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 .
Examiner’s Remarks
By analyzing claim limitations according to MPEP (§2106), it is determined that the instance claims do not direct to a judicial exception but direct to a practical application.
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 pre-AIA the applicant regards as the invention.
MPEP (2173.02) states that “During prosecution, applicant has an opportunity and a duty to amend ambiguous claims to clearly and precisely define the metes and bounds of the claimed invention. The claim places the public on notice of the scope of the patentee’s right to exclude.”. “The Office construes claims by giving them their broadest reasonable interpretation during prosecution in an effort to establish a clear record of what the applicant intends to claim. Such claim construction during prosecution may effectively result in a lower threshold for ambiguity than a court's determination. The lower threshold is applied because the patent record is in development and not fixed during examination”.
Independent claim 1 recites a limitation:
“generating a composite set of search results including at least a portion of the first set of search results and the second set of search results having a relevance score satisfying a relevance metric;”
The above limitation could be interpreted differently for a phrase “having a relevance score satisfying a relevance metric”. The phrase “having…” could modify different search results.
Interpretation #1:
A literal meaning is that the subject words are “the second set of search results”. The limitation is reasonably interpreted as: “the second set of search results having a relevance score satisfying a relevance metric”.
Interpretation #2:
In a following limitation (or in dependent claim 2), the claim further states “the composite set of search results satisfying the relevance metric”. Therefore, the subject words refer to “a composite set of search results”. The limitation could be interpreted as “a composite set of search results having a relevance score satisfying a relevance metric”
By reviewing the disclosure (Spec. [0003-0004]), the claimed “a composite set of search results”, “a first set of search results”, and “a second set of search results” have their respective relevant scores and metrics (Spec. [0232], also see a dependent claim 2). Since the above claim limitation could interpreted differently in light of the disclosure, the claimed scope of claim 1 is ambiguous.
Independent claims 9 and 16 have a similar issue. Dependent claims 2-8, 10-15 and 17-20 include all limitations of their corresponding independent claims. All claims are rejected.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection under 35 U.S.C. 112(b) set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
Independent claims recite ordered limitations related to generating a draft message (e.g., a draft for replying an email). The claimed inventions were based on an illustration (Fig. 2). The content is generated by prompting a large language model (claimed “a generative output engine”) with two pieces of information as a prompt. One piece of information is defined as “the proposed product action” obtained from a product model. Another piece of information is “the composite set of search results”, which is obtained by combining “a first set of search results” and “a second set of search results” based on a relevance metric. Both the first search results and the second search results are defined by specific antecedent limitations (“obtaining the first set of search results from …” / “obtaining the second set of search results from …”).
After performing extensive searches, the examiner disclosed several prior art references with similar inventive concepts. These prior art references disclose generating email messages or replying messages using a large language model (LLM) by providing various information as a prompt to the LLM for generating a content / message. For example,
Zaremba et al. (US Pat. 12,568,061) discloses using a large language model (LLM) to generate email messages. Zaremba discloses creating a prompt to the LLM by including different context information (Col. 10, lines 1-30, Col. 13-14, Fig. 14A-14E). Although Zaremba discloses an inventive concept similar to that of the instant claims, Zaremba does not meet the ordered and specific limitations recited in each of independent claims.
Grimshaw et al. (US Pat. 11947,902) discloses drafting a reply message using a generative AI model. Grimshaw discloses providing various information as prompts to the generative AI model to generate reply email messages (Fig. 2, Col. 7, lines 5-30; Col. 10, lines 20-36). Although Grimshaw discloses a similar concept, Grimshaw could not meet the ordered limitations recited in each of instant independent claims.
Tsvetkov et al. (US PG Pub. 2025/0133042) discloses generating customized email by using a large language model (LLM). Tsvetkov discloses generating a prompt for the LLM by including various information ([0018-0022], Fig. 1). Tsvetkov does not meet the ordered limitations recited in each of independent claims.
When considering all limitations recited in each of independent claims as a whole, prior art of record, either alone or in combination, does not teach or suggest the specific and ordered limitations. Therefore, prior art of record fails to anticipate or render obvious the claimed invention. Dependent claims further limit their corresponding independent claims. All dependent claims are also allowable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The examiner discovered several relevant prior art references that are related to one or more concepts disclosed by the instant application. These references are included in the attached PTO-892 form for completeness of the record.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jialong He, whose telephone number is (571) 270-5359. The examiner can normally be reached on Monday – Friday, 8:00AM – 4:30PM, EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Pierre Desir can be reached on (571) 272-7799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JIALONG HE/Primary Examiner, Art Unit 2659
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