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 .
DETAILED ACTION
This Office Action is in response to Applicant’s communication filed on July 22, 2025 for the patent application 19/276,221. Claims 1 – 20 are pending in the application.
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.
Claim(s) 1 – 20 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 1 - 20 are either directed to a method or system or computer readable medium, which are statutory categories of invention. (Step 1: YES).
The Examiner has identified method claim 1 as the claim that represents the claimed invention for analysis and is similar to system claim 9 and computer readable claim 17. Claim 1 recites the limitations of:
( A ) receiving, via one or more processors, data indicating user selection of a first user interface element of a plurality of user interface elements included in a user interface tool displayed on a screen of a user interface for a software application, wherein the first user interface element of the user interface tool is associated with a first modality of a plurality of different modalities for supplementing an explanation displayed on the screen of the user interface and generated by the software application for a particular result determined by the software application, and wherein every other user interface element included in the plurality of user interface elements is associated with a respective modality of the plurality of different modalities;
( B ) providing, via the one or more processors and based on the receiving, inputs to a generative artificial intelligence model, the inputs comprising data indicative of the explanation and data indicative of a first natural language prompt associated with the first modality;
( C ) receiving, via the one or more processors, an output from the generative artificial intelligence model, the output based, at least in part, on the inputs provided to the generative artificial intelligence model, the output including supplemental content for the explanation according to the first modality;
( D ) displaying, via the one or more processors, the supplemental content within the screen of the user interface;
( E) receiving, via the one or more processors, user feedback on the supplemental content; and
( F ) training, via the one or more processors, the generative artificial intelligence model based on the user feedback.
These limitations without the bolded limitations above, cover performance of the limitations as certain methods of organizing human activity under their broadest reasonable interpretation.
More specifically, these limitations cover performance of the limitations as a fundamental economic practice.
In summary, if claim 1 limitations, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. Claims 9 and 17 are also abstract for similar reasons. (Step 2A-Prong 1: YES. The claims are abstract).
The use of the user interface or any of the bolded limitations in claim 1 are just applying generic computer components to the recited abstract limitations. Similar arguments apply to claims 9 and 17.
Therefore, the above mentioned judicial exception is not integrated into a practical application by merely applying generic computer components (bolded elements).
Furthermore, the “receiving”, “providing” and “displaying” steps are recited at a high level of generality and amounts to mere data gathering/transmitting, which are forms of insignificant extra-solution activity (See MPEP 2106.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)).
In addition, supported by specification, the computer hardware are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component., see MPEP 2106.05(f), where applying a computer or using a computer is not indicative of a practical application).
Claim 1, limitation ( A ) – ( F ) above in Applicant’s specification para [0031], which discloses “As shown, the software application 102 is stored in memory (not shown) of the server 110 and is executed by one or more processors of the server 110. In alternative embodiments, the software application 102 may be stored in memory of the client device 120 and executed by one or more processors of the client device 120. In this manner, the software application 102 may be executed locally on the client device 120. In still other embodiments, functionality of the software application 102 may be distributed amongst the server 110 and the client device 120. For instance, in such embodiments, one or more functions associated with the software application 102 may be executed on the server 110 and one or more functions associated with the software application 102 may be executed on the client device 120..“.
Also, claim 1, limitation ( A ) and ( D ) above in Applicant’s specification para [0020], which discloses “Example aspects of the present disclosure are directed to artificial intelligence based approaches for supplementing the explanation of the particular result deter-mined by the software application. For instance, in some embodiments, the user interface displaying the explanation of the particular result may additionally display a user interface tool. As will now be discussed, a user (e.g., a novice user) of the software application may interact with the user interface tool to request the explanation be supplemented in a plurality of different ways..“.
Also, claim 1, limitation ( A ) above in Applicant’s specification para [0021], which discloses “In some embodiments, the user interface tool may include a first user interface element that, when selected by the user, activates a first modality in which a more detailed explanation of the particular result is generated using a generative artificial intelligence model. For instance, in some embodiments, selection of the first user interface element by the user may cause the explanation (e.g., question and answer) generated by the software application to be provided as an input to the generative artificial intelligence model. Selection of the first user interface element by the user may also cause a natural language prompt associated with the first modality to be provided as an input to the generative artificial intelligence model. As an example, the natural language prompt associated with the first modality may read, "Based on the provided question and answer, please reformulate the answer in a way that is easy to understand for novice users. Provide more context and explain in depth." The generative artificial intelligence model may output a more detailed explanation of the particular result determined by the software application based, at least in part, on the inputs (that is, the natural language prompt associated with the first modality and the explanation generated by the software application)..“.
Also, claim 1, limitation ( B ), ( C ) and ( F ) above in Applicant’s specification para [0024], which discloses “In some embodiments, the user interface tool may include a fourth user interface element that, when selected by the user, activates a fourth modality in which one or more example scenarios of when the particular result is applicable and/or one or more example scenarios of when the particular result is not applicable may be generated using the generative artificial intelligence model. For instance, in some embodiments, selection of the fourth user interface element by the user may cause the explanation (e.g., question and answer) generated by the software application to be pro-vided as an input to the generative artificial intelligence model. Selection of the fourth user interface element by the user may also cause a natural language prompt associated with the fourth modality to be provided as an input to the generative artificial intelligence model. As an example, the natural language prompt associated with the fourth modality may read, "Based on the provided question and answer, provide example scenarios when this would and would not apply." The generative artificial intelligence model may output one or more example scenarios of when the particular result is applicable and/or one or more example scenarios of when the particular result is not applicable based, at least in part, on the inputs (that is, the natural language prompt associated with the fourth modality and the explanation generated by the software application).“. Similar arguments apply to claims 9 and 17.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Therefore, claims 1, 9 and 17 are directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application).
The claims 1, 9 and 17 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements (bolded elements above) amount to no more than mere instructions to apply the abstract idea using generic computer components. In conclusion, merely "applying" the exception using generic computer components cannot provide an inventive concept. Therefore, the claims 1, 9, and 17 are not patent eligible under 35 USC 101. (Step 2B: NO. The claims do not provide significantly more).
Dependent Claims
Dependent claims 2 - 8, 10 - 16 and 18 - 20 are also rejected under 35 U.S.C. 101.
Regarding claims 2, 10 and 18, these claims merely recite additional steps that amount to no more than insignificant extra-solution activity. Specifically, claim 2 states “wherein the explanation comprises a question and an answer.”. These steps amount to no more than mere data gathering/analysis, which is a form of insignificant extra- solution activity (See M PEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). Such limitations do not integrate the abstract idea into a practical application, or amount to significantly than the abstract idea, because the courts have found the concept of data gathering to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): GIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)). Similar arguments can be made for claims 10 and 18.
Regarding claims 3 and 11, these claims merely recite additional steps that amount to no more than insignificant extra-solution activity. Specifically, claim 3 states, “wherein the supplemental content comprises a follow-up question to the explanation and an answer to the follow-up question.”. These steps amount to no more than mere data gathering/analysis, which is a form of insignificant extra- solution activity (See M PEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). Such limitations do not integrate the abstract idea into a practical application, or amount to significantly than the abstract idea, because the courts have found the concept of data gathering to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): GIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)). Similar arguments can be made for claims 11.
Regarding claims 4 and 12, these claim merely recite additional steps that amount to no more than insignificant extra-solution activity. Specifically, claim 4 states, "wherein the supplemental content comprises a definition for a term included in the explanation.". These steps amount to no more than mere data gathering/analysis, which is a form of insignificant extra- solution activity (See M PEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). Such limitations do not integrate the abstract idea into a practical application, or amount to significantly than the abstract idea, because the courts have found the concept of data gathering to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): GIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)). Similar arguments can be made for claims 12.
Regarding claims 5 and 13, these claims merely alter the nature of the abstract idea to include steps for a mental process that could ordinarily occur during a interaction by reciting, “wherein the supplemental content comprises an example scenario in which the particular result determined by the software application is applicable.”. This amounts to no more than the user mentally determining, for example, whether to form an explanation to a result. Similar arguments can be made for claim 13.
Regarding claims 6 and 14, these claims merely alter the nature of the abstract idea to include steps for a mental process that could ordinarily occur during a interaction by reciting, "wherein the supplemental content comprises an example scenario in which the particular result determined by the software application is not applicable.". This amounts to no more than the user mentally determining, for example, whether to form an explanation to a result. Similar arguments can be made for claim 14.
Regarding claims 7 and 19, these claims merely provide further detail regarding the processing parsing the supplemental content. Merely stating “wherein the displaying comprises: parsing, by the one or more processors, the supplemental content to generate parsed content; and displaying, by the one or more processors and via the user interface, the parsed content within the user interface based, at least in part, on a position of the explanation and a position of the user interface tool.". This does not integrate the abstract idea into a practical application because it does not impose any meaningful limitation on practicing the abstract idea. Similar arguments can be made for claim 19.
Regarding claims 8 and 16, these claims merely recite additional steps that amount to no more than insignificant extra-solution activity. Specifically, claim 8 states, “displaying, by the one or more processors and via the user interface, the user interface tool and the explanation such that the user interface tool is positioned beneath the explanation.”. These steps amount to no more than mere data gathering/analysis, which is a form of insignificant extra- solution activity (See M PEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). Such limitations do not integrate the abstract idea into a practical application, or amount to significantly than the abstract idea, because the courts have found the concept of data gathering to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): GIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)). Similar arguments can be made for claim 19.
Regarding claim 20, this claim merely recite additional steps that amount to no more than insignificant extra-solution activity. Specifically, claim 20 states “wherein the displaying the supplemental content comprises displaying the supplemental content such that the supplemental content is positioned beneath the user interface tool.”. These steps amount to no more than mere data gathering/analysis, which is a form of insignificant extra- solution activity (See M PEP 2016.05(g): CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011); and GIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). Such limitations do not integrate the abstract idea into a practical application, or amount to significantly than the abstract idea, because the courts have found the concept of data gathering to be well-understood, routine, and conventional activity (See MPEP 2106.05(d): GIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015); and buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, (Fed. Cir. 2014)).
As a result, such limitations do not overcome the requirements as described above. Therefore, claims 2 - 8, 10 - 16 and 18 - 20 are directed to an abstract idea. Thus, claims 1 - 20 are not patent eligible.
Nonstatutory Double Patenting Rejection
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 non-statutory 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 USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal-Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1 - 20 are rejected on the ground of non-statutory double patenting as being unpatentable U.S. Patent No. 12,387,278 (Pat.’278). Although the claims over claims 1 - 20 of at issue are not identical, they are not patentably distinct from each other because Applicant used a slightly different terminology to claim the same or substantially the same invention. See In re Griswold, 150 USPQ 804 (CCPA 1966) and MPEP § 804.02. In fact, a comparison between claims 1 - 20 of this application and claims 1, 3, 5 – 9, 11, 13 - 17 and 19 of Pat.’278 shows that these claims claim common elements such as “providing, via the one or more processors and based on the receiving, inputs to a generative artificial intelligence model, the inputs comprising data indicative of the explanation and data indicative of a first natural language prompt associated with the first modality; receiving, via the one or more processors, an output from the generative artificial intelligence model, the output based, at least in part, on the inputs provided to the generative artificial intelligence model, the output including supplemental content for the explanation according to the first modality; displaying, via the one or more processors, the supplemental content within the screen of the user interface; receiving, via the one or more processors, user feedback on the supplemental content; and training, via the one or more processors, the generative artificial intelligence model based on the user feedback. See In re Aller. To select the non-transitory, computer-readable medium storing instructions claimed in claims 1, 3, 5 – 9, 11, 13 - 17 and 19 of Pat.’278 as claimed in claims 1 - 20 of this application would have been an obvious choice by performing routine experimentation. KSR and stare decisis above.
It would have been obvious to the person having ordinary skill in the art before the effective filing date of the application to include one or more processors; and a memory storing computer-readable instructions, as claimed in this application as taught or suggested by claims 1, 3, 5 – 9, 11, 13 - 17 and 19 of Pat.’278 because application claims 1 - 20 would have been obvious over the reference claims 1, 3, 5 – 9, 11, 13 - 17 and 19 in Pat.’278.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN H. HOLLY whose telephone number is (571)270-3461. The examiner can normally be reached on MON. - FRI 10 AM - 8 PM.
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/John H. Holly/Primary Examiner, Art Unit 3696
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