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 § 101
1. 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 21-40 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Each of the independent claims recites steps that result in a person listens to calls and determines relevance between call content and topic categories of the call that are contextually similar and generates list of speakers. This appears to be a general purpose computer, for example a processor, processing units, a system, with no significantly more specialized elements. All of the recited steps are processes that, under its broadest reasonable interpretation, covers the limitations under the organized human activity. Other than reciting “A system”, “a memory”, “a processor” nothing in the claim element precludes the steps away from organizing human activity. The claims recite multi-dimensional vector and machine learning model but lack of detail in the claims as to the form of the machine learning model (e.g., layers, nodes, etc. and what they do) and how the ML model actually used to determine the relevance of content of the contact to a topic; and multi-dimensional vector is nothing more than a matrix and it can be calculated using paper and pen.
The claim features in italics above as drafted, under its broadest reasonable interpretation, are certain methods of organizing human activity performed by generic computer components. That is, other than reciting “A system”, “a memory”, “a processor”, nothing in the claim element precludes the step from practically being a method of organized human activity. For example, but for the “receiving” [human behavior: collecting, accepting], “generating” [human behavior: to cause or create] and “updating” [human behavior: revising or giving latest information], “identifying” [human behavior: recognizing, spotting], “retrieving” [human behavior: recovering, reclaiming] in the context of this claim encompasses methods of organized human activity. If the claim limitations, under its broadest reasonable interpretation, covers fundamental economic practice, commercial or legal interaction or managing personal behavior or relationships or interactions between people but for the recitation of generic computer components, then it falls within the "process of organized human activity" grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claim only recites one additional element: “A system”, “a memory”, “a processor”. The processor comprising one or more processing units is recited at a high-level of generality such that it amounts to no more than mere instructions in memory and executed by a processor to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
"[A]fter determining that a claim is directed to a judicial exception, 'we then ask, [w]hat else is there in the claims before us?"' MPEP 2106.05 (emphasis in MPEP) citing Mayo, 566 U.S. at 78. "What is needed is an inventive concept in the non-abstract application realm." SAP Inc. v. lnvestPic, LLV, Appeal No. 2017-2081 (Fed. Cir. 2018). For step two, the examiner must "determine whether the claims do significantly more than simply describe [the] abstract method" and thus transform the abstract idea into patent-eligible subject matter. Ultramercial, Inc. v. Hutu, LLC, 772 F.3d 709 (Fed. Cir. 2014).
A primary consideration when determining whether a claim recites "significantly more" than abstract idea is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. See MPEP 2106.0S{d). "If the additional element (or combination of elements) is a specific limitation other than what is well- understood, routine and conventional in the field, for instance because it is an unconventional step that confines the claim to a particular useful application of the judicial exception, then this consideration favors eligibility. If, however, the additional element {or combination of elements) is no more than well-understood, routine, conventional activities previously known to the industry, which is recited at a high level of generality, then this consideration does not favor eligibility." Id.
The Federal Circuit has held that "[w]hether something is well-understood, routine, and conventional to a skilled artisan at the time of the patent is a factual determination." Bahr, Robert (April 19, 2018). Changes in Examination Procedure Pertaining to Subject Matter Eligibility, Recent Subject Matter Eligibility Decision (Berkheimer v. HP, Inc.) citing Berkheimer at 1369. "As set forth in MPEP 2106.05(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. This memo [] clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III [of the memo]." Berkheimer Memo at 3 (emphasis in memo).
Generally, "[i]f a patent uses generic computer components to implement an invention, it fails to recite an inventive concept under Alice step two." West View Research v. Audi, CAFC Appeal Nos. 2016-1947-51 (Fed. Cir. 04/19/2017) citing Mortg. Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324-25 (Fed. Cir. 2016) (explaining that "generic computer components such as an 'interface,' 'network,' and 'database' ... do not satisfy the inventive concept requirement"; but see Bascom (finding that an inventive concept may be found in the non-conventional and non-generic arrangement of the generic computer components, i.e., the installation of a filtering tool at a specific location, remote from the end- users, with customizable filtering features specific to each end user).
In accordance with the above guidance, the examiner has searched the claim(s) to determine whether there are any "additional elements" in the claims that constitute "inventive concept," thereby rendering the claims eligible for patenting even if they are directed to an abstract idea. Alice, 134 S. Ct. 2347 (2014). Those "additional features" must be more than "well understood, routine, conventional activity." See Alice. To note, "under the Mayo/Alice framework, a claim directed to a newly discovered ... abstract idea [] cannot rely on the novelty of that discovery for the inventive concept necessary for patent eligibility." Genetic Techs. Ltd v. Merial LLC, 818 F.3d 1369, 1376 (Fed. Cir. 2016); Diamond v. Diehr, 450 U.S. 175, 188-89 (1981).
As an example, the Federal Circuit has indicated that "inventive concept" can be found where the claims indicate the technological steps that are undertaken to overcome the stated problem(s) identified in Applicant's originally-filed Specification. See Trading Techs. Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017); but see IV v. Erie Indemnity, No. 2016-1128 (Fed. Cir. March 7, 2017) ("The claims are not focused on how usage of the XML tags alters the database in a way that leads to an improvement in technology of computer databases, as in Enfish.") (emphasis in original) and IV. v. Capital One, Nos. 2016-1077 (Fed. Cir. March 7, 2017) ("Indeed, the claim language here provides only a result-oriented solution, with insufficient detail for how a computer accomplishes it. Our law demands more. See Elec. Power Grp., 830 F.3d 1356 (Fed. Cir. 2016) (cautioning against claims 'so result focused, so functional, as to effectively cover any solution to an identified problem.')"). Furthermore, "[a]bstraction is avoided or overcome when a proposed new application or computer-implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement to the capability of the system as a whole." Trading Techs. Int'l, Inc. v. CQG, Inc., No. 2016-1616 (Fed. Cir. 2017) (emphasis added).
In the search for inventive concept, the Berkheimer Memo describes "an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
A citation to one or more of the court decisions discussed in the MPEP as noting the well-understood, routine, conventional nature of the additional element(s).
A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
Accordingly, the examiner refers to the following generically-recited computer elements with their associated functions (and associated factual finding(s)), which are considered, individually and in combination, to be routine, conventional, and well-understood:
“a computer-implemented method for determining a contact associated with a context, comprising:”,
“a system comprising:”
“a computer-implemented method comprising:”
As set forth in MPEP § 2106.0S(d)(I), an examiner should conclude that an element (or combination of elements) represents well-understood, routine, conventional activity only when the examiner can readily conclude that the element(s) is widely prevalent or in common use in the relevant industry. The Berkhiemer memo clarifies that such a conclusion must be based upon a factual determination that is supported as discussed in section III the memo. As seen in paragraphs ([28, 99, 104, 111]) of the instant Specification and Symantec.. 838 F.3d at 1.321, 110 USPQ2d at. 1362, the elements are viewed to be well-understood, routine and conventional.
In sum, the Examiner finds that the claims "are directed to the use of conventional or generic technology in a nascent but well-known environment, without any claim that the invention reflects an inventive solution to any problem presented by combining the two." In re TLI Communications LLC, No. 2015-1372 (May 17, 2016). Similar to the claims in SAP v. lnvestPic, "[t]he claims here are ineligible because their innovation is an innovation in ineligible subject matter." Appeal No. 2017-2081 (Fed. Cir. 2018). In other words, "the advance lies entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm." Id. Accordingly, when considered individually and in ordered combination, the examiner finds the claims to be directed to in-eligible subject matter.
Next, it is determined whether the claim integrates the judicial expectation into a practical application by identifying whether “any additional elements recited in the claim beyond the judicial exception(s)” and evaluate those elements to determine whether the integrate the judicial exception into a recognized practical application.
In this case, the additional elements do not integrate the judicial application into a practical application. The claim does not recite (i) an improvement to the functionality of a computer or other technology or technical field ; (ii) a "particular machine" to apply or use the judicial exception; (iii) a particular transformation of an article to a different thing or state; or (iv) any other meaningful limitation.
The additional elements beyond the judicial exception are (i) by a computer comprising a processor, memory storage and instruction program. Using a computing device to identify and determine a value and disposition of an object is merely applying the judicial exception using a generic computing component. Additionally, the claim identifies and determines a value and disposition of an object - the claim does not improve the functioning of the computing device, or other technology or field.
The claims do not recite specific limitations (alone or when considered as an ordered combination) that were not well understood, routine, and conventional. As set forth in the Specification, the disclosed subject matter can be implemented as a method, apparatus, or article of manufacture using standard programming and/or engineering techniques to produce software, firmware, hardware, or any combination thereof to control a computer to implement the disclosed subject matter.
Dependent claims 22-28, 30-36, and 38-40 include further recited limitations, do not integrate the abstract idea into a practical application, and the additional elements taken individually and in combination, do not contribute to an inventive concept, In other words, the dependent claims are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 112
2. 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.
Regarding claims 21, 29, and 37, the phrase "likelihood" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "likelihood"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). Dependent claims 22-28, 30-36, and 38-40 inherit the same defect(s).
Double Patenting
3. 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 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.
4. Claims 21-40 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,183,325. Although the claims at issue are not identical, they are not patentably distinct from each other because all the claimed limitations recited in the present application are broader and transparently found in the U.S. Patent 12,183,325 with obvious wording variations. When claims in the pending application are broader than the ones in the patent, the broad claims in the pending application are rejected under obviousness type double patenting over previously patented narrow claims, In re Van Ornum and Stang, 214 USPQ 761. Also, omission of an element and its function in a combination is an obvious expedient if the remaining elements perform the same functions as before. In re KARLSON (CCPA) 136 USPA 184 (1963).
U.S. Patent Application 19/005,542
US Patent 12,183,325
21.A computer-implemented method for determining a contact associated with a context, comprising:
A computer-implemented method for determining a contact associated with a context, the method comprising:
receiving a search query, wherein the search query specifies a first contact as a condition of a search;
receiving a search query, wherein the search query specifies a first contact as a condition of a search;
generating a first topic vector of the first contact, wherein the first topic vector represents a context of the first contact, wherein the first topic vector represents a multi-dimensional vector comprising dimensions that correspond at least to likelihood values, a likelihood value represents a relevance of content of the first contact to a topic, and the relevance is determined using a machine-learning model;
generating a first topic vector of the first contact, wherein the first topic vector represents a context of the first contact, wherein the first topic vector is a multi-dimensional vector comprising dimensions that correspond to topic categories and likelihood values, wherein a likelihood value represents a relevance of to a topic, and wherein the relevance is determined using a machine-learning model;
identifying, based on the first topic vector, a second contact;
identifying, based on an angular distance of vectors including the first topic vector, a second contact in a contact content database;
retrieving, based on the identified second contact, the contact, wherein the contact includes a speaker of the contact; and
retrieving, based on the identified second contact, the contact, wherein the contact includes a speaker of the contact; and
generating, a list of speakers, wherein the list of speakers comprises the speaker of the contact.
transmitting the contact as a result of the search query.
The examiner also notes that claims 22, 23, 24, 25, 26, 27, 28, 29, 30, 31, 32, 33, 34, 35, 36, 37, 38, and 39 of the ‘542 Application corresponds to Claims 2, 3, 4, 5, 6, 7, 8, 9, 10, 11, 12, 14, 15, 16, 17, 18, 19, and 20 of the ‘325 patent, respectively.
Allowable Subject Matter
5. The following is an examiner’s statement of reasons for allowance:
Cartwright et al. (2018/0027123) teaches conference searching and playback of search results. The audio data may include conference participant speech data from multiple endpoints, recorded separately and/or conference participant speech data from a single endpoint corresponding to multiple conference participants and including spatial information for each conference participant of the multiple conference participants. A search of the audio data may be based on one or more search parameters. The search may be a concurrent search for multiple features of the audio data.
Eksombatchai et al. (US Patent 10,671,672) teaches systems and methods that facilitate generating recommendations by traversing a node graph. For example, a cluster of nodes in a node graph may be determined for a target node in the node graph based at least in part on a proximity of the nodes in the cluster to the target node in the node graph.
As to claims 21, 29, and 37, prior arts of record fail to teach, or render obvious, alone or in combination a computer-implemented method for determining a contact associated with a context, and a system comprising the claimed components, relationships, and functionalities as specifically recited in claims 21, 29, and 37.
Any comments considered necessary by applicant must be submitted no later than the payment of the issue fee and, to avoid processing delays, should preferably accompany the issue fee. Such submissions should be clearly labeled “Comments on Statement of Reasons for Allowance.”
6. Claims 21-40 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, 35 U.S.C. 112 (pre-AIA ), second paragraph, and terminal disclaimer(s) filed to overcome the double patenting rejection(s), set forth in this Office action.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to QUYNH H NGUYEN whose telephone number is (571)272-7489. The examiner can normally be reached Monday-Friday 7:30AM-3:30PM.
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, Ahmad Matar can be reached on 571-272-7488. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/QUYNH H NGUYEN/Primary Examiner, Art Unit 2693
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