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 .
Priority
Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, or 365(c) is acknowledged.
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.
The Manual of Patent Examining Procedure (MPEP) provides detailed rules for determining subject matter eligibility for claims in §2106. Those rules provide a basis for the analysis and finding of ineligibility that follows. MPEP §2106(III) states that examiners should determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the flowchart in this section.
Claims 1-20 are rejected under 35 U.S.C. 101. The claimed invention is directed to unpatentable subject matter because the claimed invention recites a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The examiner analyzes the instant claims according to a flowchart for subject matter eligibility test for products and processes (MPEP 2106).
Eligibility Step 1 (MPEP 2106.03, Statutory category):
Claims 1-10 are directed to a method, claims 11-19 are directed to a computer program product comprising non-transitory computer readable storage medium, and claim 20 is directed to a system. The claims 1-20 fall into one of the four statutory categories of invention (YES branch of step 1).
Eligibility Step 2A, Prong One (does a claim recites a judicial exception?) (MPEP 2106.04(a) – (c)):
Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception (See a flowchart in MPEP 2106.04(II)(A)). In the prone one of the two prong inquiry, the above limitations recited in claims are directed to at least one of groups of abstract ideas (MPEP 2106.04(a), “Mathematical concepts”, “Certain methods of organizing human activity”, “Mental Processes”). It should be noted that these groupings are not mutually exclusive, i.e., some claims recite limitations that fall within more than one grouping or sub-grouping (MPEP 2106.04(a)(2)).
Although claims 1-20 fall into one of the four statutory categories the patent eligible subject matter, independent claims 1, 11 and 20 recite a number of steps of (“receiving …”; generating …; “providing …” and “receiving …”, “formatting …” and “sending …”). These limitations fall into a judicial exception (MPEP 2106.04 (II), “laws of nature”, “natural phenomena” and “abstract idea”). The Supreme Court has explained that the judicial exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and technological work", and are thus excluded from patentability because "monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it." Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980. It should be noted that there are no bright lines between the types of exceptions, and that many of the concepts identified by the courts as exceptions can fall under several exceptions (MPEP 2106.04 (I) and (II)).
In light of the specification, the disclosed invention is related to providing information (claimed “a prompt” / “a request”) to a language model (claimed “a machine learning model”) to obtain text message for sending to a receiving party. However, the claimed invention could be reasonable interpreted as a user tells another person to create a text message for sending to a receiving party. For example, a method defined by claim 1 could be interpreted as:
receiving, from a client device, a message input from a sending party during a conversation with a receiving party within a messaging interface (A manager receives a text message from a customer);
generating a prompt for input to input to a text string for the receiving party (The manager asked his secretary to review the message and to prepare a reply message);
providing the prompt (The manager prompts / tells his secretary to do something);
receiving, (The secretary prepared a reply message);
formatting the output as a chat message (The manager formatted the reply message); and
sending the chat message to the client device of the sending party for display on the messaging interface (The manager sends the reply message to the customer).
From the above analysis, except generic computer element (e.g., “a model serving system”) or mentioned a generic model (“a machine learning model”), the claimed invention is directed to an abstract idea. If claim 1 were patented, a manager would infringe the patent if the manager is doing his routine job.
Independent claims 11 and 20, although directed to different categories, include similar limitations as claim 1. Dependent claims 2-10 and 12-19 further include limitations related to mental process: For example,
Claims 2 and 12, translating a message / correcting misspelling, which is a mental process;
Claims 3 and 13, sending / displaying message, which is insignificant extra solution activity to the judicial exception.
Claims 4 and 14, modifying a message which is a mental process.
Claims 5 and 15, generating message in real-time, which is also a mental process.
Claims 6 and 16, a generic graphical user interface, which is well known and does not indicative of integration into a practical application.
The courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper” to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir.2011). If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75,674. If the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept.
The recited limitations could be performed in human mind or with a pen / a piece of paper. The dependent claims further recite steps for data manipulation related to the abstract idea of manipulating text messages. These claim elements, when considered alone and in combination, are considered to be abstract ideas because they are directed to a mental process.
In these situations, the claim is considered to recite a mental process. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” The claims therefore recited an abstract idea, despite the fact that the claimed steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504.
Eligibility Step 2A, Prong two (integrated into a practical application? MPEP 2106.04(d)).
Since the claimed invention falls into a judicial exception according above analysis (YES branch of PRONG ONE in the step 2A), a claim that is directed to a judicial exception must be evaluated to determine whether the claim recite additional elements that integrate the judicial exception into a practical application (MPEP 2106.04(II)(A)(2)). Prong Two asks whether the claim recite additional elements that integrate the judicial exception into a practical application. In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. Court in Gottschalk v. Benson ‘‘held that simply implementing a mathematical principle on a physical machine, namely a computer was not a patentable application of that principle. Accordingly, after determining that a claim recites a judicial exception in Step 2A Prong One examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception in Step 2A Prong Two. For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B. If there are no additional elements in the claim, then it cannot be eligible.
In the instant claims, the recited “a client device”, “a model serving system”, “a machine learning model” do not integrate the abstract idea into a practical application. These elements are either corresponds to an equivalent to “apply it”. The additional element is also corresponds to generally liking the use of a judicial exception in a particular technological environment.
Eligibility Step 2B (Inventive concept / significantly more consideration; MPEP 2106.05).
MPEP §2106.05 describes step 2B test to determine whether a claim amounts to significantly more. The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014). The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept (See MPEP §2106.05(I)(A)). It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2B. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception is not in itself an inventive concept and does not guarantee eligibility.
The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept. By considering limitations recited in the instant claims, the claims do not improve the functions of a computer, or any other technology or technical field. The claims also do not apply the judicial exception with, or by use of, a particular machine. The claims also do not have effecting a transformation or reduction of a particular article to a different state or thing. The claims fail to include a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application. The recited “processor” / “memory” are well-understood, routine and conventional in the field. Therefore, that recited element does not amount to significantly more than an abstract idea.
Please notes simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984. The court also found “adding insignificant extra-solution activity to the judicial exception” or “generally linking the use of the judicial exception to a particular technological environment or field of use” is not enough to be qualify as “significantly more” considerations.
By reviewing limitations recited in the claims, none of the limitations meet the significantly more considerations. Therefore, claims are directed to unpatentable subject matter and are rejected under 35 U.S.C. 101 (MPEP §2106, flowchart, Step 2B, NO branch).
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 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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(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 1-7, 9-17 and 19-20 are rejected under 35 U.S.C. §102 (a)(2) as being anticipated by Hattangady et al. (US PG Pub. 2024/0296276, referred to as Hattangady).
Hattangady discloses a computer implemented method / system by inputting a selected text message into a generative AI model to obtain a daft reply message (Hattangady, [0042-0044], Fig. 2 and Fig. 4). Hattangady further discloses a user could prompt the generative AI to generate different types of responses (Hattangady, [0044-0045], [0058-0059], Fig. 3A). Hattangady further discloses that a user could edit the draft reply message generated by the generative AI model (Hattangady, [0042-0043], [0050-0052], [0056]).
Regarding claims 1, 11 and 20, Hattangady discloses a method, a computer program product and a system (Hattangady, a computer implemented method / system for generating reply messages during communications between users; Fig. 2 / Fig. 8), comprising:
receiving, from a client device, a message input from a sending party during a conversation with a receiving party within a messaging interface (Hattangady, [0058-0062], Fig. 2 and Fig. 3, a user prompts a generative AI model to generate a draft reply message for responding a message received from another user by using a text messaging application);
generating a prompt for input to a machine-learned language model, the prompt specifying at least the message input and a request to transform the message input to a text string for the receiving party (Hattangady, [0041-0043], Fig. 2 / Fig. 4, preprocessor generates prompts for inputting into a generative AI model to generate draft reply to a select message);
providing the prompt to a model serving system for execution by the machine-learned language model (Hattangady, [0041-0043], Fig. 2 / Fig. 4, providing prompts to a generative AI model for generating draft reply messages);
receiving, from the model serving system, an output generated by executing the machine-learned language model on the prompt, the output comprising the requested text string (Hattangady, [0052-0053], [0056-0057], Fig. 2, #233; Fig. 5, #516);
formatting the output as a chat message (Hattangady, Fig. 3C); and
sending the chat message to the client device of the sending party for display on the messaging interface (Hattangady, [0057], Fig. 3, Fig. 4, #436).
Regarding claims 2 and 12, Hattangady further discloses the request to transform the message input comprises a request to perform at least one OR a combination of: translating the message input to a different language, converting common abbreviations, correcting misspelled words, OR adjusting a sentence structure OR tone of voice of the message input (Hattangady, [0056], [0061], generating drat reply messages with various tone such as “excited tone”, “cheeky tone” etc; Note, the reference only need to teach ONE alternative for limitations recited using “at least ONE” / “OR” ).
Regarding claims 3 and 13, Hattangady further discloses:
providing, to the sending party, the chat message for display in a user interface element of the messaging interface (Hattangady, Fig. 3, text message user interface);
receiving, from the sending party, an indication to transmit the chat message Hattangady, Fig. 3, sending button / arrow, #313); and
responsive to receiving an indication to send the modified chat message, transmitting the chat message to the receiving party (Hattangady, [0064], Fig. 4, #436, send a message when click a sending button).
Regarding claims 4 and 14, Hattangady further discloses:
providing, to the sending party, the chat message for display in a user interface element of the messaging interface (Hattangady, Fig. 3, text message user interface);
receiving, from the sending party, a modification to the chat message (Hattangady, [0056], a user could edit the generated draft reply); and
responsive to receiving an indication to send the modified chat message, transmitting the modified chat message to the receiving party (Hattangady, [0064], Fig. 4, #436, send a message when click a sending button).
Regarding claims 5 and 15, Hattangady further discloses:
generating the chat message in real time as the message input is received from the sending party (Hattangady, Fig. 2, the generative AI generates responses instantly after receiving prompt; [0037], automatically generate message).
Regarding claims 6 and 16, Hattangady further discloses: the user interface element is located above an input field for inputting the message input within the messaging interface (Hattangady, Fig. 3C or 3G; shows a text messaging user interface, the displayed text is above an input field).
Regarding claims 7 and 17, Hattangady further discloses:
identifying an action item associated with the chat message (Hattangady, [0041], [0051]); and
sending the associated action item to the client device of the sending party for display (Hattangady, Fig. 4, #436).
Regarding claims 9 and 19, Hattangady further discloses: the prompt further specifies contextual information associated with the receiving party or the sending party (Hattangady, [0041], [0047], Fig. 2, #235), and wherein the contextual information includes at least one OR a combination of: current message history of the conversation, previous instances of conversations between other users, previous instances of conversations between the sending party and the receiving party, OR desired language of the receiving party (Hattangady, [0049], [0053], historical communication as context; Note the cited reference only needs to teach ONE alternative).
Regarding claim 10, Hattangady further discloses:
identifying one or more action types associated with transforming the message input (Hattangady, [0036-0037], identifying action type such as email or text message); and
generating the prompt based on the identified one or more action types (Hattangady, [0030], [0053-0056], generating draft reply using a generative AI model for replying an email or a text message).
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 of this title, 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 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Hattangady in view of Zhang et al. (US PG Pub. 2017/0371868, referred to as Zhang).
Hattangady discloses training a generative AI model for generating reply message based on prompt input. Hattangady discloses the generative AI model is trained using various training data (Hattangady, [0031-0032], [0097]). Hattangady does not explicitly disclose using user’s feedback as training data, therefore, does not explicitly disclose “obtaining feedback from the sending party”.
Zhang discloses fine-turning a machine translation model by using user’s feedbacks (Zhang, [0022], [0031]).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to combine Hattangady’s teaching with Zhang’s teaching to fine-tune a machine leaning model by obtaining user’s feedback. One having ordinary skill in the art would have been motivated to make such a modification to improve performance of machine learning model (Zhang, [0031]). In addition, all the claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods, and in the combination each element merely would have performed the same function as it did separately. “A combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. ___, 82 USPQ2d at 1395 (2007). One of ordinary skill in the art would have recognized that the results of the combination were predictable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The examiner discovered several relevant prior art references that are related to one or more concepts disclosed by the instant application. These references are included in the attached PTO-892 form for completeness of the record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jialong He, whose telephone number is (571) 270-5359. The examiner can normally be reached on Monday – Friday, 8:00AM – 4:30PM, EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Pierre Desir can be reached on (571) 272-7799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIALONG HE/Primary Examiner, Art Unit 2659
Prosecution Insights