Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
This action is in response to the communication filed on October 06, 2025.
Response to Amendment
Applicant’s amendment filed on October 06, 2025 with respect to claims 30-49 have been received, entered into the record and considered.
As a result of the amendment, claim 30 and 40 have been amended, claims 34-35 and 44-45 have been cancelled.
Claims 30-33, 36-43 and 46-49 remain pending in this office action.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/30/2025 and 10/06/2025. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Rejections - 35 USC § 101
As a result of the amendment to the claims, examiner withdrawn the pending 101 rejection from the claims.
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 §§ 706.02(l)(1) - 706.02(l)(3) 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 30-49 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim 1-10 of U.S. Patent No. 9,424,233 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the current application 18/734,946 and the patent 9,424,233 B2 both directed to inferring user intent in a search input in an interactive conversation system. The current application just omitted some limitations from the patented claims. Such omitting does not change the scope the invention and can perform same functionality. Therefore, the current application is not patentable over the patent 9,424,233 B2.
"A later patent claim is not patentably distinct from an earlier patent claim if the later claim is obvious over, or anticipated by, the earlier claim. In re Longi, 759 F.2d at 896, 225 USPQ at 651 (affirming a holding of obviousness-type double patenting because the claims at issue were obvious over claims in four prior art patents); In re Berg, 140 F.3d at 1437, 46 USPQ2d at 1233 (Fed. Cir. 1998) (affirming a holding of obviousness-type double patenting where a patent application claim to a genus is anticipated by a patent claim to a species within that genus). " ELI LILLY AND COMPANY v BARR LABORATORIES, INC., United States Court of Appeals for the Federal Circuit, ON PETITION FOR REHEARING EN BANC (DECIDED: May 30, 2001).
Claim Rejections - 35 USC § 103
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim 30-33, 36-43 and 46-49 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Background, applicant’s admitted prior art, in view of Kanevsky et al (US 2007/0055529 A1).
As per claim 30, background discloses:
- a method comprising (a conversational system, Para [0003], line 1-5),
- receiving a first user input (Q1, who acts as obi-wan Kenobi in the new star war? (i.e., first user input received), Para [0017]),
- determining that the first user input relates to a first content item of a plurality of content items (Q1 relates to who acts (i.e., first content item) of as obi-wan Kenobi in new star war (i.e., plurality of content item), Para [0017]),
- providing, at a user device, a first response based at least in part on the first user input (A: Ewan McGregor (i.e., first response) based on first input who acts, Para 0018], [0017], at a user device, Para [0003]),
- receiving a second user input (Q2: how about his movies with Scarlet Johansson (i.e., receiving second user input), Para [0019]),
- determining that the second user input is related to the first user input and a second content item of the plurality of content items, wherein determining that the second user input is related to the first user input further comprises: (how about his movie (i.e., second input) related to who acts (i.e., first input) and his movie with Scarlet Johansson (i.e., second content with plurality of content items), Para [0017] – [0019]),
- inferring a first intent associated with the first user input (inferring first intent, Para [0015], [0021]- [0026]),
- inferring a second intent associated with the second user input (inferring second intent, Para [0015], [0021] – [0026], [0029]),
- determining that the first intent corresponds to the second intent (first intent (i.e., who) correspond to second intent (his)), Para [0015], [0021] – [0026], [0029]),
determining a relevance score between a first portion of the first user input and a second portion of the second user input based at least in part on at least one of the first intent and the second intent; and determining that the relevance score is above a threshold value (weighting intended word with a score in an utterance (i.e., first and second user input) based on intent of the utterance, Para [0058] – [0059], [0064] [0065]), and determining relative score with a threshold, Para [0059] – [0060]);
- based on the determining, providing, at the user device, a second response based at least in part on the first user input, the second user input, and the second content item (A2 is the second response based on first input Q1, Q2 is the second user input and second content item, Para [0021] – [0026]).
Therefore, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the intention scoring in a user input or conversational query taught by Kanevsky as the means to process user input and inferring user intention in the input in a conversational system in Background, (Background, Para [0002], [0017] – [0026], Kanevsky, Para [0058] – [0059]). Background and Kanevsky are analogous prior art since they both deal with determining and inferring intent in natural language conversation. A person of the ordinary skill in the art would have been motivated to make aforementioned modification to resolve ambiguity in a user utterance or conversation or input. This is because one aspect of applicant’s admitted prior art Background is to resolve ambiguity in an intended conversation, as described in Para [0029]. Scoring different intended keyword in the input phrase or utterance is part of the inferring intention process. However, Background doesn’t specify any particular manner in which intended words in the utterance are scored. This would have lead one of the ordinary skill in the art to seek and recognize the weighting the intended terms or keyword in a user input as taught by Kanevsky. Kanevsky describes a system which assist to determine an intent in a dialog and clarify ambiguity in user input as desired by Background, (Kanevsky, Para [0054]).
As per claim 31, rejection of claim 30 is incorporated, and further Background discloses:
- wherein the determining that the second user input is related to the first user input is based on determining that a first portion of the first user input corresponds to a second portion of the second user input (who played (i.e., first input) correspond to how about more of his movie (i.e., second input), Para [0021] – [0026]).
As per claim 32, rejection of claim 31 is incorporated, and further Background discloses:
- wherein at least one of the first portion or the second portion comprises at least one of a pronoun, a syntactic expletive, a noun, or a named entity (how about more of his movies (i.e., pronoun “his”, Dustin Hoffman (i.e., named entity), Para [0021] – [0026]).
As per claim 33, rejection of claim 30 is incorporated, and further Background discloses:
- wherein determining that the second user input is related to the first user input further comprises: identifying a first portion of the first user input and a second portion of the second user input (who played (i.e., identifying first input) how about his (i.e., second portion of second input), Para [0021] – [0026]),
- determining that the second portion of the second user input links the first portion of the first user input with at least a portion of the first response (his links to who (i.e., second user input links to first user input), Para [0021] – [0026]).
As per claim 36, rejection of claim 34 is incorporated, and further Background discloses:
- wherein inferring the first intent associated with the first user input is based at least in part on at least one of an entity or attribute of the first user input (first input reference to entities such as people, noun, objects and attribute, Para [0015], [0029]).
As per claim 37, rejection of claim 34 is incorporated, and further Background discloses:
- wherein inferring the second intent associated with the second user input is based at least in part on at least one of an entity of the second user input, an attribute of the second user input, the first intent, an entity of the first user input, an attribute of the first user input, or the first response (entity and attribute of first user input and second user input and attribute of response, Para [0015], [0021] – [0026]).
As per claim 38, rejection of claim 34 is incorporated, and further Background discloses:
- wherein providing the second response is further based at least in part on one of the first intent or second intent (second response is based on user intention, Para [0015], [0021] – [0026]).
As per claim 39, rejection of clam 30 is incorporated, and further Background discloses:
- wherein the providing the second response is further based at least in part on the first response (second repose (i.e., A2) is based on first response (A1), Para [0021] – [0026]).
As per claims 40-44 and 46-49,
Claims 40-44 and 46-49 are system claims corresponding to method claims 30-34 and 36-39 respectively and rejected under the same reason set forth to the rejection of clams 30-34 and 36-39 above.
As per claim 45,
Claim 45 is a system claims corresponding to method claim 35 respectively and rejected under the same reason set forth to the rejection of clam 35 above.
Response to Arguments
Applicant's arguments filed on October 06, 2025, with respect to claims 30-40, have been fully considered but they are not deemed to be persuasive.
In response to applicant’s argument in page 7, applicants argued that, Merely assigning importance scores and thresholds to words received from a spoken utterance in Kanevsky, is not the same of determining relevance between two user inputs based on scores. Relevance highlights a relationship between two objects, such as whether a first input and a second input are related and to what degree there is a connection between the two, whereas importance is a stand-alone assigned value. Kanevsky further fails to discuss determining such a relevance score based on inferred intents of user inputs. Thus, Background and Kanevsky, individually or in combination, fail to teach or suggest each and every element of amended claims 30 and 40.
Examiner disagree and respectfully response that Kanevsky scoring/weighting is same as determining relevance between two user inputs because of the following reason(s):
First, Kanevsky in Fig. 2, item 204 teaches a sequence processing module. Such sequence processing module is used to determine which portion of user input/query sentence is more important or which portion of input/query user give more emphasize (i.e., highlight), and provide a relevance score/weight to that importance or emphasized portion of user input/query. For example, user input/query, "Find me a McDonald's with parking." In this user input/query the first portion is McDonalds and second portion of the query is Parking. The principal request is find me a McDonald’s. The parking is a secondary request. The sequencer informs the semantic processor that the concept of "finding a McDonald's" should take precedence or is more important than the concept of "parking”. Such sequencing may be determined from any nuances in the user's utterance and give more weight to important or emphasized word (i.e., query input), See Para [0063] – [0065].
Second, according to applicant’s specification, Para [0099] – [0100], attribute of a user query or input are scored according to domain specific or naïve bays classifier. An Intent analyzer analyze the intent and classify the intent for a specific domain. Accordingly, Kanevsky also taches classification of text sentence (i.e., user query or input) according to the intended topic and score based on relevance to the topic and their respected domain, See Para [0059], [0040] – [0042], [0060]
Third, according to applicant’s specification, Para [0103], [0134], interpreting the user input and score each interpreted term in the user input according to the intent of the user input. Accordingly, Kanevsky also teaches interpreting input utterance (i.e., user query) and rank terms of the input utterance. For example, user utterance “turn the volume up” with have multiple interpretation. Such as “up” could intended to audio volume up or temperature up. Kanevsky’s invention score the second portion of user input “up” according to intent of the user input, See, Kanevsky, Para [0076] – [0080].
Therefore, examiner firmly believe that, Background, applicant’s admitted prior art, and Kanevsky alone or in combination reasonably teaches the argued limitation and claim 1 as claimed.
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 nonprovisional extension fee (37 CFR 1.17(a)) 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.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMMED R UDDIN whose telephone number is (571)270-3138. The examiner can normally be reached M-F: 9:00 AM-5:00 PM.
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, Beausoliel Robert can be reached on 571-272-3645. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MOHAMMED R UDDIN/Primary Examiner, Art Unit 2167