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 .
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, or 365(c) is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/03/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 obviousness-type 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); and 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 a nonstatutory double patenting ground provided the conflicting application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement.
Effective January 1, 1994, a registered attorney or agent of record may sign a terminal disclaimer. A terminal disclaimer signed by the assignee must fully comply with 37 CFR 3.73(b).
Claims 1-20 are rejected on the ground of non-statutory obviousness-type double patenting as being unpatentable over claims 1-20 of a parent patent (US Pat. 12,243,536) and over claims 1-18 of its grandparent patent (US Pat. 11,763,823).
Although the conflicting claims are not identical, they are not patentably distinct from each other because in this continuation application, applicant broadened claims of ‘536 parent patent and claims of ‘823 grandparent patent by deleting certain limitations / reciting limitations using broader language. In other words, a corresponding claim of the parent patent anticipates the instant claims. Anticipation is “the ultimate or epitome of obviousness” (In re Kalm, 154 USPQ 10 (CCPA 1967), also In re Dailey, 178 USPQ 293 (CCPA 1973) and In re Pearson, 181 USPQ 641 (CCPA 1974)). As an example, the following is a comparison between claim 1 of instant application and the claim 1 of ‘536 parent patent:
Claim 1 of the instant application
Claim 1 of a parent patent (12,243,536)
receive a transcription of a conversation, the conversation being ongoing between a plurality of participants including a given participant, the transcription received as the conversation continues;
receive a transcription of a conversation, the conversation being ongoing between a plurality of participants and the transcription received as the conversation continues;
(omitting a limitation to broaden claim)
identify each participant of the plurality of participants;
select a machine learning model for the given participant based on a profile of the given participant; (broadened by removing certain features)
access a plurality of machine learning models, each machine learning model selected for a corresponding
participant based on a respective profile of the corresponding participant;
apply, as input to the selected machine learning model, the transcription on an ongoing basis as the conversation continues;
apply, as input to each machine learning model of the plurality of machine learning models, the transcription on an ongoing basis as the conversation continues;
receive, as output from the selected machine learning model, a portion of the transcription having relevance to the given participant;
receive, as output from each respective machine learning model, a respective portion of the transcription having
relevance to its respective participant;
generate for display, to the given participant, on an ongoing basis as the conversation from which the transcription was received continues, information pertaining to the portion, the information tailored to the given participant based on the portion output by the selected machine learning model. (Broadened by deleting certain features)
generate for display, to each respective participant, on an ongoing basis as the conversation from which the transcription was received continues, respective information pertaining to the respective portion, each respective information tailored to each respective participant based on the respective portion output by the respective machine learning model.
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.
The Manual of Patent Examining Procedure (MPEP) provides detailed rules for determining subject matter eligibility for claims in §2106. Those rules provide a basis for the analysis and finding of ineligibility that follows. MPEP §2106(III) states that examiners should determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the flowchart in this section.
Claims 1-20 are rejected under 35 U.S.C. §101. The claimed invention is directed to unpatentable subject matter because the claimed invention recites a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The examiner analyzes the instant claims according to a flowchart for subject matter eligibility test for products and processes (MPEP 2106).
Eligibility Step 1 (MPEP 2106.03, Statutory category):
Claims 1-8 are directed to a non-transitory computer readable medium, claims 9-16 are directed to a method and claims 17-20 are directed to a system. The claims 1-20 fall into one of the four statutory categories of invention (YES branch of step 1).
Eligibility Step 2A, Prong One (does a claim recites a judicial exception?) (MPEP 2106.04(a) – (c)):
Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception (See a flowchart in MPEP 2106.04(II)(A)). In the prone one of the two prong inquiry, the above limitations recited in claims are directed to at least one of groups of abstract ideas (MPEP 2106.04(a), “Mathematical concepts”, “Certain methods of organizing human activity”, “Mental Processes”). It should be noted that these groupings are not mutually exclusive, i.e., some claims recite limitations that fall within more than one grouping or sub-grouping (MPEP 2106.04(a)(2)).
Although claims 1-20 fall into one of the four statutory categories the patent eligible subject matter, the claims 1-20 recite a number of steps of (“receiving …”, “selecting …”, “applying …”, “receiving …” and “generating …”). These limitations fall into a judicial exception (MPEP 2106.04 (II), “laws of nature”, “natural phenomena” and “abstract idea”). The Supreme Court has explained that the judicial exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and technological work", and are thus excluded from patentability because "monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it." Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980. It should be noted that there are no bright lines between the types of exceptions, and that many of the concepts identified by the courts as exceptions can fall under several exceptions (MPEP 2106.04 (I) and (II)).
In light of the disclosure (Spec. [0041-0042], Fig. 4), a claimed invention defined by each of independent claims is related to reviewing a meeting speech transcript and selecting / displaying a portion of the transcript that is relevant to a user (claimed “a given participant”). Although the recited limitations mention “a machine learning model” without any details about the machine learning model is used to extract a relevant portion from the speech transcript. The claimed model could be interpreted as a human mind. The claim limitations recited in an independent claim 9 (a method) could be regarded a person (e.g., an assistant) reads a meeting transcript and extracts relevant sections for another person (e.g., a manager in sale department) as illustrated below:
receiving a transcription of a conversation, the conversation being ongoing between a plurality of participants including a given participant, the transcription received as the conversation continues (an assistant listens to discussions during an audio meeting and writes down meeting transcripts; In the audio meeting, there are many meeting participants, including a manager from the sale department, a claimed “a given participant”);
selecting an assistant uses his mind and focuses on topics of sale information in the audio transcripts because the sale manager is sections related to sale / revenue);
applying, as input to the selected an assistant extracts information related to sale / revenue figures using his head / mind during the meeting);
receiving, as output from the selected an assistant extracts portions related to sale information using his brain from the meeting transcriptions); and
generating for display, to the given participant, on an ongoing basis as the conversation from which the transcription was received continues, information pertaining to the portion, the information tailored to the given participant based on the portion output by the selected an assistant shows the information related to sale to the manager from the sale department).
Except for mentioning “a machine learning model”, the above claimed method can be interpreted as a person reading a speech transcript and showing a relevant section of the transcript (e.g., discussing sale amount) to a sale manager. The claim limitations do not have details about a claimed “a machine learning model” is applied to extract a portion from the transcript. A human mind can be considered as a learned model. Independent claims 1 and 17, although mentioning generic computer elements (e.g., a processor, memory, computer readable medium), include similar features as claim 1.
The courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper” to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir.2011). If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75,674. If the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept.
Independent claims 1, 9 and 17 recite limitations related to extracting relevant portions for a given meeting participant from audio meeting transcripts. The claimed inventions could be performed in human mind or with a pen / a piece of paper. The claimed generic computer elements or “a machine learning model” are general lining a judicial except to a particular technological environment or using a generic computer as tool. Dependent claims further recite limitations related to mental process.
Claims 2, 10, 18 mentioning identifying a group that the given user belongs to and using a selected model for the group. This is a mental process that an assistant determines a manager is from the sale department. The assistant uses his brain to focus on sale information.
Claims 3, 11 and 19 recite limitation related to “surface moment”, which is related to a moment of curtain topic. This is also a mental process that the assistant could determines that during a moment in the meeting, a certain topic (e.g., sale) is discussed.
Claims 4-5, 12-13 and 20 recite limitations related to what a given participant is interested from interaction history. This is a mental process because the assistant could look at manager’s interaction history to identify what manager is interested in the discussion.
Claims 6 and 14 recite limitations related to a format of speech transcripts. The recited limitation is related insignificant extra-solution activity to the judicial exception.
Claims 7 and 15 recite limitations related to determining which sections in the meeting transcripts are relevant based on comparing a score with threshold. The recited limitations could be interpreted as a mental process in human mind to determine which portions in the transcripts are related to sale information (claimed “having relevance to the given participant”).
Claims 8 and 16 recite limitations is related to receiving / creating a meeting transcript during a meeting (claimed “in real-time”). This is a mental process because an assistant could listen to the audio meeting and write down the meeting transcript.
In these situations, the claim is considered to recite a mental process. The Court concluded that the algorithm could be performed purely mentally even though the claimed procedures “can be carried out in existing computers long in use, no new machinery being necessary.” The claims therefore recited an abstract idea, despite the fact that the claimed steps were performed on a computer. 887 F.3d at 1385, 126 USPQ2d at 1504.
Eligibility Step 2A, Prong two (integrated into a practical application? MPEP 2106.04(d)).
Since the claimed invention falls into a judicial exception according above analysis (YES branch of PRONG ONE in the step 2A), a claim that is directed to a judicial exception must be evaluated to determine whether the claim recite additional elements that integrate the judicial exception into a practical application (MPEP 2106.04(II)(A)(2)). Prong Two asks whether the claim recite additional elements that integrate the judicial exception into a practical application. In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. Court in Gottschalk v. Benson ‘‘held that simply implementing a mathematical principle on a physical machine, namely a computer was not a patentable application of that principle. Accordingly, after determining that a claim recites a judicial exception in Step 2A Prong One examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception in Step 2A Prong Two. For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B. If there are no additional elements in the claim, then it cannot be eligible.
Eligibility Step 2B (Inventive concept / significantly more consideration; MPEP 2106.05).
MPEP §2106.05 describes step 2B test to determine whether a claim amounts to significantly more. The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014). The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept (See MPEP §2106.05(I)(A)). It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2B. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception is not in itself an inventive concept and does not guarantee eligibility.
The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept. By considering limitations recited in the instant claims, the claims do not improve the functions of a computer, or any other technology or technical field. The claims also do not apply the judicial exception with, or by use of, a particular machine. The claims also do not have effecting a transformation or reduction of a particular article to a different state or thing. The claims fail to include a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application. The recited “processor” / “memory” are well-understood, routine and conventional in the field. Therefore, that recited element does not amount to significantly more than an abstract idea.
Please notes simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984. The court also found “adding insignificant extra-solution activity to the judicial exception” or “generally linking the use of the judicial exception to a particular technological environment or field of use” is not enough to be qualify as “significantly more” considerations.
By reviewing limitations recited in the claims, none of the limitations meet the significantly more considerations. Therefore, claims are directed to unpatentable subject matter and are rejected under 35 U.S.C. 101 (MPEP §2106, flowchart, Step 2B, NO branch).
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 5 and 13 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.
Claims 5 and 13 recites “the label”, which has insufficient antecedent basis. The antecedent limitations never define any label.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1-3, 6-11 and 14-20 are rejected under 35 U.S.C. §102 (a)(2) as being anticipated by Ramamurthy et al. (US PG Pub. 2020/0311122, referred to as Ramamurthy).
Ramamurthy discloses generating a personalized meeting summary by inputting an audio meeting transcript to a machine learning model. The personalized meeting summary is based on a role of a given participant (Ramamurthy, [0004-0007], [0037], [0041], [0054], generating a personalized meeting summary relevant to a particular participant from the transcripts; Fig. 1). Ramamurthy further discloses using a machine learning model to generate the personalized summary (Ramamurthy, [0035-0037]). The examiner replicates Fig. 1 from the cited Ramamurthy reference below:
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Regarding claims 1, 9 and 17, Ramamurthy discloses a non-transitory computer readable medium, a method and a system (Ramamurthy, [0008], Fig. 1, a computer implemented audio meeting system that generates personalized meeting summary from an audio meeting transcript; [0043], [0046], The personalized meeting summary is based on role / interests of individual meeting participant; [0021], a role such as a manager, a leader), comprising:
receiving a transcription of a conversation, the conversation being ongoing between a plurality of participants including a given participant, the transcription received as the conversation continues (Ramamurthy, [0004], [0021], generating meeting transcript from an audio meeting, an individual participant could be a manager or a leader; Fig. 1, #106);
selecting a machine learning model for the given participant based on a profile of the given participant (Ramamurthy, [0034-0036], [0073], selecting a machine learning model, e.g., a neural network, to generate personalized summary from meeting transcripts; [0037-0038], the personalized summary is generated by considering a person’s role / job function, e.g., a manager; [0040] based on projects or participant interests);
applying, as input to the selected machine learning model, the transcription on an ongoing basis as the conversation continues (Ramamurthy, [0034-0036], using machine learning model, such as a neural network, to generate personalized summary from the meeting transcript);
receiving, as output from the selected machine learning model, a portion of the transcription having relevance to the given participant (Ramamurthy, [0004], [0025], identifying relevant items related to a given participant; Fig. 8A/8B); and
generating for display, to the given participant, on an ongoing basis as the conversation from which the transcription was received continues, information pertaining to the portion, the information tailored to the given participant based on the portion output by the selected machine learning model (Ramamurthy, [0003-0006], [0025], [0066-0067], Fig. 1, #132A, #132B, generating personalized meeting summary from meeting transcripts based on user’s role / interests by using selected machine learning models).
Regarding claims 2, 10 and 18, Ramamurthy discloses:
determine a group of which the given participant is a part (Ramamurthy, [0040], classifying users based on roles / job function, selecting a machine learning model according to similar roles);
identify a group model trained based on preferences of the group (Ramamurthy, [0040], [0042], training model based on project resources); and
assign the group model as the selected machine learning model (Ramamurthy, [0040]).
Regarding claims 3, 11 and 19, Ramamurthy discloses: the group model is used to surface moments to other users who are a part of the group (Ramamurthy, [0037-0041], identifying meeting items relevant to a group of users with similar roles or in the same project).
Regarding claims 6 and 14, Ramamurthy discloses:
identify one or more word embeddings corresponding to the transcription (Ramamurthy, [0074]); and
apply, as additional input to each machine learning model, the one or more word embeddings (Ramamurthy, [0074]).
Regarding claims 7 and 15, Ramamurthy discloses:
receive a plurality of scores for different portions of the transcription (Ramamurthy, [0071], determining salience score for each meeting items);
compare each score of the plurality of scores to a threshold (Ramamurthy, [0071], determining salience score for each meeting items, based on the score, assigning different relevant levels); and
determine the portion of the transcription having relevance to the given participant based on its corresponding score exceeding the threshold (Ramamurthy, [0071], based on relevant score, determining meeting items is “very relevant”, “sort of relevant” or “not relevant” to a specific user).
Regarding claims 8 and 16, Ramamurthy discloses: receiving the transcription automatically and in real-time during the conversation (Fig. 1, [0004], [0045], Fig. 1, #106, speech transcription engine generates transcripts during an audio meeting).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 4, 12 and 20 are rejected under 35 U.S.C. §103 as being unpatentable over Ramamurthy in view of Chen et al. (US PG Pub. 2019/0258741, referred to as Chen).
Regarding claims 4,12 and 20, Ramamurthy discloses training a machine learning model to identify relevant meeting items for generating a personalized meeting summary using various training data (Ramamurthy, [0004], [0034-0035], [0037]). Ramamurthy does not discloses using historical search queries from a user as training data.
Chen discloses generating a personalized model by using per user interaction history as training data (Chen, [0020], [0035], [0051], [0057-0058]).
It would have been obvious to a person having ordinary skill in the art at the time the invention was filed to combine Ramamurthy’s teaching with Chen’s teaching to access user’s profile and activity history to train a personalized machine learning model. One having ordinary skill in the art would have been motivated to make such a modification to better capture user’s personal preference for items (Chen, [0017-0018]).
Allowable Subject Matter
Claims 5 and 13 are objected to as being dependent upon a rejected base claim, but would be allowable if (a) overcome a rejection under 35 U.S.C. §101 and §112(b) set forth in this office action, (2) file a terminal disclaimer to overcome an obviousness type double patenting rejection set forth in this office action, and (3) rewritten in independent form including all of the limitations of the base claim and any intervening claims.
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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