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 .
Claim Rejections - 35 USC § 112
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 1-20 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.
Claims must particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention; See Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014). Specifically, the following limitations render the metes and bounds of Claim 1 indefinite: “respective random sentence in which each object, action pair appears”, it is unclear what “random” means in this context. The claim does not specify whether “random” refers to stochastic sampling from a model, arbitrary selection from a corpus, pseudo-random generation subject to constraints, or some other process. Furthermore, the limitation, “each object, action pair appears”, is unclear as to what it refers to, does it mean that every pair in a batch must appear in a single sentence, that each sentence corresponds to a different pair, or that each pair appears at least once across a set of sentences? Similarly, “at least some of the respective random sentences with respective indications of the respective object and action”, which is unclear ( what does the phrase “respective indications” refer to?). The claim does not specify whether the “indications” are labels, tags, embeddings, metadata, or any other structure. It is further unclear how these “indications” are provided “to train the ML model”: does training occur by supervised learning using those indications as labels, reinforcement signals, or something else? Because the scope of what constitutes a qualifying “indication” and “training” is uncertain, the boundaries of infringement are not reasonably clear. Additionally, the limitation “use the ML model to generate dialog for a non-player character (NPC) in a computer game based on speech of a player”, the phrase “based on speech of a player” is broad and ambiguous. It could encompass any system where speech is merely captured in the environment, or only systems where speech content is recognized and semantically interpreted. The claim does not specify whether the “speech” is spoken audio, text transcriptions, or other forms of input.
The above limitations, result in failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S.___(2014).
Claims 1-18 are directed to an apparatus, while claims 19-20 are also directed to a method (as seen in the 112 rejection above). As such, the claims are directed to statutory subject matter under Step 1 of the Alice flowchart, as directed to a judicial exception (i.e. an abstract idea).
Addressing the claims under Step 2A, the claims are held to be directed to concepts similar to those found to be abstract, either as outlined in the 2014 lEG/July 2015 Update to Subject matter eligibility, or, as compared to certain decisions rendered by the courts.
The claims describe the steps of: receiving input “object, action pairs” into a machine learning model; receiving from the ML model a “random sentence in which each object, action pair appears”; inputting some of those sentences with “indications” of the respective object and action to train the ML model; and using the ML model to generate dialog for a non-player character (NPC) in a game based on speech of a player.
These limitations collectively recite organizing and manipulating information (object–action data and sentences) and generating text in response to speech, which is a form of information processing and mental steps, a type of abstract idea identified in the USPTO’s guidance and case law. Human beings could mentally associate objects and actions, construct sentences including those elements, and create responsive NPC dialogue based on a player’s speech, albeit more slowly and without a computer; such “methods of organizing human activity” and “mental processes” are mere abstract ideas. See Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014); Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012).
Furthermore, the claim merely uses a generic “machine learning (ML) model” executed on “at least one processor system,” which does not itself impose a specific technological improvement in computer functionality, network architecture, or speech-recognition hardware. This type of generic computer implementation of information processing has repeatedly been characterized as an abstract idea (Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014)).
Therefore, while it is understood that the claims in the current application are not verbatim recitations of the guidelines or case law, the detailed analysis provided above shows how the current claim limitations at issue closely parallel the concepts provided by the guidelines and the precedential case law, and are therefore considered to be directed to an abstract idea (Step 2A: YES).
Step 2A, Prong Two: Claims 1-20 does not contain additional elements that integrate the abstract idea exception into a practical application because the additional elements are mere instructions to apply the abstract idea exception; MPEP § 2106.05(f). (2) generally link the judicial exception to a particular technological environment; MPEP § 2106.05(h); (3) are insignificant extra solution activity; MPEP § 2106.05(g). The additional elements are limited to generic computer components. These elements merely limit the environment to a generic computer gaming context and specify that the abstract idea is implemented using a model executed by a processor. There is no recited improvement to the operation of the computer or to speech-recognition technology, no new data structures, no particular training procedure beyond “input…pairs” and “train the ML model,” and no specific rules or grammar-based technique like those found patent-eligible in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016). In McRO, the claims “focused on a specific asserted improvement in computer animation” using “a combined order of specific rules” to achieve results not attainable by human animators, whereas here the claim uses a result-oriented recitation of “using the ML model to generate dialog” without specifying any particular rule set or technological improvement. Likewise, unlike Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), where a specific self-referential table improved database operation, claims 1-20 does not recite any particular data structure or architecture improvement, but merely uses the computer as a tool to carry out generic information processing. Thus, the claim does not integrate the abstract idea into a practical application.
Under Step 2B, the examiner acknowledges the additional elements (i.e. generic computer components).
Under Step 2B of the Alice/Mayo test, the claim elements, individually and as an ordered combination, do not amount to “significantly more” than the abstract idea. The recited “processor system” is generic computer hardware performing conventional functions of receiving data, processing it using a model, and outputting text, which are well-understood, routine, and conventional computer activities.
The “machine learning (ML) model” is recited in purely functional terms, with no particular architecture, training algorithm, or improvement identified, and its use for generating text based on training data is itself a well-known generic computer function, as reflected in contemporary AI subject-matter eligibility commentary from the USPTO and practitioners.
Limiting the abstract idea to the environment of “dialog for a non-player character (NPC) in a computer game” is a mere field-of-use limitation that does not supply an inventive concept (See Bilski v. Kappos, 561 U.S. 593 (2010)). Taken together, the claims amounts to no more than using a generic processor to execute a generic ML model to process information and generate text in a gaming context, which does not provide an inventive concept sufficient to transform the abstract idea into patent-eligible subject matter.
Thus, under Step 2B, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself (Step 2B: NO).
Dependent claims when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea. The claims provide minimal technical structure or components for further consideration either individually or as ordered combinations with the independent claims. As such, additional recited limitations in the dependent claims only refine the identified abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
Claim Rejections - 35 USC § 102
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.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Gelfenbeyn et al. (US Patent Pub. 20230351216; referred to hereinafter as Gelfenbeyn).
Claims 1, 9, 12-13 & 19: Gelfenbeyn disclose an apparatus (figure 1), comprising, at least one processor system (figure 1), configured to: input object, action pairs to a machine learning (ML) model (figure 2, element 210), receive from the ML model a respective random sentence in which each object, action pair appears (0039-0044) input to the ML model at least some of the respective random sentences with respective indications of the respective object and action to train the ML model (0045-0049), and use the ML model to generate dialog for a non-player character (NPC) in a computer game based on speech of a player of the computer game (0066-0072 & 0095).
Claims 2 & 20 : Gelfenbeyn disclose receive data representing speech from the player of the computer game and generate dialog for the NPC based at least in part on the data representing speech from the player (0088 & 0095).
Claim 3: Gelfenbeyn disclose control action of the NPC based at least in part on the data (0054-0055).
Claims 4 & 14: Gelfenbeyn disclose convert utterances of the player to text to determine whether the player has uttered an imperative statement (0043) responsive to determining that the player has uttered an imperative statement, execute a game engine to attempt to execute an action represented by the imperative statement (0047-0053).
Claims 5 & 15: Gelfenbeyn disclose generate a description of a result of the attempt to execute the action (0035-0037).
Claims 6 & 16: Gelfenbeyn disclose inject the description of the result back into the computer game for action control of the NPC (0038-0044).
Claims 7 & 17: Gelfenbeyn disclose use the description of the result to generate dialog for the NPC and play the dialog during play of the computer game (0066-0072 & 0088-0095).
Claims 8 & 18: Gelfenbeyn disclose responsive to determining that the player has uttered a non-imperative statement, generate NPC dialog based on the non-imperative statement and play the dialog during play of the computer game (0044-0053).
Claim 10: Gelfenbeyn disclose wherein the input comprises a sentence and the output comprises identification of an object and an action in the sentence (0088-0095).
Claim 11: Gelfenbeyn disclose semantically analyze statements from a player of a computer game using the ML model to generate dialog of a non-player character (NPC) of the computer game; execute imperative statements from the player using a game engine associated with the computer game (0043-0051), and convert into text a result of executing imperative statements from the player to generate NPC dialog to ensure the NPC dialog remains synchronized with behavior of the NPC (0066-0072).
Examiner’s Note
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Chew (20250161813) refers to generating nonplayer characters that are context aware in video games includes executing a video game to enable gameplay using a player character controlled by a player. The gameplay produces game state data. During execution of the video game, scene interactivity data is identified from the game state data. The scene interactivity data is filtered based on filtering settings, with the filtering being configured to identify target interactivity data that is processed to generate context aware logic. The context aware logic is applied to a nonplayer character (NPC) that is associated with a current scene of gameplay. The context aware logic transforms the behavior of the NPC to be contextually interactive with the player character during the gameplay by the player. A method for generating a nonplayer character for a video game also is described.
Grimm (20260021396) refers to Artificial intelligence (AI) models are disclosed to provide an in-game assistant that can accompany a user through the user's gameplay and provide audible outputs in video game character voices. The outputs can aid the user by providing summaries of what just happened in the game and what the user might do in the future to advance in the game. The models may include large language models as well as deepfake generators for generating audible outputs in the voices of actual game characters.
Vogel (12,544,673) refers to generating a screenplay from a text of a book for a game play that incorporates artificial intelligence to allow the player to modify/change the story and the system will adjust the story and game play based on the player's modification.
The referenced citations made in the rejection(s) above are intended to exemplify areas in the prior art document(s) in which the examiner believed are the most relevant to the claimed subject matter. However, it is incumbent upon the applicant to analyze the prior art document(s) in its/their entirety since other areas of the document(s) may be relied upon at a later time to substantiate examiner's rationale of record. A prior art reference must be considered in its entirety, i.e., as a whole, including portions that would lead away from the claimed invention. W.L. Gore & Associates, Inc. v. Garlock, Inc., 721 F.2d 1540, 220 USPQ 303 (Fed. Cir. 1983), cert. denied, 469 U.S. 851 (1984). However, "the prior art's mere disclosure of more than one alternative does not constitute a teaching away from any of these alternatives because such disclosure does not criticize, discredit, or otherwise discourage the solution claimed ...." In re Fulton, 391F.3d 1195, 1201,73 USPQ2d 1141, 1146 (Fed. Cir. 2004).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SUNIT PANDYA whose telephone number is (571)272-2823. The examiner can normally be reached M-F 9:30-6:30PM.
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, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SUNIT PANDYA/Primary Examiner, Art Unit 3715
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