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 .
DETAILED ACTION
This communication is in response to the Request for Continued Examination for filed on 06/25/2026 for the application No. 18/969,517, Claims 1, 4-12, 15-18 and 21 are currently pending and have been examined. Claims 1, 4-12, 15-18 and 21 have been rejected.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 06/25/2026 has been entered.
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, 365(c), or 386(c) is acknowledged. Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C. Applicant filed certified patent document, Application number 2016-011663 on 04/23/2018 on parent case 15/770,297. However, a translation of said application has not been made of record in accordance with 37 CFR 1.55. See MPEP paragraphs 215 and 216.
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 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The 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/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1, 4-12, 15-18 and 21 are rejected on the ground of nonstatutory double patenting as being anticipated over claims 1, 7-8, 10-13 of US Patent No. 12,182,833.
Claims 1, 12 and 18 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1, 9 and 17 of Patent No. 12,182,833. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claim 4 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 3 of Patent No. 12,182,833. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claim 7 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 2 of Patent No. 12,182,833. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claim 9 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 4 of Patent No. 12,182,833. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claim 10 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 6 of Patent No. 12,182,833. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
Claim 11 is rejected on the ground of nonstatutory double patenting as being unpatentable over claim 8 of Patent No. 12,182,833. Although the claims at issue are not identical, they are not patentably distinct from each other because the reference claim anticipates the claims under examination.
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, 4-12, 15-18 and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1, 4-12, 15-18 and 21 are not compliant with 101, according with the last “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), published in the MPEP 2103 through 2106.07(c). Examiner’s analysis is presented below for all the claims.
Claim 12: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites an apparatus (a system).
Step 2A - Prong 1: Is a Judicial Exception recited in the claim? Yes. The claim recites the limitations of “generating, …. a first piece of vocalized speech data based on text information …. in association with the piece of advertisement; generating, … a second piece of vocalized speech data for presenting content of the piece of advertisement to the user based on a reaction to the first piece of vocalized speech data by the user, …. to determine the reaction based on a relationship between the piece of advertisement and content of a dialogue session …. to determine the reaction by identifying a question sentence of the user in the dialogue session, the question sentence of the user being related to the piece of advertisement;”
The “generating” limitations, as drafted, is a process and system that, under its broadest reasonable interpretation, covers performance of the limitations as certain methods of organizing human activity, advertising, marketing or sales activities or behaviors. The system for proposing advertisements to users on the internet. Thus, the claim recites an abstract idea.
Step 2A - Prong 2: Integrated into a Practical Application? No. The claim recites additional limitations, such as,
“ identifying, … a piece of advertisement … as targeting a user according to a preference of the user …; transmitting, … the first piece of vocalized speech data …; transmitting, … the second piece of vocalized speech data …. wherein the second piece of vocalized speech data is inserted into an answer sentence …, the answer sentence … corresponding to the question sentence of the user”. These are limitations toward accessing or receiving data. It is merely gathering data. The Examiner analyses other supplementary elements in the claim in view of the instant disclosure:
“by processing circuitry, stored in a first storage; stored in a second storage; by the processing circuitry over a communication network; to a client terminal of the user; wherein the processing circuitry is further configured ; of a voice agent”
The limitations comprise generic recited computer elements and software including data manipulation functions. The use of a “the processing circuitry over a communication network” and a “voice agent” is not sufficient to integrate the abstract idea because it merely reflects the use of conventional technology and amounts to only generally linking the use of an abstract idea to a particular technological environment. MPEP 2106.05(h).
So, the combination of the above pointed out additional elements can be considered no more than mere instructions “to apply” the exception, See MPEP 2106.05(f).
The Examiner gives the broadest reasonable interpretation to the above elements. They are insignificant extra-solution activity. See MPEP 2106.05(g).
Step 2B : claim provides an inventive concept? No.
As discussed with respect to Step 2A Prong Two, the additional elements in the claim,
“by processing circuitry, stored in a first storage; stored in a second storage; by the processing circuitry over a communication network; to a client terminal of the user; wherein the processing circuitry is further configured ; of a voice agent” amount to no more than mere instructions to apply the exception. i.e., mere instructions to apply an exception using generic hardware and software cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B.
Under the 2019 PEG, a conclusion that an additional element is insignificant extra-solution activity in Step 2A should be re-evaluated in Step 2B.
Here, the limitations: “ identifying, … a piece of advertisement … as targeting a user according to a preference of the user …; transmitting, … the first piece of vocalized speech data …; transmitting, … the second piece of vocalized speech data …. wherein the second piece of vocalized speech data is inserted into an answer sentence …, the answer sentence … corresponding to the question sentence of the user”. These are limitations toward accessing or receiving data (gathering data). Accessing or receiving data is very well understood, routine and conventional computer task activity; It represents insignificant extra solution activity. Mere data-gathering step[s] cannot make an otherwise nonstaturory claim statutory In re Grams,888 F.2d 835, 840 (Fed. Cir. 1989) (quoting In re Meyer, 688 F.2d 789, 794 (CCPA 1982)).
Further, the instant specification does not provide any indication that the elements
“by processing circuitry, stored in a first storage; stored in a second storage; by the processing circuitry over a communication network; to a client terminal of the user; wherein the processing circuitry is further configured ; of a voice agent” are anything other than generic software and hardware, and the OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); and v. Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; court decisions cited in MPEP 2106.05(d)(II) indicate that merely computer receives and sends information over a network and presenting or displaying information, is a well‐understood, routine, conventional function when it is claimed in a merely generic manner (as it is here).
Accordingly, a conclusion that the “by processing circuitry, stored in a first storage; stored in a second storage; by the processing circuitry over a communication network; to a client terminal of the user; wherein the processing circuitry is further configured ; of a voice agent”, limitations are well-understood, routine, conventional activity is supported under Berkheimer Option 2. See MPEP 2106.05 (d).
The Examiner notes that from the instant specification it is not very clear how is generated a second piece of vocalized speech data. Per Figs. 7, 15 and 16 and associated disclosure, it seems that it is a piece of text retrieved from a database. Again, these limitations are well-understood, routine, conventional activity is supported under Berkheimer Option 2. See MPEP 2106.05 (d). The claim is ineligible.
Claim 1: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites an apparatus.
Step 2A - Prong 1: Is a Judicial Exception recited in the claim ? Yes. Because the same reasons pointed above.
Step 2A - Prong 2: Integrated into a Practical Application? No. Because the same reasons pointed above.
Step 2B : claim provides an inventive concept? No. Because the same reasons pointed above. The claim is ineligible.
Claim 18: Step 1 of 2019 PGE, does the claim fall within a Statutory Category? Yes. The claim recites a computer-readable medium.
Step 2A - Prong 1: Is a Judicial Exception recited in the claim ? Yes. Because the same reasons pointed above.
Step 2A - Prong 2: Integrated into a Practical Application? No. Because the same reasons pointed above.
Step 2B : claim provides an inventive concept? No. Because the same reasons pointed above. The claim is ineligible.
Dependent claims 4-11, 15-17, and 21, the claims recite elements such as “wherein the processing circuitry is further configured to transmit the first piece of vocalized speech data or the second piece of vocalized speech data based on a probability factor stored in the first storage associated with the piece of advertisement”, etc. These elements do not integrate the system of organizing human activity into a practical application. The claims are ineligible.
Allowable Subject Matter
Regarding to 103 rejection of Claims 1, 4-12, 15-18 and 21, the closest prior art of record is US Patent No. US PG. Pub. No. 20150134456 ( BALDWIN) in view of US PG. Pub. No. 20120164613 (Jung), but the references fail to teach at least:
generate a second piece of vocalized speech data for presenting content of the piece of advertisement to the user based on a reaction to the first piece of vocalized speech data by the user, wherein the processing circuitry is further configured to determine the reaction based on a relationship between the piece of advertisement and content of a dialogue session with the client terminal of the user, the processing circuitry being configured to determine the reaction by identifying a question sentence of the user in the dialogue session, the question sentence of the user being related to the piece of advertisement,
Claims 1, 4-12, 15-18 and 21 would be allowed if Applicant can overcome the nonstatutory double patenting and 101 rejections found in the instant action.
Note: allowance subject to the completion of all the mandatory searches for allowance “In the examination of an application for patent, an examiner must conduct a thorough and complete search of the prior art.”, see MPEP 904 and 719.
Response to Arguments
Applicant’s arguments of 6/25/2026 have been very carefully considered.
Regarding to 101 compliance, Claims 1, 4-12, 15-18 and 21 are not compliant with 101, according with the last "2019 Revised Patent Subject Matter Eligibility Guidance" (2019 PEG), published in the MPEP 2103 through 2106.07(c).
Accordingly, a conclusion that the “by processing circuitry, stored in a first storage; stored in a second storage; by the processing circuitry over a communication network; to a client terminal of the user; wherein the processing circuitry is further configured ; of a voice agent”, limitations (pointed above) are well-understood, routine, conventional activity is supported under Berkheimer Option 2. See MPEP 2106.05 (d). The Examiner notes that from the instant specification it is not clear how is generated a second piece of vocalized speech data. Per Figs. 7, 15 and 16 and associated disclosure, it seems that it is a piece of text retrieved from a database. Again, these limitations are well-understood, routine, conventional activity is supported under Berkheimer Option 2. See MPEP 2106.05 (d). therefore, the claims are ineligible.
Applicant argues (remarks 9-10)
In response to the aforementioned double patenting rejection, Applicant submits
herewith a terminal disclaimer over U.S. Patent No. 12,182,833. The filing of a terminal
disclaimer to obviate a rejection based on nonstatutory double patenting is not an admission
of the propriety of the rejection. 'l11e "filing of a terminal disclaimer simply serves the
statutory Junction of removing the rejection of doble patenting, and raises neither a
presumption nor estoppe1 on the merits of the rejection." Quad Drvtronmental Technologies
Corp. v. Union Sanitary District, 946 F.2d 870, 20 tJSPQ2d 1392 (Fed. Cir. 1991).
Accordingly, the filing of the attached disclaimer is provided for facilitating a timely
resolution to prosecution only, and should not be interpreted as an admission as to the merits
of the obviated rejection….
The Examiner do not see in the application data record of the mentioned Terminal disclaimer and its corresponding Office approval.
Applicant argues (remarks 11-12)
Consequently, the combination of Baldwin and Jung does not (and cannot) disclose, suggest, or render obvious, at least…Accordingly, Applicant respectfully submits that Baldwin and Jung do not describe, suggest, or render obvious all of the features of independent Claim 1 .
In response the Examiner has indicated that the claims are allowable subject to overcoming 101 rejection y double patenting rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
“Building Autonomous Sensitive Artificial Listeners”. IEEE. 2012.
“This paper describes a substantial effort to build a real-time interactive multimodal dialogue system with a focus on emotional and nonverbal interaction capabilities. The work is motivated by the aim to provide technology with competences in perceiving and producing the emotional and nonverbal behaviors required to sustain a conversational dialogue. We present the Sensitive Artificial Listener (SAL) scenario as a setting which seems particularly suited for the study of emotional and nonverbal behavior since it requires only very limited verbal understanding on the part of the machine. This scenario allows us to concentrate on nonverbal capabilities without having to address at the same time the challenges of spoken language understanding, task modeling, etc. We first report on three prototype versions of the SAL scenario in which the behavior of the Sensitive Artificial Listener characters was determined by a human operator. These prototypes served the purpose of verifying the effectiveness of the SAL scenario and allowed us to collect data required for building system components for analyzing and synthesizing the respective behaviors. We then describe the fully autonomous integrated real-time system we created, which combines incremental analysis of user behavior, dialogue management, and synthesis of speaker and listener behavior of a SAL character displayed as a virtual agent. We discuss principles that should underlie the evaluation of SAL-type systems. Since the system is designed for modularity and reuse and since it is publicly available, the SAL system has potential as a joint research tool in the affective computing research community.”
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARIA VICTORIA VANDERHORST whose telephone number is (571)270-3604. The examiner can normally be reached on business hours from Monday through Friday from 8:30 AM to 4:30 PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ashraf Waseem can be reached on 571-270-3948. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARIA V VANDERHORST/Primary Examiner, Art Unit 3621 7/10/2026
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