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 statement (IDS) submitted on 03/14/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
The Manual of Patent Examining Procedure (MPEP) provides detailed rules for determining subject matter eligibility for claims in §2106. Those rules provide a basis for the analysis and finding of ineligibility that follows. MPEP §2106(III) states that examiners should determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the flowchart in this section.
Claims 1-20 are rejected under 35 U.S.C. §101. The claimed invention is directed to unpatentable subject matter because the claimed invention recites a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-10 are directed to a method, claims 11-19 are directed to a computer program product and claim 20 is directed to a system. Although claims 1-20 are directed to one of the four statutory categories of invention (MPEP 2106.03), the claims recite a number of steps of (“analyzing …”, “applying …”, “generating …” and “applying …”). These limitations fall into a judicial exception (MPEP 2106.04 (II), “laws of nature”, “natural phenomena” and “abstract idea”). The Supreme Court has explained that the judicial exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and technological work", and are thus excluded from patentability because "monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it." Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980. It should be noted that there are no bright lines between the types of exceptions, and that many of the concepts identified by the courts as exceptions can fall under several exceptions (MPEP 2106.04 (I) and (II)).
In light of the disclosure (Spec. [0002-0003], [0042-0043], [0046-0047], Fig. 3), the claimed subject is related to emphasizing an element in a presenting slide when talking about the element during a discussion. Although the disclosed invention is related to a computer implemented method, the claimed invention defined by the recited claim limitations could interpreted as during a meeting, a human assistant emphasizes a displayed element (e.g. a table or a bar chart) using a highlighter marker when a presenter is talking about the displayed element. Except for mentioning a generic computer element (by a processor set), claim 1 could be interpreted as:
analyzing, (a person, e.g., a presenter’s assistant, listens to discussions between the presenter and meeting audiences during a video conference);
applying, (the assistant matches an element, e.g., a table or a pie chart, on a displaying presenting slide with discussed topics between the presenter and the audiences);
generating, (the assistant accesses emphasis functions of Microsoft’s power point); and
applying, (the assistant highlights the element being discussed).
If a method defined by an independent claim 1 were patented, a person would infringe the patent if this person is performing his / her routine job. Claims 11 and 20 are directed to a computer readable medium and a system. Although claims 11 and 20 are directed to different categories, these claims include same features as method claim 1. Dependent claims 2-10 and 12-19 recite some limitations related to emphasizing an element in the slide based on a score (e.g., “a confidence score”) or generally linking an abstract idea to particular technological areas (e.g., “generative artificial intelligence”).
Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception (See a flowchart in MPEP 2106.04(II)(A)). In the prone one of the two prong inquiry, the above limitations recited in claims are directed to at least one of groups of abstract ideas (MPEP 2106.04(a), “Mathematical concepts”, “Certain methods of organizing human activity”, “Mental Processes”). It should be noted that these groupings are not mutually exclusive, i.e., some claims recite limitations that fall within more than one grouping or sub-grouping (MPEP 2106.04(a)(2)).
The courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper” to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir.2011). If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75,674. If the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept.
As explained above, claimed invention can be interpreted as a person listens to a discussion during a meeting and highlights an element on the displaying slides. The dependent claims further recite steps related to the abstract idea of mental processes. These claim elements, when considered alone and in combination, are considered to be abstract ideas because they are directed to a mental process.
In these situations, the claim is considered to recite a mental process. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” The claims therefore recited an abstract idea, despite the fact that the claimed steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504.
Since the claimed invention falls into a judicial exception according above analysis, a claim that is directed to a judicial exception must be evaluated to determine whether the claim recite additional elements that integrate the judicial exception into a practical application (MPEP 2106.04(II)(A)(2)). Prong Two asks whether the claim recite additional elements that integrate the judicial exception into a practical application. In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. Court in Gottschalk v. Benson ‘‘held that simply implementing a mathematical principle on a physical machine, namely a computer was not a patentable application of that principle. Accordingly, after determining that a claim recites a judicial exception in Step 2A Prong One examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception in Step 2A Prong Two. For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B. If there are no additional elements in the claim, then it cannot be eligible.
MPEP §2106.05 describes step 2B test to determine whether a claim amounts to significantly more. The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014). The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept (See MPEP §2106.05(I)(A)). It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2B. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception is not in itself an inventive concept and does not guarantee eligibility.
The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept. By considering limitations recited in the instant claims, the claims do not improve the functions of a computer, or any other technology or technical field. The claims also do not apply the judicial exception with, or by use of, a particular machine. The claims also do not have effecting a transformation or reduction of a particular article to a different state or thing. The claims fail to include a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application. The recited “processor” / “memory” are well-understood, routine and conventional in the field. Therefore, that recited element does not amount to significantly more than an abstract idea.
Please notes simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984. The court also found “adding insignificant extra-solution activity to the judicial exception” or “generally linking the use of the judicial exception to a particular technological environment or field of use” is not enough to be qualify as “significantly more” considerations.
By reviewing limitations recited in the claims, none of the limitations meet the significantly more considerations. Therefore, claims are directed to unpatentable subject matter (MPEP §2106, flowchart, Step 2B, NO branch).
Claim Rejections - 35 USC § 102
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 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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. §102 (a)(1) as being anticipated by Tumbde et al. (US PG Pub. 2022/0350954, referred to as Tumbde).
Tumbde is a published patent application by the same company (IBM Inc.) of the instant application. Tumbde discloses monitoring conversations / discussions between meeting participants during a video conference (Tumbde, Abstract, [0003], [0017], using Webex meeting software, [0024-0025]). Tumbde further discloses highlighting displayed words / sentences on presenting slides (a claimed “applying an emphasis effect to the element”) when contents or contexts being discussed match displayed elements (Tumbde, [0028-0029], [0033-0040], Fig. 3C).
Regarding claims 1, 11 and 20, Tumbde discloses a method, a computer program product and a system (Tumbde, [0018], Fig. 4, Fig. 5, a computer implemented system / method for highlighting displayed elements that is being discussed during a video conference), comprising:
analyzing, by a processor set and via natural language processing, a conversational input between a plurality of users to identify a description of an element (Tumbde, [0023-0027], Fig. 2, #204-#212, monitoring and analyzing discussions between meeting participants during a video conference using natural language processing, NLP, techniques; identifying keywords, context of discussions);
applying, by the processor set and via a machine learning model, a matching procedure between the conversational input and a virtual environment to identify the element matching the description of the element (Tumbde, [0014], [0032-0033], comparing and matching displayed elements in slides with discussed topics; Fig. 2, #210);
generating, by the processor set, an emphasis representation in a programmatic model of the virtual environment based on the description of the element (Tumbde, [0021-0023], [0034-0039], Fig. 3C, generating highlighting displayed elements that matches discussed topics / keywords using API calls); and
applying, by the processor set, an emphasis effect to the element within the virtual environment corresponding to the emphasis representation (Tumbde, [0034-0036], Fig. 3C, highlighting elements on a displaying slide, the highlighted elements match discussed topics / contexts).
Regarding claims 2 and 12, Tumbde further discloses the applying the emphasis effect comprises rendering the emphasis effect corresponding to the emphasis representation of the element within the virtual environment (Tumbde, [0036], applying highlighting, bold face or underline to certain portions in a slide that matches discussed topics / contexts during the video conference, Fig. 3C).
Regarding claims 3 and 13, Tumbde further discloses the applying the matching procedure comprises:
identifying, by the processor set and via the natural language processing, the description of the element within the conversational input (Tumbde, [0025-0028], using natural language processing techniques to identify topics / context in a meeting discussions); and
identifying, by the processor set, the element within the virtual environment based on the description of the element within the conversational input (Tumbde, [0023], [0030], [0035], Fig. 3C, identifying displayed elements in presenting slides that match meeting discussions during a video conference).
Regarding claims 4 and 14, Tumbde further discloses the identifying the description of the element within the conversational input comprises inferring the description of the element within the conversational input by utilizing semantic similarity analysis (Tumbde, [0028], [0031-0032], comparing semantic similarity between meeting discussions and displayed slides).
Regarding claims 5 and 15, Tumbde further discloses adjusting the emphasis effect applied to the element based on an amount of time that has elapsed since the element was identified (Tumbde, [0030], [0035], displaying one slide at a time on a screen, highlighting applying previous / current slides based on context).
Regarding claims 6 and 16, Tumbde further discloses:
determining a level of confidence that the emphasis representation includes the element (Tumbde, [0032-0033], [0043], determining confidence of relevant content and similarity scores); and
displaying a confidence score on a display which corresponds with the level of confidence (Tumbde, [0044], Fig. 3C, #308, displaying a thurm up showing a valid content being highlighted).
Regarding claims 7 and 17, Tumbde further discloses the level of confidence is distinct from the emphasis effect (Tumbde, Fig. 3C, #306, emphasis effect is underline and bold face, #308, confidence level is showing as a thumb-up symbol).
Regarding claims 8 and 18, Tumbde further discloses the conversational input comprises a voice input, and wherein the virtual environment is an immersive virtual environment comprising a virtual world environment (Tumbde, [0015], [0017], a virtual meeting environment).
Regarding claims 9 and 19, Tumbde further discloses the conversational input comprises multi-modal conversational input (Tumbde, [0015], audio, video and text inputs; [0023-0024], [0038], during a video meeting, voice input using microphone, facial and body language inputs using camera).
Regarding claim 10, Tumbde further discloses the machine learning model comprises generative artificial intelligence for performing the matching procedure between the conversational input and the virtual environment to identify the element matching the description of the element (Tumbde, [0025], [0028-0029], [0031], [0033], using machine learning models to compare and identify matching between discussion topics / contexts and displayed elements in presenting slides).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The examiner discovered several relevant prior art references that are related to one or more concepts disclosed by the instant application. These references are included in the attached PTO-892 form for completeness of the record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jialong He, whose telephone number is (571) 270-5359. The examiner can normally be reached on Monday – Friday, 8:00AM – 4:30PM, EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Pierre Desir can be reached on (571) 272-7799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIALONG HE/Primary Examiner, Art Unit 2659