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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 3/4/2026 has been entered.
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 1-8 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.
Claim 1 is directed towards an apparatus, thus meeting the Step 1 eligibility criterion. Claim 1 does recite the abstract concept of a commercial interaction/fundamental economic practice, which has been identified as an abstract idea by the MPEP. The relevant claimed limitations include: receive a question from a user as input / selectively process domain history corresponding to the question from histories acquired from a plurality of domains as user information / generate answer contents comprising (i) an advertisement selected from advertisement candidates; and (ii) an answer to a prompt derived from the question and the user information / provide the answer contents / determine cost than an advertiser of the advertisement is to be charged, according to the operation on the advertisement by the user / wherein the selective processing of domain history reduces information processing load / generate a prompt having text shorter in length by using only the selectively processed domain history corresponding to the question. Applicant’s Spec. describes the claimed invention as pertaining to the commercial interaction realm, and describes the pending claimed invention as seeking to, when implemented, at best optimize a business practice/goal: “The answer contents include at least an answer to a user, the answer corresponding to a question, and an advertisement (for example, a top advertisement of advertisements listed in predetermined order) selected from candidates determined beforehand as candidates for advertisement to be provided with the answer. The answer contents are information indicating the answer to the user, and the candidate selected from the candidates for advertisement, the answer corresponding to the question, and the answer contents may be not contents that are actually displayed on the terminal device 10. Therefore, the contents actually displayed on the terminal device 10 may be generated by the information processing apparatus 100 on the basis of information related to the answer to the user, the answer corresponding to the question, and information related to the candidate selected from the candidates for advertisement”, “The display order may thus be determined using rules for plural ways of outputting search results. In a case where the display order is determined on the basis of the training, an advertisement for a product that a user may be able to buy (or a product that a user may want) is placed in a predetermined frame on a UI screen, for example, and an advertisement frame (sponsor frame) may be provided as a separate frame where an advertisement for a product based on a bid price may be placed. Excessive messages conveyed by advertisement frames on UI screens may give bad impressions in terms of service, but placement of advertisements for products that users may want enables attraction of users who have found value in those products. For example, advertisements related to goods in stock may be placed in relation to electronic commerce (EC), advertisements related to hotel reservations may be placed in relation to fine food, and advertisements related to job offers may be placed in relation to employment. The goods in stock, reservations, and job offers are thereby able to be presented in a well-suited manner to prompt action according to what the users have consulted with the AI about. Furthermore, plural senses of values for surprise, for example, may be presented to a user so that the user is caused to make a selection therefrom and an advertisement for a product corresponding to the selected sense of values may be placed”, “The user U1 operating (for example, clicking or tapping on) the advertisement included in the answer contents displayed on the terminal device 10 generates a conversion. Upon generation of the conversion, the information processing apparatus 100 memorizes for which advertiser and which advertisement the conversion has been generated. The information processing apparatus 100 then determines cost the advertiser is to be charged, according to the number of conversions counted in a predetermined time period (Step S107). For example, the information processing apparatus 100 determines the cost the advertiser is to be charged, such that the larger the number of conversions is, the higher the cost becomes. The information processing apparatus 100 then charges the advertiser for the cost determined. Without being limited to the case where the information processing apparatus 100 charges the advertiser for the cost determined by counting of the number of conversions, the information processing apparatus 100 may charge the advertiser every time a conversion is made”, “With respect to the above described embodiment, the case where the information processing apparatus 100 determines the cost the advertiser is to be charged and charges the advertiser has been described as an example, but the information processing apparatus 100 may determine cost an advertising agency is to be charged, the advertising agency having a predetermined relation with the advertiser, and charge the advertising agency. In the above described embodiment, the information processing apparatus 100 determines the cost according to the conversions but the cost the advertising agency is to be charged may be determined according to the number of customers attracted. That is, the cost the advertising agency is to be charged may be determined according to the number of customers attracted to the advertising agency. The advertising agency may be in predetermined relations with plural advertisers. With respect to the above described embodiment, the case where the generative AI selects an advertisement from the candidates for advertisement to generate the answer contents has been described as an example, but the generative AI may generate information related to conditions for listing advertisements by use of the candidates for advertisement. The information processing apparatus 100 may then acquire the information related to the conditions for the listing from the generative AI server 50 and generate answer contents by performing the listing. “, “For example, the generation unit 522 selects an advertisement output from the generative AI as the advertisement to be included in the answer contents. For example, the generation unit 522 selects an advertisement output from the generative AI as an advertisement to be included in a first frame of the answer contents. For example, the generation unit 522 may generate answer contents including the advertisement output from the generative AI in the first frame and including, in a second frame, an advertisement selected on the basis of predetermined information, such as a bid price.” Claim 1 also recites the abstract concept of a mental concept – i.e. mental process that can be performed in the human mind or using pen/paper, including an observation/evaluation/judgment, which has been identified as an abstract idea by the MPEP: receive a question from a user as input; selectively process domain history corresponding to the question from histories acquired from a plurality of domains as user information; generate a prompt having text shorter in length by using only the selectively processed domain history corresponding to the question. These claimed limitations, under their broadest reasonable interpretation, cover performance in the human mind but for the recitation of generic computing elements, thus still being in the mental process category.
This judicial exception is not integrated into a practical application. Claim 1 includes the additional elements of a processor / using AI to analyze/generate data (“cause generative Artificial Intelligence (AI) to generate…”, “ the answer contents that the generative AI was caused to generate”). The processor represents a generic computing element. Using generative AI to analyze data / generate content does no more than apply or link the use of the recited judicial exception to a particular technological environment. The additional elements do not, alone or in combination, improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. The claim is directed to an abstract idea.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because as noted above, the claimed computing element represents a generic computing element; it is recited at a high level of generality. Using generative AI to analyze data / generate content does no more than apply or link the use of the recited judicial exception to a particular technological environment. The additional elements do not, alone or in combination, improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. Therefore, Claim 1 does not amount to significantly more than the abstract idea itself. The claim is not patent eligible.
Independent claims 7, 8 are directed to a method and computer readable storage medium for performing the method of claim 1, thus meeting the Step 1 eligibility criterion. Claims 7, 8 recite the same abstract idea as Claim 1. Claims 7, 8 perform the method of claim 1 using only generic components of a networked computer system. Therefore, claims 7, 8 are directed to an abstract idea without significantly more for the reasons given in the discussion of claim 1.
Remaining dependent claims 2-6 further recite and narrow the abstract ideas of independent claim 1. The claims further recite the abstract concept of a mathematical concept – I.e. mathematical calculations/relationships, which has been identified as an abstract idea by the MPEP: determines cost for use of the generative AI, according to a volume of text of the question / determines the cost the advertiser is to be charged, according to the number of conversions for the advertisement. The claims further recite the additional elements of using generative AI to generate content – see claims 5/6, which does no more than apply or link the use of the recited judicial exception to a particular technological environment. The additional elements do not, alone or in combination with the other additional elements , improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. Therefore, the claims above do not amount to significantly more than the abstract idea itself. The claims are not patent eligible.
The prior art of record does not teach neither singly nor in combination the limitations of claims 1-8. Siebel (20240202221) teaches generative AI generating answer contents including an ad selected from ad candidates and an answer that has been generated by the AI as an answer to a question by inputting the candidates and the question to the AI upon receipt of the question / providing the answer contents to the user / the answer is generated by an input of a prompt to the AI. However, it lacks the combination of claimed elements of the pending independent claims. Spiegel (20240249318) teaches determining user intent and providing targeted ads using chatbot interactions, including using generative AI to generate responses using a user prompt and a LLM, and displaying the response and the ad content to the user. However, it lacks the combination of claimed elements of the pending independent claims. When taken as a whole, the claims are not rendered obvious as the available prior art does not suggest or otherwise render obvious the noted features nor does the available prior art suggest or otherwise render obvious further modification of the evidence at hand. Such modifications would require substantial reconstruction relying solely on improper hindsight bias, and thus would not be obvious.
Response to Arguments
Applicant’s arguments have been fully considered; Applicant argues with substance:
The Examiner has alleged that the claims are directed to an abstract idea of a commercial interaction/fundamental economic practice. However, Applicant submits that the claims, as amended, recite specific technical improvements that integrate any alleged abstract idea into a practical application. Claim 1, as amended, recites that the processor is configured to "selectively process domain history corresponding to the question from histories acquired from a plurality of domains as user information" and "generate a prompt having text shorter in length by using only the selectively processed domain history corresponding to the question." This combination provides a concrete technical mechanism for reducing the volume of text input to the generative Al system. As described in Applicant's specification, published as U.S. Pub. No. US 2025/0166021, "Charging may be based on, not necessarily the text of the question, but a volume of all of text including text of the prompt. Therefore, the prompt may be generated to have text shorter in length on the basis of a history selected according to the user." Pub.'021, at [0023]. The specification further explains that "the generation unit 132 causes the answer contents to be generated, the answer contents including an answer generated by causing a prompt to be input to the generative Al, the prompt being a prompt generated to have text shorter in length on the basis of a history selected according to the user. The information processing apparatus 100 according to the embodiment thereby enables a load on the information processing apparatus 100 to be reduced." Pub.'021 at [0087]. These passages demonstrate that the claimed invention provides a specific technical mechanism-generating a shorter prompt using only selected domain history-that reduces the computational processing load when generating AI-based answer contents.
Applicant submits that the amended claims address the Examiner's concern that "reducing the processing load represents an inherent effect/benefit of processing less data." The claims, as amended, do not merely recite an abstract benefit of "reduced load," but rather specify a concrete technical mechanism: generating a prompt having text shorter in length by using only the selectively processed domain history corresponding to the question. This is analogous to USPTO Subject Matter Eligibility Example 47, Claim 3, where the claim was found eligible because it specified concrete technical actions (dropping malicious packets, blocking traffic from source addresses) that used the AI's output to provide specific technical solutions. Similarly, the amended claims specify how the selective processing is used-to generate a shorter prompt for input to the generative AI-which represents a particular technical implementation rather than merely an inherent effect of processing less data.
Furthermore, the claims, as amended, recite additional elements that, when considered as a whole, integrate the alleged abstract idea into a practical application. The combination of receiving a question, selectively processing domain history corresponding to the question, generating a prompt having text shorter in length by using only the selectively processed domain history, causing generative Al to generate answer contents comprising an advertisement and an answer to the prompt, and providing the answer contents represents a specific technical implementation that improves the functioning of generative Al systems by reducing the volume of text input to the Al. This is not merely applying an abstract idea using generic Al, but rather a specific technique for generating optimized prompts that reduces computational burden on the generative Al system.
Finally, regarding the Examiner's observation that the specification describes the invention as pertaining to the commercial interaction realm, Applicant respectfully submits that while the claims may have commercial applications, the specific technical mechanism for generating optimized prompts-generating a prompt having text shorter in length by using only the selectively processed domain history-may represent a technical improvement to generative Al systems that is not merely a commercial interaction. In some aspects, the technical improvement lies in how the system processes and reduces input data for the Al, not in the commercial goal of advertising. The selectively processed domain history constitutes the "user information" referenced in the claims, so the prompt is derived from both the question (which determines which domain history to select) and the user information (the selected domain history).
Accordingly, withdrawal of this rejection is respectfully requested.
As noted above, the pending claims do recite an abstract idea, and the additional elements do not, alone or in combination, integrate the recited abstract idea into a practical application, nor do they represent significantly more than the abstract idea itself. Reducing the computing processing load represents an inherent effect/benefit of processing less data- i.e. the computing processing load is proportionate with the amount of data that is being processed; the more data that is being processed, the higher the computing processing load, and the less data that is being processed, the lower the processing load. Applicant’s Spec. describes the claimed invention as pertaining to the commercial interaction realm, and describes the pending claimed invention as seeking to, when implemented, at best optimize a business practice/goal: “The answer contents include at least an answer to a user, the answer corresponding to a question, and an advertisement (for example, a top advertisement of advertisements listed in predetermined order) selected from candidates determined beforehand as candidates for advertisement to be provided with the answer. The answer contents are information indicating the answer to the user, and the candidate selected from the candidates for advertisement, the answer corresponding to the question, and the answer contents may be not contents that are actually displayed on the terminal device 10. Therefore, the contents actually displayed on the terminal device 10 may be generated by the information processing apparatus 100 on the basis of information related to the answer to the user, the answer corresponding to the question, and information related to the candidate selected from the candidates for advertisement”, “The display order may thus be determined using rules for plural ways of outputting search results. In a case where the display order is determined on the basis of the training, an advertisement for a product that a user may be able to buy (or a product that a user may want) is placed in a predetermined frame on a UI screen, for example, and an advertisement frame (sponsor frame) may be provided as a separate frame where an advertisement for a product based on a bid price may be placed. Excessive messages conveyed by advertisement frames on UI screens may give bad impressions in terms of service, but placement of advertisements for products that users may want enables attraction of users who have found value in those products. For example, advertisements related to goods in stock may be placed in relation to electronic commerce (EC), advertisements related to hotel reservations may be placed in relation to fine food, and advertisements related to job offers may be placed in relation to employment. The goods in stock, reservations, and job offers are thereby able to be presented in a well-suited manner to prompt action according to what the users have consulted with the AI about. Furthermore, plural senses of values for surprise, for example, may be presented to a user so that the user is caused to make a selection therefrom and an advertisement for a product corresponding to the selected sense of values may be placed”, “The user U1 operating (for example, clicking or tapping on) the advertisement included in the answer contents displayed on the terminal device 10 generates a conversion. Upon generation of the conversion, the information processing apparatus 100 memorizes for which advertiser and which advertisement the conversion has been generated. The information processing apparatus 100 then determines cost the advertiser is to be charged, according to the number of conversions counted in a predetermined time period (Step S107). For example, the information processing apparatus 100 determines the cost the advertiser is to be charged, such that the larger the number of conversions is, the higher the cost becomes. The information processing apparatus 100 then charges the advertiser for the cost determined. Without being limited to the case where the information processing apparatus 100 charges the advertiser for the cost determined by counting of the number of conversions, the information processing apparatus 100 may charge the advertiser every time a conversion is made”, “With respect to the above described embodiment, the case where the information processing apparatus 100 determines the cost the advertiser is to be charged and charges the advertiser has been described as an example, but the information processing apparatus 100 may determine cost an advertising agency is to be charged, the advertising agency having a predetermined relation with the advertiser, and charge the advertising agency. In the above described embodiment, the information processing apparatus 100 determines the cost according to the conversions but the cost the advertising agency is to be charged may be determined according to the number of customers attracted. That is, the cost the advertising agency is to be charged may be determined according to the number of customers attracted to the advertising agency. The advertising agency may be in predetermined relations with plural advertisers. With respect to the above described embodiment, the case where the generative AI selects an advertisement from the candidates for advertisement to generate the answer contents has been described as an example, but the generative AI may generate information related to conditions for listing advertisements by use of the candidates for advertisement. The information processing apparatus 100 may then acquire the information related to the conditions for the listing from the generative AI server 50 and generate answer contents by performing the listing. “, “For example, the generation unit 522 selects an advertisement output from the generative AI as the advertisement to be included in the answer contents. For example, the generation unit 522 selects an advertisement output from the generative AI as an advertisement to be included in a first frame of the answer contents. For example, the generation unit 522 may generate answer contents including the advertisement output from the generative AI in the first frame and including, in a second frame, an advertisement selected on the basis of predetermined information, such as a bid price. The pending instant claimed invention and USPTO Example 47 Claim 3 have different fact patterns and claim sets, and thus the two are not analogous. Furthermore, in Example 47 Claim 3 it was deemed that the claim recites a judicial exception, and the claim as whole provides an improvement in the technical field of network intrusion detection – i.e. it improves network security using the data from the detection to enhance security by taking proactive measures to remediate the danger by detecting the source address associated with the potentially malicious packets, thus integrating the practical application such that the claim is not directed to the judicial exception. Contrary to Example 47 Claim 3, the pending claims do not as a whole provide an improvement in the technical field of network intrusion detection – i.e. the pending instant claims do not improve network security using the data from the detection to enhance security by taking proactive measures to remediate the danger by detecting the source address associated with the potentially malicious packets. Pending Claims 1-8 recite an abstract idea and, when implemented, the pending claims do not effect an improvement to the functioning of the computing device itself, nor do they improve other technology/technical field. See Office Action above for the detailed, reasoned 35 USC 101 analysis.
The pending 35 USC 112 rejections have been overcome
Examiner agrees. The 35 USC 112 rejections have been overcome and have been withdrawn.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexandru Cirnu whose telephone number is (571) 272-7775. The examiner can normally be reached on 8:00 AM - 5:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on (571) 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Alexandru Cirnu/
Primary Patent Examiner, Art Unit 3622
3/20/2026