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 .
Applicant’s amendments dated 12/15/25 are hereby 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in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); claim the rules of a game which has been identified by the CAFC as being an abstract ides in decisions such as, e.g., Savvy Dog Systems v. Pennsylvania Coin (non-precedential; 2023-1073; 3/21/24); and/or claim training/employing a machine learning algorithm in a particular environment which has held by the CAFC to be abstract in,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);
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 its arguments and it is, thereby, largely impossible to respond to them.
Applicant argues on page 8 of its Remarks that because it has claimed a “physical object” it has thereby claimed patent eligible subject matter under the Mayo test. Applicant’s argument is not persuasive because merely claiming a physical device without claiming an improvement to that device qua device fails to claim patent eligible subject matter under Mayo. See, e.g., the computing device claimed in Alice; the digital camera claimed in Yu v. Apple; the copy machine claimed in Content Extraction; the fish hook claimed in In re Rudy; the garage door opener claimed in Chamberlain; the 3D printer claimed in Ficep (non-precedential). In all of these instances the Supreme Court or the CAFC held that the addition of these physical objects failed to render “significantly more” and, thereby, claim patent eligible subject matter under the Mayo test.
Applicant further argues on page 9 of its Remarks that because it has claimed “interface elements” it has thereby claimed patent eligible subject matter. It is unclear what Applicant means by this because Applicant does not literally claim “interface elements”. Applicant does claim, e.g., in Claim 1 providing a “communication interface”. To the extent, however, that Applicant is arguing that it employs a graphical user interface to provide a visual display to the user, such use of a GUI does not render “significantly more”. See, e.g., the CAFC’s decision in Cxloyalty v. Maritz Holdings (2020-1307; 2/8/21), slip. op., pages 16-17: “The claims apply the abstract idea on a computer by replacing the human intermediary with a GUI and API, but as the Board concluded, representative claim 1 “merely recites generic and conventional
computer components (i.e., ‘processor,’ ‘GUI,’ and ‘API’) and
functionality for carrying out” the abstract idea”…Accordingly the claims do not survive step two.”
Applicant argues on page 11 of its Remarks in regard to the rejection made under 35 USC 103 that Weber fails to teach an “at least one machine learning (ML) model configured for generating…varied responses in natural language conversations” because Weber allegedly only can generate “four or even three potential elements of output.” Applicant does not specifically define the term “varied” in its specification and nor is it a term of art. One definition of “varied” is “Something that…consists of things of different types, sizes, or qualities.” (https://www.collinsdictionary.com/us/dictionary/english/varied). Weber teaches providing conversational outputs that are of “different types” and, thereby, this teaching is within the BRI of the claimed limitation of “varied”.
Conclusion
THIS ACTION IS MADE FINAL. 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 mailing date of this final action.
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.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715