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 .
Introductory Remarks
This action is in response to communications filed on 26 September 2025. Claim(s) 1-8 is/are presently pending in the application, of which, claim(s) 1, 7, and 8 is/are presented in independent form.
This application is a national stage of PCT/JP2024/006827 filed on 26 February 2024, which claims priority to Japanese Application No. 2023-051849 filed on 28 March 2023. The requirements of 35 USC 119(a-d) are considered met.
An IDS was received on 26 September 2025; all references are considered for their English language portions only.
Examiner’s Note
The rejections below group claims that may not be identical, but whose language and scope are so substantively similar as to lend themselves to grouping, in the interests of clarity and conciseness. Any citation to the instant specification herein is made to the PGPub version (if applicable).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 3 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 3 recites “an intent prediction search algorithm generated using predetermined machine learning”. The specification does not relay how this is generated as required by MPEP 2161.01.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 7, and 8 (and correspondingly their dependents) are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claims 1, 7, and 8, the phrase "or the like" renders the claim(s) indefinite because the claim(s) include(s) elements not actually disclosed (those encompassed by "or the like"), thereby rendering the scope of the claim(s) unascertainable. See MPEP § 2173.05(d). The dependent claims do nothing to cure this indefiniteness.
The term “related” in claims 1, 7, and 8 is a relative term which renders the claim indefinite. The term “related” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification does not provide a definition nor a standard for determining what would constitute “a word related to the target text”.
The term “similar” in claims 1, 7, and 8 is a relative term which renders the claim indefinite. The term “similar” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention. The specification does not provide a definition nor a standard for determining what would constitute “a word similar thereto”.
Claim 1, which is representative of claims 7 and 8, recites “acceptance unit for accepting, as a target text or the like, a word related to the target text or the like that is a prescribed word, phrase, or text”. It is unclear what the phrase “that is a prescribed word, phrase, or text” is meant to modify. If it is to modify the “word related to the target text or the like”, then it is indefinite as a phrase is not a word. If, on the other hand, it is meant to modify the “target text or the like”, then the claim lacks proper punctuation to reflect that. Claims 7 and 8 are likewise rejected, and the dependents are correspondingly rejected as they do nothing to cure this deficiency.
Claim limitations “acceptance unit for accepting, as a target text or the like, a word related to the target text or the like that is a prescribed word, phrase, or text to be presented to a user to achieve a predetermined object of the user”, “extraction unit for extracting one or more guidance sentence candidates that at least partially include the word or a word similar thereto from a guidance sentence dictionary in which a plurality of guidance sentence candidates intended by the user to reach the target text or the like are preregistered in association with the target text or the like”, “first presentation unit for presenting, to the user, the one or more guidance sentence candidates extracted by the extraction unit”, “second presentation unit for extracting the target text or the like associated with the selected guidance sentence candidate among the one or more guidance sentence candidates presented to the user by the first presentation unit, from the guidance sentence dictionary, and for presenting the extracted target text or the like to the user” and “chat control unit for causing a chatbot to execute control to chat with the user, and for controlling transfer of information between the acceptance unit to the second presentation unit and the chatbot to thereby cause the chatbot to generate an answer based on the target text or the like that is a presentation target by the second presentation unit, in response to a text input by the user” invoke 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. However, the written description fails to disclose the corresponding structure, material, or acts for performing the entire claimed function and to clearly link the structure, material, or acts to the function. The specification merely reflects that these units “function in the CPU 11”. Instant specification at 0087. This does not inform one of ordinary skill in the art of what hardware is meant to perform the claimed function. Therefore, the claim is indefinite and is rejected under 35 U.S.C. 112(b) or pre-AIA 35 U.S.C. 112, second paragraph.
Applicant may:
(a) Amend the claim so that the claim limitation will no longer be interpreted as a limitation under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph;
(b) Amend the written description of the specification such that it expressly recites what structure, material, or acts perform the entire claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(c) Amend the written description of the specification such that it clearly links the structure, material, or acts disclosed therein to the function recited in the claim, without introducing any new matter (35 U.S.C. 132(a)).
If applicant is of the opinion that the written description of the specification already implicitly or inherently discloses the corresponding structure, material, or acts and clearly links them to the function so that one of ordinary skill in the art would recognize what structure, material, or acts perform the claimed function, applicant should clarify the record by either:
(a) Amending the written description of the specification such that it expressly recites the corresponding structure, material, or acts for performing the claimed function and clearly links or associates the structure, material, or acts to the claimed function, without introducing any new matter (35 U.S.C. 132(a)); or
(b) Stating on the record what the corresponding structure, material, or acts, which are implicitly or inherently set forth in the written description of the specification, perform the claimed function. For more information, see 37 CFR 1.75(d) and MPEP §§ 608.01(o) and 2181.
Claims 4-6 recite “extracting the word to be accepted by the acceptance unit”. This phrase appears to be indefinite as how can the chatbot know ahead of time that the word will be accepted by the acceptance unit.
Generally, when the claims are indefinite, vague or unclear, they cannot be construed without speculation or conjecture; therefore, the indefinite claims are not treated on the merits with respect to prior art. See In re Steele, 305 F.2d 859, 862 (CCPA 1962) (A prior art rejection cannot be sustained if the hypothetical person of ordinary skill in the art would have to make speculative assumptions concerning the meaning of claim language.); see also In re Wilson, 424 F.2d 1382, 1385 (CCPA 1970) ("If no reasonably definite meaning can be ascribed to certain terms in the claim, the subject matter does not become obvious-the claim becomes indefinite."). Indeed, in this case the claims are so indefinite as to preclude subject matter eligibility analysis. Notwithstanding Steele, the Office has made every attempt to construe the claims in what the Office believes is the intent of the Applicants in the interest of compact prosecution.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TYLER J TORGRIMSON whose telephone number is (571)270-5550. The examiner can normally be reached Monday - Friday 9 am - 5:30 pm.
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/TYLER J TORGRIMSON/ Primary Examiner, Art Unit 2165
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