DETAILED ACTION
Remarks
Applicant presents a communication filed 22 October 2025 in response to the 12 August 2025 non-final Office action (the “Previous Action”).
Claims 1, 9 and 17 are amended.
Claims 1, 4-9 and 12-20 are pending. Claims 1, 9 and 17 are the independent claims.
Any unpersuasive arguments are addressed in the “Response to Arguments” section below.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 22 October 2025 has been entered.
Examiner Notes
Examiner cites particular columns, paragraphs, figures and line numbers in the references as applied to the claims below for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may apply as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in their entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Allowable Subject Matter
Claims 1, 9 and 17 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112 set forth in this Office action. Claims 4-8, 12-16 and 18-20 would be allowable via dependency from claims 1, 9 or 17.
Note, however, that the subject matter distinguishing the claims from the prior art is the subject matter asserted to be new matter below. Amending that subject matter is thus likely to affect allowability of the claims.
Response to Arguments
Applicant argues with respect to the § 112(a) rejections of claim 1 that “the natural language test instructions configured to cause the software agent to: instantiate virtual computing resources based on the user interface-configurable characteristics at the respective geographic region” and “instantiate virtual computing resources based on the user interface-configurable characteristics at the respective geographic region” language of the independent claims is supported in paragraphs [0005], [0006], [0021], [0035] and [0040] of the application publication. (Remarks, pp. 9-10).
Examiner respectfully disagrees.
Paragraph [0005-0006] discloses that natural language test instructions are provided to an agent, which then generates a test script. But those paragraphs thus do not describe the natural language test instructions causing the agent to obtain any characteristics representing current conditions in a geographic region or instantiate virtual computing resources based on those characteristics. They only describe the natural language instructions causing the agent to generate a test script.
Paragraph [0021] describes communicating desired “functionality to be tested” to an agent by selecting from a list of functionalities or entering natural language descriptions of the functionalities. But it again does not describe this functionality to be tested causing the agent to obtain “characteristics representing current conditions at the respective geographic region” or instantiate virtual computing resources.
Paragraph [0035] describes specifying or selection of characteristics “from available options in the menu(s) of the user’s interface.” But it again does not describe any “natural language test instructions configured to cause the agent” to obtain these characteristics or instantiate any resources based on them.
Paragraph [0040] discloses that navigating a menu of natural language test intent (an example of “functionality to be tested”) results in providing information for generation of scripts to the agent. But it does not describe any such test intent causing the agent to obtain “characteristics representing current conditions at the respective geographic region” or instantiate virtual computing resources either.
The point of Applicant’s arguments appears to be that because paragraph [0040] refers to selection from a menu of natural language test intent, the selection of characteristics from menus described in paragraph [0035] refers to the same. Examiner respectfully disagrees and submits that no part of the specification discloses that the menu(s) from which characteristics are selected include a menu of natural language test intent or that characteristics are test intent. The specification on the contrary appears to distinguish characteristics from test intent because it describes each as including disparate subject matter. For example, characteristics are described as including “operating systems, currently browser types and versions, and supported applications associated with the enterprise” whereas test intent is described as an example of “functionality to be tested” such as “log in to the CRM application” and “create a lead.” (See pars. [0035], [0040] and [0021] of the application publication).
Applicant’s arguments with respect to claim 1 are accordingly unpersuasive.
Applicant’s arguments with respect to the remaining claims by virtue of their similarity with claim 1, dependence from claim 1 or dependence from a similar claim are unpersuasive for the same reasons.
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.
Claims 1, 4-9 and 12-20 are 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.
As to claim 1, the claim refers to:
…the natural language test instructions configured to cause the software agent to…obtain a plurality of user interface-configurable characteristics including…
There does not appear to be sufficient sport in the originally filed specification for these features. Paragraph [0035] describes user interface-configurable characteristics of an agent’s personality and paragraph [0036] refers to instantiating the resources based on a software agent’s “understanding of its own personality” but no paragraph describes natural language test instructions instructing the agent to obtain those characteristics. No passage of the originally filed specification appears to disclose what is claimed.
Further as to claim 1, the claim refers to:
…the natural language test instructions configured to cause the software agent to:…instantiate virtual computing resources based on the user interface-configurable characteristics at the respective geographic region…
There does not appear to be sufficient sport in the originally filed specification for these features. Paragraph [0036] comes the closest but that paragraph only refers to instantiating the resources based on a software agent’s “understanding of its own personality (e.g., based on the devices of a known user population).” It does not describe any natural language test instructions instructing the agent to instantiate the resources. No passage of the originally filed specification appears to disclose what is claimed.
As to claims 4-8, the claims are dependent on claim 1 but do not cure the deficiencies of that claim. Accordingly, they are rejected for the same reasons.
As to claim 9, the claim recites the same new matter as claim 1 and is rejected for the same reasons.
As to claims 12-16, the claims are dependent on claim 9 but do not cure the deficiencies of that claim. Accordingly, they are rejected for the same reasons.
As to claim 17, the claim recites the same new matter as claim 1 and is rejected for the same reasons.
As to claims 18-20, the claims are dependent on claim 17 but do not cure the deficiencies of that claim. Accordingly, they are rejected for the same reasons.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TODD AGUILERA whose telephone number is (571)270-5186. The examiner can normally be reached M-F 11AM - 7:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hyung S Sough can be reached at (571)272-6799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/TODD AGUILERA/Primary Examiner, Art Unit 2192