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 Arguments
Applicant’s response to Office action was received on December 4, 2025.
In response to Applicant’s amendment of the claims, the indefiniteness rejections, from the previous Office action, have been correspondingly amended, below in this Office action. Note that Applicant only followed some of Examiner’s recommended corrections from the indefiniteness rejections in the previous Office action. Applicant did correct a grammatical issue in the first paragraph of claim 9, but did not correct the antecedent basis issue relating to the words of “the method”. Therefore, indefiniteness rejections remain, below in this Office action.
In response to Applicant’s amendment of the claims, all of the prior art claim rejections, from the previous Office action, have been withdrawn.
In response to Applicant’s amendment of the claims, the corresponding 101 claim rejections, from the previous Office action, have been correspondingly amended, below in this Office action.
Regarding the 101 rejections, Applicant first argues that any abstract idea is integrated into a practical application via the previous claim 8 limitations of: “determining that the automated agent did not follow the declarative specification for an item in the checklist; and submitting a portion of the conversation data associated with the checklist item and the declarative specification associated with the checklist item to a large language model to request a response that satisfies the declarative specification”. Examiner disagrees. As represented in the 101 rejections, these limitations are broken down into the following abstract-idea and non-abstract-idea components:
a. abstract-idea components: determining that the agent did not follow the rules for an item in the checklist; submitting a portion of the conversation data associated with the checklist item and the rules associated with the checklist item to a large language model to request a response that satisfies the rules.
b. non-abstract-idea components: automated; declarative specification.
The components in (a) above are abstract-idea components because they are part of the certain method(s) of organizing human activity recited in Applicant’s independent claims. To further explain, the monitoring and attempt to correct an agent is part of managing interactions between a customer and a business, each of which may involve humans. Note that this includes the large language model, because, while the large language model may be complex, it is still abstract when disconnected from the underlying computing technology that may utilize it.
The components in (b) are treated as generic/general-purpose computing system components in the 101 rejections, also described as mere instructions to apply an exception in 101 analysis. “Automated” here is used with respect to the agent being automated; that is, it is simply a reference to the automation provided by the generic computing system. “Declarative specification” is such a well-established concept in computing that it may be regarded as generic computing component. In Applicant’s claims, the declarative specification is used to implement rules.
Thus, the argued limitations here amount to mere abstract idea performed on generic/general-purpose computing system components, without more. Under USPTO 101 analysis, merely performing an abstract idea on generic/general-purpose computing system components, without more, does not render eligibility to such a claim. Therefore, Examiner does not find this Applicant argument to be persuasive.
Applicant next argues eligibility based on the specificity of the claims. In response, the mere specificity of a claim’s language, in and of itself, does not necessarily render eligibility. For example, consider an extremely complicated mathematical function, with 100 independent input variables. This would be an abstract idea under 101 guidance. Now consider a claim which simply calculates such a mathematical function on a generic computer. Without more, this would not be eligible under 101 guidance, even though the claim as a whole would be very specific, with such a specific mathematical function. Therefore, Examiner does not find this Applicant argument to be persuasive.
Applicant next argues that the above elements/limitations, that are newly added to the independent claims, are other than well-understood, routine, and conventional under Step 2B of 101 analysis. Applicant also requests Berkheimer evidence (see MPEP 2106.07(a)(III)) if Examiner maintains that such elements/limitations are well-understood, routine, and conventional activity. In response, note from the above discussion and the 101 claim rejections that Examiner is not relying on well-understood, routine, and conventional determination with respect to any of the currently claimed subject matter. Rather, Examiner finds all of the claims to represent mere abstract idea performed on generic computing components, that is, mere instructions to apply an exception. Note that mere instructions to apply an exception is not the same as the well-understood, routine, and conventional determination. One is described in MPEP 2106.05(f), and the other is described in MPEP 2106.05(d). Berkheimer evidence is not required for mere instructions to apply an exception. Examiner has been able to dismiss the additional elements beyond the abstract idea as not adding significantly more, without needing to allege that the additional elements are well-understood, routine, and conventional activity.
In addition, with respect to being other than well-understood, routine, and conventional activity, it is important to note that this determination under Step 2B is meant to involve meaningful contribution to such consideration from the non-abstract-idea elements (the additional elements beyond the abstract idea). See MPEP 2106.05(d), which states: “Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry.” As Examiner discussed above, the newly added limitations being argued here are actually mostly part of the abstract idea, with the exception of “automated” and “declarative specification”. Thus, in making the argument of other than well-understood, routine, and conventional activity, a significant part of this must be that being automated and/or using a declarative specification meaningfully contribute to the claim being other than well-understood, routine, and conventional activity. It does not appear that Applicant is making that argument. Therefore, Examiner does not find this Applicant argument to be persuasive.
Applicant next argues for eligibility based on that providing an automated agent is a concrete act used routinely for practical applications such as chat bots. However, this does not overcome Examiner’s analysis of the claims as abstract idea performed on generic computing components, without more. While sitting at a computer and interacting with a chat bot may seem like a fully non-abstract situation, ultimately the computing system may be merely generic. Aside from the computing components, we have the data processing that determines the outputs of the chat bot. The nature of such data processing may be very abstract indeed. Therefore, Examiner does not find this Applicant argument to be persuasive.
Novel/Non-Obvious Subject Matter
Examiner has determined that all of Applicant’s claims have overcome having prior art rejections. The reason for this is that Examiner does not believe that, at the time of Applicant’s priority date, it would have been obvious for a person of ordinary skill in the art to combine prior art disclosures to result in the particular combinations of elements/limitations in the claims, including the particular configurations of the elements/limitations with respect to each other in the particular combinations, without the use of impermissible hindsight.
Specifically, independent claims 1, 9, and 17 are similar, so Examiner will use claim 1 as an example. Claim 1 was previously rejected with a three-reference 103 rejection: McConnell in view of Yalamanchi in further view of Ganesan. Dependent claim 8 depended directly from claim 1. The subject matter of claim 8 related to a situation in which the automated agent does not follow the declarative specification for an item in a checklist; in response, a large language model is utilized to attempt to generate a response that satisfies the declarative specification. Previously, claim 8 did not have a prior art rejection, and Applicant has brought the subject matter of claim 8 into all three independent claims. Examiner did not previously find the full subject matter of claim 8 in the McConnell, Yalamanchi, or Ganesan references. Considering the prior art search and the subject matter of claim 8, Examiner did not find prior art reference(s) that Examiner thought could be combined with the McConnell, Yalamanchi, and Ganesan references for a 103 rejection of claim 8 in such a way that the use of impermissible hindsight would not be present. Since the subject matter of claim 8 was brought into all three independent claims, all of the prior art rejections have been overcome.
Claim Rejections - 35 USC § 112
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 9-15 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As per Claim 9, Claim 9 recites the limitation "the method" in the third line of the claim. There is insufficient antecedent basis for this limitation in the claim. Examiner recommends the following amendments to the first paragraph of Claim 9 to attempt to address this issue and related informalities:
9. (Currently amended) A non-transitory computer readable storage medium having embodied thereon a program, the program being executable by a processor to provide controls for an automated agent, [[the]]by performing a method comprising:
As per Claims 10-15, these claims depend from Claim 9 and thus incorporate Claim 9’s indefiniteness issue via such dependencies.
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.
Claim(s) 1-7, 9-15, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As per Claim(s) 1, 9, and 17, Claim(s) 1, 9, and 17 recite(s):
- providing controls for an agent;
- generating rules for an agent, the rules including a general policy and a specific policy;
- receiving conversation data, the conversation data associated with an interaction between the agent and a customer, the agent applying the rules during the interaction;
- determining, by one or more learning mechanisms, whether the rules were followed by the agent during the interaction;
- determining that the agent did not follow the rules for an item in the checklist;
- submitting a portion of the conversation data associated with the checklist item and the rules associated with the checklist item to a large language model to request a response that satisfies the rules.
Each of the above limitations falls within the abstract-idea category of “Certain methods of organizing human activity.” Specifically, those limitations relate to the following subject matter that is grouped into the category of “Certain methods of organizing human activity”:
- managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions): manages interactions between a customer and the agent’s side, each of which may involve humans.
To the extent that any of these limitations are recited alongside recitations of generic computer components, as described below in this rejection: If a claim limitation, under its broadest reasonable interpretation, covers subject matter recognized as certain methods of organizing human activity but for the recitation of generic computer components, then it falls within the “Certain method of organizing human activity” grouping of abstract ideas. Accordingly, the claim(s) recite an abstract idea.
This judicial exception is not integrated into a practical application because the additional elements when considered both individually and as an ordered combination do not integrate the abstract idea into a practical application. The claim(s) recite the following additional elements/limitations, each of which are addressed in the list below with the reason(s) why they do not integrate the abstract idea into a practical application:
- automated; declarative specification; machine learning; stored and executed on one or more servers; a non-transitory computer readable storage medium having embodied thereon a program, the program being executable by a processor; a system, comprising: one or more servers, wherein each server includes a memory and a processor; and one or more modules stored in the memory and executed by at least one of the one or more processors: These element(s)/limitation(s) amount to mere instructions to apply an exception. See MPEP 2106.05(f). In making this determination, examiners may consider whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Mere instructions to apply an exception is a consideration with respect to both integration of an abstract idea into a practical application and significantly more. MPEP 2106.05(f)(2) states: “Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit).” This is the case with these particular claim element(s)/limitation(s). Those elements/limitations do not meaningfully limit the claim because implementing an abstract idea on a generic computer does not integrate the abstract idea into a practical application, similar to how the recitation of the computer in the claim in Alice amounted to mere instructions to apply the abstract idea of intermediated settlement on a generic computer. Therefore, these particular claim element(s)/limitation(s) do not integrate the abstract idea into a practical application for at least this reason.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
Accordingly, the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim(s) are directed to an abstract idea.
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception, either individually or as an ordered combination. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of computer-related components amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept.
The claim(s) are not patent eligible.
As per dependent claim(s) 2-7, 10-15, and 18-20, these claim(s) incorporate the above abstract idea via their dependencies on the respective independent claim(s). The additional element(s)/limitation(s) of the respective independent claim(s) do not integrate the abstract idea into a practical application, nor do they add significantly more, with respect to those dependent claim(s), under the same reasoning as above with respect to the respective independent claim(s).
Those dependent claim(s) add the following generic computer components, which do not integrate the abstract idea into a practical application, nor add significantly more, under the same reasoning as given above with respect to generic computer components in the independent claim(s). Those additional generic computer components and their corresponding dependent claim(s) are as follows:
- data retrieval (Claims 2, 10, and 18).
The remaining added elements/limitations of those dependent claim(s) do not integrate the abstract idea into a practical application nor add significantly more because they all merely add further functional step(s) and/or detail to the abstract idea; as part of the abstract idea, they cannot integrate into a practical application or be significantly more than the abstract idea of which they are a part. For example, the remaining portion of claim 3 merely adds further explanation to the general policy.
Thus, taken alone, the additional elements do not integrate the abstract idea into a practical application, nor add significantly more. Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology.
Claim(s) 1-7, 9-15, and 17-20 are therefore not drawn to eligible subject matter as they are directed to an abstract idea that is not integrated into a practical application and is without significantly more.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure: Arellano, US 20040128624 A1 (system and methods for an architectural framework for design of an adaptive, personalized, interactive content delivery system).
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NATHAN ERB whose telephone number is (571)272-7606. The examiner can normally be reached M - F, 11:30 AM - 8 PM.
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/NATHAN ERB/Primary Examiner, Art Unit 3628