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 .
Response to Amendment
This communication is in response to the amendment filed on 26 May 2026.
Claims 1, 3, 6-8, 10, 12-15, 17, 19, and 20 are amended.
Claims 1-20 have been examined.
Response to Arguments
In response to Applicant’s remarks filed on 26 May 2026:
a. The terminal disclaimer filed on 22 May 2026 has been approved. Accordingly, the provisional nonstatutory double patenting rejections issued in the previous Office action are withdrawn.
b. Rejections of the pending claims under 35 U.S.C. 103 are withdrawn in view of Applicant’s amendments and remarks.
c. Applicant's arguments with respect to the 35 U.S.C. 101 rejections of the pending claims have been fully considered but are not deemed persuasive.
On pages 10-15 of Applicant’s remarks, Applicant argues against the 35 U.S.C. 101 rejections of the pending claims. Applicant argues that claims 1, 8 and 15 do not recite an abstract idea under Step 2A, Prong One and/or do recite a practical application under Step 2A, Prong Two.
The Office respectfully disagrees with the above remarks. With regards to the analysis at Step 2A, Prong One; Applicant points out that claim 1 recites obtaining a set of elements from an embedding store that is as described in the claim. Applicant asserts that the human mind is not equipped to obtain elements from an embedding store in the manner claimed, and hence claim 1 does not recite a mental process nor any other abstract idea. Applicant is advised that “Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible,” MPEP 2106.05(f) citing Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. Accordingly, “Claims can recite a mental process even if they are claimed as being performed on a computer” (MPEP § 2106.04(a)(2)(III)(C)). As detailed below, claim 1 does recite an abstract idea in the following limitations: a) claimed assigning of relevance scores, b) claimed ranking elements based on relevance scores, c) claimed extracting additional information, d) and claimed generating a second query. Also as detailed below, when these limitations are interpreted under the broadest reasonable interpretation, they can be mentally performed by a human with the aid of pencil and paper. Hence, they fall under the “Mental Processes” grouping of abstract ideas. Also as detailed below, the claimed assigning of relevance scores may alternatively be deemed an abstract idea under the “Mathematical Concepts” grouping since it amounts to no more than mathematical calculation(s). Accordingly, claim 1 does recite an abstract idea in the aforementioned limitations. As to the “obtaining” limitation, this is an additional element (i.e. beyond the abstract idea) that is analyzed at Steps 2A, Prong Two and 2B. The claimed obtaining of a set of elements from an embedding store is recited at a high level of generality and amounts to mere data gathering, which the courts have deemed to be insignificant extra solution activity. See MPEP 2106.05(g). In addition, the courts have deemed receiving data to be well-understood, routine, and conventional activity, as in the following cases: Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015) (storing and retrieving information in memory). See MPEP 2106.05(d)(II). Hence, the claimed obtaining of a set of elements from an embedding store cannot be deemed a practical application nor significantly more than the abstract idea. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity; well-understood, routine, and conventional subject matter; and/or generic computer implementation. Hence, the claim as a whole, looking at the additional elements individually and in combination, does not amount to a practical application nor significantly more than the abstract idea. This claim is not patent eligible.
With regards to the analysis at Step 2A, Prong Two; Applicant points out that the claimed invention “solve[s] the problem of answering complex or ambiguous queries in a QA system that leverages ‘complex algorithms and vast databases of information’” (remarks, page 14). However, claim 1 does not recite any “complex” or “ambiguous” query, nor does it recite any “complex” algorithm nor any “vast” database of information. Applicant is advised of the following:
“Claims in a pending application must be ‘given their broadest reasonable interpretation consistent with the specification.’” MPEP § 2111 citing Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005)..
With regards to subject matter eligibility analysis, “It is essential that the broadest reasonable interpretation (BRI) of the claim be established prior to examining a claim for eligibility. The BRI sets the boundaries of the coverage sought by the claim and will influence whether the claim seeks to cover subject matter that is beyond the four statutory categories or encompasses subject matter that falls within the exceptions.” MPEP 2106(II).
“Claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible,” MPEP 2106.05(f) citing Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. Accordingly, “Claims can recite a mental process even if they are claimed as being performed on a computer” (MPEP § 2106.04(a)(2)(III)(C)).
In the instant case, the BRI of claim 1 encompasses a simple case, as detailed below. Applicant has ignored the BRI of claim 1, resulting in a flawed analysis at Step 2A, Prong Two. Since claim 1 does not recite any “complex” or “ambiguous” query nor does it recite any “complex” algorithm nor any “vast” database of information, the purported practical application is not reflected in the claim. As detailed below, the additional elements of claim 1 amount to insignificant extra-solution activity and/or generic computer implementation, neither of which can be deemed a practical application. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity and/or generic computer implementation. Hence, the claim as a whole, looking at the additional elements individually and in combination, does not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
Claims 8 and 15 recite limitations similar to those of claim 1 and are ineligible under 35 U.S.C. 101 for the same reasons that claim 1 is ineligible, as set forth above.
Claims 2-7, 9-14, and 16-20 are ineligible under 35 U.S.C. 101 for the same reasons that claims 1, 8, and 15 are ineligible, as set forth above, and for the additional reasons detailed below in the claim rejections under 35 U.S.C. 101.
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 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As to claims 1, 8, and 15, these claims recite a first user query and a corresponding set of elements comprising one or more documents, one or more knowledge graph triplets, or both. The broadest reasonable interpretation (BRI) of this limitation encompasses a simple case of having a user query and just two corresponding documents. These claims recite “assigning, based at least in part on a respective semantic similarity between the first user query and each element of the set of elements, a respective relevance score to each element of the set of elements” (claim 1 and similar limitations of claims 8 and 15). Given that the BRI of the claims encompasses such a simple case, a human could mentally perform the claimed assigning with the aid of pencil and paper. For example, a human could mentally judge/evaluate the two documents in relation to the query and assign corresponding relevance scores to the documents accordingly. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind (and/or with a pencil and paper) but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Alternatively, this limitation may be deemed an abstract idea under the “Mathematical Concepts” grouping because the claimed “relevance score” is a numerical quantity and the claimed “assigning” may involve determining the relevance scores for the documents based on mathematical calculation(s).
These claims also recite “ranking the set of elements based at least in part on the respective relevance score assigned to each element of the set of elements” (claim 1 and similar limitations of claims 8 and 15). Given that the BRI of the claims encompasses a simple case, as set forth above, a human could mentally perform the claimed ranking with the aid of pencil and paper. A human can easily mentally rank two documents based on their corresponding relevance scores. Hence, this limitation is also an abstract idea under the “Mental Processes” grouping.
These claims also recite “extracting additional information from each element of the set of elements based at least in part on the first user query” (claim 1 and similar limitations of claims 8 and 15). Given that the BRI of the claims encompasses a simple case, as set forth above, a human could mentally perform the claimed extracting with the aid of pencil and paper. The claims do not specify nor place any limits upon the type of documents, their size, or their length. The claimed “extracting” amounts to no more than a series of mentally-performable judgements/evaluations, i.e. judging/evaluating which information is relevant to the query and hence should be extracted as “additional information.” Hence, this limitation is also an abstract idea under the “Mental Processes” grouping.
These claims also recite “generating a second query based at least in part on the first user query and using the extracted additional information and the ranked set of elements, wherein the second query is generated by a rewrite template that reformulates the first user query based on the extracted additional information and the ranked set of elements” (claim 1 and similar limitations of claims 8 and 15). Given that the BRI of the claims encompasses a simple case, as set forth above, a human could mentally perform the claimed generating with the aid of pencil and paper. Looking at the first user query, the extracted additional information, and the set of two documents, a human could mentally generate a second query, e.g. one that asks for further details or context. A human could mentally perform this query generation according to a rewrite template in the manner claimed. Hence, this limitation is also an abstract idea under the “Mental Processes” grouping. Accordingly, the claim recites an abstract idea.
This judicial exception is not integrated into a practical application. Other than the abstract idea, the claims recite the following:
a) “receiving at a question and answer (QA) system, a first user query” (claim 1 and similar limitations of claims 8 and 15);
b) “obtaining, from an embedding store comprising vector embeddings generated based on processing a corpus of documents based at least in part on the first user query, a set of elements comprising one or more documents, one or more knowledge graph triplets, or both” (claim 1 and similar limitations of claims 8 and 15);
c) “inputting the generated second query, the ranked set of elements, and the additional information in accordance with a response template into a large language model (LLM)” (claim 1 and similar limitations of claims 8 and 15);
d) “returning an answer generated by the LLM as a response to the first user
query” (claim 1 and similar limitations of claims 8 and 15);
e) “one or more memories storing processor-executable code” (claim 8);
f) “one or more processors coupled with the one or more memories and
individually or collectively operable to execute the code” (claim 8);
g) “A non-transitory computer-readable medium storing code” (claim 15).
Limitations (a) and (b) amount to no more than mere data gathering, which has been deemed by the courts to be insignificant extra-solution activity. See MPEP 2106.05(g). Limitation (c) is recited as a high level of generality and amounts to mere instructions to apply the abstract on a general purpose computer, which cannot provide a practical application. See MPEP 2106.05(f). Limitation (d) amounts to no more than merely outputting a result, which has been deemed by the courts to be insignificant extra-solution activity. See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). See MPEP 2106.05(g). Limitations (e) through (g) are recited at a high level of generality, i.e. as generic computer components performing generic computing functions. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity and/or generic computer implementation. Hence, the claim as a whole, looking at the additional elements individually and in combination, does not integrate the abstract idea into a practical application. The claim is directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. Limitations (a) and (b) amount to no more than mere data gathering, which has been deemed by the courts to be insignificant extra-solution activity. See MPEP 2106.05(g). In addition, the courts have deemed receiving data to be well-understood, routine, and conventional activity, as in the following cases: Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015) (storing and retrieving information in memory). See MPEP 2106.05(d)(II). Hence, elements (a) and (b) cannot be deemed an inventive concept. Limitation (c) is recited as a high level of generality and amounts to mere instructions to apply the abstract on a general purpose computer, which cannot be deemed an inventive concept. See MPEP 2106.05(f). Limitation (d) amounts to no more than merely outputting a result, which has been deemed by the courts to be insignificant extra-solution activity. See Mayo, 566 U.S. at 79, 101 USPQ2d at 1968; OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1092-93 (Fed. Cir. 2015); Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016). See MPEP 2106.05(g). Furthermore, Applicant’s specification provides few details about the claimed “returning an answer” or its functions (see para. 0096 of Applicant’s published specification). This indicates that this feature is well known in the art. Cf Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384 (Fed. Cir. 1986) (explaining that "a patent need not teach, and preferably omits, what is well known in the art"). As a result, the written description adequately supports that additional element (d) is conventional and performs well-understood, routine, and conventional activities. See MPEP § 2106.07(a)(III)(A)1. As discussed above with respect to integration of the abstract idea into a practical application, additional elements (e) through (g) amount to no more than mere field of use limitations and instructions to apply the exception using generic computer components. Mere instructions to apply an exception using conventional computer components and functions cannot provide an inventive concept. Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity; well-understood, routine, and conventional subject matter; and/or generic computer implementation. Hence, the claim as a whole, looking at the additional elements individually and in combination, does not amount to significantly more than the abstract idea. These claims are not patent eligible.
As to dependent claims 2-4, 9-11, and 16-18, these claims recite a directed acyclic graph (DAG) structure configured to generate the second query based on the first query. The DAG structure includes a first or second set of node depending on whether the QA system is in a smart mode or a thoughtful mode. Beyond this, these claims do not specify nor place any limits upon the DAG structure. Under the BRI, the DAG structure is a simple graph having just a few nodes and edges. Given that the BRI encompasses such a simple case, a human can mentally visualize such a DAG structure and draw it out on a piece of paper. Since nothing in these claims goes beyond what a human could mentally perform with the aid of pencil and paper, these claims are also directed to an abstract idea under the “Mental Processes” grouping, without significantly more.
As to dependent claims 5, 12, and 19, these claims recite “obtaining,” “assigning,” “ranking,” and “extracting” steps that are analogous to those recited in the parent claims (i.e. claims 1, 8, and 15). These “obtaining,” “assigning,” “ranking,” and “extracting” limitations are directed to an abstract idea without significantly more for the same reasons set forth above in the discussion of the parent claims.
As to dependent claims 6, 13, and 20, these claims recite “the one or more knowledge graph triplets are obtained from one or more knowledge graphs generated by the LLM from the corpus of documents, and each knowledge graph triplet comprises a subject element, a relationship element, and an object element” (claim 6, and similar limitations of claims 13 and 20). These limitations amount to generally linking the use of the abstract to a particular field of use and/or technological environment, which cannot provide a practical application nor an inventive concept. See MPEP 2106.05(h).
As to dependent claims 7 and 14, these claims recite “wherein inputting the generated second query into the LLM comprises: generating the response template comprising the generated second query, the first user query, the extracted additional information, and the ranked set of elements;, wherein the response template includes formatting elements” (claim 7 and similar limitations of claim 14). Given that the BRI of the claims encompasses a simple case, as set forth above, a human could, with the aid of pencil and paper, mentally perform the claimed generating of a response template. Hence, this limitation is an abstract idea under the “Mental Processes” grouping. These claims also recite: “inputting the response template into the LLM, wherein the LLM generates the answer based on the response template.” This additional element is recited as a high level of generality and amounts to mere instructions to apply the abstract on a general purpose computer, which cannot be deemed an inventive concept. See MPEP 2106.05(f). Looking at the additional elements as a whole adds nothing beyond the additional elements considered individually—they still represent insignificant extra-solution activity; well-understood, routine, and conventional subject matter; and/or generic computer implementation. Hence, the claims as a whole, looking at the additional elements individually and in combination, does not amount to a practical application nor an inventive concept. These claims are not patent eligible.
Conclusion
THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 extension fee 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 date of this final action.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to UMAR MIAN whose telephone number is (571)270-3970. The examiner can normally be reached Monday to Friday, 10 am to 6:30 pm.
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/Umar Mian/
Primary Examiner, Art Unit 2163
1 MPEP § 2106.07(a)(III)(A) explains that a specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional ( or an equivalent term) or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a).
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