DETAILED ACTION
This action is in reference to the communication filed on 13 FEB 2025.
Claims 1-20 are present and have been examined.
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 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.
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Claims 1-20 rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12254486.
Although the claims at issue are not identical, they are not patentably distinct from each other because the limitations of claims 1-20 of the current application are anticipated by the patented claims of the ‘576 patent. Claim 1 of the ‘486 patent recites receiving a first utterance, querying a dialog model and template for identifying a user, transmitting the audio prompt for playback, receiving a second utterance, authenticating the second utterance based on a comparison between the second and a stored verified utterance, verifying the second utterance includes a request to open an account, generating the content request, transmitting the content request, receiving the content for opening the account, generating, audio content for playback, and transmitting the audio content for playback. Exemplary claim 1 of the invention requires identifying a first utterance, querying a dialog model to identify the prompt including a template for identifying the first utterance, transmit the audio prompt for playback, verifying a second utterance for opening an account, transmit a content request, generate audio content for playback, and transmit the audio content for playback to the voice enabled service. Therefore, exemplary claim 1 of the ‘486 patent is in essence a “species” of the generic invention of application 1 in the instant application. It has been held that a generic invention is anticipated by a species within the scope of the generic invention. See In re Goodman, 29 USPQ2d 2010 (Fed. Cir. 1993).
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 1-20 rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. As explained below, the claim(s) are directed to an abstract idea without significantly more.
Step One: Is the Claim directed to a process, machine, manufacture or composition of matter? YES
With respect to claim(s) 1-20 the independent claim(s) 1, 8, 15 recite(s) a system, a method, and a non-transitory computer readable medium, each of which is a statutory category of invention.
Step 2A – Prong One: Is the claim directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea? YES
With respect to claim(s) 1-20 the independent claim(s) (claims 1, 8, 15,) is/are directed, in part, to:
A system, comprising: a
identify a first utterance from a voice-enabled service, the first utterance being associated with an application identifier;
query a dialogue model to identify an audio prompt based at least in part on the application identifier, the dialogue model comprising a dialogue template for identifying the audio prompt in association with the first utterance;
transmit the audio prompt for playback to the voice-enabled service, the audio prompt comprising a request for user information;
verify a second utterance includes the user information required for opening an account based at least in part on the dialogue model;
transmit a content request for opening the account
generate audio content for playback in an audio format based at least in part on content received
transmit the audio content for playback to the voice-enabled service.
These claim elements are considered to be abstract ideas because they are directed to a method of organizing human activity which include commercial or legal interactions (including agreements in the form of contracts, legal obligations, advertising, marketing or sales activities, and/or business relations). Communicating with a user to open or extend a credit transaction account is a marketing activity, and further a new account represents a contract, i.e. a business activity/relationship. Examiner further notes that as claimed, the audio elements/aspects are analogous to a conversation between one or more people. The claims are further directed to a mental process, in that the claims ensconce concepts performed in the human mind including observation, evaluation, judgment, and opinion functions. Identifying an utterance, transmitting it for listening, verifying the first utterance based on a saved second utterance, selecting a content request, and generating audio content and playing it, are all examples of a process that could be completed within the human mind. Finally, the claims are further directed to mathematical concepts – i.e. mathematical relationships, formulas, equations, and/or calculations. The dialog model and the querying thereof is an example of a mathematical relationship. Accordingly the claims recite an abstract idea.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application? NO.
This judicial exception is not integrated into a practical application. In particular, the claim(s) recite(s) additional element: claim 1 recites a computing device comprising a processor and a memory, and machine readable instructions stored therein, claim 8 recites “at least one computing device” to operate the method as claimed, and claim 15 recites a non-transitory computer readable medium embodying machine readable instructions executable in a computing device that when executed by the computing device cause the execution of the claimed invention. Each of claims 1, 8, 15 recites a “computing environment.” The computing elements as identified in the claims above are recited at a high level of generality and as such amount to no more than adding the words “apply it” to the judicial exception, or mere instructions to implement the abstract idea on a computer, or merely uses the computer as a tool to perform the abstract idea (see MPEP 2106.05f), or generally links the use of the judicial exception to a particular technological field of use/computing environment (see MPEP 2106.05h). Examiner finds no improvement to the functioning of the computer or any other technology or technical field in the computing devices in claims 1, 8, nor the computer readable medium in claim 15 as claimed (see MPEP 2106.05a), nor any other application or use of the judicial exception in some meaningful way beyond a general like between the use of the judicial exception to a particular technological environment (see MPEP 2106.05e). Examiner further notes that with respect to the identified individual elements as well as the “computing environment” sending and receiving information, as well as storing information in a memory, are typically found to be analogous to adding insignificant extra solution activity to the judicial exception(s) identified (see MPEP 2106.05g).
Accordingly, this/these additional element(s) do(es) 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.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? NO.
The independent claim(s) is/are additionally directed to claim elements such as: claim 1 recites a computing device comprising a processor and a memory, and machine readable instructions stored therein, claim 8 recites “at least one computing device” to operate the method as claimed, and claim 15 recites a non-transitory computer readable medium embodying machine readable instructions executable in a computing device that when executed by the computing device cause the execution of the claimed invention. Each of claims 1, 8, 15 recites a “computing environment.” When considered individually, the identified claim elements only contribute generic recitations of technical elements to the claims. It is readily apparent, for example, that the claim is not directed to any specific improvements of these elements. Examiner looks to Applicant’s specification in:
[0012] The computing environment 103 may comprise, for example, a server computer or any other system providing computing capability. Alternatively, the computing environment 103 may employ a plurality of computing devices that may be arranged, for example, in one or more server banks or computer banks or other arrangements. Such computing devices may be located in a single installation or may be distributed among many different geographical locations. For example, the computing environment 103 may include a plurality of computing devices that together may comprise a hosted computing resource, a grid computing resource and/or any other distributed computing arrangement. In some cases, the computing environment 103 may correspond to an elastic computing resource where the allotted capacity of processing, network, storage, or other computing-related resources may vary over time.
[0032] The client device 109 is representative of a plurality of client devices that may be coupled to the network 112. The client device 109 may comprise, for example, a processor-based system such as a computer system. Such a computer system may be embodied in the form of a desktop computer, a laptop computer, personal digital assistants, cellular telephones, smartphones, set-top boxes, music players, web pads, tablet computer systems, game consoles, electronic book readers, or other devices with like capability. The client device 109 may include a display 156.
[0079] The computer-readable medium can include any one of many physical media such as magnetic, optical, or semiconductor media. More specific examples of a suitable computer-readable medium would include, but are not limited to, magnetic tapes, magnetic floppy diskettes, magnetic hard drives, memory cards, solid-state drives, USB flash drives, or optical discs. Also, the computer-readable medium can be a random access memory (RAM) including static random access memory (SRAM) and dynamic random access memory (DRAM), or magnetic random access memory (MRAM). In addition, the computer-readable medium can be a read-only memory (ROM), a programmable read-only memory (PROM), an erasable programmable read-only memory (EPROM), an electrically erasable programmable read-only memory (EEPROM), or other type of memory device.
These passages, as well as others, makes it clear that the invention is not directed to a technical improvement. When the claims are considered individually and as a whole, the additional elements noted above, appear to merely apply the abstract concept to a technical environment in a very general sense – i.e. a generic computer receives information from another generic computer, processes the information and then sends information back. The most significant elements of the claims, that is the elements that really outline the inventive elements of the claims, are set forth in the elements identified as an abstract idea. The fact that the generic computing devices are facilitating the abstract concept is not enough to confer statutory subject matter eligibility.
As per dependent claims 2-7, 9-14, 16-20:
Dependent claims 3, 10, 17, 20 do not recite any additional abstract ideas, however they do recite non abstract elements such as a client device and a computing device. Examiner finds similarly with respect to the analysis above for the dependent claims, that generically recited computing elements do not amount to a practical application nor as significantly more.
Dependent claims 2, 4- 7, 9, 11-14, 16, 18-19 are not directed any additional abstract ideas and are also not directed to any additional non-abstract claim elements. Rather, these claims offer further descriptive limitations of elements found in the independent claims and addressed above – such as types of audio format, the use of the model itself, and additional means of verification and authentication of the utterances. While these descriptive elements may provide further helpful context for the claimed invention these elements do not serve to confer subject matter eligibility to the invention since their individual and combined significance is still not heavier than the abstract concepts at the core of the claimed invention.
Non-Obvious Subject Matter
Claims 1-20 believed to be free of the prior art.
The closest prior art of record is believed to be:
Koltnow ( US 20170039588)
Siddiqui (US 20200169552)
Miller (US 20190378499)
Danaher (US 20030154162)
Koltnow teaches a means of receiving voice entries on a device, and using that information to open a transaction account based on a user’s creditworthiness. The voice interaction in Koltnow is interactive between the user and the system.
Siddiqui teaches a prompting of an initial voice interaction, and specifically using the voice in combination with certain phrases to authenticate a user to a given end, including a multi-step verification process, including a multiple interaction voice verification.
Miller as cited discloses a voice authentication system comprising a dialogue model, wherein the model is referenced in the authentication process. The process in Miller is also iterative, and includes verification of the types of information provided by the user.
Danaher discloses a means of voice activated credit reporting, and score obtaining for a user, but not the actual application for credit being extended or executed.
In particular Examiner finds the template conjunction with the use of the model itself for verification of opening the credit account to be not fairly taught by the cited references when taken separately or in combination. Examiner finds that the modification of the information in order to comply with the template itself and wherein the audio prompt/formatting refers back to the template to be novel.
The Examiner hereby asserts that the totality of the evidence neither anticipates nor renders obvious the particular combination of elements as claimed. That is, the Examiner emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for combining or otherwise modifying the available prior art to arrive at the claimed invention. The combination of features as claimed would not be obvious to one of ordinary skill in the art because any combination of the evidence at hand to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KATHERINE KOLOSOWSKI-GAGER whose telephone number is (571)270-5920. The examiner can normally be reached Monday - Friday.
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/KATHERINE . KOLOSOWSKI-GAGER/
Primary Examiner
Art Unit 3687
/KATHERINE KOLOSOWSKI-GAGER/Primary Examiner, Art Unit 3687