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 allowance or after an Office action under Ex Parte Quayle, 25 USPQ 74, 453 O.G. 213 (Comm'r Pat. 1935). 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, prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant's submission filed on 30 April 2026 has been entered.
Introductory Remarks
In response to communications filed on 30 April 2026, claims 2-6 are amended per Applicant's request. Claims 1 and 7-16 are cancelled. No claims were withdrawn. Claims 17-26 are new. Therefore, claims 2-6 and 17-26 are presently pending in the application, of which claims 2, 17, and 22 are presented in independent form.
The previously raised objection of claims 11 and 16 is withdrawn in view of the cancellation of the claims.
The previously raised 103 rejection of the pending claims is withdrawn in view of the amendments to the claims. A new ground(s) of rejection has been issued.
Response to Arguments
Applicant’s arguments filed 30 April 2026 with respect to the rejection of the claims under 35 U.S.C. 103 (see Remarks, p. 9-10) have been fully considered but are not persuasive, as Applicant solely argues that the amendments overcome the previous prior art rejection. The Examiner respectfully disagrees, and the 103 rejection using the previous primary reference, Zhu, has been modified below to conform to the amended claim language. Zhou has been applied in the same manner. Lastly, a new prior art reference (Pantel) has been applied, and previously applied secondary reference Caracas has been removed. Therefore, Applicant’s arguments concerning Caracas are moot, as Applicant’s arguments are directed towards a prior art reference no longer being used in the current rejection.
Double Patenting
Claims 2-6 and 17-26 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 5, and 9 of U.S. Patent No. 12,118,024 B2. Although the claims at issue are not identical, they are not patentably distinct from each other because the independent claims recite substantially overlapping claim matter, with the exception of the issued patent being more detailed, e.g., “in a case where the number of the extracted search target information pieces is not within a preset search result range, referencing a knowledge base in which attribute information pieces are classified hierarchically, and calculating a score for each of the attribute information pieces included in the extracted search target information pieces with use of a score function that has been determined in advance”. All the dependent claims are narrower forms of the independent claims on which they depend upon (though dependent claims 4, 19, and 24 more narrowly recite that “a knowledge base in which the one or more attribute information pieces are hierarchically classified” is “referenc[ed]”.
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 § 2146 et seq. 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 filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual 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/apply/applying-online/eterminal-disclaimer.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3, 18, and 23 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The claims recite “generating the question information by…increasing the number of the extracted search target information pieces”. There does not appear to be support in the Specification for this limitation at all, which appears only to indicate, with respect to a “number of extracted search target information pieces”, when that number is 0 (Specification, [0136]). Furthermore, it appears that only the attribute scores are increased, not the number of extracted search target information pieces (see, e.g., Specification, [0137]).
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 3, 18, and 23 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
As there is no support for the limitation “generating the question information by…increasing the number of the extracted search target information pieces”, it is unclear what is meant by this limitation. Therefore, for purposes of examination, the interpretation that additional attributes relating to the original entities of the query are used in the question presented to the user, has been taken.
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, 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 2-6 and 17-26 are rejected under 35 U.S.C. 103 as being unpatentable over Zhu et al. (“Zhu”) (US 2018/0232376 A1), in view of Pantel et al. (“Pantel”) (US 2013/0282704 A1), in further view of Zhou et al. (“Zhou”) (US 2014/0046934 A1).
Regarding claim 2: Zhu teaches A search apparatus, comprising:
one or more memories storing instructions; and one or more processors configured to execute the instructions to (Zhu, [0050-0054], where the disclosed system may be embodied as a computing device that includes at least one processing unit 602 and system memory 604, the system memory 604 storing a number of program modules that are executed on the processing unit 602 that perform the disclosed steps):
reference a data set including search target information pieces [having] one or more attribute information pieces … (Zhu, [0025], where search engine 116 is operative to perform a search of the knowledge database 110 for mapping vectors corresponding to identified entities in the structured query to vectors of identified entities from the corpus of documents 120 (i.e., “one or more attribute information pieces”). Because the knowledge database is searched, and content in the knowledge database has information extracted and compared to the received query, this implies the knowledge database was “referenced” as claimed, i.e., thus the act of searching the knowledge database in Zhu, [0028], implies the claimed step of “reference a data set including search target information pieces”);
extract extracted search target information pieces including matching attribute information pieces that match preference attribute information pieces of a first search preference including the one or more attribute information pieces (Zhu, [0018], [0023-0025], and [0028-0030], where search engine 116 searches knowledge database 110 for at least portions of structured documents 120 that match or are related to entities 204 a,b extracted from query 202, and generates a candidate pool of initial search results having matching entities, where search results include four relevant documents 120a-d, e.g., entities 204 a,b “account” and “password” or entities related to “account” and “password” were identified and extracted from snippets or titles of the documents (i.e., “extract extracted search target information”), which were matched to entities identified and extracted from query 202 (i.e., “including matching attribute information pieces that match preference attribute information pieces of a first search preference including the one or more attribute information pieces”));
generate, based on at least one attribute information piece among one or more of the matching attribute information pieces included in the extracted search target information pieces …, question information including a question to be presented to a user (Zhu, [0028-0030], where a user sends a query 202: “I forgot my password” to the system. The system identifies and extracts entities 204 a,b from the query 202, i.e., “account” and “password”. The dialog manager 112 formulates question 210 to ask the user 102 to clarify whether the entity 204 in the document 120 matches the user’s intent, e.g., “Are you referring to account type 1?” (“generate…question information including a question to be presented to a user”, where the question information was “based on at least one attribute information piece among one or more of the matching attribute information pieces included in the extracted search target information pieces”, e.g., entities 204 a,b “account” and “password)); and
generate a second search preference by using a related attribute information piece related to a response of the user to the question information (Zhu, [0034], where the user provides query 202 “How to burn a disc in Doors”. The system 108 determines that more information is needed, and provides question 210 to the user 102, asking “Which operating system are you using?” The user provides response 212 “Doors 10”, or “I am not using Doors 10. I am using Doors 7”. In the former response, the system fulfills a missing entity 304 in the query (i.e., “generate a second search preference”). In latter case, responsive to the follow-up response 304, the system determines that the response 304 includes an entity 204 that is an edit to a previously-fulfilled entity 204, and edits the entity 204 in the query 202 (i.e., “generate a second search preference”) for determining and providing search results 302 responsive to edited query 202. Note that “Doors 10” and “Doors 7” correspond to the claimed limitation “by using a related attribute information piece related to a response of the user to the question information”. See also, e.g., Zhu, [0041], where more broadly speaking, response 212 may be processed for identifying and extracting one or more entities 204 that can supplement the query 202).
Zhu does not appear to explicitly teach [the data set including search target information pieces] in which an image and one or more attribute information pieces are associated; [and] [generate question information based on] that a number of the extracted search target information pieces is not within a predetermined search result range, question information including a question to be presented to a user.
Pantel teaches [generate question information based on] that a number of the extracted search target information pieces is not within a predetermined search result range, question information including a question to be presented to a user (Pantel, [0029], [0068-0076], where the system estimates the size of the result set (i.e., number of items) corresponding to the attributes of the query, and automatically generates questions to engage in a dialogue with user 110 to update the result set, thereby reducing the number of items in the updated result set).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Zhu and Pantel (hereinafter “Zhu as modified”) with the motivation of ensuring that a certain, i.e., most relevant, number of search results are presented to the user, e.g., until the number of items in the result set may be conveniently displayed on the computing device (see, e.g., Pantel, [0076]).
Zhu as modified does not appear to explicitly teach [the data set including search target information pieces] in which an image and one or more attribute information pieces are associated.
Zhou teaches [the data set including search target information pieces] in which an image and one or more attribute information pieces are associated (Zhou, [0038] and [0067], where a search query identifies the search topic “Films” and determines that the most useful presentation property of that topic is an image of the movie poster, where search results and associated properties (i.e., “attribute information”) are retrieved from a data structure, the data structure containing information that a particular technique of presentation is associated with the property “Movie Poster” (i.e., “attribute information”), where each particular movie may have an image as the value associated with the property “Movie Poster”, and that image or a link to the image is stored in the data structure).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Zhu as modified and Zhou (hereinafter “Zhu as modified”) with the motivation of broadening the types of information being searched and presented to the users, such as images, which lends to greater convenience and flexibility of search.
Regarding claim 3: Zhu as modified teaches The search apparatus according to claim 2, wherein the at least one processor is further configured to execute the instructions to:
generate the question information by, based on the at least one attribute information piece, increasing the number of the extracted search target information pieces (Zhu, [0035], where the user provides a query 202 “restaurant with outdoor seating”. The system 108 searches, determines that more information is needed, and formulates and provides question 210 to the user, “A restaurant at your current location?” Note that the original attribute corresponded to “restaurant”, whereas the question increased the number of search target information piece, i.e., by including “location”).
Although Zhu does not appear to explicitly state that the additional search target information piece was “extracted” as claimed (e.g., “location” in Zhu’s question 210 was not necessarily extracted), one of ordinary skill in the art would have been suggested by Zhu’s disclosure to have modified Zhu to include language extracted from the search documents with the motivation of formulating follow-up questions that are most directly pertinent to the user’s search query, and thus potentially asking a question that is most likely to generate a successful search result from the user.
Regarding claim 4: Zhu as modified teaches The search apparatus according to claim 2, wherein the at least one processor is further configured to execute the instructions to:
reference a knowledge base in which the one or more attribute information pieces are hierarchically classified (Zhu, [0027], where the system queries the knowledge graph 122 (i.e., “reference a knowledge base in which the one or more attribute information pieces [are stored]”) to learn about the relationships between entities for providing more relevant results to the user. See, e.g., Zhu, [0023-0024], where knowledge database 110 enables inferences of relationships between entities to be made, e.g., “blue screen” is an entity that belongs to the “Operating System X” domain, and “Operating System X10” is a child entity of “Operating System X” (i.e., “the one or more attribute information pieces are hierarchically classified”)); and
generate the question information (Zhu, [0034], where responsive to the user query 202 “How to burn a disc in Doors”, the system 108 searches the knowledge database 110 for search results, determines that more information is needed, and formulates and provides a question 210 to the user “Which operating system are you using?”).
Although Zhu does not appear to explicitly state that the child/parent entities are stored in the knowledge graph, Zhu discloses that relationships may be established with respect to entities, and separately states that the knowledge graph 122 stores information concerning relationships between entities. Therefore, one of ordinary skill in the art would have been suggested by Zhu’s disclosure to have explicitly included the child/parent relationships between entities within the knowledge graph 122 with the motivation of having a singular repository of entity relationships, which is more convenient to manage (e.g., one location for housing updated information, rather than having to update multiple repositories) and query (e.g., sending one query to one location, and without having to aggregate from multiple sources, which may also require reconciliation, e.g., in cases of conflict or outdated information due to synchronization issues).
Furthermore, although Zhu does not appear to explicitly state that the question information is generated (following referencing the knowledge base with the hierarchically classified attributes), one of ordinary skill in the art would have found it obvious to have modified Zhu to have explicitly generated a question based on the hierarchical characteristics with the motivation of being able to aid users in broadening queries when needed (e.g., posing a question resulting in a user’s follow-up response that makes the query broader so that more search results are returned), or narrowing queries when needed (e.g., posing a question resulting in a user’s follow-up response that makes the query more specific such that fewer search results are returned).
Regarding claim 5: Zhu as modified teaches The search apparatus according to claim 2, wherein the at least one processor is further configured to execute the instructions to:
calculate, for the at least one attribute information piece, a numerical value related to the at least one attribute information piece; and generate the question information based on the numerical value (Pantel, [0029], [0068-0076], where the system estimates the size of the result set (i.e., number of items) corresponding to the attributes of the query, and automatically generates questions to engage in a dialogue with user 110 to update the result set, thereby reducing the number of items in the updated result set.
See Pantel, [0044-0045], where the system computes candidate attribute values. See Pantel, [0064], where ranker selects one or more candidate attribute values 362 that are likely to be most effective at reducing the result set if used to formulate a question, where the ranker may compute a metric of effectiveness of each of the filtered attribute values 362).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to have combined the teachings of Zhu as modified and Pantel with the motivation of increasing the likelihood of formulating a question that is likely to be most effective at reducing the result set when the question is posed to the user (Pantel, [0064]).
Regarding claim 6: Zhu as modified teaches The search apparatus according to claim 2, wherein the at least one processor is further configured to execute the instructions to:
generate the second search preference by reflecting, into the first search preference, the related attribute information piece and related to the response of the user to the question information (Zhu, [0034], where the user provides query 202 “How to burn a disc in Doors”. The system 108 determines that more information is needed, and provides question 210 to the user 102, asking “Which operating system are you using?” The user provides response 212 “Doors 10”, or “I am not using Doors 10. I am using Doors 7”. In the former response, the system fulfills a missing entity 304 in the query (i.e., “generate the second search preference”). In latter case, responsive to the follow-up response 304, the system determines that the response 304 includes an entity 204 that is an edit to a previously-fulfilled entity 204, and edits the entity 204 in the query 202 (i.e., “generate the second search preference”) for determining and providing search results 302 responsive to edited query 202. Note that “Doors 10” and “Doors 7” correspond to the claimed limitation “by reflecting, into the first search preference, the related attribute information piece and related to the response of the user to the question information”. See also, e.g., Zhu, [0041], where more broadly speaking, response 212 may be processed for identifying and extracting one or more entities 204 that can supplement the query 202).
Regarding claim 17: Claim 17 recites substantially the same claim limitations as claim 2, and is rejected for the same reasons.
Regarding claim 18: Claim 18 recites substantially the same claim limitations as claim 3, and is rejected for the same reasons.
Regarding claim 19: Claim 19 recites substantially the same claim limitations as claim 4, and is rejected for the same reasons.
Regarding claim 20: Claim 20 recites substantially the same claim limitations as claim 5, and is rejected for the same reasons.
Regarding claim 21: Claim 21 recites substantially the same claim limitations as claim 6, and is rejected for the same reasons.
Regarding claim 22: Claim 22 recites substantially the same claim limitations as claim 2, and is rejected for the same reasons.
Note that Zhu teaches A non-transitory computer readable recording medium that includes a program recorded thereon, the program including instructions that cause a computer to carry out [the claimed steps] (Zhu, [Claim 20] and [0050-0054], where the disclosed system may be embodied as a computer readable storage device that includes computer readable instructions, which when executed by the processing unit, is capable of carrying out the disclosed steps. The computer readable media may be nonvolatile).
Regarding claim 23: Claim 23 recites substantially the same claim limitations as claim 3, and is rejected for the same reasons.
Regarding claim 24: Claim 24 recites substantially the same claim limitations as claim 4, and is rejected for the same reasons.
Regarding claim 25: Claim 25 recites substantially the same claim limitations as claim 5, and is rejected for the same reasons.
Regarding claim 26: Claim 26 recites substantially the same claim limitations as claim 6, and is rejected for the same reasons.
Conclusion
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/IRENE BAKER/Primary Examiner, Art Unit 2154
13 May 2026
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