-15 and 18-20 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 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, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
In claims 1, 8 and 15 the limitation “collecting, by the one or more processors. interaction data indicating user engagement with the personalized information, the interaction data comprising at least one of reactions to the personalized information, sharing of the personalized information, or follow-up actions by the user” is not supported by the original disclosure. The specification states that in “the ad ranking component 380 continuously monitors engagement with ranked ads and refines the model to improve ranking accuracy over time.” [0127]; and interaction “data collected and used to train the LLM 338 include, but are not limited to, what is asked, follow-up questions, in application reporting of answers, in-application reactions to answers, forwarding of answers, sharing of answers, retention, frequency of use, .ad interactions” [0160]. This does not describe collecting interaction data indicating user engagement with personalized information that comprises reactions to the personalized information, sharing of the personalized information, or follow-up actions by the user. Accordingly, the limitation is directed to impermissible new matter. Claims 4-7; 11-14 and 18-20 by being dependents of Claims 1, 8 and 15 respectively are also rejected.
In claims 1, 8 and 15 the limitation “finetuning, by the one or more processors, the machine learning model based on the interaction data” is not supported by the original disclosure. The specification states that “textual components of ads are used to finetune the responses of the LLM 338 conditioning the responses of the LLM 338” [0112]. This does not describe that the machine learning model is finetuned based on the interaction data (i.e., engagement with personalized information). Accordingly, the limitation is directed to impermissible new matter. Claims 4-7; 11-14 and 18-20 by being dependents of Claims 1, 8 and 15 respectively are also rejected.
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.
Claims 1, 4-8, 11-15 and 18-20 are 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.
Claims 1, 4-8, 11-15 and 18-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. Specifically, claims 1, 4-8, 11-15 and 18-20 are directed toward at least abstract idea without significantly more. In accordance with MPEP § 2106, the rationale for this determination is explained below.
Representative claim 1 is directed towards a method, claim 8 is directed towards a machine, which are statutory categories of invention. Claim 15 is directed to a machine-storage medium, which is not a statutory category of invention.
Although, claim 1 is directed toward a statutory category of invention, the claim however, is directed towards a judicial exception, namely abstract ideas. The limitations that set forth the abstract ideas recite: receiving, a user prompt of a user during a conversation with a chatbot; mapping, the conversation to an intent vector using the plurality of keywords and the one or more expanded concepts, the intent vector comprising a dynamic representation of the user intent that is updated in real-time as the user engages in the conversation; associating a temporal time factor to each keyword or expanded concept in the intent vector, the temporal time factor decaying in time indicating a freshness of the keyword or expanded concept; determining, personalized information based on the user intent; communicating, during the conversation, the personalized information for display to the user; collecting, interaction data indicating user engagement with the personalized information, the interaction data comprising at least one of reactions to the personalized information, sharing of the personalized information, or follow-up actions by the user. These limitations, describe commercial interactions including, advertising, marketing or sales activities and business relations, as well as managing personal behavior or interactions between people including social activities and following rules or instructions. As such, the limitations are directed towards the abstract grouping of Certain Methods of Organizing Human Activity in prong one of step 2A of the Alice/Mayo test (see MPEP 2106.04(a)(2) II). Whereas, the limitations extracting from the user prompt, a plurality of keywords; generating, based on the plurality of keywords, one or more expanded concepts; assigning, a weight to each keyword and expanded concept in the intent vector based on an importance of the keyword or expanded concept in the conversation; determining, a user intent the intent vector comprising the plurality of keywords and the one or more expanded concepts and generating the user intent based on the intent vector. These limitations, but for a computer are capable of being performed in the human mind including the use of pen and paper, and are thus, grouped under the abstract idea of Mental Processes in prong one of step 2A of the Alice/Mayo test (see MPEP 2106.04(a)(2) III).
This judicial exception is not integrated into a practical application because, when analyzed as whole under prong two of step 2A of the Alice/Mayo test (see MPEP 2106.04(d)), the additional elements provided by the claim amount to merely using a computer as a tool to apply an abstract idea, or instructions to implement the abstract idea on a computer. In particular the claim recites the additional elements: by the one or more processors, from a client system; by the one or more processors, using natural language processing; by the one or more processors; by the one or more processors, with the chatbot; by the one or more processors; by the one or more processors; by the one or more processors, using a machine learning model, the machine learning model receiving; by the one or more processors; by the one or more processors, to the client system, which are recited at a high level of generality and are the mere use of a computer as a tool to perform the abstract ideas. See MPEP 2106.05(f). While, the limitation, finetuning, by the one or more processors, the machine learning model based on the interaction data, amounts to insignificant extra-solution activity because such activity is merely marginally or tangentially added post-solution activity. See MPEP 2106.05(g). Simply applying the abstract idea by computer components and adding insignificant extra-solution activities is not a practical application of the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), the claim does not apply the abstract idea with, or by use of, a particular machine (MPEP 2106.05(b)), the claim does not effect a transformation or reduction of a particular article to a different state or thing (MPEP 2106.05(c)), and the claim does not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e)). Therefore, the claim does not, for example, purport to improve the functioning of a computer. Nor does it effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claim is directed to abstract ideas.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the claim recites additional limitations amounting to extra-solution activity and using a computer to apply the abstract idea. Viewing the limitations individually, the finetuning, by the one or more processors, the machine learning model based on the interaction data, amounts to a nominal or tangential post-solution application to the claim, see MPEP 2106.05(g). Furthermore, finetuning a machine learning model based on interaction data is well understood, routine and conventional. See at least Dolan et al. (US 20230123535 A1); Mahadevan et al. (US 20240078768 A1); Shoemaker et al. (US 10817791 B1); Grajeket al. (US 10680823 B2); Xu (US 20240053817 A1); Allen et al. (US 20190237083 A1); Sharifi et al. (US 20230230578 A1).
Moreover, the additional limitations of one or more processors, a client system, chatbot, a memory (claim 8), also do not constitute significantly more because they are simply an attempt to limit the abstract idea to a particular technological environment1. Viewing these limitations as a combination, the additional elements amount to no more than merely applying the exception using generic computer components and extra-solution activity. Merely applying an exception using computer components cannot provide an inventive concept. Therefore, the limitations of the claim as a whole, when viewed individually and as an ordered combination, do not amount to significantly more than the abstract idea.
A review of dependent claims 4-7, likewise, do not recite any limitations that would remedy the deficiencies outlined above. The claims only further add to the abstract idea, with no elements which integrate the abstract idea into a practical application or constitute significantly more. Thus, while they may slightly narrow the abstract idea by further describing it, they do not make it less abstract and are rejected accordingly. Further still, claims 8, 11-15, 18-20 suffer from substantially the same deficiencies as outlined with respect to claims 1, 4-7 and are also rejected accordingly.
Claims 15 and 18-20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because they are directed towards a machine-storage medium which given the broadest reasonable interpretation covers “signal per se”.
The specification, states that “[n]on-transitory machine-readable storage medium” refers to a tangible medium that is capable of storing, encoding, or carrying the instructions for execution by a machine.” [0285]. In regards to a signal per se rejection, the language in the claim or specification has to explicitly state that the medium is non-transitory in all scenarios. Accordingly, the Examiner is interpreting the independent claim recitation as signal per se which are non-statutory forms of patentable subject matter. In order to overcome this rejection, the Office recommends amending the claims so that they recite only non-transitory media.
Response to Arguments
Applicant's filed arguments have been fully considered but have not been found persuasive.
A. Applicant argues regarding the 35 U.S.C. § 101 rejection that the amended claims are not directed to commercial interactions, but instead recite a technical method for processing user inputs in a chatbot system through a series of computational operations performed by processors and machine learning models. The Examiner respectfully disagrees. The amended claims describe commercial interaction, which include steps that go towards advertising, marketing or sales activities and business relations (receiving, a user prompt during a conversation; mapping, the conversation to a dynamic representation of the user intent using the plurality of keywords and the one or more expanded concepts, updated in real time; associating a temporal time factor to each keyword or expanded concept, indicating a freshness of the keyword or expanded concept; determining, personalized information based on the user intent; communicating, during the conversation, the personalized information for display to the user); “advertisers target and bid for specific keywords or expanded concepts, which enables them to reach a highly targeted group of users” Applicant specification [0025]. As well as managing personal behavior or interactions between people including social activities and following rules or instructions (receiving, a user prompt during a conversation; collecting, interaction data indicating user engagement with the personalized information, the interaction data comprising at least one of reactions to the personalized information, sharing of the personalized information, or follow-up actions by the user). Hence the claim is grouped under Certain Methods of Organizing Human Activity. The claims also recite extracting, from the user prompt, a plurality of keywords; generating, based on the plurality of keywords, one or more expanded concepts; assigning, a weight to each keyword and expanded concept in the intent vector based on an importance of the keyword or expanded concept in the conversation; determining, a user intent the intent vector comprising the plurality of keywords and the one or more expanded concepts and generating the user intent based on the intent vector, which but for the use of a computer are capable of being performed in the human mind including the use of pen and paper, and are thus, grouped under the abstract idea of Mental Processes (see 101 analysis above).
Applicant submits that the amended claims integrate any abstract idea into a practical application by reciting a specific technical improvement to how chatbot systems determine and utilize user intent. The Examiner respectfully disagrees. The amended claims do not integrate the abstract idea into a practical application because they only further add to the abstract idea through computing components and extra-solution activity. Collecting, interaction data indicating user engagement with personalized information, where the interaction data comprises at least one of reactions to the personalized information, sharing of the personalized information or follow-up actions by the user is in and of itself part of the abstract idea grouped under Certain Methods of Organizing Human Activity, and at most extra-solution data gathering. Also, finetuning a machine learning model based on the interaction data, amounts to post-solution activity that is well understood, routine and conventional. Furthermore, Applicant’s specification does not provide any detail to support any technological improvement or an improvement to the computer. Indeed, the improvement proffered by the specification is that the “chatbot system provides user intent detection that improves targeting and optimization capabilities over time by analyzing data on user intent and conversions. This enhances the user experience and improves the relevance and performance of ads” [0024]. Additionally, as Applicant has also pointed out, the specification makes it clear that its interaction system collects advertising content engagement metrics, which “are then used to provide reinforcement to the LLM 338 when the LLM 338 provides a sequence of responses that lead to a successful user intent determination and consequently properly targeted advertising content 358 that the user interacted with.” [0108]. This entails Certain Methods of Organizing Human Activity; thus, any improvement would be to the abstract idea not a technology.
Applicant submits that the amended claims are analogous to machine learning claims that have been found patent-eligible because they recite specific technical implementations rather than genetic invocations of machine learning. The Examiner respectfully disagrees. The amended claims are not analogous to any of those claims because the instant claims are directed to abstract idea without any additional element that integrates the abstract idea into a practical application. Applicant alludes to McRO, in which the instant claims bear no similarity. In McRO, the Court held the claims were not directed to an abstract idea because the claims were directed to an improvement in computer-related technology (allowing computers to produce “accurate and realistic lip synchronization and facial expressions in animated characters” that previously could only be produced by human animators), and thus did not recite a concept similar to previously identified abstract ideas. The Court analyzed the McRO specification that described the claimed invention as improving computer animation through the use of specific rules to set morph weights (relating to facial expressions as an animated character speaks) and transition parameters between phonemes (relating to sounds made when speaking), which were not used by human artists who instead relied on subjective determinations. The Court relied on the specification's explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated when determining that the claims were directed to improvements in computer animation instead of an abstract idea. The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that “improved [the] existing technological process”, unlike cases such as Alice where a computer was merely used as a tool to perform an existing process. Unlike McRO, Applicant’s claimed invention is directed to abstract ideas and there is no description in Applicant’s specification of improving a technological process. The claims simply use a computer as a tool to perform an existing process of determining user intent to target advertisement and product offering. As attested to by Applicant’s specification “improved user intent detection allows advertisers to bid and target their ads to specific user segments based on a user's intent and interests, which can increase the chances that the user will engage with the ad” [0023].
Applicant submits that the amended claims are narrowly tailored to a specific technical implementation and do not preempt all methods of determining user intent in chatbot systems. The Examiner respectfully disagrees. Narrowing claims does not mitigate preemption concerns of an invention or circumvent the prohibition against an abstract idea. MPEP 2106.04(I) provides that preemption is not a standalone test for patent eligibility, because while a preemptive claim may be ineligible, the absence of complete preemption does not guarantee that a claim is eligible. The questions of preemption are inherent in the two-part framework from Alice Corp and Mayo and are resolved by using this framework to distinguish between preemptive claims, and “those that integrate the building blocks into something more…the latter pose no comparable risk of preemption, and therefore remain eligible.”2 Therefore, “[w]here a patent’s claims are deemed only to disclose patent ineligible subject matter under the Mayo framework, as they are in this case, preemption concerns are fully addressed and made moot.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015). See also OIP Tech., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed Cir. 2015).
As such, the claims as a whole, in view of Alice, do not connote an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer itself; and the claims do not move beyond a general link of the use of the abstract idea to a particular technological environment. Therefore, the 35 U.S.C. § 101 rejection is maintained.
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 Errol CARVALHO whose telephone number is (571) 272-9987. The Examiner can normally be reached on M-F 9:30-7:00 Alt Fri
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on 571- 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/E CARVALHO/
Primary Examiner, Art Unit 3622
1 See, Alice Corp. Pty Ltd. v. CLS Bank lnt'l, 134 S. Ct. 2347, 2360 (2014) (noting that none of the hardware recited “offers a meaningful limitation beyond generally linking ‘the use of the [method] to a particular technological environment,’ that is, implementation via computers” (citing Bilski v. Kappos, 561 U.S. 593, 610-11 (2010))).
2 Alice Corp., 134 S. Ct. at 2355‐56
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