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 13-14 and 17-20 are rejected under 35 USC 112(b) for the following reasons:
Claims 13 and 17 recite the following:
. . . a semantic parser, configured for performing. . .
. . . a word vector model, configured for performing. . .
. . . an input translation model, configured for translating. . .
. . . a semantic kernel module, configured for transforming . . .
. . . a prompt tuning module configured for receiving. . .
. . . a language identifier, configured for identifying . . .
Examiner finds the terms “input translation model. . .semantic kernel model. . . semantic parser. . . word vector model. . . language identifier. . . prompt tuning module” are generic placeholders similar to the word “module1” or “code”; Examiner further finds “configured for” is a linking phrase2; lastly, Examiner finds the generic placeholder is not modified by sufficient structure to perform the function. See MPEP 2181 (I). Thus, it appears Applicant has invoked 112(f) by using the quoted language above.
Because these claim limitations invoke 35 U.S.C. 112(f), these elements are interpreted to cover the corresponding structure described in the specification that achieves the claimed function, and equivalents thereof. See MPEP 2181. However, the written description fails to clearly link a corresponding structure, material, or acts for these claimed functions. See id (II)(C).
For computer implemented means plus function limitations, “a general purpose computer is usually only sufficient as the corresponding structure for performing a general computing function (e.g., ‘means for storing data’), but the corresponding structure for performing a specific function is required to be more than simply a general purpose computer or microprocessor.” MPEP 2181 (II)(B). The functions in the quoted claims are not general computing functions such as “storing”. See Id. As such, the specification “must include the algorithm needed to transform the general purpose computer or microprocessor disclosed in the specification.” Id. Because the specification does not clearly link an appropriate algorithm, the claim is rejected as being indefinite. See id (II)(C)
For a means- (or step-) plus- function claim limitation that invokes 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, a rejection under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph, is appropriate if one of ordinary skill in the art cannot identify what structure, material, or acts disclosed in the written description of the specification perform the claimed function.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
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.
Claim 12 is rejected under 35 USC 101 as being directed to software per se.
Claim 12 fails to recite any structural limitations. As such, it is rejected under 35 USC 101 as being directed to software per se. See MPEP 2106.03.
Response to Arguments
Applicant argues
Claim Rejection under 35 U.S.C. § 112(b)
Claims 1-20 stand rejected under 35 U.S.C. § 112(b). This rejection is respectfully traversed.
In view of the foregoing amendments, it is respectfully submitted that this rejection has been addressed.
In particular, claims 1, 12, and 13 were rejected under 35 U.S.C. §112(b) as being indefinite because "the inferences" term lacks an antecedent basis. Claims 1, 12, and 13 are amended to remove the definite article "the" according to the suggestions made by the Examiner. The indefinite issues are solved.
This argument is persuasive and this rejection is withdrawn.
Applicant further argues
Claims 13-20 were also rejected under 35 U.S.C. §112(b) as the Examiner finds the terms "input translation model... semantic kernel model .... semantic parser .... word vector model ...
language identifier...." are generic placeholders similar to the word "module" or "code", and "configured for" is a linking phrase. Applicant respectfully disagrees.
It is not clear whether Applicant agrees that 35 USC 112(f) is invoked. Examiner invites Applicant to make that clear on the record.
Applicant further argues
Firstly, it is described in paragraph [0035] that the manufacturer can set the entire query platform 10 on the electronic device 20.
It is not clear whether Applicant agrees with Examiner that 35 USC 112(f) is invoked. Examiner invites Applicant to make that clear on the record.
Examiner finds electronic device 20 described in paragraph 35 is a general purpose computer. A general purpose computer alone cannot provide sufficient structure for means plus function computer implemented claim limitations. See below.
For a computer-implemented 35 U.S.C. 112(f) claim limitation, the specification must disclose an algorithm for performing the claimed specific computer function, or else the claim is indefinite under 35 U.S.C. 112(b).”
MPEP 2181.
For computer implemented means plus function limitations a general purpose computer is usually only sufficient as the corresponding structure for performing a general computer function. . . but the corresponding structure for performing a specific function is required to be more than simply a general purpose computer or microprocessor.”
Non-Final Action at page 3 line 20 through page 4 line 4 (quoting MPEP 2181, emphasis added).
Here, the quoted functions are not general purpose computing functions. As such, Applicant’s argument that the corresponding, sufficient structure for each element is a general purpose computer (i.e. an electronic device) is not persuasive. If it is Applicant’s position that 112(f) is not invoked, then Examiner invites Applicant to put that argument on the record.
Applicant argues
Moreover, paragraphs [0016], [0042], [0050] and [0069] of the specification already implicitly or inherently disclose the corresponding structure, material, or acts and clearly link them to the recited functions.
None of the cited paragraphs link any algorithm to corresponding limitations in the claim. They merely disclose computer hardware (i.e. general purpose computers). Applicant’s argument is not persuasive.
Applicant argues
For the sake of comparison, the correspondences between the terms concerned by the Examiner and the paragraphs related to the structure, material, or acts of these terms are listed below.
Computer implemented means plus function limitations cannot rely on general purpose computers as sufficient structure for purposes of 35 USC 112(f) and 35 USC 112(b). See above. The correspondences illustrated in Applicant’s remarks merely show general purpose computer components. They do not disclose algorithms. Applicant’s argument is not persuasive.
Again, in order to overcome this rejection, Examiner recommends amending the claim such that 35 USC 112(f) is not invoked. For example, “a processor configured for performing sentence decomposition . . a processor configured for performing data vectorization” etc. This would eliminate the requirement of linking an algorithm in the specification to every means plus function limitation in the claim. Explicitly adding computer hardware to each claim makes it clear that 112(f) is not invoked. Examiner invites Applicant to make it clear on the record whether 112(f) is invoked.
Applicant further argues
Claim 12 was rejected under 35 U.S.C. §101 as being directed to software per se. Claims 1-3, 7-15, and 17-20 were rejected under 35 U.S.C. §101 because the Examiner considers that the claimed invention was directed to an abstract idea without significant more. These rejections are respectfully traversed.
In response, claim 12 is amended by adding features similar to the amended claim 1, which renders the Examiner's rejection made to claim 12 moot.
It is unclear how the amendments make claim 12 patent eligible. There are no hardware elements in claim 12. “A computer program product storing therein a software program, the software program performing an instruction query method comprising steps of” is not one of the four statutory categories of invention. The remaining elements in claim 12 do not recite computer hardware. Examiner recommends adding a processor and a memory to this claim to overcome this rejection.
Applicant’s remaining arguments with respect to claims 1-2 and 5-11 are persuasive. They are allowed.
Allowable Subject Matter
Claims 1-2 and 5-11 are allowed.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ALBERT M PHILLIPS, III whose telephone number is (571)270-3256. The examiner can normally be reached 10a-6:30pm EST M-F.
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, Ann J Lo can be reached at (571) 272-9767. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ALBERT M PHILLIPS, III/Primary Examiner, Art Unit 2159
1 See MPEP 2181:
In addition, merely referencing a specialized computer (e.g., a "bank computer"), some undefined component of a computer system (e.g., "access control manager"), "logic," "code," or elements that are essentially a black box designed to perform the recited function, will not be sufficient because there must be some explanation of how the computer or the computer component performs the claimed function.
Internal citations omitted.
2 See id
. . .
((B) the term "means" or "step" or the generic placeholder is modified by functional language, typically, but not always linked by the transition word "for" (e.g., "means for") or another linking word or phrase, such as "configured to"
. . .