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 .
DETAILED ACTION
This is a Final Action responsive to communications: Applicant’s Response filed on 11/06/2025. Applicant’s Response includes an Amendment to the Claims and Remarks. Applicant’s Response has been entered and made of record.
In light of the Amendment to the Claims, independent claims 1, 11, and 20 have been newly amended. Therefore, claims 1-20 remain pending in the instant application. Claims 1, 11, and 20 are independent claims.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more (e.g., see: MPEP 2106.04(a)).
Using independent claim 1 as a representative example, the claim at least recites the limitation “generating, based on the first data, a second query in a second query language that is different from the first query language and that is specific to a second external service.” The limitation “generating, based on the first data, a second query in a second query language that is different from the first query language and that is specific to a second external service”, as drafted, is a method step that, under its broadest reasonable interpretation, covers performance of the limitation in the mind (or by using a pen and paper) but for the recitation of generic computer components. That is, other than reciting “performed by a computing system” in the preamble (substantially similar independent claims 11 (“at least one processor” and “at least one memory”) and 20 (“A non-transitory computer readable medium” and “at least one data processor”) also recite generic computer components) nothing in the claim precludes the operation of said limitation from practically being performed in the mind (or by using a pen and paper). Concepts performed in the mind include, for example, observations, evaluations, judgments, and opinions. As noted in paragraphs 52-53 of the instant disclosure, “generating” the second query is based on a self-determined satisfaction of a user with the “first data.” If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind (or by using a pen and paper) but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas (e.g., see: MPEP 2106.04(a)(2)(III)). Additionally, it is noted that claims can recite a “mental process” even if they are claimed as being performed on a computer. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application (e.g., see: MPEP 2106.04(d)). In particular, the claim further recites the additional abridged limitations: (1) “receiving…a first query in a first query language that is a natural language from a first user interface”, (2) “conveying the first query to a first external service”, (3) “receiving first data from the first external service”, (4) “conveying the second query to the second external service”, (5) “receiving second data from the second external service”, and (6) “incorporating the second data into a second user interface.”
Additional limitations (1) – (5), which are related to sending and receiving data, amount to mere data gathering and thus are deemed insignificant extra-solution activities to the judicial exception. Similarly, additional limitation (6), which is related to displaying data, amounts to mere data outputting and thus is deemed an insignificant extra-solution activity to the judicial exception. Additional limitations (1) – (6) are each also recited at a high-level of generality (e.g., “a computer system”, “a user device”, “a first external service”, “a first application programming interface”, “displayed on the user device”, etc.) such that they amount to no more than using generic computer components. Accordingly, these additional limitations do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to an abstract idea. The Examiner further notes that mere automation of manual processes (e.g., see: paragraphs 24-25 and 32 of the instant disclosure) is not deemed to be an improvement to computer functionality (e.g., see: MPEP 2106.05(a)).
The claim does not include any additional elements (individually) or a combination of elements (the claim as a whole) 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 additional limitations amount to no more than using generic computer components. Applying an exception using generic computer components cannot provide an inventive concept. Further, additional limitations (1) – (6) amount to sending and receiving data over a network or displaying data on a display, and are thus also considered well-understood, routine, and conventual activities (e.g., see: MPEP 2106.05(d)). Thus, the claim is not patent eligible.
Independent claims 11 and 20 are rejected under substantially similar rationale as representative independent claim 1.
Dependent claims 2-10 and 12-19 do not appear to remedy the issues noted above with regard to the independent claims and are thus rejected based on their dependency from their respective independent claim.
Claim Rejections - 35 USC § 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.
Claims 1-4, 6-14, and 16-20 are rejected under 35 U.S.C. 103 as being unpatentable over Maschmeyer et al. (U.S. Patent Application Publication No. 2024/0320444, filed 09/15/2023), in view of Thramann et al. (U.S. Patent Application Publication No. 2025/0053857, filed 02/16/2024 – supported by Provisional Application No. 63/486,191, filed on 02/21/2023), and in further view of Bedadala (U.S. Patent Application Publication No. 2018/0329993, filed on 05/10/2018).
-In regard to substantially similar independent claims 1, 11, and 20, the Maschmeyer reference teaches (Figs. 1 and 7) a method performed by a computing system, a system (including at least one processor and memory), and a non-transitory computer-readable medium, comprising:
receiving, by a first application, a first query in a first query language that is a natural language from a first user interface of a user device (Paragraph 78: “An input prompt supplied by a user is received from the user device 120”; Paragraph 123: “an example page 500 of a graphical user interface that supports auto-generation of customized text content”; Fig. 1; Fig. 2: 202; Fig. 5A: 502);
conveying the first query to a first external service in accordance with a first application programming interface (Paragraph 75: “a remote language model or LLM hosted on the remote system such as, for example, using an application programming interface (API) call”; Paragraph 78: “the input prompt may include a description of content that is requested to be generated by the generative AI model 112”; Paragraph 93: “invoke an application programming interface (API) call for submitting a request to an API associated with the generative model to generate new content. The API call may include, at least, the first text prompt for inputting to the generative model”; Paragraph 124: “More particularly, the user-inputted data may be included in a first input prompt, which is then provided to a generative AI model”; Fig. 1);
receiving first data from the first external service in response to the first query (Paragraph 80: “The content generation engine 114 receives outputs that are produced by the generative AI model 112. Each output comprises content that is generated based on an input prompt to the generative AI model 112”; Paragraph 124: “The output of the model, i.e., a generated product description, may be displayed in the output display area 520. FIG. 5A shows a first text output 510a that is generated based on information inputted in the input field 502”; Fig. 1; Fig. 2: 202 and 204; Fig. 5A: 510a);
generating, based on the first data, a second query and conveying the second query to the first external service in accordance with the first application programming interface (Paragraph 75: “a remote language model or LLM hosted on the remote system such as, for example, using an application programming interface (API) call”; Paragraph 80: “it may be a modified prompt derived by the content generation engine 114 based on revising an initial prompt. The outputs of the generative AI model 112 may be provided to the content generation engine 114 for further processing and refining, for example, to obtain a final content output”; Paragraph 93: “invoke an application programming interface (API) call for submitting a request to an API associated with the generative model to generate new content. The API call may include, at least, the first text prompt for inputting to the generative model”; Paragraphs 124-126: “A different product description may be generated if the user selects the ‘Try Again’ button…The user can indicate preference for a certain portion of a generated output by selecting the portion in the output display area 520…If the ‘Finish’ button 506c is selected at any time, a final text output 510c may be generated. The final text output 510c is an output that comprises the selected text portions from previously generated descriptions. A second input prompt may be obtained by modifying the first input prompt, and the second input prompt is provided to the generative AI model as part of a request to generated the final text output 510c”; Fig. 1; Fig. 2: 206, 208, and 210; Fig. 5A: 506a or 506c);
receiving second data from the first external service in response to the second query (Paragraph 80: “further processing and refining, for example, to obtain a final content output”; Paragraphs 124-126: “A different product description may be generated…arrows 508 can be used to navigate to different text outputs within the output display area 520…if the user selects the ‘Try Again’ button…The user can indicate preference for a certain portion of a generated output by selecting the portion in the output display area 520…a final text output 510c may be generated”; Fig. 1; Fig. 4: 414 and 416; Fig 5B: 508, 510b; Fig. 5C: 510c); and
incorporating the second data into a second user interface generated and displayed on the user device (Paragraph 121: “presents a preview of a final content output…displayed in real-time via the graphical user interface (e.g., in an area that is distinct from the output display area”; Paragraphs 125-126: “The arrows 508 can be used to navigate to different text outputs within the output display area 520. That is, the user can flip through the different generated descriptions using the arrows 508…a final text output 510c may be generated”; Fig. 4: 414 or 416; Fig. 5C: 508 or 510c).
The Maschmeyer reference does not specifically teach or suggest conveying its second query to a second (different) external service in accordance with a second application programming interface. In the related chatbot art, the Thramann reference discloses conveying a second query to a second (different) external service in accordance with a second application programming interface (Thramann: Paragraph 8: “The intermediary AI takes a query from a given user and refines the query for the user prior to submitting that query to the general-purpose generative AI”; Paragraph 12: “a single general-purpose AI…multiple general-purpose AIs”; Paragraph 19: “engage with the general-purpose AI either via an API of the general-purpose AI”; Paragraph 27: “outputs a refined query to a one or more general-purpose AI models that receive text queries. For purposes of this disclosure the general-purpose AIs produce a response to queries”; Fig. 1: “GPT like processor”; Fig. 2: 206).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the second (modified) text prompt of the Maschmeyer reference to have been conveyed to a second (different) external service as taught by Thramann, because Thramann taught that said functionality provided benefits that “improves prompts and conversations” and that the second (different) external service “gets better than ChatGPT for domain specific purposes over time” (Thramann: Paragraphs 14-15: “becomes smarter…for the domain specific subject matter…improves prompts and conversations….consistently delivering better results”; Paragraph 21; Paragraphs 28-29).
The Examiner notes that Applicant Admitted Prior Art (“AAPA”) discloses that it was well-known for artificial intelligence models to receive user-generated natural language text and at least generate output “data in specific formats” (e.g., see: Paragraph 2). Similarly, both Maschmeyer (Paragraphs 30-34: “output/result may comprise new content such as text, images, audio, and the like…outputs are acceptable or preferred for their intended use of the generated content”; Paragraph 66: “map the feature vectors 62 into text output in a target language different from the language of the original tokens”; Paragraph 124) and Thramann (Paragraph 8: “takes a query from a given user and refines the query for the user prior to submitting that query”; Paragraph 16: “the disclosure herein can further apply to other forms of query refinement”; Paragraphs 52-53: “a natural language input that includes instructions to the LLM to generate a desired output…predefined templates or structured queries that already adhere to the expected format and content guidelines of specific AI models…and an output specification”; Paragraph 56: “automation of the prompt engineering process itself—for example, an automatically generated sequence of cascading prompts, in some embodiments, include sequences of prompts that use tokens from AI model outputs as further instructions, context, inputs, or output specifications for downstream AI models”) teach using well-known AI models to receive user-generated natural language text input and at least generate output in a variety of different formats.
To the extent that the modified Maschmeyer reference does not specifically teach or suggest wherein its second query was in a second query language that is different from the first query language and that was specific to the second external service, the Bedadala reference, in the related chatbot art, explicitly teaches generating a second query in a second query language that is different from a first query language and that was specific to a second external service (Bedadala: Paragraphs 28-29: “receive a voice query in a natural language and translate it from natural language into a native database management language to respond to the query...a data agent…convert that natural language into a domain specific language (e.g., SQL query), and convert the SQL query into a database management query…accessing a database management system in the cloud…can respond to a user’s text query with a chatbot”; Paragraph 320: “include converting a SQL to IBM’s DB2®, MySQL®, Oracle®, PostgreSQL®, or SQLite®”; Fig. 3; Fig. 4: 410, 420, 435, and 440).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for the second query of the modified Maschmeyer reference to have been in a second (different) query language as taught by Bedadala, because Bedadala taught that said functionality provided the benefits of allowing users to more easily communicate with proprietary computer systems, database management systems, or custom devices (Bedadala: Paragraphs 24-27: “humans often want to communicate with proprietary computer systems, database management systems, or custom devices…users can be frustrated with…software that fail to interact with database management software to produce the desired responses or answers”; Paragraph 34: “the disclosed technology improves the database management technology to overcome technical problems associated with, for example, voice recognition related to database management systems…humans are not familiar with the domain-specific language (e.g., SQL) queries as they are unable to understand the structure of the database…enables humans that are untrained in database management to communicate with a database management system, which is an improvement to computer technology and specifically database management technology”).
-In regard to substantially similar dependent claims 2 and 12, the modified Maschmeyer reference teaches further comprising:
generating a first graphical element as part of the first user interface (Maschmeyer: Fig. 5A – 506b or 506c); and
incorporating the second data into the second user interface generated on the user device in response to a user selecting the first graphical element in the first user interface (Maschmeyer: Paragraph 121: “computing system presents a preview of a final content output based on the user selection and editing input…via the graphical user interface (e.g., in an area that is distinct from the output display area and the sandbox region)”; Paragraph 125-126: “The selected text 509a can be stored for inclusion in a final text output by selecting the ‘Keep’ button 506b…If the “Finish” button 506c is selected at any time, a final text output 510c may be generated. The final text output 510c is an output that comprises the selected text portions from previously generated descriptions”; Fig. 5C – 510c).
-In regard to substantially similar dependent claims 3 and 13, the modified Maschmeyer reference teaches further comprising:
generating a second graphical element as part of the first user interface (Maschmeyer: Fig. 5A – 506a or 506c); and
conveying a third query to the first external service in response to a user selecting the second graphical element in the first user interface, wherein the third query comprises a request for one or more modifications to the first data (Maschmeyer: Paragraphs 124-126: “different product description may be generated if the user selects the ‘Try Again’ button 506a…If the ‘Finish’ button 506c is selected at any time, a final text output 510c may be generated”).
-In regard to substantially similar dependent claims 4 and 14, the modified Maschmeyer reference teaches further comprising conveying a fourth query to the second external service in response to receiving third data, based on the third query, from the first external service (Thramann: Paragraphs 27-29: “receives output from the general-purpose AI(s) and evaluates the output…provides feedback to the pre-processor for purposes to injecting revised input into the general-purpose AI(s)…include direct user input, or passive user use analytics that illustrate value of output”; Fig. 2: 210A → 210B → 204 → 206).
Substantially similar to the motivation described above with regard to independent claims 1, 11, and 20, the Thramann reference also taught that said functionality provided the benefit of ensuring that the final output was acceptable to the user (i.e., was deemed “sufficient”).
-In regard to substantially similar dependent claims 6 and 16, the modified Maschmeyer reference teaches wherein the first data comprises one or more tasks (Maschmeyer: Paragraph 2: “can be used to generate detailed text or images conditioned on input of natural language prompts”; Paragraph 78: “input prompt may be or include a command/request to generate content of a specific type. The input prompt may comprise text, images, audio, and/or other forms of unstructured data”; Paragraph 89: “may be adapted for generating product-related content (e.g., promotional images, photos, or text, product descriptions, etc.) associated with products that are offered on an e-commerce platform”; Fig. 5A), and wherein the second data comprises one or more user stories (Maschmeyer: “Paragraph 2: “can be used to generate detailed text or images conditioned on input of natural language prompts”; Paragraph 78: “input prompt may be or include a command/request to generate content of a specific type. The input prompt may comprise text, images, audio, and/or other forms of unstructured data”; Paragraph 89: “may be adapted for generating product-related content (e.g., promotional images, photos, or text, product descriptions, etc.) associated with products that are offered on an e-commerce platform”; Fig, 5A).
Additionally, the Examiner notes that the specific type of data received (i.e., “tasks” and “user stories”) is deemed nonfunctional descriptive material and thus is being afforded no patentable weight. The claims as a whole are directed to conveying data to a human user rather than towards establishing a functional relationship between the data received and the claimed computer system.
Further, at least paragraphs 2 and 17 of the instant disclosure teach that said specific type of data received was well-known before the effective filing date of the claimed invention. Thus, it would have been obvious to one of ordinary skill in the art for the requested and “generated detailed text” of Maschmeyer to have included that specific type of data received. Said inclusion would have increased the overall content generation functionality of Maschmeyer.
-In regard to substantially similar dependent claims 7 and 17, the modified Maschmeyer reference teaches wherein the first external service is an artificial intelligence chatbot (Maschmeyer: Paragraph 82: “such as a chatbot (e.g., ChatGPT)”), and wherein the second external service is a project management tool (Thramann: Paragraphs 12-13: “a single general-purpose AI…multiple general-purpose AIs…NewGPT becomes smarter…for the domain specific subject matter”; Paragraph 16: “a single example of a media playlist is provided that refers to songs. Other examples…how-to guides”).
-In regard to substantially similar dependent claims 8 and 18, the modified Maschmeyer reference teaches wherein the first data comprises one or more test scripts (Maschmeyer: Paragraph 2: “can be used to generate detailed text or images conditioned on input of natural language prompts”; Paragraph 78: “input prompt may be or include a command/request to generate content of a specific type. The input prompt may comprise text, images, audio, and/or other forms of unstructured data”; Paragraph 89: “may be adapted for generating product-related content (e.g., promotional images, photos, or text, product descriptions, etc.) associated with products that are offered on an e-commerce platform”; Fig. 5A ), and wherein the second query comprises the one or more test scripts to be executed by the project management tool (Maschmeyer: Paragraph 2: “can be used to generate detailed text or images conditioned on input of natural language prompts”; Paragraph 78: “input prompt may be or include a command/request to generate content of a specific type. The input prompt may comprise text, images, audio, and/or other forms of unstructured data”; Paragraph 89: “may be adapted for generating product-related content (e.g., promotional images, photos, or text, product descriptions, etc.) associated with products that are offered on an e-commerce platform”; Fig. 5A).
Additionally, the Examiner notes that the specific type of data received or conveyed (i.e., “test scripts”) is deemed nonfunctional descriptive material and thus is being afforded no patentable weight. The claims as a whole are directed to conveying data to a human user rather than towards establishing a functional relationship between the data received or conveyed and the claimed computer system.
Further, at least paragraph 2 of the instant disclosure, paragraph 31 of Maschmeyer, and paragraph 56 of Thramann each teach that said specific type of data received or conveyed was well-known before the effective filing date of the claimed invention. Thus, it would have been obvious to one of ordinary skill in the art for the requested and “generated detailed text” of Maschmeyer to have included that specific type of data received or conveyed. Said inclusion would have increased the overall content generation functionality of Maschmeyer.
-In regard to substantially similar dependent claims 9 and 19, the modified Maschmeyer reference teaches wherein the first data comprises a definition of done checklist for a user story (Maschmeyer: Paragraph 2: “can be used to generate detailed text or images conditioned on input of natural language prompts”; Paragraph 78: “input prompt may be or include a command/request to generate content of a specific type. The input prompt may comprise text, images, audio, and/or other forms of unstructured data”; Paragraph 89: “may be adapted for generating product-related content (e.g., promotional images, photos, or text, product descriptions, etc.) associated with products that are offered on an e-commerce platform”; Fig. 5A).
Additionally, the Examiner notes that the specific type of data received (i.e., “a definition of done checklist”) is deemed nonfunctional descriptive material and thus is being afforded no patentable weight. The claims as a whole are directed to conveying data to a human user rather than towards establishing a functional relationship between the data received and the claimed computer system.
Further, at least paragraphs 2 and 17 of the instant disclosure teach that said specific type of data received was well-known before the effective filing date of the claimed invention. Thus, it would have been obvious to one of ordinary skill in the art for the requested and “generated detailed text” of Maschmeyer to have included that specific type of data received. Said inclusion would have increased the overall content generation functionality of Maschmeyer.
-In regard to dependent claim 10, the modified Maschmeyer reference teaches wherein the first data comprises a technical document for a user story (Maschmeyer: Paragraph 2: “can be used to generate detailed text or images conditioned on input of natural language prompts”; Paragraph 78: “input prompt may be or include a command/request to generate content of a specific type. The input prompt may comprise text, images, audio, and/or other forms of unstructured data”; Paragraph 89: “may be adapted for generating product-related content (e.g., promotional images, photos, or text, product descriptions, etc.).
Additionally, the Examiner notes that the specific type of data received (i.e., “a technical document”) is deemed nonfunctional descriptive material and thus is being afforded no patentable weight. The claim as a whole is directed to conveying data to a human user rather than towards establishing a functional relationship between the data received and the claimed computer system.
Further, at least paragraphs 2 and 17 of the instant disclosure teach that said specific type of data received was well-known before the effective filing date of the claimed invention. Thus, it would have been obvious to one of ordinary skill in the art for the requested and “generated detailed text” of Maschmeyer to have included that specific type of data received. Said inclusion would have increased the overall content generation functionality of Maschmeyer.
Claims 5 and 15 are rejected under 35 U.S.C. 103 as being unpatentable over Maschmeyer et al. (U.S. Patent Application Publication No. 2024/0320444, filed 09/15/2023), in view of Thramann et al. (U.S. Patent Application Publication No. 2025/0053857, filed 02/16/2024 – supported by Provisional Application No. 63/486,191, filed on 02/21/2023), in further view of Bedadala (U.S. Patent Application Publication No. 2018/0329993, filed on 05/10/2018), and additionally in view of Parekh et al. (U.S. Patent Application Publication No. 2020/0344186, filed 04/24/2020).
-In regard to substantially similar dependent claims 5 and 15, the modified Maschmeyer reference does not specifically teach or suggest managing, by the first application, a second login into the first external service and a third login into the second external service for a user of the user device based on a first login of the user into the first application.
In the related chatbot art, the Parekh reference teaches managing by a first application, a second login into a first external service and a third login into a second external service for a user of a user device based on a first login of the user into the first application (Parekh: Paragraphs 2-4; Paragraph 19; Paragraphs 28-29; Paragraph 32: “enables users of the digital assistant to interact with multiple skills through a unified user interface”; Paragraphs 68-72: “a user may need to be authenticated before being able to access the chatbot system 210. For instance, the environment 200 could include a security service provider (e.g., a single sign-on (SSO) authentication service)…a shared security mechanism can be used. For instance, the messaging platforms 202, 204 and the chatbot system 210 could all be participants in the same SSO authentication infrastructure”; Figs. 1 and 2).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention for logging into the first application of the modified Maschmeyer reference to have facilitated the second and third logins as taught by Parekh, because Parekh taught that said functionality provided the well-known benefit of increased security for networked resources while also reducing the number of necessary authentications (Parekh: Paragraph 32: “enables a user to converse with the digital assistant through a common single interface and still provide the capability to use several skill bots configured to perform specific tasks”; Paragraphs 68-72: “Access…typically requires creation of a user identifier (ID) and possibly one or more security credentials (e.g., a password)…include a security service provider (e.g., a single sign-on (SSO) authentication service)…messaging platforms 202, 204 and the chatbot system 210 could all be participants in the same SSO authentication infrastructure”). In the instant case, the content generation engine (including its user interface module + prompt generator) and generative AI model of Maschmeyer, and the general-purpose AI model of Thramann would each individually gain the benefit of access security while also collectively gaining access efficiency.
Response to Arguments
First, Applicant’s arguments with respect to representative independent claims 1, 11, and 20 and the applied prior art (e.g., see: Remarks, pp. 8-11) have been fully considered but are moot in view of the new ground(s) of rejection.
Second, Applicant’s additional arguments with respect to the rejection under 35 U.S.C. 101 (e.g., see: Remarks, pp. 6-8) have also been fully considered but they are not persuasive.
Applicant argues that independent claims 1, 11, and 20 do not “recite” any of the abstract ideas groupings identified in MPEP 2106.04(a). Citing to MPEP 2106.04(a)(2)(III)(A), Applicant further argues that the claims do not recite a mental process because the limitations cannot practically be performed in the human mind, nor by a human using pen and paper. Finally, Applicant asserts that the claims newly require “generating, based on the first data, a second query in a second query language that is different than the first query language and specific to a second external service”, and thus the “generating” step, and the claims as a whole, cannot practically be performed in the human mind.
The Examiner respectfully disagrees with Applicant.
As noted in the corresponding rejection above, amended representative independent claim 1 clearly recites the limitation, “generating, based on the first data, a second query in a second query language that is different from the first query language and that is specific to a second external service”, which covers performance of the limitation in the mind (or by using a pen and paper) but for the recitation of generic computer components. Said limitation falls within the “Mental Processes” grouping of abstract ideas and thus the claim recites an abstract idea.
As currently claimed, nothing in the claim precludes the operation of said limitation from practically being performed in the mind (or by using a pen and paper). That is to say, the claim limitation does not encompass AI, or any other means, in a way that cannot be practically performed in the human mind. This determination is buttressed by paragraphs 52-53 of the instant disclosure, which describe “generating” the second query, regardless of its final format and/or future destination, as being based on a self-determined satisfaction of a user with the previously received “first data” (e.g., see: Paragraphs 52-53: “If the user is not satisfied with the text generated by the AI chatbot…‘Request Another Response’…‘Suggest Modifications’. Several iterations may be executed until the user is satisfied. Additionally, the user may enhance the description by adding additional text or modifying the existing text…Once the user is satisfied with the text…the text returned from the AI chatbot (with any additional enhancements provided by the user) will be integrated into the project management application” – emphasis added).
Concepts performed in the mind include, for example, observations, evaluations, judgments, and opinions. As shown above, the “generating” limitation appears to be contingent on a user at least evaluating/judging the claimed “first data”, and only when the user’s opinion of satisfaction is met, potentially after countless user modifications, is the second query generated and further conveyed. Therefore, the Examiner believes the above determination properly distinguishes amended representative independent claim 1 as a claim that recites a judicial exception from a claim that merely involves a judicial exception. Thus, the determination appears to be in conformity with the Office’s August 4, 2025 memorandum.
The Examiner also notes that all other limitations of amended representative independent claim 1 were treated accordingly (i.e., both individually and as a whole) and were determined not to render the claim patent eligible. In the instant case, it is inconsequential that the “generating” limitation is the only limitation to recite an abstract idea.
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 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.
The prior art made of record and not relied upon is considered pertinent to Applicant’s disclosure. Please note the relevant cited prior art listed on the accompanying Notice of References Cited (Form PTO-892).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Adam L Basehoar whose telephone number is (571)272-4121. The examiner can normally be reached 8:00AM - 4:30PM.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexander Kosowski can be reached on 571-272-3744. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ADAM L BASEHOAR/Primary Examiner, Art Unit 3992