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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/10/26 has been entered.
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 1-21 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.
Claims 1-21 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by a human being, the rules of a game, and/or claim training/employing a machine learning algorithm in a particular environment.
In regard to Claims 1, 11, and 21, the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); claim the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24); and/or claim training/employing a machine learning algorithm in a particular environment which has held by the CAFC to be abstract in, e.g., Recentive Analytics v. Fox Corp (2023-2437; 4/18/25), in terms of the Applicant claiming:
[a] toy method (200) for holding a spoken conversation with a person, comprising:
providing (201) at least one [algorithm] configured for generating contextually relevant and varied responses in natural language conversations by:
[…]
[receiving data regarding] a voice utterance of a person [with] a toy;
providing (203) the voice utterance as an input to the at least one [algorithm];
prompting (204) the at least one [algorithm] to generate an output based on the input; and outputting (205) the output to the person […].
In regard to Claims 1, 11, and 21, they claim training/employing a machine learning algorithm in a particular environment which has held by the CAFC to be abstract in, e.g., Recentive Analytics v. Fox Corp (2023-2437; 4/18/25), in terms of the Applicant claiming training/employing “at least one machine learning (ML) model”.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being, the rules of a game, and/or claim training/employing a machine learning algorithm in a particular environment.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., a toy comprising at least one microphone, at least one speaker, at least one processor, a wireless communication interface, and at least one memory storing instructions embodying Applicant’s abstract idea as computer code; servers; a physical token; training/employing at least one ML model; and/or employing speech to text and text to speech; these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., a toy comprising at least one microphone, at least one speaker, at least one processor, a wireless communication interface, and at least one memory storing instructions embodying Applicant’s abstract idea as computer code; servers; a physical token; training/employing at least one ML model; and/or employing speech to text and text to speech; these are well-understood, routine, and conventional elements and are claimed for the well-understood, routine, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are well-understood, routine, and conventional, Applicant’s specification discloses the support for these elements 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). See, e.g., F1A, 1B, and 2 in Applicant’s specification and text regarding same; e.g., p14 and 43 regarding servers; e.g., p297 regarding a physical token; p161-164 in regard to training/employing at least one ML model; and, e.g., p132 regarding speech to text and text to speech.
Claim 21 is rejected under 35 USC 101 as being directed to software per se. See MPEP 2106.03(I).
Claim Rejections - 35 USC § 102
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.
Claims 1-3, 8-13, and 18-21 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by PGPUB US 20180158458 A1 by Weber (“Weber”).
In regard to Claim 1, Weber teaches an interactive artificial intelligence (AI) toy (300A, 300B) capable of holding a spoken conversation with a person; the toy comprising:
at least one microphone (302A, 302B) configured to detect a voice utterance of the person;
at least one speaker (303A, 303B) configured to output a sound to the person;
at least one processor (111) configured to execute computer instructions; and
(Figure 1);
at least one memory (112) storing computer instructions configured for operating the toy to perform the following steps:
providing (201) at least one machine learning (ML) model configured for generating contextually relevant and varied responses in natural language conversations, by:
loading the at least one ML model into the at least one memory from an optional storage medium (113) storing the at least one ML model; and/or
connecting via an optional communication connection (126) of the toy with a server (115) providing a conversation interface to the at least one ML model;
(see, e.g., F2 and p23 and 29);
detecting (202) a voice utterance of the person using the at least one microphone;
(see, e.g., p28);
providing (203) the voice utterance as an input to the at least one ML model; prompting (204) the at least one ML model to generate an output based on the input;
(see, e.g., F4A and 4B);
and providing (205) the output to the at least one speaker to be output to the person
(see, e.g., F3A and 3B).
In regard to Claim 2, Weber teaches these limitations. See, e.g., F4A-14.
In regard to Claim 3, Weber teaches these limitations. See, e.g., p29.
In regard to Claim 8, Weber teaches these limitations. See, e.g., p28 and F4A and 4B.
In regard to Claim 9, Weber teaches these limitations. See, e.g., p29.
In regard to Claim 10, Weber teaches these limitations. See, e.g., p23.
In regard to Claims 11-13, see rejections of Claims 1-3.
In regard to Claims 18-20, see rejections of Claims 8-10.
In regard to Claim 21, see rejection of Claim 1.
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 4-6 and 14-16, are rejected under 35 U.S.C. 103 as being unpatentable over Weber, in view of PGPUB US 20150209664 A1 by Haseltine (“Haseltine”).
In regard to Claims 4-6 and 14-16, Haseltine teaches these limitations (see, e.g., p74-75);
Furthermore, the combination of the cited prior art would have been obvious to one of ordinary skill in the art at the time of filing because the cited prior art includes each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the cited prior art being the lack of actual combination of the elements in a single prior art reference; one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately; and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Specifically, it would have been obvious to have added the functionality taught by Haseltine to the apparatus otherwise taught by Weber, in order to increase the user’s interest.
Claims 7 and 17 are rejected under 35 U.S.C. 103 as being unpatentable over Weber, in view of Haseltine.
In regard to Claims 7 and 17, Weber teaches employing a client/server model (see, e.g., F2) and Haseltine teaches the other limitations in terms of unlocking additional toy functions (see, e.g., p74-75) as well as teaches this being performed via a server (see, e.g., p172);
Furthermore, the combination of the cited prior art would have been obvious to one of ordinary skill in the art at the time of filing because the cited prior art includes each element claimed, although not necessarily in a single prior art reference, with the only difference between the claimed invention and the cited prior art being the lack of actual combination of the elements in a single prior art reference; one of ordinary skill in the art could have combined the elements as claimed by known methods, and that in combination, each element merely performs the same function as it does separately; and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Specifically, it would have been obvious to have added the functionality taught by Haseltine to the apparatus otherwise taught by Weber, in order to increase the user’s interest by employing tokens that unlock behaviors as well as employing a server/client model to increase flexibility.
Response to Arguments
All of Applicant’s claims have been rejected under 35 USC 101 under the Mayo test as claiming abstract ideas and without claiming “significantly more”. The Mayo test is a legal test and, as such, the question in regard to making such a rejection is what is the most analogous case law in terms of identifying whether an applicant has claimed patent eligible versus ineligible subject matter. To that end, the 101 rejections made supra cite legal authorities in regard to why the Applicant is alleged to have claimed patent ineligible subject matter under the Mayo test. Applicant, however, fails to cite any relevant legal authority in support of the majority of its arguments and it is, thereby, largely impossible to respond to them.
Applicant argues on page 9 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s arguments are not persuasive. Applicant’s claimed invention is not analogous to that of Enfish to the extent that Applicant’s claims nothing analogous to an improved self-referential computer database. Applicant’s claimed invention is not analogous to that of McRO either to the extent that Applicant’s does not claim an improvement to the physical display of human faces done with computer animation:
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SAP America v. Investpic, slip. op., page 9.
To the extent that Applicant’s invention provides an improvement it would ostensibly be in terms of the outputs that can be provided by the claimed device as being more potentially engaging to the human user of the device than outputs that were provided to that user from some prior art device. Such an improvement to human user’s experience, however, are not patent eligible under the Mayo test:
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USAA v. PNC Bank, slip. op., page 9.
Applicant further argues on page 9 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s arguments are not persuasive. Employing a microphone to capture sound and a speaker to emit sound are the well-understood, routine, and conventional uses for these devices, as evidenced by the limited disclosure in Applicant’s specification as to how to make and/or use these devices and, thereby, these devices do not add “significantly more” to Applicant’s abstract idea.
Applicant argues on page 11 of its Remarks in regard to the rejections made under 35 USC 102:
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Applicant’s argument is not persuasive. Weber teaches employing machine learning to vary and personalize its responses to the user:
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Conclusion
The prior art made of record and not relied upon is listed in the attached PTO-Form 892 and is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 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 http://pair-direct.gov. 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.
/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
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