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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/20/26 has been entered.
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 1-2, 4-8, 15-18, and 21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claims 1-2, 4-8, 15-18, and 21 are directed to an abstract idea without significantly more. The claims recite a mental process that can be performed by human being and/or the rules of a game and/or training/employing a machine learning model in a particular technological environment.
In regard to Claims 1 and 15, the following limitations can be performed as a mental process by a human being in terms of claiming collecting data, analyzing that data, and providing outputs based on that analysis which has been held by the CAFC to be an abstract idea in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential); and/or claim the rules of a game which has been held by the CAFC to be patent ineligible in decisions such as, e.g., Savvy Dog Systems (non-precedential); and/or training/employing a machine learning model in a particular technological environment, which has been held by the CAFC to be abstract in, e.g., Recentive Analytics, in terms of claiming:
[a] method for controlling a […] game […] using model output of a multimodal […] model, the method comprising:
receiving […] a user input having a first content type;
generating a prompt for priming the multimodal […] model based on the user input, wherein:
the multimodal generative […] model is configured to receive a prompt and generate a response thereon:
the prompt corresponds to a plurality of behaviors each associated with a different scenario of the […] game […]; and
the prompt includes
natural language;
a programmatic definition of at least one of the behaviors;
a [script] portion comprising at least one of a comment or a [script] corresponding to the […] game […];
a scenario-specific portion associated with a current scenario of the […] game […];
determining, based on the received user input and the prompt associated with the […] game […], a model output associated with the multimodal […] model, wherein the multimodal […] model is associated with the first content type and a second content type, wherein the model output comprises generated natural language model output and generated [script] output;
executing one or more instructions of the generated [script] output to control functionality of the […] game […]; and
displaying the natural language model output on a display in association with a display element.
In regard to Claims 1 and 15, training/employing a machine learning model in a particular technological environment has been held by the CAFC to be abstract in, e.g., Recentive Analytics.
In regard to the dependent claims, they also claim an abstract idea to the extent that they merely claim further limitations that likewise could be performed as a mental process by a human being and/or claim the rules of a game and/or claim training/employing a machine learning model.
Furthermore, this judicial exception is not integrated into a practical application because to the extent that additional elements are claimed either alone or in combination such as, e.g., a processor, a display, memory storing instructions, computer instructions embodying Applicant’s claimed abstract idea(s), a video game application, and/or training employing a multimodal generative machine learning model, these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering), to embody the abstract idea on a general purpose computer, and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In this regard, see MPEP 2106.04(d)(I) in regard to “courts have also identified limitations that did not integrate a judicial exception into a practical application…”
Furthermore, the claims do not include additional elements that taken individually, and also taken as an ordered combination, are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g., a processor, a display, memory storing instructions, computer instructions embodying Applicant’s claimed abstract idea(s), a video game application, and/or training employing a multimodal generative machine learning model, these are generic, well-known, and conventional elements and are claimed for the generic, well-known, and conventional functions of collecting and processing data and/or providing an analysis/outputs based on that processing. To the extent that an apparatus is claimed as an additional element said apparatus fails to qualify as a “particular machine” to the extent that it is claimed generally, merely implements the steps of Applicant’s claimed method, and is claimed merely for purposes of extra-solution activity or field of use. See MPEP 2106.05(b). As evidence that these additional elements are generic, well-known, and conventional, Applicant’s specification discloses the support for these elements 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). See, e.g., F1 in Applicant’s PGPUB and text regarding same; and, e.g., p61 in regard to training/employing a generative machine learning model.
Response to Arguments
Applicant argues on page 10 of its Remarks in regard to the rejections made under 35 USC 101:
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Applicant’s arguments are not persuasive. Applicant includes numerous limitations here (e.g., “video game”, “machine learning model”) which are not, in fact, alleged in the 101 rejection as being part of the abstract idea that can be performed as a mental process. What is more, Applicant’s claimed invention is directed to collecting data (e.g., user input), analyzing that data (e.g., employing the user input and other data to generate a prompt for a model, the model then generating both natural language and script outputs), and providing outputs based on that analysis (e.g., employing the natural language output as part of the game, and employing the script in order to change the game play of the game), and such subject matter has been repeatedly held to be patent ineligible by the CAFC as an abstract idea in the form of a mental process in decisions such as, e.g., Electric Power Group, University of Florida Research Foundation, and Yousician v Ubisoft (non-precedential). Applicant is basically claiming a mental process in which the way in which the game is played is partially determined based on a model used to determine, e.g., actions taken and words spoken by NPC’s in the game. This is no different than the actions that might be taken by, e.g., a human dungeon master in a game of Dungeons and Dragons by employing a mental model/algorithm to determine the actions and/or words spoken by NPC’s in a particular game campaign.
Applicant also argues that it has claimed a “practical application” and thereby claimed patent eligible subject matter under the Mayo test. Applicant’s argument is not persuasive. The Mayo test is a legal test and “practical application” is not part of the Mayo test but is, instead, a burden placed on examiners by the Office when they are making a 101 rejection employing the Mayo test. Simply invoking “practical application” but without citing specific legal authority in support of Applicant’s argument that it has claimed patent eligible subject matter under the two-part Mayo test, therefore, does not provide a proper basis or rationale as to why the 101 rejection being made is allegedly deficient.
Conclusion
The prior art made of record and not relied upon is listed in the attached PTO-Form 892 and is considered pertinent to applicant's disclosure.
Any inquiry concerning this communication or earlier communications from the Examiner should be directed to Mike Grant whose telephone number is 571-270-1545. The Examiner can normally be reached on Monday through Friday between 8:00 a.m. and 5:00 p.m., except on the first Friday of each bi-week.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner's Supervisory Primary Examiner, Peter Vasat can be reached at 571-270-7625. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL C GRANT/Primary Examiner, Art Unit 3715
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