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 .
Status of Claims
This office action is in response to arguments and amendments entered on September 2, 2025 for the patent application 18/625,454 originally filed on April 3, 2024. Claims 1, 3, 7 and 11-13 are amended. Claim 16 is new. Claims 1-16 are pending. The first office action of June 5, 2025 is fully incorporated by reference into this Final Office Action.
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 1-16 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1 – “Statutory Category Identification”
Claim 1 is directed to “a conversational teaching method” (i.e. “a process”), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 1 “Abstract Idea Identification”
However, the claims are drawn to the abstract ideas of “conversational teaching,” per claim 1, either in the form of “certain methods of organizing human activity,” in terms of managing personal behavior or relationships or interactions between people (including social activities, teaching and following rules or instructions), or reasonably in the form of “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion), or reasonably in the form of “mathematical concepts,” in terms of processes that can be performed as mathematical relationships, mathematical formulas or equations, mathematical calculations. Regardless, the claims are reasonably understood as either “certain methods of organizing human activity;” “mental processes;” and/or “mathematical concepts,” which require the following limitations:
Per claim 1:
“receiving a teaching script, wherein the teaching script includes N rounds, N is a natural number larger than 1, and setting a value of a variable i is 1, where 1 <= i <=N; and
when i <= N, executing following steps of a i-th round:
transmitting a 1st party conversation of the i-th round of the N rounds to a user, and having the user prompt the 1st party conversation;
transmitting a first teaching instruction to the user, and having the user prompt the first teaching instruction;
receiving a 2nd party conversation from the user;
determining whether the 2nd party conversation matches with at least one of the 1st party conversation and the first teaching instruction, wherein said determining is done by a classifier of an AI (Artificial Intelligence) server; and
when it is determined that the 2nd party conversation matches with at least one of the 1st party conversation and the first teaching instruction, increasing the value of the variable i by 1.”
These limitations simply describe a process of data gathering and manipulation, which is partially analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Step 2A, Prong 2 – “Practical Application”
Furthermore, the applicants claimed elements of “a user computer,” “a network” and “an AI (Artificial Intelligence) server” are merely claimed to generally link the use of a judicial exception (e.g., pre-solution activity of data gathering and post-solution activity of presenting data) to (1) a particular technological environment or (2) field of use, per MPEP §2106.05(h); and are applying the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea, per MPEP §2106.05(f). In other words, the claimed “conversational teaching,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Step 2B – “Significantly More”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. “a user computer,” “a network” and “an AI (Artificial Intelligence) server” are claimed, these are generic, well-known, and conventional data gather computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). As such, this satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the Applicant’s claimed “a user computer,” as described in paras. [0046]-[0047] of the Applicant’s written description as originally filed, provides the following:
“[0046] Please refer to FIG. 3, which illustrates a block diagram of a user computer 130 in accordance with an embodiment of the present application. The user computer 130 may be a wearable mobile device, smart phone, personal digital assistant, laptop computer, desktop computer and/or any other form of computer. For examples, the user computer 130 is a computer with Von Neumann architecture and its variants.”
“[0047] The user computer 130 may comprises a CPU (central processing unit) 310, a memory module 320, a I/O (input/output) interface module 330, an output device 340, an input device 350, a storage device 360 and/or a network device 370. The CPU 310 comprises at least one microprocessor, e.g., a microprocessor adapted to one of instruction sets such as RISC-V, x86, x64, ARM, and Alpha. It is configured to execute instructions stored in the memory module 320 in order to control the user computer 130 via an OS (operating system) and/or applications software. And it is configured to control hardware via the OS and/or applications to implement the methods and steps provided by the present application.” As such, the Applicant’s “a user computer,” is reasonably interpreted as generic, well-known, and conventional data gathering computing element.
Likewise, the Applicant’s claimed “a network,” as described in para. [0039] of the Applicant’s written description as originally filed, provides the following:
“[0039] Please refer to FIG. 1, which illustrates a block diagram of a conversational teaching system 100 in accordance with an embodiment of the present application. The conversational teaching system 100 comprises a server 110, a network 120, and multiple user computers 130. The network 120 may be a combination of one or more physical networks which may include one or more interconnected wide-area networks or telecommunication networks and one or more access networks or local area networks connected to the wide-area networks or telecommunication networks. The wide-area networks or telecommunication networks may be wired, or wireless networks provided by telecommunication operators. For examples, they can be Internet, wireless mobile networks such as 3G/4G/5G/6G etc., satellite communication networks such as Starlink or Iridium. The access networks or local area networks may be wired or wireless local area networks, e.g., wired networks compliant with IEEE 802.3 series of protocols or wireless networks compliant with IEEE 802.11 series of protocols. The network 120 is configured to transmit information between the server 110 and the user computers 130.” As such, the Applicant’s “a network,” is also reasonably interpreted as generic, well-known, and conventional data gathering computing element.
Finally, the Applicant’s claimed “an AI (Artificial Intelligence) server” as described in para. [0045] of the Applicant’s written description as originally filed, provides the following:
“[0045] In one embodiment, the conversational teaching system 100 may comprise an AI server 140 for providing natural language processing capabilities in order to process the computed generation of the contents of teaching instructions. The AI server 140 may be configured to implement a natural language processing model, such as a LLM (large language model). For examples, OpenAI's ChatGPT, Google's Lamda, Meta's LLaMA, or similar models.” As such, the Applicant’s “an AI (Artificial Intelligence) server” is reasonably interpreted as generic, well-known, and conventional data gathering computing element implementing commercially available software.
Therefore, the Applicant’s own specification discloses ubiquitous standard equipment and connectivity within modern computing and does not provide anything significantly more. Therefore, Step 2B, of the subject-matter eligibility analysis is “No.”
In addition, dependent claims 2-16 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 2-16 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to claim 1. Therefore, claims 1-16 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject-matter.
Response to Arguments
The Applicant’s arguments filed on September 2, 2025 related to claims 1-16 are fully considered, but are not persuasive.
35 USC § 101 rejections
The Applicant respectfully argues “As recited in MPEP 2106.05(b) Particular Machine, "it is noted that while the application of a judicial exception by or with a particular machine is an important clue. When considering the particularity or generality of the elements of the machine or apparatus, the Applicant provides that in a real-world application, the student sits in front of the user computer cannot effectively learn after waiting minutes. Using particular machines, such as Al server, is a must in the "conversational" teaching method and system.
When considering whether the machine or apparatus implements the steps of the method, the Applicant asserts that the determining step is done by the classifier of the Al server. When determining whether its involvement is extra-solution activity or a field-of-use, the Applicant asserts that the involvement of the classifier of the Al server is a field-of-use, as daily uses of networked Al services today.
Therefore, the Applicant believes that the additional element (the classifier of the Al server) recited in the amended claim 1 does contribute an "inventive concept." The amended claim 1 as a whole does amount to significantly more than the exception. The test of Step 2B should be YES, and thus is eligible at Pathway C. thereby concluding eligibility analysis.”
The Examiner respectfully disagrees. The Applicant’s claimed elements of “a user computer,” “a network” and “an AI (Artificial Intelligence) server,” are described in paras. [0046-0047]; [0039] and [0045], respectively. As provided above in the rejection, the claimed elements of “a user computer,” “a network” and “an AI (Artificial Intelligence) server,” are generic, well-known, and a conventional data gathering computing elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known. The Applicant’s written description of the specification as originally filed has provided no evidence to indicate otherwise. As such, the elements are not “significantly more.” Therefore, the argument is not persuasive.
The Applicant respectfully argues “As recited in MPEP 2106.05, III Mental Processes, A. A Claim With Limitation(s) That Cannot Practically be Performed in the Human Mind Does Not Recited a Mental Process, an example of a claim to detecting suspicious activity by using network monitors and analyzing network packets, SRI Int'/, 930 E3d at 1304 is provided. Because the amended claim 1 includes "transmitting a 1" party conversation of the i-th round of the N rounds to a user computer via a network, this step is impossible to be a mental process.”
The Examiner respectfully disagrees. The GPS example cited provides that the machine “must play a significant part in permitting the claimed method to be performed.” SiRF Tech., Inc. v. Int’l Trade Comm’n, 601 F.3d 1319, 1333 (Fed. Cir. 2010). The machine in question is a Global Positioning System or GPS. Clearly, a GPS is required for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals, where the claimed GPS receiver calculated pseudo-ranges that estimated the distance from the GPS receiver to a plurality of satellites. The patent at issue was U.S. Patent No. 6,417,801 and was directed to an abstract idea and have additional elements that amount to significantly more than the abstract idea because they show an improvement to another technology or technical field.
In Applicant’s case, the system of claim 1 comprises “a user computer,” “a network” and “an AI (Artificial Intelligence) server.” These elements as claimed, are generic, well-known, and conventional data gather computing elements. As evidence that these are generic, well-known, and a conventional data gathering computing elements (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known, the Applicant’s specification discloses these in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a). In other words, the elements are not “significantly more.”
Furthermore, with respect to mental processes, actual mental performance of the abstract idea is not required. MPEP § 2106.04(a)(2)(III)(C) states that “claims can recite a mental process even if they are claimed as being performed on a computer” and that “examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and Appellant 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. In these situations, the claim is considered to recite a mental process.” In the present case, the claim limitations are merely using a generic computer and/or computer environment, and merely uses a computer as a tool to perform the concept. Meanwhile, there is no improvement to any of the clamed elements (i.e. “a user computer,” “a network” and “an AI (Artificial Intelligence) server”). As such, the argument is not persuasive.
The Applicant respectfully argues “In addition, the Applicant finds that there are two recent patented applications involving large language model (LLM). US 12,292,912 patent, which is issued on May 6, 2025, protects "Method and System for Intent-Based Action Recommendations and/or Fulfillment in a Messaging Platform."
The claim 1 of the '912 patent comprising receiving an action selection from a user and providing the response message generated by the LLM to the user. The claim
1 of the '912 patent is believed to describe a certain method of organizing human activity. However, the use of the LLM makes it significantly more than the judicial exception.
US 12,299,405 patent, which is issued on May 13, 2025, protects "Intent-Based Query and Response Routing between Users and Backend Services.
The claim 1 of the '405 patent comprising a conversation between a conversation agent and a user. The claim I of the '405 patent is believed to describe a certain method of organizing human activity. However, the use of the L LM makes it significantly more than the judicial exception.
In summarized, the Applicant respectively submits that the amended claim 1 is not mental processes, and the amended claim 1 comprises a particular machine for implementing the inventive step thus it is significantly more than the judicial exception. The Applicant respectively submits that the claims are eligible under 35 U.S.C.101.”
The Examiner respectfully disagrees. Full faith and credit with regard to prior patents are not part of the analysis for determining subject-matter eligibility, nor is it a matter of right provided within the Manual of Patent Examination Procedure. Regardless, the Applicant’s continued arguments with regard to “mental process,” “a particular machine” and “significantly more,” continue to be unpersuasive. Therefore, the rejection of claims 1-16 under 35 U.S.C. §101 is not withdrawn.
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 extension fee 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 date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ROBERT P BULLINGTON whose telephone number is (313)446-4841. The examiner can normally be reached on Mon.-Fri. 8:00-4:00. 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, Peter Vasat, can be reached on (571) 270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see https://ppair-my.uspto.gov/pair/PrivatePair. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/Robert P Bullington, Esq./
Primary Examiner, Art Unit 3715