DETAILED ACTION
This Office Action is in reply to Applicants response after Non-Final Rejection received on May 22, 2026. Claim(s) 1-2, 4-7, 9-15, 17-23 is/are currently pending in the instant application. The application claims priority to Indian application 202311045340 filed on July 6, 2023.
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 .
Response to Amendment
The Examiner acknowledges the Applicants amendments to claims 1, 4, 7, 10, 15, and 18 in the response filed on May 22, 2025. Claims 3, 8, and 16 are canceled at this time. New claims 21-23 have been added.
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 1-2, 4-7, 9-15, 17-23 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.
Claims 1-2, 4-7, 9-15, 17-23 are directed to one of the four statutory classes of invention (e.g. process, machine, manufacture, or composition of matter). The claims include a system or “apparatus”, method or “process”, or product or “article of manufacture” and is a system and method for message handling which is a process (Step 1: YES).
The Examiner has identified independent method Claim 7 as the claim that represents the claimed invention for analysis and is similar to independent system Claim 1 and product Claim 15. Claim 7 recites the limitations of (abstract ideas highlighted in italics and additional elements highlighted in bold)
receiving, by a message handler executable by one or more processors a message from a computing device;
passing, by the message handler, the message to a machine learning engine for analysis;
tokenizing, using the one or more processors, a text of the message such that individual words of the message are converted into individual tokens representing numerical values, resulting in a tokenized message;
applying, by the machine learning engine executable by the one or more processors, a computer-executable natural language processing algorithm to the tokenized message to extract information from the tokenized message, the extracted information comprising a set of features, one or more scheduling parameters, or both, and the computer-executable natural language processing algorithm includes operations of;
determining that the message includes one or more emails; and
based on the message include one or more emails, omitting consideration of one or more message headers for extracting the information;
applying, by the machine learning engine, one or more machine learning models to the extracted information to produce a set of recommendations for scheduling an event; and
generating, by the message handler, a prompt based at least in part on the set of recommendations, wherein the prompt comprises natural language text corresponding to at least a portion of the set of recommendations for scheduling the event; and
transmitting, by the message handler, the prompt to the computing device.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”. Receiving and parsing a message, tokenizing and applying NPL to extract information related to scheduling, applying the information to a model to develop a recommendation, generating a response based on the recommendations, and transmitting a prompt recites managing human behavior or relationships. Accordingly, the claim recites an abstract idea. The system with a memory and one or more processors in Claim 1 is just applying generic computer components to the recited abstract limitations. The non-transitory computer-readable storage medium in Claim 15 appears to be just software. Claims 1 and 15 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Mental Processes”. Receiving and parsing a message, applying NPL to extract information related to scheduling, using the extracted information to develop a recommendation, generating a response based on the recommendations, recites concepts performed in the human mind and/or with pen and paper. But for the “one or more processors”, “machine learning engine and model”, and “a computing device”, the claim encompasses a person receiving a message, extracting relevant information related to a meeting, and offering one or more recommendations to schedule a meeting in response to the message using his/her mind. The mere nominal recitation of generic computer hardware does not overcome the abstract idea designation. Accordingly, the claim recites an abstract idea. The system with a memory and one or more processors in Claim 1 is just applying generic computer components to the recited abstract limitations. The non-transitory computer-readable storage medium in Claim 15 appears to be just software. Claims 1 and 15 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract)
This judicial exception is not integrated into a practical application. In particular, the claims only recite a memory, one or more processors, and a machine learning engine and model, and a computing device (Claim 1) a computing device, a machine learning engine and mode, and one or more processors (claim 7) and/or non-transitory computer-readable medium executing instructions by a processor (Claim 15). The computer hardware is 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. Therefore claims 1, 7, 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. See Applicant’s specification para. [0017, 0018, 0020, 0003] about implementation using general purpose or special purpose computing devices [0017: The one or more processors 112 may include one or more microcontrollers, application specific integrated circuits (ASICs), field programmable gate arrays (FPGAs), central processing units (CPUs) and/or graphics processing units (GPUs) having one or more processing cores,
0018: The memory 114 may include random access memory (RAM) devices, read only memory (ROM) devices, erasable programmable ROM (EPROM), electrically erasable programmable ROM (EEPROM), one or more hard disk drives (HDDs), one or more solid state drives (SSDs), flash memory devices, network accessible storage (NAS) devices, or other memory devices configured to store data in a persistent or non-persistent state.
0020: the machine learning engine 120 may include natural language processing functionality that may be used to extract features and scheduling parameters from messages exchanged between the computing device 110 and the one or more user devices 140 using the automated techniques described herein.
0003: The user devices 140 may correspond to devices associated with users who are candidates for attending events scheduled in accordance with the techniques described herein, and may include personal computing devices, laptop computing devices, tablet computing devices, smartphones, personal digital assistants, smartwatches, and other computing devices capable of exchanging information with the computing device 110] and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more. 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. Thus claims 1, 7, and 15 are not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent claims 2, 4-6 9-14, and 17-23 further define the abstract idea that is present in their respective independent claims 1, 7, and 15 and thus correspond to Certain Methods of Organizing Human Activity and/or Mental Processes and hence are abstract for the reasons presented above. 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. The dependent claims include steps or processes which are similar to that disclosed in MPEP 2106.05(d), (f), (g), and/or (h) which include activities and functions the courts have determined to be well-understood, routine, and conventional when claimed in a generic manner, or as insignificant extra solution activity, or as merely indicating a field of use or technological environment in which to apply the judicial exception.
For example, claims 2, 9, and 17 correspond to elements the courts have realized as computer functions which are well-understood, routine, and conventional when they are claimed in a merely generic manner or as insignificant-extra solution activity MPEP2106.05(d)II. Receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network);
Additionally 4, 5, 10, 11, and 18 include examples which the courts have established as mere instructions to apply an exception because they do no more than merely invoke the computer or machinery as a tool to perform an existing process (e.g. scheduling). MPEP 2106.05(f)(2) A commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 573 U.S. 208, 223, 110 USPQ2d 1976, 1983 (2014); Gottschalk v. Benson, 409 U.S. 63, 64, 175 USPQ 673, 674 (1972); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015)
Therefore, the claims 2, 4-6 9-14, and 17-23 are directed to an abstract idea. Thus, the claims 1-2, 4-7, 9-15, 17-23 are not patent-eligible.
Response to Arguments
The Applicants remarks begin on page 8 of the response filed on May 22, 2026 with a summary of the claim rejections and the claim amendments.
The arguments begin with the rejection under 35 U.S.C § 112(b) where the Applicant cites the amendments to the claims to overcome the issues raised.
The rejection under 35 U.S.C § 112(b) has been withdrawn in view of the amendments to correct the antecedent basis issues.
The arguments move on to the rejection under 35 U.S.C § 101 where the Applicants traverses the Office position that the claims recite a mental process. Under Step 2A, Prong One, the Applicant argues that the MPEP is clear that the claims “do not recite a mental process when they do not contain limitations that can practically be performed in the human mind” (Remarks page 9). The Applicant cites several decisions in support (Remarks page 9-10). The Applicant then cites the tokenization of text of the message such that individual words are converted into numerical values. Further, the arguments include that applying a computer executable Natural Language processing algorithm to the tokenized message to extract information from the tokenized message.
Applicants also argue that simply because elements related to a machine learning model to produce recommendations, the claims as a whole are not directed to mental processes practically performed entirely by the human mind.
The Examiner is not in agreement and is not persuaded by the arguments. First, all of the originally claimed elements were processes or analysis which could be performed in the mind except for the point that the claim says they are performed by a computer device or a processor executing instructions. As evident in Alice this alone does not transform the claim into eligibility. Additionally, parsing a message, applying lateral language processing to extract information, applying a model to the information, and generating a prompt based on a recommendation to be transmitted are all steps which can be performed of the human mind. Humans have the unique capability to creating models, specifically mathematical models, for most everything in the known universe. The only claimed elements are computer hardware such as a processor and executable instructions for a machine learning model. To that point, the claim does not include anything which equates or elevates the model to “machine learning” as there is no active learning steps or improvement to the model. The plain understanding is a model which is pre-trained, used repeatedly, and never evolves which is not considered machine leaning.
Looking at the amended language, the tokenization is simply a way for the computer to interpret language as a processor only deals with numbers and not letters. The conversion is simply so the data can be readable by a computer and while that transformation is not necessary for human understanding it could be used as a normalization metric or binning algorithm for sorting data. The mere use of a known computer transformation does not alleviate the point that the claims are tied to generic computer hardware. The overall scope is using a computer model to interpret collected data in order to present a recommended adjustment to a schedule based on specific gathered information.
The arguments continue with the Applicants assertion that characterization of the claims has occurred at a high level of abstraction. Citing Alice, the Applicant contends that claims recite various software components / algorithms to form a specific arrangement of event planning software. The arguments Also cite Ex parte Desjardins (Remarks page 11) stating that PTAB made clear that AI innovations are not excluded form patent protection.
The Examiner does not agree, the concept of event scheduling is indeed abstract, and application of generic computer hardware and corresponding software components does not immediately integrate the claim into a practical application or provide for significantly more.
The Applicant is not exactly correct in their interpretation of Desjardins. First, it was not a PTAB decision, and in fact PTAB had upheld the rejection of the claims by also indicated that the claims was rejected under a new 35 U.S.C § 101 rejection. It was an Appeal Review Panel decision which overturned the 35 U.S.C § 101 rejection vacating the boards new grounds of rejection. Second, the determination by ARP upheld Step 2A, Prong 1 in finding the claims recited an abstract idea. It was only at Step 2A, Prong 2,
“In Step 2A Prong Two, the ARP then determined that the specification identified improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems. Importantly, the ARP evaluated the claims as a whole in discerning at least the limitation “adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model on the first machine learning task” reflected the improvement disclosed in the specification. Accordingly, the claims as a whole integrated what would otherwise be a judicial exception instead into a practical application at Step 2A Prong Two, and therefore the claims were deemed to be outside any specific, enumerated judicial exception (Step 2A: NO).”
Also, the ARP decision included
“The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art. Conversely, if the specification explicitly sets forth an improvement but only in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine that the claim improves technology or a technical field. Second, if the specification sets forth an improvement in technology or a technical field, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement, i.e., that, the claim includes the components or steps of the invention that provide the improvement described in the specification. The claim itself does not need to explicitly recite the improvement described in the specification.”
In this instance, the claims do not include more than the basic generic tie to computer hardware.
The arguments proceed to Step 2A, Prong 2 where the Applicant traverses the rejection and submits the claims integrate the exception into a practical application. The Applicant contends that “a message handler generat[ing] a prompt on a set of recommendations” integrated the claim into a practical application. Applicant points to the amendments to the claims and the tokenization as reasoning that the recitations are not merely generic and cannot practically be performed in the human mind.
The Examiner disagrees, simply producing a prompt is not indicative of practical application as it’s not more than step three of Electric Power Group v. Alstom S.A. in which a result is displayed. In this case providing a prompt is reasonably the same thing as displaying information based on a recommendation. It is noted, that a recommendation is not more than a suggestion and does not have to be selected or followed. Further, the Applicant is content arguing back against the mental processes grouping, which as indicated above, was the secondary grouping. The claim is primarily rejected under certain methods of organizing human activity.
Also, as previously stated, the idea of tokenization is a method in which a computer can understand language as it operates solely on numbers and tokenization is one way in which language can be converted to a number in order for the computer to be able to equate and address information which is not available in a format to be understood by a computer or software.
The Applicant further argues that under Prong 2, the limitations with additional elements are evaluated together, the claims integrate the purported abstract idea into a practical application. The Applicant contents the arrangement of components are addressing computer messaging problems. Applicant again cites tokenization and applying NLP algorithm including omitting one or more message headers to extract information. Applicant asserts the recitation go beyond merely generic operations performed in the mind.
Further, the Applicant cites the message handler generating a prompt based on recommendations and transmitting the prompt as further integration. The arguments cite MEPE 2106.04(d)(1) for integration into practical application for the tokenization step as well as omitting one or more headers resulting in “more efficient user of computing resources” for automated scheduling.
The Examiner doesn’t agree. The message handler is simply software operating as instructions by the processor. It was not deemed as an additional elements as it’s “a message handler, executable by one or more processors” a message from a computing device. This is not more than instructions for the processor to handle data collection. This does not integrate to the claim into a practical application, nor does it constitute significantly more than the judicial exception. Further, as already stated, the tokenization is simply a method for the computer to be able to process language as it requires numbers instead of letters. Deciding what information is included in the analysis and what information is omitted is also not indicative of practical application. It’s merely part of the analysis step. See MPEP 2106.05(g)(3) and 2106.05(f)(2).
Regarding the Applicants claim of efficient use, the specification merely states the exact line “more efficient use of computing resources (e.g. reduced network bandwidth, lower memory and computational processing requirements for message generation)”. Theses alleged improvements are stated with a bare level of support and evidence and merely provided as examples of what efficient use of computing resources might entail. Further, in the same paragraph [0095], the statement is made that “the method also enables optimization of messages associated with scheduling events and improves event attendance”. Again, a bare assertion of improvement since the method is resting on recommendations and also that optimization is rooted in mathematical concepts and is largely a complex multi-variable problem defined in linear programming.
The Applicant moves to McRO (Remarks page 13-14) where the assertion is made that the claims integrate the exception into a practical application by improving technology via claimed rules. The arguments cite tokenizing using a processor, applying computer-executable NLP algorithm, and where the NPL algorithm determines the messages are one ro more emails, and based on the determination omitting considerations for message headers to improve automated scheduling.
The Examiner does not agree with the argument. While McRO enabled computers to perform a functions they had not been previously able to it’s not analogous to the instant claims. MPEP 2106.05(a)II. also states that the courts determined (when determining improvement to technology) that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process or market trading but did not improve computers or technology. In this case a recommendation providing a transmitted prompt may provide for a change in schedule but does not improve the underlying computer or technology.
The arguments proceed to Step 2B where the Applicant takes the position that when considered in combination, amount to “significantly more” than the judicial exception of a mental process (Remarks pages 14-15). Applicant references MPEP 2106.07(b) related to combinations of elements of the claim.
Also, the Applicant cites Amdocs where the courts concluded that the claims were eligible under Step 2B as the components were purposefully arranged to achieve a technological solution. Applicant asserts that the instant claims are significantly more than a mental process (Claim 16).
Further, the arguments cite Bascom where the inventive concept can be found in a nonconventional and nongenric arrangement of known conventional pieces. Applicant asserts that the tokenization meets the standards set forth in Bascom (Remarks page 16).
The Examiner does not agree. The indicated additional elements of the analysis were the processor and the machine learning model. The message handler is simply executable instruction by the processor. Tokenization is a known method for the computer to be able to process a format to a number which can be understood by the computer. Examiner points to MEPE 2106.05(a) I. where the Courts also cited examples that may not be sufficient to show improvement to computer functionality includes a mere automation of manual processes (scheduling meetings) using a generic computer to process an application. This example would follow the same progress where scheduling a meeting using a computer would not be seen as improvement of computer-functionality.
The Arguments move to the rejection under 35 U.S.C § 102(a)(1) with the prior art Bezemer (Remarks page 17). The Applicants cite the amendments to at least independent claims 1, 7, and 15 as the reason that the cited reference no longer anticipates the claims.
In view of the amendments, the Examiner has withdrawn the rejection at this time. The Examiner reserves the right to use the reference at a later time if deemed necessary.
In summary, the rejection under 35 U.S.C § 102(a)(1) has been withdrawn at this time. The rejection under 35 U.S.C § 101 remains. The claims are not in condition for allowance.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DYLAN C WHITE whose telephone number is (571)272-1406. The examiner can normally be reached M-F 7:30-4:00 EST.
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/DYLAN C WHITE/Primary Examiner, Art Unit 3625 August 3, 2026
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