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 June 15, 2026.
Response to Amendment
Applicant’s amendment filed on June 15, 2026, with respect to claims 30-33, 36-43, and 46-49 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 previously 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 June 15, 2026. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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), and further in view of Elad et al (US 7,092,928 B1).
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]),
- 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]).
Background does not explicitly disclose 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. However, in the same field of endeavor Kanevsky in an analogous art disclose 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]);
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]).
Combined method of Background and Kanevsky does not explicitly disclose wherein the inferring the first intent associated with the first user input and inferring the second intent associated with the second user input comprises: prompting the user based at least in part on predetermined preferences of the user. However, in the same field of endeavor Elad in an analogous art disclose wherein the inferring the first intent associated with the first user input and inferring the second intent associated with the second user input comprises(Fig. 10-13, column 16, line 61-67, column 17, line 5-45, inferring first and second intent with first and second user input in a dialog interaction session), prompting the user based at least in part on predetermined preferences of the user (Fig. 10-13, column 6, line 10-25, column 7, line 28-35, column 14, line 67, column 15, line 1-15, column 18, line 5-40, interaction based on preferences of the user),
Therefore, it would have been obvious to a person of the ordinary skill in the art before the effective filing date of the claimed invention to combine the teaching of Background, as previously modified with Kanevsky, with the teaching of Elad by modifying Background/ Kanevsky such that user intention determined based on the meaning of the interaction and user preference in the interacting dialog or prompt. The motivation for doing so would be efficiently infer the user's goals and intentions, aid in the attainment of those goals, and communicate results and informative comments effectively, (Elad, column 7, line 31-36).
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
Applicants’ arguments filed on June 15, 2026, with respect to claims 30-40, have been fully considered but they are moot because of the new ground of rejection necessitated by the amendment to the claims.
In response to applicant’s argument in page 7, applicants argued that, The combination of the Background and Kanevsky does not teach, "inferring a first intent associated with the first user input and inferring-a second intent associated with the second user input, wherein the inferring the first intent associated with the first user input and inferring the second intent associated with the second user input comprises: prompting the user based at least in part on predetermined preferences of the user," as recited by amended claim 30and 40.
Examiner disagrees and respectfully response that Elad teaches wherein the inferring the first intent associated with the first user input and inferring the second intent associated with the second user input comprises in Fig. 10-13, column 16, line 61-67, column 17, line 5-45, inferring first and second intent with first and second user input in a dialog interaction session, and Elad teaches prompting the user based at least in part on predetermined preferences of the user in Fig. 10-13, column 6, line 10-25, column 7, line 28-35, column 14, line 67, column 15, line 1-15, column 18, line 5-40, interaction based on preferences of the user.
Therefore, examiners firmly believe that Background, applicant’s admitted prior art, Kanevsky and Elad alone or in combination reasonably teaches the argued limitation and claim 1 as claimed.
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.
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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
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