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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/10/26 has been entered.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 5/20/26 are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Status of Claims
Claims 1-20 are pending in this application.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1-20 are directed to a system, method, or product, which are/is one of the statutory categories of invention. (Step 1: YES).
The Examiner has identified independent method claim 8 as the claim that represents the claimed invention for analysis and is similar to independent system claim 1 and product claim 15. Claim 8 recites the limitations of conducting a transaction based on user’s chats/answers.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as certain methods of organizing human activity. Determining a transaction request based on user’s chat; selecting a prompt to conduct transaction; (different) transaction software modules are accessible to AI model; each prompt template specifies one or more software modules; conducting chat by (a) determining based on the template used, a software module to perform the transaction and a first data type OR first content usable by the software module; (b) generating 1st question; and (c) asking 1st question via user interface; obtaining user’s 1st data/answer; generating, based on information in the prompt template, a function call associate with the software module to perform the transaction; function call includes first data as a parameter for the AI model; perform the function call; generating chat content; and providing the content to user device, – specifically, the claim recites:
“determine, based on an interaction of a user with a chat interface provided on a device of the user during a chat session, a request for performing a transaction for the user; based on attributes associated with the transaction, select, from a plurality of prompt templates, a particular prompt template… to conduct a set of dialogues with the user for performing the transaction, wherein a plurality of software modules configured to perform transactions corresponding to different transaction types is accessible… wherein each prompt template in the plurality of prompt templates specifies one or more software modules from the plurality of software modules for performing the transactions corresponding to the different transaction types; conduct… the set of dialogues with the user… using the particular prompt template, wherein conducting the set of dialogues comprises (i) determining, based on information included in the particular prompt template, a particular software module, from the plurality of software modules, that is configured to perform the transaction and a first data type or first content usable by the particular software module to perform the transaction, (ii) generating… a first question that prompts the user for first data corresponding to the first data type or first content, and (iii) providing the first question to the user via the chat interface; subsequent to providing the first question to the user, obtain… the first data from the user… based on conducting the set of dialogs with the user; generate… and based on the information included in the particular prompt template, a function call associated with the particular software module to perform the transaction, wherein the function call includes the first data as one or more parameters for the particular software module; execute… the function call; generate… content for the chat session based on a result from executing the function call; and provide the content to the device”, recites a fundamental economic practice, directed to mitigating risk.
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice or commercial or legal interactions, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The “a system”, “a non-transitory memory”, “one or more hardware processors”, “a chat interface”, “a device of the user”, “an artificial intelligence (AI) model”, “a function call”, and “a plurality of software modules”, in claim 1; and the additional technical element of “a non-transitory machine-readable medium” “a machine”, and “a particular software module”, in claim 15, are just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. Claims 8 and 15 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of: a computer such as a system, one or more hardware processors, a device of the user, and a machine; a communication device such as a chat interface; a storage unit such as a non-transitory memory and a non-transitory machine-readable medium; and software module and algorithm such as an artificial intelligence (AI) model, a plurality of software modules, a function call, and a particular software module. The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claims 1, 8, and 15 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claims 1, 8, and 15 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims further define the abstract idea that is present in their respective independent claims 1, 8, and 15 and thus correspond to Certain Methods of Organizing Human Activity, and hence are abstract for the reasons presented above.
Dependent claim 2 discloses the limitation of wherein the particular prompt template indicates a plurality of data types corresponding to a requirement of the particular software module, which further narrows the abstract idea. Note that the technical element “the software module” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 3 discloses the limitation of wherein the first question is in a natural language format, which further narrows the abstract idea.
Dependent claim 4 discloses the limitation of (i) receiving second data from the user via the chat session in response to the first question, (ii) determining that the second data does not correspond to data for the Al model to process the request, and (iii) generating a second question for the chat session, wherein the second question prompts the user for the first data corresponding to the first data type using a different syntax than the first question, which further narrows the abstract idea. Note that the technical element “the Al model” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 5 discloses the limitation of (i) generating, by the Al model and based on the particular prompt template, a second question that prompts the user for second data corresponding to a second data type required by the particular software module to perform the transaction for the user and (ii) providing the second question to the user via the chat interface, which further narrows the abstract idea. Note that the technical elements “the Al model”, “the software module”, and “the chat interface”, are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 6 discloses the limitation of wherein the plurality of prompt templates indicates different sets of data types corresponding to requirements of different software modules in the plurality of software modules for performing respective transactions, which further narrows the abstract idea. Note that the technical element “different software modules” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 7 discloses the limitation of the plurality of prompt templates, which further narrows the abstract idea.
Dependent claim 9 discloses the limitation of obtaining, by the AI model and from the particular software module, the result from the processing the transaction; and generating, by the AI model, the content based on the result which further narrows the abstract idea. Note that the technical elements “AI model”, “the software module”, and “the chat interface”, are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 10 discloses the limitation of wherein the transaction corresponds to accessing information related to a topic, and wherein the result comprises data related to the topic and obtained from a plurality of data sources, and wherein the content comprises a summary or at least a portion of the data, which further narrows the abstract idea.
Dependent claim 11 discloses the limitation of wherein the result indicates whether the transaction has been completed, has been denied, or requires additional information to complete, and wherein the content provides a notification to the user regarding the result, which further narrows the abstract idea.
Dependent claim 12 discloses the limitation of wherein the transaction corresponds to a payment transaction, and wherein the first data corresponds to an identity of a recipient or an amount of the payment transaction, which further narrows the abstract idea.
Dependent claim 13 discloses the limitation of wherein the particular template indicates a plurality of data types required by the particular software module for processing the transaction for the user, which further narrows the abstract idea. Note that the technical element “the particular software module” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 14 discloses the limitation of (i) receiving second data from the user via the chat session in response to the first inquiry, (ii) determining that the second data does not correspond to the first data type, and (iii) generating a second inquiry for the chat session, wherein the second inquiry prompts the user for the first data corresponding to the first data type using a different syntax than the first question, which further narrows the abstract idea.
Dependent claim 16 discloses the limitation of wherein the first question is in a natural language format, which further narrows the abstract idea.
Dependent claim 17 discloses the limitation of (i) receiving second data from the user via the chat interface in response to the first question, (ii) determining that the second data does not correspond to the first data type, and (iii) generating a second question for the chat session, wherein the second question prompts the user for the first data corresponding to the first data type using a different syntax than the first question, which further narrows the abstract idea. Note that the technical element “the AI model” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 18 discloses the limitation of wherein the operations further comprise (i) generating, by the AI model and based on the particular template, a second question that prompts the user for second data corresponding to a second data type from the set of data types and (ii) providing the second question to the user via the chat interface, which further narrows the abstract idea. Note that the technical elements “the AI model”, and “the chat interface” are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Dependent claim 19 discloses the limitation of wherein the plurality of templates indicates different sets of data types corresponding to requirements of different software modules from the plurality of software modules for performing respective transactions, which further narrows the abstract idea. Note that the technical element “different software modules” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Dependent claim 20 discloses the limitation of content comprises a summary of the result, which further narrows the abstract idea.
Thus, the dependent claims do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea. Thus, the claims 1-20 are not patent-eligible.
Response to Arguments
Applicant's arguments filed 4/10/26 have been fully considered but they are not persuasive.
In response to applicant's argument that:
“35 U.S.C. § 101… the amended claimed subject matter is not directed to an abstract idea,”
the examiner respectfully disagrees. In comparison to the prior version, the added elements (see underlined) and deleted elements (if any, struck out with a line) are essentially:
(1) “wherein a plurality of software modules configured to perform transactions corresponding to different transaction types is accessible by the Al model”;
(2) “wherein each prompt template in the plurality of prompt templates specifies one or more software modules from the plurality of software modules for performing the transactions corresponding to the different transaction types”; and
(3) “generate, by the Al model, content for the chat session based on a result from executing the function call; and provide the content to the device”.
These changes are not sufficient to overcome the 35 U.S.C. § 101 rejections because: for 101 analysis purpose, this is just stating (corresponding to the numberings above):
that, within the system, there are multiple software modules available for different purposes. This is a business model of having multiple software modules to service customers;
that the prompt specified the software module to use. This is just labeling/associating an action/prompt with a software module to use; and
generating and providing content. This is procedural.
These are abstract ideas. There is nothing technical about it.
Note that the technical element “software modules” is recited at a high level of generality. It does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
In response to applicant's argument that:
“amended claim 1 integrates the abstract idea into a practical application… (reciting claim 1, highlighting the following
(1) “wherein a plurality of software modules configured to perform transactions corresponding to different transaction types is accessible by the AI model, and wherein each prompt template in the plurality of prompt templates specifies one or more software modules from the plurality of software modules for performing the transactions corresponding to the different transaction types”;
(2) conduct, by the AI model, the set of dialogues with the user via the chat interface using the particular prompt template, wherein conducting the set of dialogues comprises (i) determining, based on information included in the particular prompt template, a particular software module, from the plurality of software modules, that is configured to perform the transaction and a first data type or first content usable by the particular software module to perform the transaction, (ii) generating, by the AI model, a first question that prompts the user for first data corresponding to the first data type or first content, and (iii) providing the first question to the user via the chat interface; and
(3) generate, by the AI model and based on the information included in the particular prompt template, a function call associated with the particular software module to perform the transaction, wherein the function call includes the first data as one or more parameters for the particular software module; execute, by the AI model, the function call; generate, by the AI model, content for the chat session based on a result from executing the function call; and provide the content to the device (again, emphasis original’s),”
the examiner respectfully disagrees. As stated above, the recited abstract idea is not integrated into a practical application because the computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality.
Again, the highlight language essentially states that,
within the system, there are multiple software modules available for different purposes; this is a business model of having multiple software modules to service customers. And that the prompt specified the software module to use; this is just labeling/associating an action/prompt with a software module to use;
conducting chat by using the template selected; this is a process; and
generating and providing content. This is procedural.
These are abstract ideas. There is nothing technical about it.
Note that the technical elements “software modules” and “AI model” are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
In response to applicant's argument that:
“Applicant respectfully submits that the claimed solution, which utilizes prompt templates that are external to an AI model to enable the AI model to "know" how to obtain the required information from users and to communicate with other external modules (e.g., by constructing a function call in a corresponding format, etc.), improves the functionality of the AI-based systems by allowing the AI model to communicate with any external modules (e.g., new external modules that are added to the AI system, modified external modules, etc.) without requiring reconfiguration and/or retraining of the AI model,”
the examiner respectfully disagrees. Examining the user input to determine what response (software modules) to use is an abstract idea. Again, note that the technical elements “software modules” and “AI model” are recited at a high level of generality. They do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
As stated in the prior office action:
“The examiner notes that the applicant is not improving the machine learning technology/device. Rather the applicant is using machine learning in a business process – i.e., when data is available and received, the software updates its equations/algorithms. The claims mentioned using relevant data to train the AI model. That is necessary for all software to function properly. The machine learning appears to be recited more in a descriptive way of how the machine learning are trained/created, as opposed to how machine learning are performing actions in the body of the claim. They are operating as any generic computer would operate, recited at a high level of generality and are considered tools for performing the abstract idea. ”.
In response to applicant's argument that:
“claim 3 in Example 47,”
the examiner respectfully disagrees. The claimed invention is not the same as Example 47, claim 3. Generating chat content and providing the content to user device is not the same as detecting and dropping “malicious network packets”, and blocking future traffic from the source address. Example 47, claim 3 focuses on the technology of blocking anomaly network packets. The claimed invention does not have the elements and the steps recited in example 47, claim 3. One must read example 47, claim 3 narrowly in deference to the Alice Court’s emphatic prohibition against patenting abstract ideas that lack genuine innovation beyond the use of generic computers. Implementing a business process/idea by processing data using generic computers is not patentable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK H GAW whose telephone number is (571)270-0268. The examiner can normally be reached Mon-Fri: 9am -5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mike Anderson can be reached on 571 270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK H GAW/Examiner, Art Unit 3693
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