DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Specification
The disclosure is objected to because of the following informalities:
In ¶[0001], Applicants should update a status of their parent applications as “This application is a continuation of Application Serial No. 18/406,752 filed on 08 January 2024, now U.S. Patent No. 12,142,277 issued on 12 November 2024, which is a continuation of U.S. Patent Application Serial No. 17/587,478 filed on 28 January 2022, now U.S. Patent No. 11,869,506 issued on 09 January 2024, which is a continuation of U.S. Patent Application Serial No. 16/621,376 filed on 11 December 2019, now U.S. Patent No. 11,238,864 issued on 01 February 2022, which is a 371 of PCT/US2019/034625 filed on 30 May 2019.”
Appropriate correction is required.
Double Patenting
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 claims because the examined application claim is either anticipated by, or would have been obvious over, the reference claims. 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.
Claims 1 to 6, 11 to 15, and 19 are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1 to 3, 8 to 13, and 18 to 19 of U.S. Patent No. 12,142,277 in view of Barve et al. (U.S. Patent No. 8,577,671).
Corresponding independent claims 1 and 11 of the patent set forth at least all of limitations of current independent claims 1 and 11 in slightly different words directed to a method and system comprising: receiving a free-form natural language input, the free-form natural language input being generated based on user interface input from a user at a client device; in response to receiving the free-form natural language input: transmitting, to a first content agent, a first request . . . ; transmitting, to a second content agent, a second request that is disparate from the first request . . . ; receiving first responsive text from the first content agent in response to transmitting the first request; receiving second responsive text from the second content agent in response to transmitting the second request; generating a composite response, generating the composite response comprising: applying the first responsive text and the second responsive text to a trained generative model, that is a sequence-to-sequence model, to generate a resulting decoding that indicates the composite response, and determining, based on the resulting decoding, the composite response; and causing the client device to render the composite response as responsive to the user interface input from the user.
Concerning current independent claims 1 and 11, corresponding independent claims 1 and 11 of the parent patent do not include the limitations of “determining, based on the free-form natural language input, one or more additional entities that are not explicitly referenced in the free-form natural language input”, that the first request is “based on the one or more additional entities that are not explicitly referenced in the free-form natural language input”, and that the second request is “is based on the one or more additional entities that are not explicitly referenced in the free-form natural language input”. That is, the current independent claims do not include limitations directed to a task of determining additional entities that are not explicitly referenced in natural language input. However, it is known to perform a natural language processing task to identify entities that are not explicitly referenced in natural language text as taught by Barve et al. Specifically, Barve et al. teaches that entities may include unspecified or implicit entities that a user is attempting to identify but that the user does not know. If a user wishes to identify a movie without knowing the name of one of the characters, the user may know the name of one of the characters in the movie, but may not recall a particular actor who played the character. Or a user may want to get the last email from an unspecified gentleman from a specified company to whom he was introduced by email, with the implicit entity being a contact that can be discovered by examining contacts from that company. (Column 8, Line 62 to Column 9, Line 18) If a user wants to know a role played by a specified actor/personality, e.g., Michelle Pfeiffer, in an unspecified movie that is about a specified role, the user’s constraint includes an unspecified or implicit entity of the movie ‘Scarface’, and a specified role of a character Tony Montana. The implicit movie entity ‘Scarface’ is arrived at via an ‘Acted In’ relationship, and the actor entity ‘Michelle Pfeiffer’ and ‘Character In’ provides ‘Elvira Hancock’ as played by ‘Michelle Pfeiffer’. If a user wants the movie starring the specified actor entity Scarlett Johansson and the unspecified actor entity who played the specified role of Obi-Wan Kenobi in a specified movie entity ‘Star Wars’, the implicit entity is actor entity ‘Ewan McGregor’ and the resulting entity is the movie ‘The Island’ starting ‘Scarlett Johansson’ and ‘Ewan McGregor’. (Column 11, Line 47 to Column 12, Line 23) Barve et al., then, teaches determining based on a natural language query, “one or more additional entities that are not explicitly referenced in the free-form natural language input”, and it would be obvious to perform this task in a method and system with first and second content agents of the parent patent. An objective is to infer user input intent based on resolving input ambiguities. (Column 1, Lines 20 to 23) It would have been obvious to one having ordinary skill in the art to determine additional entities that are not explicitly referenced in free-form natural language input as taught by Barve et al. with first and second content agents of the independent claims of the parent patent for a purpose of inferring user input intent based on resolving input ambiguities.
Current claims 2 and 12 and corresponding claims 2 and 12 of the patent all set forth the limitations of wherein the second request has a second format that is disparate from a first format of the first request.
Current claims 3 and 13 and corresponding claims 3 and 13 of the patent all set forth the limitations of wherein the second request has second content that is disparate from first content of the first request.
Current claims 4 and 14 and corresponding claims 8 and 18 of the patent all set forth the limitations of wherein the first responsive text and the second responsive text are applied, on a token-by-token basis, to the trained generative model in generating the composite response.
Current claims 5 and 19 and corresponding claim 9 of the patent all set forth the limitations of wherein the user interface input is voice input.
Current claims 6 and 15 and corresponding claims 10 and 19 of the patent all set forth the limitations of wherein causing the client device to render the composite response as responsive to the user interface input from the user comprises: providing, by a remote component that is remote from the client device but in communication with the client device via a wide area network, the composite response; wherein the client device renders the composite response based on the composite response being provided by the remote component.
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 1 to 20 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 claims contain 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 inventors, at the time the application was filed, had possession of the claimed invention.
Independent claims 1 and 11 set forth limitations directed to “transmitting, to a first content agent, a first request that is based on the one or more additional entities that are not explicitly referenced in the free-form natural language input”, and “transmitting, to a second content agent, a second request that is disparate from the first request that is based on the one or more additional entities that are not explicitly referenced in the free-form natural language input”, which present issues of new matter under 35 U.S.C. §112(a). The Specification, ¶[0006], ¶[0049], and ¶[0057], does briefly describe natural language input that includes additional entities that are not explicitly referenced in the free-form natural language input, but does not support that a first request transmitted to a first content agent and a second request transmitted to a second content agent are “based on one or more additional entities that are not explicitly referenced in the free-form natural language input”. That is, it is maintained that while there is some support for determining entities that are not explicitly referenced in natural language input, there is no sufficient written description that these “additional entities that are not explicitly referenced” are transmitted in first and second requests to first and second content agents. Applicants may be able to retain the limitations directed to “determining, based on the free-form natural language input, one or more additional entities that are not explicitly referenced in the free-form natural language input”, and still obtain allowable subject matter, if they delete the limitations directed to transmitting, to a first content agent, a first request “that is based on the one or more additional entities that are not explicitly referenced in the free-form natural language input”, and transmitting, to a second content agent, a second request that is disparate from the first request “that is based on the one or more additional entities that are not explicitly referenced in the free-form natural language input”, which would appear to resolve the new matter rejection under 35 U.S.C. §112(a). However, additional search and/or consideration may be required subject to deletion of this new matter.
Allowable Subject Matter
Claims 1 to 6, 11 to 15, and 19 would be allowable if rewritten to overcome the rejection for new matter under 35 U.S.C. §112(a), and upon submission of an acceptable terminal disclaimer to overcome the obviousness double patenting rejection.
Claims 7 to 10, 16 to 18, and 20 would be allowable if rewritten to overcome the rejection for new matter under 35 U.S.C. §112(a), and if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Independent claims 1 and 11 appear allowable because the prior art of record does not disclose or reasonably suggest a complete combination of a method and system implemented by one or more processors comprising: receiving a free-form natural language input, the free-form natural language input being generated based on user interface input from a user at a client device; in response to receiving the free-form natural language input: determining, based on the free-form natural language input, one or more additional entities that are not explicitly referenced in the free-form natural language input; transmitting, to a first content agent, a first request that is based on the one or more additional entities that are not explicitly referenced in the free-form natural language input; transmitting, to a second content agent, a second request that is disparate from the first request and that is based on the one or more additional entities that are not explicitly referenced in the free-form natural language input; receiving first responsive text from the first content agent in response to transmitting the first request; receiving second responsive text from the second content agent in response to transmitting the second request; generating a composite response, generating the composite response comprising: applying the first responsive text and the second responsive text to a trained generative model, that is a sequence-to-sequence model, to generate a resulting decoding that indicates the composite response, and determining, based on the resulting decoding, the composite response; and causing the client device to render the composite response as responsive to the user interface input from the user.
Generally, the prior art of record does not reasonably suggest an entire combination that includes (a) receiving free-form natural language input from a user that is transmitted as a first request to a first content agent and a second disparate request to a second content agent, (b) generating a composite response by applying a trained generative model that is a sequence-to-sequence model, and (c) determining one or more additional entities that are not explicitly referenced in the natural language input. Specifically, none of the prior art of record reasonably teaches a complete combination that includes a sequence-to-sequence model as a generative model and determining one or more additional entities that are not explicitly referenced in the natural language input.
Dean (U.S. Patent Publication 2003.0233401) appears to remain the closest prior art of record and discloses generating a composite response from first and second content agents. However, Dean does not provide a sequence-to-sequence model as a generative model to generate a decoding of a composite response and does not respond to requests that include additional entities that are not explicitly referenced in natural language input. Barve et al. (U.S. Patent No. 8,577,671) teaches determining one or more additional entities that are not explicitly referenced in the free-form natural language input. However, Dean and Barve et al. do not disclose or teach a sequence-to-sequence model as a generative model to generate a composite response. The prior art of record does not provide a reasonable combination that addresses all of the limitations of the independent claims including a generative model that is a sequence-to-sequence model to generate a composite response.
The Specification, ¶[0006], ¶[0049], and ¶[0057], describes embodiments of user input without explicitly referencing attributes, e.g., ‘what do you think about configuring [entity of interest]’, ‘tell me about installing [entity of interest]’, and “chat” about the entity of interest, e.g., “what do you think about”, “tell me more about”, “how do you feel about”, “let’s chat about”.
The Specification, ¶[0003], states an objective of enabling users to more efficiently control an automated assistant to perform a technical task, and to reduce an amount of user-device interaction and associated use of computational resources.
Conclusion
The prior art made of record and not relied upon is considered pertinent to Applicants’ disclosure.
Krasadakis and Raiman et al. disclose related prior art.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARTIN LERNER whose telephone number is (571) 272-7608. The examiner can normally be reached Monday-Thursday 8:30 AM-6:00 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Richemond Dorvil can be reached on (571) 272-7602. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARTIN LERNER/Primary Examiner
Art Unit 2658 July 8, 2026
Prosecution Insights