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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 10/14/2023, 7/28/2024, 11/30/2024, 1/2/2025, 5/13/2025, 8/22/2025, 11/20/2025 and 1/3/2026 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Status of Claims
Claims 1-20 are pending in this application.
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 15-20 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 claims 15-20 cover both statutory and non-statutory embodiments (under the broadest reasonable interpretation of the claim when read in light of the specification and in view of one skilled in the art) and embraces subject matter that is not eligible for patent protection and therefore is directed to non-statutory subject matter. Specifically, a “computer-readable storage medium” may be interpreted as a transitory signal, which is non-statutory subject matter, if not modified by a limitation rendering it non-transitory.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The independent claims recite inputting a user input and a conversational state into an LLM and transmitting the output to a client device, which is a mental process which entails gathering data (the input & conversational state), then further receiving and transmitting the resulting output of the LLM (extra-solutional activity). This judicial exception is not integrated into a practical application because the only additional elements in the claims are generic computing components, the extra-solutional data transmission and the LLM itself. The LLM merely indicates a field of use or technological environment in which to apply the judicial exception (see MPEP 2106.05(h)). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements either are generic computer component performing generic computer functions, insignificant extra-solutional activity or merely indicate a field of use or technological environment in which to apply the judicial exception.
The dependent claims simply refine the abstract idea by making the process iterative, adding additional data to be gathered (conversational history, conversational goal) or specifying that the LLM must be trained on historical conversation. None of the limitations provide additional elements that either individually, or considered as an ordered sequence, cause the claims to be significantly more than the judicial exception or integrate the judicial exception into a practical application.
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.
Claims 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Goldshtein et al. (U.S. Patent Application Publication 20240194180).
As per claims 1, 8 and 15, Goldshtein et al. discloses:
An apparatus (Figure 6 and paragraphs [0095-0102]) comprising:
a memory (Figure 6, item 625 and paragraph [0100]); and
a processor coupled to the memory (Figure 6, item 614 and paragraph [0100]), the processor configured to:
receive a sequence of inputs from a user when in a conversation with a chatbot within a chat window of a software application (Figure 5C and paragraphs [0073] & [0083-0094] – the interaction between chatbot can be executed via a text based application),
execute a large language model (LLM) on each input from the user to determine a next prompt to output via the chatbot, respectively, wherein each execution of the LLM includes a new chat input from the user and a most-recent state of the conversation between the user and the chatbot within the chat window (Figure 2, items 207, 280A-B & Figure 4, items 456-460 and Paragraphs [0009-0011], [0044-0052] & [0067-0072] – The chatbot is a fine tuned LLM and provides responses based on the current conversational state and the user input), and
display the next prompt output by the chatbot within the chat window on a user device (Figure 4, item 458 & Figure 5C and paragraphs [0052], [0068], [0073] & [0083-0094] – Responsive content is displayed on the client device of the user).
Goldshtein et al. discloses the claimed invention except for the chatbot and LLM being separate instead integral. It would have been obvious to one having ordinary skill in the art at the effective filing date of the invention to separate the chatbot and LLM functionality, since it has been held that constructing a formerly integral structure in various elements involves only routine skill in the art. Nerwin v. Erlichmena, 168 USPQ 177, 179.
Claim 8 is directed to the method of using the apparatus of claim 1, so is rejected for similar reasons.
Claim 15 is directed to a computer readable storage medium containing instructions to cause a computer to act as the apparatus of claim 1, so is rejected for similar reasons.
As per claims 2, 9 and 16, Goldshtein et al. discloses or suggests all of the limitations of claims 1, 8 and 15 above. Goldshtein et al. further discloses:
display a first prompt output by the chatbot via the chat window, receive a first natural language input via the chat window in response to the first prompt, and generate a second prompt output by the chatbot via the chat window based on execution of the LLM on the first prompt and the first natural language input (Figure 5C & Figure 4, items 456-460 and paragraphs [0048], [0053], [0067-0073] & [0083-0094] – the conversation is iterative with the response taking into account previous inputs and responses).
As per claims 3, 10 and 17, Goldshtein et al. discloses or suggests all of the limitations of claims 2, 9 and 16 above. Goldshtein et al. further discloses:
receive an additional natural language input from the chat window and generate an additional prompt output by the chatbot based on execution of the LLM on the second prompt and the additional natural language input (Figure 5C & Figure 4, items 456-460 and paragraphs [0048], [0053], [0067-0073] & [0083-0094] – the conversation is iterative with the response taking into account previous inputs and responses).
As per claims 4, 11 and 18, Goldshtein et al. discloses or suggests all of the limitations of claims 1, 8 and 15 above. Goldshtein et al. further discloses:
receive a history of the conversation between the chatbot and the user that includes identifiers of user dialogue and chatbot dialogue, and generate the next prompt based on execution of the LLM on the history of the conversation (Figure 5C & Figure 4, items 456-460 and paragraphs [0048], [0053], [0067-0073] & [0083-0094] – the conversation is iterative with the response taking into account previous inputs and responses).
As per claims 5, 12 and 19, Goldshtein et al. discloses or suggests all of the limitations of claims 1, 8 and 15 above. Goldshtein et al. further discloses:
determine a next goal of the conversation based on execution of the LLM on the new chat input and the most-recent state of the conversation between the user and the chatbot (Figures 2, item 205 & 5A-B and paragraphs [0046] & [0073-0082] – the various dialog states are the conversational goals).
As per claims 6, 13 and 20, Goldshtein et al. discloses or suggests all of the limitations of claims 5, 12 and 19 above. Goldshtein et al. further discloses:
configured to generate an additional prompt to be output by the chatbot based on execution of the LLM on the next goal of the conversation (Figures 2, item 205, Figure 4, items 456-460 & 5A-B and paragraphs [0046] & [0067-0082] – the various dialog states are the conversational goals and the conversation is iterative, taking into account user input, conversational history and current dialog state).
As per claims 7 and 14, Goldshtein et al. discloses or suggests all of the limitations of claims 1 and 8 above. Goldshtein et al. further discloses:
train the LLM based on execution of the LLM on a corpus of documents from the database which are associated with historical conversations amongst users (Paragraph [0042] – the previously trained LLM Chatbot has been trained on an enormous amount of conversational data).
Examiner Notes
The Examiner cites particular columns and line numbers in the references as applied to the claims above for the convenience of the Applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the Applicant fully considers the references in its entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or as disclosed by the Examiner.
Communications via Internet e-mail are at the discretion of the applicant and require written authorization. Should the Applicant wish to communicate via e-mail, including the following paragraph in their response will allow the Examiner to do so:
“Recognizing that Internet communications are not secure, I hereby authorize the USPTO to communicate with me concerning any subject matter of this application by electronic mail. I understand that a copy of these communications will be made of record in the application file.”
Should e-mail communication be desired, the Examiner can be reached at Edwin.Leland@USPTO.gov
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWIN S LELAND III whose telephone number is (571)270-5678. The examiner can normally be reached 8:00 - 5:00 M-F.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hai Phan can be reached at 571-272-6338. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/EDWIN S LELAND III/Primary Examiner, Art Unit 2654