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 .
Terminal Disclaimer
The terminal disclaimer filed on 9/8/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of US 12323264 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Amendment
This office action is written in response to an amendment filed on 9/8/2026. As directed by amendment: Claims 1, 9, 11, and 16 were amended. No new claims were added and no claims were cancelled. Thus, Claims 1-20 are presently pending in this application.
Response to Arguments
Applicant's arguments filed 9/8/2026 have been fully considered but they are not persuasive. Therefore, the rejection still stands.
Argument 1 - 1. Claims 9 and 16 fall within a statutory category of 35 U.S.C. § 101.
As a threshold matter, the Office Action states, as to each of claims 9 and 16, that the claim "does/do not fall within at least one of the four categories of patent eligible subject matter." (See Office Action, pp. 15-16.) That statement is incorrect. Claim 9 recites "[a] system comprising: one or more processors," which is a machine, and claim 16 recites "[a] non- transitory computer-readable medium comprising instructions," which is an article of manufacture. Each is squarely within a statutory category. (See MPEP 2106.03.) The eligibility
inquiry for claims 9 and 16 therefore proceeds under the Alice/Mayo Test set forth below, and not on the basis of statutory category.
Examiner’s Response: Regarding Claim 9, the system comprising: one or more processors is not part of the abstract idea. It is insignificant extra solution activity added to the judicial exception.
The abstract idea is “segment utterances of a transcript into one or more topic segments based on a determination of an utterance boundary that is based on a lexical score that is a vector product associated with an adjacent pair of text blocks; for each of the one or more topic segments, determine whether a respective topic segment is related to a topic”.
Regarding Claim 16, the non-transitory computer-readable medium comprising instructions is not part of the abstract idea. It is insignificant extra solution activity added to the judicial exception.
The abstract idea is “segmenting utterances of a transcript into one or more topic segments based on a determination of an utterance boundary based on a lexical score that is a vector product associated with an adjacent pair of text blocks; for each of the one or more topic segments, determining whether a respective topic segment is related to a topic”.
Argument 2 - 2. Claims 1, 9, and 16 do not recite a judicial exception under, and the Office Action in any event misapplies, Step 2A, Prong 1 of the Alice/Mayo Test.
"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." (MPEP 2106.04(a)(2), quoting CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011).) Importantly, however, "[c]laims do not recite a mental process when they do not contain limitations that can practically be performed in the human mind, for instance when the human mind is not equipped to perform the claim limitations." (Id., citing SRI Int'l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019).)
The Office Action alleges that each of claims 1, 9, and 16 is "grouped as a mental
process," and quotes the entirety of each independent claim as the recited abstract idea. (See Office Action, pp. 14-16.) Applicant respectfully disagrees. The claims require that the determination of an utterance boundary be made "based on a lexical score that is a vector product associated with an adjacent pair of text blocks." A lexical score that is a vector product across adjacent blocks of a transcript is a mathematical operation over the entire transcript; it is not an observation, evaluation, judgment, or opinion that a person is equipped to perform in the human mind or with pen and paper. The human mind is not equipped to compute a vector product across the adjacent text blocks of a communication-session transcript, and the "mental processes" grouping accordingly does not reach this limitation. (See MPEP 2106.04(a)(2).)
The Office Action's characterization is also internally inconsistent. The Office Action quotes the entire claim, including the "transmitting, to one or more client devices, a list of topic segments that are related to the topic" limitation, as the recited abstract idea, and then, in the following paragraph, identifies that same "transmitting" limitation as an additional element outside the exception. (See Office Action, pp. 14-15.) A single limitation cannot be both the recited judicial exception and an additional element evaluated apart from it. The MPEP requires the Office to identify the specific limitations that recite the judicial exception (see MPEP
2106.04(a)); quoting the claim in its entirety and then treating part of that same quoted text as an additional element does not satisfy that requirement.
Examiner’s Response: The abstract idea of “a method, comprising: segmenting utterances of a transcript into one or more topic segments based on a determination of an utterance boundary based on a lexical score that is a vector product associated with an adjacent pair of text blocks; for each of the one or more topic segments, determining whether a respective topic segment is related to a topic” can be performed in the human mind or at least by using pen and paper.
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., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, "methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’" 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) ("‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’" (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same). MPEP 2106.04(a)(2) (III).
The claim does not recite “A lexical score that is a vector product across adjacent blocks of a transcript is a mathematical operation over the entire transcript”.
The claim recites segmenting utterances of a transcript into one or more topic segments based on a determination of an utterance boundary based on a lexical score that is a vector product associated with an adjacent pair of text blocks; for each of the one or more topic segments, determining whether a respective topic segment is related to a topic”, which can be performed mentally or by using pen and paper.
The previous office action stated “the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) “a method, comprising: segmenting utterances of a transcript into one or more topic segments based on a determination of an utterance boundary based on a lexical score that is a vector product associated with an adjacent pair of text blocks; for each of the one or more topic segments, determining whether a respective topic segment is related to a topic; and transmitting, to one or more client devices, a list of topic segments that are related to the topic“.
The claim is grouped as a mental process. This judicial exception is not integrated into a practical application because there are no additional meaningful elements within the claim that separate the invention from an abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The claim recites additional elements of “transmitting, to one or more client devices, a list of topic segments that are related to the topic” which taken individually amounts to adding insignificant extra solution activity to the judicial exception. 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 extra solution activity of “transmitting, to one or more client devices, a list of topic segments that are related to the topic” simply appends well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. The courts recognize <for example receiving or transmitting data over a network> as one of the well-understood, routine and conventional activities (see MPEP 2106.05(d)(II).
The whole claim was recited, with the extra solution activity of transmitting, to one or more client devices, a list of topic segments that are related to the topic clearly being stated.
Therefore, the mental process was specified.
The current office action incorporates a new 101 rejection with the newly amended claim limitations.
Argument 3 - 3. Claims 1, 9, and 16 integrate any judicial exception into a practical
application under, and the Office Action in any event misapplies, Step 2A, Prong 2
of the Alice/Mayo Test.
"A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception." (MPEP 2106.04(d).) The MPEP further requires that "[t]he Prong Two analysis considers the claim as a whole," such that "the additional limitations should not be evaluated in a vacuum, completely separate from the recited judicial exception." (Id.)
The Office Action does not perform that analysis. For claim 1, the Office Action
identifies a single additional element, i.e., the "transmitting" limitation, and dismisses it as "insignificant extra solution activity." (See Office Action, pp. 14-15.) For claims 9 and 16, the Office Action goes further and treats the claim structure itself, i.e., "a system comprising: one or more processors" and "a non-transitory computer-readable medium comprising instructions," as the additional element and again labels it insignificant extra-solution activity. (See Office Action, pp. 15-17.) At no point does the Office Action address the limitation requiring that the utterance boundary be determined based on a lexical score that is a vector product associated with an adjacent pair of text blocks. That limitation is the specific mechanism by which the claimed method operates, and it is neither a mere instruction to "apply" an abstract idea nor extra-solution activity.
By identifying only the "transmitting" limitation, or only the claim structure, and never engaging the claimed boundary-detection mechanism, the Office Action evaluates the claims at too high a level of generality. The USPTO has recognized that this is error: in Ex parte Desjardins, Appeal No. 2024-000567 (ARP Sept. 26, 2025), made precedential and incorporated into MPEP 2106.04(d)(1) and 2106.05(a) by the December 5, 2025 memorandum, the Appeals Review Panel held that a claim was evaluated "at too high a level of generality" at Step 2A,
Prong Two, and that Enfish and McRO provide the controlling frame for claims directed to an improvement in computer functionality or another technology. The same error is present here.
The specification confirms that the claims are directed to such an improvement. The
specification identifies a specific technical deficiency: when navigating recorded communication sessions, "a large amount of time is often spent on scrolling through the meeting to find the portion or topic the user is looking for," and "past sales meetings can be difficult to search for, as there is no way to search for specific topics of discussion." (1[0023].) The specification identifies the source of the problem as "a lack of ability to dynamically segment a meeting into topic segments and to dynamically detect topics related to the content of the meeting in each segment, given a transcript of the meeting and a list of topics." (1[0024].) The claimed lexical-score boundary-detection mechanism, together with the transmitted list of topic segments carrying, for each related segment, a starting timestamp and an ending timestamp within the transcript (1[0074]), is the specific solution that produces a navigable index into the communication session. This is a concrete improvement to the functioning of the communication platform, disclosed in the specification and, as amended, reflected in the claims. (See MPEP 2106.04(d)(1); 2106.05(a).)
Claim 1 as amended accordingly integrates any judicial exception to which it may be directed into a practical application. Thus, assuming arguendo (and thus without Applicant concession) that claim 1 recites a judicial exception, it nevertheless integrates such judicial exception into a practical application. The same reasoning applies to claims 9 and 16, whose additional elements, a system of one or more processors and a non-transitory computer-readable medium storing instructions, are claim structure to be evaluated as additional elements under MPEP 2106.05, not insignificant extra-solution activity.
Examiner’s Response: The improvements specified are improvements to the judicial exception and not to the functioning of a computer or another technology/technical field. See MPEP 2106.04(d), MPEP 2106.04(d)(1) and 2106.05(a).
It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field (MPEP 2106.05(a)).
The improvement to saving time in a meeting and creating a way to quickly access certain portions of a conference are not improvements to a computer or underlying technology of conferences.
Applicant argues that an improvement to the functioning of the communication platform through the specific lexical-score boundary-detection mechanism and the resulting timestamped, navigable list of topic segments.
However, neither the claims nor the specification specifies any improvement to the technology of the communication platform itself, rather, the improvement is to saving time in meetings between people.
The Supreme Court has long distinguished between principles themselves (which are not patent eligible) and the integration of those principles into practical applications (which are patent eligible). See, e.g., Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 80, 84, 101 USPQ2d 1961, 1968-69, 1970 (2012) (noting that the Court in Diamond v. Diehr found ‘‘the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole,’’ but the 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’’). Similarly, in a growing body of decisions, the Federal Circuit has distinguished between claims that are ‘‘directed to’’ a judicial exception (which require further analysis to determine their eligibility) and those that are not (which are therefore patent eligible), e.g., claims that improve the functioning of a computer or other technology or technological field. See Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981); Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972). See, e.g., MPEP § 2106.06(b) (summarizing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016), McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 120 USPQ2d 1091 (Fed. Cir. 2016), and other cases that were eligible as improvements to technology or computer functionality instead of being directed to abstract ideas).
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. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Whether or not a claim integrates a judicial exception into a practical application is evaluated using the considerations set forth in subsection I below, in accordance with the procedure described below in subsection II. MPEP 2106.04(d).
The Supreme Court and Federal Circuit have identified a number of considerations as relevant to the evaluation of whether the claimed additional elements demonstrate that a claim is directed to patent-eligible subject matter. The list of considerations here is not intended to be exclusive or limiting. Additional elements can often be analyzed based on more than one type of consideration and the type of consideration is of no import to the eligibility analysis. Additional discussion of these considerations, and how they were applied in particular judicial decisions, is provided in MPEP § 2106.05(a) through (c) and MPEP § 2106.05(e) through (h).[AltContent: rect]
Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
• Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e). [AltContent: rect]
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
• Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
See MPEP 2106.04(d) (I).
Argument 4 - 4. Claims 1, 9, and 16 recite significantly more than a judicial exception under, and the Office Action in any event misapplies, Step 2B of the Alice/Mayo Test.
"Evaluating additional elements to determine whether they amount to an inventive concept requires considering them both individually and in combination to ensure that they amount to significantly more than the judicial exception itself." (MPEP 2106.05.) "Consideration of the elements in combination is particularly important, because even if an additional element
does not amount to significantly more on its own, it can still amount to significantly more when considered in combination with the other elements of the claim." (Id., citing Rapid Litig. Mgmt. v. CellzDirect, 827 F.3d 1042, 1051, 119 USPQ2d 1370, 1375 (Fed. Cir. 2016).)
The Office Action does not perform the required ordered-combination analysis for any of claims 1, 9, or 16. The Office Action recites only that the additional element "simply appends well-understood, routine and conventional activities previously known to the industry," and cites MPEP 2106.05(d)(II) for the proposition that the courts recognize "receiving or transmitting data over a network" as such an activity. (See Office Action, pp. 15-18.) That single finding is directed only to the transmitting step. No finding, and no evidence, addresses whether the ordered combination of the claimed limitations, i.e, determining an utterance boundary based on a lexical score that is a vector product across adjacent text blocks, determining segment-to-topic relatedness, and transmitting a timestamped list of the related topic segments, is well-understood, routine, and conventional. Because the Office Action does not consider the claim as a whole or the elements in combination, it has not established that the claims fail Step 2B. (See MPEP 2106.05.)
As described above, claim 1 recites an improvement to the functioning of the
communication platform through the specific lexical-score boundary-detection mechanism and the resulting timestamped, navigable list of topic segments. Claim 1 recites considerable, and in any event, sufficient detail in how this is achieved. Thus, assuming arguendo (and thus without Applicant concession) that claim 1 recites a judicial exception that is not integrated into a practical application, it nevertheless recites significantly more than the judicial exception.
Examiner’s Response: The additional elements of “transmitting, to one or more client devices, a list of topic segments that are related to the topic, the list comprising, for each topic segment that is related to the topic, a starting timestamp and an ending timestamp within the transcript” do not amount to significantly more than the judicial exception.
The extra solution activity of “transmitting, to one or more client devices, a list of topic segments that are related to the topic, the list comprising, for each topic segment that is related to the topic, a starting timestamp and an ending timestamp within the transcript” simply appends well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. The courts recognize <for example receiving or transmitting data over a network> as one of the well-understood, routine and conventional activities (see MPEP 2106.05(d)(II).
Another consideration when determining whether a claim recites significantly more than a judicial exception is whether the additional element(s) are well-understood, routine, conventional activities previously known to the industry. This consideration is only evaluated in Step 2B of the eligibility analysis.
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. MPEP 2106.05(d).
As previously stated in the response to Argument 3, the improvements specified are improvements to the judicial exception and not to the functioning of a computer or another technology/technical field. See MPEP 2106.04(d), MPEP 2106.04(d)(1) and 2106.05(a).
It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field (MPEP 2106.05(a)).
The improvement to saving time in a meeting and creating a way to quickly access certain portions of a conference are not improvements to a computer or underlying technology of conferences.
Applicant argues that an improvement to the functioning of the communication platform through the specific lexical-score boundary-detection mechanism and the resulting timestamped, navigable list of topic segments.
However, neither the claims nor the specification specifies any improvement to the technology of the communication platform itself, rather, the improvement is to saving time in meetings between people.
The Supreme Court has long distinguished between principles themselves (which are not patent eligible) and the integration of those principles into practical applications (which are patent eligible). See, e.g., Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 80, 84, 101 USPQ2d 1961, 1968-69, 1970 (2012) (noting that the Court in Diamond v. Diehr found ‘‘the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole,’’ but the 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’’). Similarly, in a growing body of decisions, the Federal Circuit has distinguished between claims that are ‘‘directed to’’ a judicial exception (which require further analysis to determine their eligibility) and those that are not (which are therefore patent eligible), e.g., claims that improve the functioning of a computer or other technology or technological field. See Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981); Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972). See, e.g., MPEP § 2106.06(b) (summarizing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016), McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 120 USPQ2d 1091 (Fed. Cir. 2016), and other cases that were eligible as improvements to technology or computer functionality instead of being directed to abstract ideas).
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. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Whether or not a claim integrates a judicial exception into a practical application is evaluated using the considerations set forth in subsection I below, in accordance with the procedure described below in subsection II. MPEP 2106.04(d).
The Supreme Court and Federal Circuit have identified a number of considerations as relevant to the evaluation of whether the claimed additional elements demonstrate that a claim is directed to patent-eligible subject matter. The list of considerations here is not intended to be exclusive or limiting. Additional elements can often be analyzed based on more than one type of consideration and the type of consideration is of no import to the eligibility analysis. Additional discussion of these considerations, and how they were applied in particular judicial decisions, is provided in MPEP § 2106.05(a) through (c) and MPEP § 2106.05(e) through (h).[AltContent: rect]
Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
• Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e). [AltContent: rect]
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
• Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
See MPEP 2106.04(d) (I).
Argument 5 - 5. Notwithstanding the foregoing, to advance prosecution, Applicant amends
claims 1, 9, and 16 to more clearly recite patent eligible subject matter.
Claim 1, from which claims 2-8 depend, is amended to recite in part: "segmenting
utterances of a transcript of a communication session into one or more topic segments based on a determination of an utterance boundary based on a lexical score that is a vector product associated with an adjacent pair of text blocks; for each of the one or more topic segments, determining whether a respective topic segment is related to a topic; and transmitting, to one or more client devices, a list of topic segments that are related to the topic, the list comprising, for each topic segment that is related to the topic, a starting timestamp and an ending timestamp within the transcript." Support for the amendment may be drawn from throughout the Application and at least at, e.g., paragraphs [0023]-[0024], [0044], [0066], and [0074]. Claims 9 and 16 are amended symmetrically to recite the corresponding limitations in system and non- transitory computer-readable medium form, respectively, with support at the same paragraphs.
As amended, the independent claims recite that the transcript is of a communication
session and that the transmitted list of topic segments comprises, for each related topic segment, a starting timestamp and an ending timestamp within the transcript. These limitations tie the claimed method to the specific improvement disclosed at 1[0023]-[0024] and [0074], namely a navigable index into a communication session that addresses the inability of prior platforms to segment or search a session by topic. The improvement is thereby both disclosed in the specification and reflected in the claims. (See MPEP 2106.04(d)(1).)
The above addresses claim 1 by example, but is extended in its entirety to claims 9 and 16 for the same reasons as described above given the subject matter shared between claims 1, 9, and 16. Thus, and for at least the foregoing reasons, claims 1, 9, and 16 as amended herein are directed to patent eligible subject matter. Claims 2-8, 10-15, and 17-20 respectively depend from claims 1, 9, and 16 and are thus directed to patent eligible subject matter based at least upon such dependencies.
Examiner’s Response: As previously stated in the response to Argument 3, the improvements specified are improvements to the judicial exception and not to the functioning of a computer or another technology/technical field. See MPEP 2106.04(d), MPEP 2106.04(d)(1) and 2106.05(a).
It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018)). Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field (MPEP 2106.05(a)).
The improvement to saving time in a meeting and creating a way to quickly access certain portions of a conference are not improvements to a computer or underlying technology of conferences.
Applicant argues that an improvement to the functioning of the communication platform through the specific lexical-score boundary-detection mechanism and the resulting timestamped, navigable list of topic segments.
However, neither the claims nor the specification specifies any improvement to the technology of the communication platform itself, rather, the improvement is to saving time in meetings between people.
The Supreme Court has long distinguished between principles themselves (which are not patent eligible) and the integration of those principles into practical applications (which are patent eligible). See, e.g., Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 80, 84, 101 USPQ2d 1961, 1968-69, 1970 (2012) (noting that the Court in Diamond v. Diehr found ‘‘the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole,’’ but the 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’’). Similarly, in a growing body of decisions, the Federal Circuit has distinguished between claims that are ‘‘directed to’’ a judicial exception (which require further analysis to determine their eligibility) and those that are not (which are therefore patent eligible), e.g., claims that improve the functioning of a computer or other technology or technological field. See Diamond v. Diehr, 450 U.S. 175, 209 USPQ 1 (1981); Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972). See, e.g., MPEP § 2106.06(b) (summarizing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 118 USPQ2d 1684 (Fed. Cir. 2016), McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 120 USPQ2d 1091 (Fed. Cir. 2016), and other cases that were eligible as improvements to technology or computer functionality instead of being directed to abstract ideas).
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. A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. Whether or not a claim integrates a judicial exception into a practical application is evaluated using the considerations set forth in subsection I below, in accordance with the procedure described below in subsection II. MPEP 2106.04(d).
The Supreme Court and Federal Circuit have identified a number of considerations as relevant to the evaluation of whether the claimed additional elements demonstrate that a claim is directed to patent-eligible subject matter. The list of considerations here is not intended to be exclusive or limiting. Additional elements can often be analyzed based on more than one type of consideration and the type of consideration is of no import to the eligibility analysis. Additional discussion of these considerations, and how they were applied in particular judicial decisions, is provided in MPEP § 2106.05(a) through (c) and MPEP § 2106.05(e) through (h).[AltContent: rect]
Limitations the courts have found indicative that an additional element (or combination of elements) may have integrated the exception into a practical application include:
• An improvement in the functioning of a computer, or an improvement to other technology or technical field, as discussed in MPEP §§ 2106.04(d)(1) and 2106.05(a);
• Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, as discussed in MPEP § 2106.04(d)(2);
• Implementing a judicial exception with, or using a judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, as discussed in MPEP § 2106.05(b);
• Effecting a transformation or reduction of a particular article to a different state or thing, as discussed in MPEP § 2106.05(c); and
• Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception, as discussed in MPEP § 2106.05(e). [AltContent: rect]
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
• Merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
See MPEP 2106.04(d) (I).
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 as being directed towards an abstract idea.
Regarding Claim 1, the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) “a method, comprising: segmenting utterances of a transcript of a communication session into one or more topic segments based on a determination of an utterance boundary based on a lexical score that is a vector product associated with an adjacent pair of text blocks; for each of the one or more topic segments, determining whether a respective topic segment is related to a topic“.
The claim is grouped as a mental process. This judicial exception is not integrated into a practical application because there are no additional meaningful elements within the claim that separate the invention from an abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The claim recites additional elements of “transmitting, to one or more client devices, a list of topic segments that are related to the topic, the list comprising, for each topic segment that is related to the topic, a starting timestamp and an ending timestamp within the transcript” which taken individually amounts to adding insignificant extra solution activity to the judicial exception. 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 extra solution activity of “transmitting, to one or more client devices, a list of topic segments that are related to the topic, the list comprising, for each topic segment that is related to the topic, a starting timestamp and an ending timestamp within the transcript” simply appends well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. The courts recognize <for example receiving or transmitting data over a network> as one of the well-understood, routine and conventional activities (see MPEP 2106.05(d)(II).
Regarding Claims 2-8, Claims 2-8 do not add anything significantly more to the abstract idea of Claim 1. Claims 2-8 do not integrate the abstract idea into a practical application because there are no additional meaningful elements within the claims that separate the invention from an abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Regarding Claim 9, the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) “segment utterances of a transcript of a communication session into one or more topic segments based on a determination of an utterance boundary that is based on a lexical score that is a vector product associated with an adjacent pair of text blocks; for each of the one or more topic segments, determine whether a respective topic segment is related to a topic“.
The claim is grouped as a mental process. This judicial exception is not integrated into a practical application because there are no additional meaningful elements within the claim that separate the invention from an abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The claim recites additional elements of “a system comprising: one or more processors configured to: transmit, to one or more client devices, a list of topic segments that are related to the topic, the list comprising, for each topic segment that is related to the topic, a starting timestamp and an ending timestamp within the transcript” which taken individually amounts to adding insignificant extra solution activity to the judicial exception. 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 extra solution activity of “a system comprising: one or more processors configured to: transmit, to one or more client devices, a list of topic segments that are related to the topic, the list comprising, for each topic segment that is related to the topic, a starting timestamp and an ending timestamp within the transcript” simply appends well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. The courts recognize <for example receiving or transmitting data over a network> as one of the well-understood, routine and conventional activities (see MPEP 2106.05(d)(II).
Regarding Claims 10-15, Claims 10-15 do not add anything significantly more to the abstract idea of Claim 9. Claims 10-15 do not integrate the abstract idea into a practical application because there are no additional meaningful elements within the claims that separate the invention from an abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Regarding Claim 16, the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) “segmenting utterances of a transcript of a communication session into one or more topic segments based on a determination of an utterance boundary based on a lexical score that is a vector product associated with an adjacent pair of text blocks; for each of the one or more topic segments, determining whether a respective topic segment is related to a topic“.
The claim is grouped as a mental process. This judicial exception is not integrated into a practical application because there are no additional meaningful elements within the claim that separate the invention from an abstract idea. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
The claim recites additional elements of “a non-transitory computer-readable medium comprising instructions that when executed by one or more processors, causes the one or more processors to perform operations comprising: transmitting, to one or more client devices, a list of topic segments that are related to the topic, the list comprising, for each topic segment that is related to the topic, a starting timestamp and an ending timestamp within the transcript” which taken individually amounts to adding insignificant extra solution activity to the judicial exception. 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 extra solution activity of “a non-transitory computer-readable medium comprising instructions that when executed by one or more processors, causes the one or more processors to perform operations comprising: transmitting, to one or more client devices, a list of topic segments that are related to the topic, the list comprising, for each topic segment that is related to the topic, a starting timestamp and an ending timestamp within the transcript” simply appends well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. The courts recognize <for example receiving or transmitting data over a network> as one of the well-understood, routine and conventional activities (see MPEP 2106.05(d)(II).
Regarding Claims 17-20, Claims 17-20 do not add anything significantly more to the abstract idea of Claim 16. Claims 17-20 do not integrate the abstract idea into a practical application because there are no additional meaningful elements within the claims that separate the invention from an abstract idea. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under double patenting and 35 U.S.C. 101, set forth in this Office action.
The following is a statement of reasons for the indication of allowable subject matter:
In interpreting the currently amended claims, in light of the specification, the Examiner finds the claimed invention to be patentably distinct from the prior art of record.
Regarding Claims 1-20, the closest prior art of record Pappu et al (“Pappu”, US 20170062010, included in IDS filed 4/22/2025) in view of McDermid et al (“McDermid”, US 20220383865, included in IDS filed 4/22/2025) in further view of Johnson Premkumar et al (“Johnson”, US 20200342182, included in IDS filed 4/22/2025) does not teach a method, comprising: segmenting utterances of a transcript into one or more topic segments based on a determination of an utterance boundary based on a lexical score that is a vector product associated with an adjacent pair of text blocks; for each of the one or more topic segments, determining whether a respective topic segment is related to a topic; and transmitting, to one or more client devices, a list of topic segments that are related to the topic.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Shires et al (US 20200065379, included in IDS filed 4/22/2025), Abstract - The subject matter of this specification can be embodied in, among other things, a method that includes receiving two or more data sets each representing speech of a corresponding individual attending an internet-based social networking video conference session, decoding the received data sets to produce corresponding text for each individual attending the internet-based social networking video conference, and detecting characteristics of the session from a coalesced transcript produced from the decoded text of the attending individuals for providing context to the internet-based social networking video conference session.
Cartwright (US 20180191912, included in IDS filed 4/22/2025), Abstract - Various disclosed implementations involve processing and/or playback of a recording of a conference involving a plurality of conference participants. Some implementations disclosed herein involve receiving audio data corresponding to a recording of at least one conference involving a plurality of conference participants. In some examples, only a portion of the received audio data will be selected as playback audio data. The selection process may involve a topic selection process, a talkspurt filtering process and/or an acoustic feature selection process. Some examples involve receiving an indication of a target playback time duration. Selecting the portion of audio data may involve making a time duration of the playback audio data within a threshold time difference of the target playback time duration.
Szymanski et al (US 20210027783, included in IDS filed 4/22/2025), Abstract - A method and system of automatically identifying topics of a conversation are provided. An electronic data package comprising a sequence of utterances between conversation entities is received by a computing device. Each utterance is classified to a corresponding social action. One or more utterances in the sequence are grouped into a segment based on a deep learning model. A similarity of topics between adjacent segments is determined. Upon determining that the similarity is above a predetermined threshold, the adjacent segments are grouped together. A transcript of the conversation including the grouping of the adjacent segments is stored in a memory.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, 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 nonprovisional extension fee (37 CFR 1.17(a)) 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 mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to RAQIUL AMIN CHOUDHURY whose telephone number is (571)272-2482. The examiner can normally be reached Monday-Friday 7:30 AM - 5:30 PM.
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/RAQIUL A CHOUDHURY/Examiner, Art Unit 2444
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