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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 July 17, 2026 has been entered.
Response to Arguments
Applicants amended the claims to include a trained machine learning model amounting to significantly more than the abstract idea. Applicants’ arguments have been considered, but are not persuasive, for reasons as set forth below.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Regarding claims 21 and 31, the word "likely" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or likely"), thereby rendering the scope of the claim(s) unascertainable.
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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 21 and 31 are directed to the abstract idea of collecting information (dialog context), analyzing it using a mathematical algorithm (trained ML model), and making a recommendation (suggesting a skill to perform a functionality), which is a combination of mental processes and mathematical concepts under MPEP 2106.04(a). The additional elements of processing components, the trained ML model, and generic computing devices amount to no more than generally linking the abstract idea to a particular technological environment and do not integrate the judicial exception into a practical application under Step 2A. The claim lacks specific technical details explaining how the ML model improves computer functionality or solves a technical problem. Instead, it merely applies generic ML techniques to analyze dialog data and generate recommendations, which is insufficient to constitute significantly more than the abstract idea itself under Step 2B. The claim does not recite unconventional computer components, a particular machine with specialized configuration, or technical improvements beyond the abstract idea of automated recommendation generation. The claim simply uses conventional computer technology to perform data collection, analysis, and output. Those are routine activities that do not transform the abstract idea into patent-eligible subject matter. Therefore, the claim is not directed to patent-eligible subject matter under 35 U.S.C. 101.
The claims 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. The claims are directed to the abstract idea of dialog expansion, as explained in detail below.
Claims 22-30 and 32-40 are dependent claims that incorporate all limitations of ineligible claim 21 and therefore are likewise directed to patent-ineligible subject matter under 35 U.S.C. 101, as the additional limitations do not cure the underlying abstract idea or add significantly more. Claims 22-23 and 32-33 add conventional data gathering steps (determining intent or entity information from dialog sessions), which are insignificant pre-solution activity; Claims 24 and 34 merely specifies a type of entity (location), which is a field-of-use limitation insufficient to confer eligibility; Claims 25 and 35 adds routine post-solution activity of sending an indicator to a skill component, which does not transform the abstract recommendation process; Claims 26, 29, 36 and 39 add consideration of additional dialog context (other skill components or prior dialog sessions), which are simply additional inputs to the same abstract analysis without unconventional implementation; Claims 27 and 37 includes generating a natural language description of the recommendation, which is a routine output formatting step that does not improve computer functionality; Claims 28 and 38s adds conventional user attribute data to the analysis, amounting to generic data collection; and Claims 30 and 40 adds prompt text data as another input parameter, which is merely additional data to process using the same abstract methodology. None of these dependent claims recite specific technical improvements, unconventional computer components, or particular solutions to technical problems. They simply add routine, conventional data inputs, processing steps, or outputs to the abstract idea of analyzing dialog context with an ML model to generate recommendations, and therefore amount to “nothing significantly more” than the judicial exception itself under Step 2B.
The claims recite mathematical concepts and mental-process-like steps (probabilities and grouping). The specification nor the claims recite an explicit machine/architecture and there is no stated improvement to computer/natural language processing. The claims merely recite analyzing and transforming information to output a recommendation. There is no integration into a practical application.
According to Step 1, it includes determining whether the claims fall within a statutory category. The claims include a method, therefore the claims fall within a statutory category. Step 2A Prong one, includes evaluating whether the claims recite a judicial exception. The claims recite a judicial exception, therefore an evaluation is done to determine if the claims fit into one of the categories. As explained above, the claims collectively and individually, fall within categories courts and USPTO guidance commonly treat as abstract ideas: mental processes (recognizing/extracting/organizing information), mathematical concepts (training data) and fundamental data-processing/manipulation.
Prong 2B is used to evaluate whether the claims recite additional elements that integrate the exception into a practical application. The judicial exception is not integrated into a practical application. In particular, the claim only recites additional elements which are recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
It is noted that a few of the dependent claims recite training a model, however, the claims do not explicitly recite how the trained data is used for a particular purpose. The claims are presented at a high level and do not meaningfully limit the claim to a specific, unconventional improvement in computer or vehicle technology. The claims do not recite a particular hardware architecture, specialized data structures, concrete signal-processing steps, defined latency or safety constraints, or a specific machine-learning architecture or training regime that produces a technological improvement. The mere mention of training is insufficient to transform the abstract idea into patent-eligible subject matter. The claims do not supply an inventive concept that amounts to significantly more than the judicial exception because the claimed elements are routine, conventional data-processing activities implemented on generic computing hardware.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JAKIEDA R JACKSON whose telephone number is (571)272-7619. The examiner can normally be reached Mon - Fri 6:30a-2:30p.
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/JAKIEDA R JACKSON/Primary Examiner, Art Unit 2657
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