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 .
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Response to Amendment
This action is responsive to claims filed on December 22, 2025. Claim 1 has been canceled. Claims 2-20 are pending and presented for examination.
Amendment to the specification filed on December 22, 2025 has been considered and entered.
Response to Argument(s)
Applicant’s arguments, filed on December 22, 2025, with respect to the rejection(s) of claims 2-20 under 102 and 103 have been fully considered and are persuasive. Therefore, the rejection has been withdrawn. However, upon further consideration, a new ground(s) of rejection is made in view of Stephenson, U.S. Patent No. 10,706,839 and in further view of Haldenby et al “Haldenby”, US-PGPub. No. 20170046693.
Applicant’s response regarding the nonstatutory double patenting rejection has been noted.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
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Claims 2-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over Claims 1-21 of U.S. Patent No. 12,010,266. Although the claims at issue are not identical, they are not patentably distinct from each other because the instant application claims are broader than the U.S. Patent.
Each of the instant application base claims (2, 19 and 20) is broader in scope than the corresponding claims (1, 14, 15 & 19) in the U.S. Patent. Taking claim 2 in the instant application, as an exemplary, to compare to claim 1 in the U.S. Patent (see comparison table below). The rest of the instant application base claims recite similar limitations/features as the rest of the U.S. Patent base claims. Additionally, the remaining of the instant application dependent claims recite similar features as those cited in the U.S. Patent.
Therefore, it would have been obvious to one of ordinary skill in the art at the time the invention was made to omit elements when the remaining elements perform as before. A person of ordinary skill could have arrived at the present claims by omitting the details of said U.S. Patent claims. See In re Karlson (CCPA) 136 USPQ 184, decided January 16, 1963 (“Omission of element and its function in combination is obvious expedient if remaining elements perform same function as before”).
An exemplary table to show similarity among the conflicting claims.
Instant Application
U.S. Patent No. 12,010,266
2. A method for using a computer-implemented machine-learning assistant to provide automated interaction assistance for an interaction between parties of a plurality of parties that include a first party and a second party, at least some of the interaction comprising natural language communication between the first party and the second party, the method comprising, by the machine-learning assistant:
receiving electronic monitoring of the natural language communication between the parties;
natural language processing said communication to interpret content of said communication to yield interpreted content, said interpreted content including at least one of information exchanged between the parties, an agreement between the parties, and a transaction between the parties;
based on the interpreted content, interacting with the first party in the interaction to pass further information between the assistant and said first party, said further information being related to the interpreted content of the communication; and
storing an evidentiary record of the interaction between the parties, said record including the interpreted content and the further information.
1. A method for machine-implemented assistance of interaction among a plurality of parties, the method comprising:
monitoring, by a machine-learning interaction assistant, communication among the plurality of parties, the plurality of parties including a user and an agent different from the machine-learning interaction assistant, the communication including at least some part related to forming of an agreement between at least some of the plurality of parties;
forming, by the machine-learning interaction assistant using a machine-implemented process, evidence of the agreement based on the monitoring of the communication, the evidence including portions of the monitored communications and context data generated, by the machine-learning interaction assistant to provide contextual information beyond the actual communication, the context data comprising one or more of: inferences and reasoning steps made by a trained machine-learning process regarding ambiguities in the monitored communication, or an internal state of the agent including data representative of logic implemented by the agent;
storing at least part of the formed evidence including the portions of the monitored communication and the context data as a digital record in a content store of a ledger;
forming, based on at least some of the formed evidence, a cryptographic evidence record; and
storing the cryptographic evidence record in an immutable ledger of the ledger, the cryptographic evidence record being associated with the digital record through an index maintained by the ledger, the immutable ledger being different from the content store of the ledger, wherein the cryptographic evidence record is configured to authenticate the at least part of the formed evidence stored in the content store when subsequently retrieved for use in a future dispute resolution involving the agreement.
CLAIM INTERPRETATION
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that use the word “means” or “step” but are nonetheless not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph because the claim limitation(s) recite(s) sufficient structure, materials, or acts to entirely perform the recited function. Such claim limitation(s) is/are: "means for receiving electronic monitoring of the natural language communication...", "means for natural language processing said communication to interpret content...", "means for interacting with the first party in the interaction..." and "means for storing an evidentiary record of the interaction…” in claim 19.
Because this/these claim limitation(s) is/are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are not being interpreted to cover only the corresponding structure, material, or acts described in the specification as performing the claimed function, and equivalents thereof.
If applicant intends to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to remove the structure, materials, or acts that performs the claimed function; or (2) present a sufficient showing that the claim limitation(s) does/do not recite sufficient structure, materials, or acts to perform the claimed function.
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 pre-AIA 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)(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 2, 4-8 and 11-20 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Stephenson, U.S. Patent No. 10,706,839.
As per claims 2, 19 and 20, Stephenson teaches a method, a computer-implemented machine-learning assistant and a non-transitory machine-readable medium comprising instructions, said instructions when executed by a data processing system (Fig. 1, col. 3 lines40-65) cause said system to implement a machine-learning assistant for providing automated interaction assistance for an interaction between parties of a plurality of parties that include a first party and a second party, at least some of the interaction (col. 2 lines 25-30 & col. 3 lines 14-27; utilizing an artificial intelligence (AI) entity or machine learning algorithm for confirming an agreement has been entered between a first entity “a first party” and a second entity “a second party” during a verbal communication “interaction”), the implementation of the machine-learning assistant performing operations comprising:
receiving electronic monitoring of the natural language communication between the parties (col. 1 lines 52-54; the Al entity or machine learning algorithm will monitor conversations between a first entity (human or electronic entity ) and a call center. Stephenson further teaches in step 34, data representative of the conversation is forwarded to the AI entity for analysis (see Fig. 2 – element 34 “forwarding conversation data to AI” , col. 4 lines 21-27));
natural language processing (col. 3 lines 20-23; the communication is a verbal communication, using words, or tone responses entered on a keypad by one of the entities and can be oral or in writing) said communication to interpret content of said communication to yield interpreted content, said interpreted content including at least one of information exchanged between the parties, an agreement between the parties, and a transaction between the parties (Fig. 2 – element 36 “analyzing conversation data by AI”, col. 4 lines 28-41; in step 36 the AI entity analyzes the conversation data either in real time during the conversation or after the conversation is completed. The AI entity is implemented in software commonly available for purchase. The AI entity must be trained to recognize key words to determine that an agreement has been reached. It must also be trained to identify that an offer has been extended from an offering party to the other party to exchange a first item of value to the other party under specific terms. Further, it must be trained to recognize that the agreeing party has sent a second item of value to the offering party known in contract law as consideration. It may be unnecessary to train the AI entity to recognize the exchange of information if such exchange is evident from the transmittal of money electronically);
based on the interpreted content, interacting with the first party in the interaction to pass further information between the assistant and said first party, said further information being related to the interpreted content of the communication (Fig. 2 – element 38 “agreement reached”, col. 42-54; at step 38, if it is determined that an agreement has been reached 40 then the AI entity reviews the conversation data to capture a segment of the conversation constituting the offer 42, capture a segment of the conversation constituting the acceptance 44, and optionally, capturing the segment of the conversation constituting an exchange of consideration 46); and
storing an evidentiary record of the interaction between the parties, said record including the interpreted content and the further information (col. 4 lines 49-50; in step 50, storing the segments and the metadata in database 25. Stephen further teaches capturing the portions of the communication that constitute the elements of an agreement and storing the portions for later verification of the agreement. The communication is a verbal communication, using words, or tone responses entered on a keypad by one of the entities and can be oral or in writing. The first and second entities can be a human or an electronic communicator working on the behest of an entity capable of entering into a binding agreement (col. 3 lines 17-27)).
As per claim 4, Stephenson teaches the machine-learning assistant interceding in communication between the parties (col. 3 lines 32-39).
As per claim 5, Stephenson teaches wherein interceding in the communication comprises eliciting clarification or confirmation of information from a party (col. 2 lines 25-30).
As per claim 6, Stephenson teaches wherein the machine-learning assistant provides mediation service to the parties (col. 2 lines 32-54).
As per claim 7, Stephenson teaches retrieving the stored evidentiary record for dispute resolution between the parties (col. 2 lines 51-53, col. 3 lines 17-19).
As per claim 8, Stephenson teaches interacting with a machine-implemented dispute resolution assistant for the dispute resolution, and the retrieving of the stored evidentiary record includes the dispute resolution assistant retrieving said record (col. 1 line 63 – col. 2 line 8, col. 2 line 51-53).
As per claim 11, Stephenson teaches wherein the dispute resolution assistant acts as a proxy witness in an adjudicative procedure (col. 2 lines 3-8).
As per claim 12, Stephenson teaches wherein the interacting with the first party comprises interacting via natural language communication (col. 1 lines 52-54).
As per claim 13, Stephenson teaches wherein the interacting with the first party comprises interacting via a computer application programming interface of an application being used by said first party (col. 1 lines 52-54).
As per claim 14, Stephenson teaches wherein the first party is a human party (col. 1 line 52-54).
As per claim 15, Stephenson teaches wherein the second party is a machine-implemented party (col. 3 lines 28-51; Interactive Voice Response System (IVR) 14 is in electronic communication with a first artificial intelligence (AI) entity 24).
As per claim 16, Stephenson teaches wherein the interacting with the party in the interaction to pass further information between the assistant and said party includes at least one of:
passing the further information to said party (col. 3 lines 51-57);
soliciting the further information from said party (col. 3 lines 60-63); and
receiving the further information from said party (col. 4 lines 36-41).
As per claim 17, Stephenson teaches wherein the further information includes further information determined by the assistant to be essential to the agreement or the transaction between the parties (col. 4 lines 42-54).
As per claim 18, Stephenson teaches wherein the machine learning assistant is implemented in at least one of:
a personal computing device of the first party, on a computing system hosting a computer-implemented second party, or on a device distinct from the first party and the second party having electronic access to a communication path between the first party and the second party (Fig. 1, col. 3 lines 44-65).
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 3, 9 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Stephenson, U.S. Patent No. 10,706,839 in view of Haldenby et al “Haldenby”, US-PGPub. No. 20170046693.
As per claim 3, Stephenson fails to explicitly teach but Haldenby teaches wherein the storing includes storing the evidentiary record in an immutable ledger (Paragraph(s) [0031], [0114], [0124]).
Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the applicants' invention to combine the teachings of Stephenson and Haldenby because it provides a centralized and transparent mechanism that records obligations enforceable on various parties to a contractual agreement.
As per claim 9, Stephenson teaches wherein the dispute resolution assistant interacts with the parties using natural language communication (col. 2 lines 3-8, col. 2 line 51-53).
Stephenson fails to explicitly teach but Haldenby teaches wherein the dispute resolution assistant interacts with the parties based on the evidentiary record (Paragraph(s) [0158-0160]; in response to a detected dispute, system 140 may generate corresponding notification data that identifies the dispute, the parties, and disputed evidence, and transmit the notification data to system 146 as a notification of a dispute).
Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the applicants' invention to combine the teaching of Stephenson that utilizes an artificial intelligence (AI) entity for confirming an agreement between a first entity and a second entity during a verbal communication (Stephenson –col. 2 lines 25-30 & col. 3 lines 14-27) and the disputing resolution between at least two parties as taught by Haldenby (Paragraph(s) [0153], [0158-0160], [0165]) in order to provide an automatic and transparent dispute resolution between parties.
As per claim 10, Stephenson teaches wherein the dispute resolution assistant provides communication between the parties and one or more other human parties (col. 2 lines 3-8, col. 2 line 51-53).
Stephenson fails to explicitly teach but Haldenby teaches wherein the dispute resolution assistant for facilitating the dispute resolution including at least one party in a group consisting of a lawyer, a mediator, and a judge (Paragraph(s) [0071], [0126], [0140], [0154]; mediating disputes between users in an open and transparent manner).
Therefore, it would have been obvious to one of the ordinary skill in the art before the effective filing date of the applicants' invention to combine the teaching of Stephenson that utilizes an artificial intelligence (AI) entity for confirming an agreement between a first entity and a second entity during a verbal communication (Stephenson –col. 2 lines 25-30 & col. 3 lines 14-27) and mediating disputes between users/parties as taught by Haldenby (Paragraph(s) [0140]) in order to provide an automatic and transparent dispute resolution between parties.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please refer to form PTO-892 (Notice of Reference Cited) for a list of relevant prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED A WASEL whose telephone number is (571) 272-2669. The examiner can normally be reached Mon-Fri (8:00 am – 4:30 pm).
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Glenton Burgess can be reached on (571)272-3949. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMED A. WASEL/Primary Examiner, Art Unit 2454