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 .
This action is in response to the communication filed on January 30, 2026.
Claims 1-7, 12-19, 21, and 26-29 are pending in this action.
Response to Arguments
Applicant’s arguments with respect to claim(s) 1-7, 12-19, 21, and 26-29 have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-7, 12-19, 21, and 26-29 are rejected under 35 U.S.C. 101 because
the claimed invention is directed to a judicial exception (i.e., law of nature, a natural
phenomenon, or an abstract idea) without significantly more. The claim(s) recite(s) an
abstract idea of providing a use-case suggestion in a human-computer conversation. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims directed to an abstract idea of providing a use-case suggestion in a human-computer conversation. The claim is drawn to process/syste (a series of steps or acts) that similar to an idea ‘Of itself such as an instantiated concept, plan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper’.
The claim does not require that the method be implemented by a particular machine. The method does not require a particular transformation of a particular article. There is not transformation of a physical objects or data into a different state or thing. This providing a use-case suggestion in a human-computer conversation is similar to delivering user-selected media content to a portable device found by the courts to be abstract idea (Affinity Labs of Tex., LLC v. Amazon.com Inc., 120 USPQ2d 1210 (Fed. Cir. 2016)) and also displaying certain results of the collection and analysis found by the courts to be abstract idea (Elec. Power Grp., LLC v. Alstom S.A., 119 USPQ2d 1739 (Fed. Cir. 2016).
This judicial exception is not integrated into a practical application because claims broadly recite the result (providing a use-case suggestion in a human-computer conversation, determining a use-case in a human-computer conversation, assigning a use-case score . ., ), rather than sufficiently claiming a technical means of achieving the result. See Two-Way Media Ltd. v. Comcast Cable Commons, LLC, 874 F.3d 1329, 1337 (Fed. Cir. 2017) (“The claim requires the functional results ... but does not sufficiently describe how to achieve these results in a non-abstract way.”).
The claims recite a Judicial exception relating to “providing a use-case suggestion in a human-computer conversation, along with a generic computing device that simply used as tool to implement the abstract idea”. Here the claims do not change the underlying or other technology, rather the claimed techniques playing using computing device as pedagogical tool. The claimed additional elements - -the computing device- -“merely use a computer as a tool to perform an abstract idea” or “do no more than generally link the use of a judicial exception to a particular technological environment.” Memorandum, 84 Fed. Reg. at 55; see Customedia Techs., LLC v. Dish Network Corp., No. 2018- 2239, 2020 WL 1069742, at *3 (Fed. Cir. Mar. 6, 2020) (“We have held that it is not enough, however, to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.”).
Accordingly, claims 1-7, 12-19, 21, and 26-29 do not integrate the judicial exception into a practical application. See Memorandum, 84 Fed. Reg. at 54. As the claim recites a judicial exception and fails to integrate the exception into a practical application, the claim is “directed to the .. . judicial exception.” Id. at 54.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements are simply a generic computer. The claim amounts to no more than providing a use-case suggestion in a human-computer conversation. Taking the claimed elements either individually or as ordered combination, that transform claims into patent-eligible application, since claims merely recite use of already existing computer-based use-case switching suggestion, and there is no “inventive concept” in play using computing device well-understood, routine, and conventional activities commonly used in industry of conversation, since claims, at most, attempt to limit abstract idea to particular technological environment, and such limitation has been held insufficient to save claims in this context, and since dependent claims are not rendered patent-eligible by recitation of additional steps, such as: as per claims 2-3, 7, and 15, recite, “determining a threshold score”; as per claims 4, 6, and 17, recite, “using machine learning classifier”; as per claim 5 and 18, recite, “the user is rerouted to a human agent”; as per claims 12 and 26, recites contextual characteristic are stored and retrieved remotely”; even though additional limitations may narrow scope of claims. The claim as a whole does not amount to significantly more than the abstract idea itself. Accordingly, claims 1-7, 12-19, 21, and 26-29, are ineligible.
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.
Claim(s) 1-4, 6-7, 12, 14-17, 19, 21, 26, and 28-29 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (US 2019/0108836) in view of Song et al. (US 2022/0020358).
As per claim 1, Koto discloses, a method for determining an updated use-case and providing a use-case switch
a. determining a first use-case in the human-computer conversation (Fig. 1, element 23; Paragraph 0046 and 0049, “the domain selection unit 23 selects a domain”),
b. assigning a first use-case score to the said first use-case (Paragraphs 0063-0065, “calculated certainty factors to the dialogue server 20”) ;
c. determining a second use-case in the human-computer conversation (Paragraphs 0065-0067);
d. assigning a second use-case score to the said second use-case (Paragraphs 0065-0067).
Kato does not explicitly disclose, but Song discloses, determining whether to make the use-case switch suggestion to the said second use- case based on the said first use-case score and the said second use-case score (Paragraphs 0225-0228 and 0234-0235, “the electronic device 100 may display a result of processing the user utterance in another domain (e.g., a screen 1313 for inquiring whether to receive a result of processing the user utterance by another domain”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the invention of Kato by including determining whether to make the use-case switch suggestion to the said second use- case based on the said first use-case score and the said second use-case score as taught by Song for the advantage of possible to provide an electronic device that selects a category corresponding to a user utterance and processes the user utterance by a specific domain included in the selected category, thereby selecting a domain for providing a service suitable for the user utterance from among a plurality of domains and reducing the workload of the electronic device for identifying each of the plurality of domains (Paragraph 0011).
As per claim 2, Kato discloses, a. determining a use-case threshold score and the use-case switch suggestion being based on the use-case threshold score (Paragraph 0066).
As per claim 3, Kato discloses, further comprising: a. initiating a use-case switch
As per claim 4, Kato discloses, wherein determining the first use-case and the second use-case comprises the steps of: a. receiving, a user's conversational input (Abstract), however Kato does not explicitly disclose, but Song discloses, b. analyzing the user's conversational input utilizing a machine learning classifier (Paragraphs 0041 and 0050).
As per claim 6, Kato does not explicitly disclose, but Song discloses, the method of determining an updated use-case and providing a use-case switch suggestion in a human-computer conversation as claimed in claim 1, further comprising the steps of:
a. performing a use-case switch from the first use-case to the second use-case, based upon an approval from the user in the conversation; wherein the approval includes requesting the user for a confirmation with respect to the use-case switch (Paragraphs 0234-0235); and
b. resetting the machine learning classifier for a new use case, when a use-case switch is performed (Paragraphs 0041 and 0050).
As per claim 7, Kato discloses, he method of determining an updated use-case and providing a use-case switch suggestion in a human-computer conversation as claimed in claim 1, wherein the first use-case and the second use-case are selected from a plurality of use-cases identified in the conversation; wherein the use-case score provides a numerical measure for a plurality of concepts, including at least one of conversation alignment, balance, and emphasis; and wherein the use-case score threshold is determined automatically (Paragraphs 0064-0067).
As per claim 12, Kato discloses, but Song discloses, the method of determining an updated use-case and providing a use-case switch suggestion in a human-computer conversation as claimed in claim 1, wherein the user's conversational input and the user's contextual characteristics are stored and retrieved remotely from at least one of a user model, a local storage medium, a web interface, an application programming interface (API), a command line interface and a console (Paragraphs 0083-0084).
As per claim 14, Kato discloses. system for determining an updated use-case and providing a use-case switch
a dialogue engine (Paragraphs 0045-0047, “Chatbot”);
a natural language understanding module (Paragraph 0047, “language model”).
Kato does not explicitly disclose, but Song discloses, a switch suggestion module, the switch suggestion module determines whether to make a use-case switch suggestion to a second use-case based on a first use-case score and a second use- case score (Paragraphs 0225-0228 and 0234-0235, “the electronic device 100 may display a result of processing the user utterance in another domain (e.g., a screen 1313 for inquiring whether to receive a result of processing the user utterance by another domain”).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the invention of Kato by including determining whether to make the use-case switch suggestion to the said second use- case based on the said first use-case score and the said second use-case score as taught by Song for the advantage of possible to provide an electronic device that selects a category corresponding to a user utterance and processes the user utterance by a specific domain included in the selected category, thereby selecting a domain for providing a service suitable for the user utterance from among a plurality of domains and reducing the workload of the electronic device for identifying each of the plurality of domains (Paragraph 0011).
As per claim 28, Kato does not explicitly disclose, but Song discloses, the method of determining an updated use-case and providing a use-case switch suggestion in a human-computer conversation as claimed in claim 1, wherein the conversation takes place over a telecommunication network (Paragraph 0048, “communication network”).
As per claims 15-17, 19, 21, 26, and 29, they are analyzed and thus rejected for the same reasons set forth in the rejection of claims 1-4, 6-7, 12, and 28, because the corresponding claims have similar limitations.
Claim(s) 5 and 18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (US 2019/0108836) in view of Song et al. (US 2022/0020358) as applied to claims 4 and 16 above, and further in view of DA Palma et al. (US 2008/0147406).
As per claim 5 and 18, Kato discloses, the method of determining an updated use-case and providing a use-case switch suggestion in a human-computer conversation as claimed in claim 4, further comprising the step of providing a first intent and a second intent corresponding to the first use case and the second use case respectively wherein the first intent and the second intent are determined by analyzing the user's conversational input; and wherein for serving one of the intents (Paragraph 0029), however Kato does not expclitly disclose, but DA Palma discloses, the user is rerouted to a human agent (Paragraph 0004).
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the invention of Kato in view of Song by including the user is rerouted to a human agent as taught by DA Palama for the advantage of when a caller has difficulty with the IVR system, a transfer can be made from the IVR system to a customer service representative, Successful use of IVR systems allows call centers to be minimally manned while customers are provided a high level of service with relatively low periods spent in waiting queues (Paragraph 0004).
Claim(s) 13 and 27 is/are rejected under 35 U.S.C. 103 as being unpatentable over Kato et al. (US 2019/0108836) in view of Song et al. (US 2022/0020358) as applied to claims 4 and 14 above, and further in view of Gruber et al. (US 2013/0275164).
As per claims 13 and 27, Kato does not explicitly disclose, but Song discloses, the method of determining an updated use-case and providing a use-case switch suggestion in a human-computer conversation as claimed in claim 4, wherein the step of analyzing the user's conversational input further comprises the step of: a. detecting voice activation (Paragraphs 0076 and 0092);
Therefore, it would have been obvious to one of ordinary skill in the art before the effective filling date of the claimed invention to modify the invention of Kato in view of Song by including detecting end/start-of-speech in a conversation as taught by Gruber for the advantage of the system of the present invention can be implemented in any combination of domains (Paragraph 0020).
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Abul K. Azad whose telephone number is (571) 272-7599. If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Bhavesh Mehta, can be reached at (571) 272-7453.
Any response to this action should be mailed to:
Commissioner for Patents
P.O. Box 1450
Alexandria, VA 22313-1450
Or faxed to: (571) 273-8300.
Hand-delivered responses should be brought to 401 Dulany Street, Alexandria, VA-22314 (Customer Service Window).
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May 3, 2026
/ABUL K AZAD/Primary Examiner, Art Unit 2656
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