DETAILED ACTION
This action is written in response to the application filed 4/4/23. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Invention Title
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
Claim Rejections - 35 USC § 101
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention lacks a specific and substantial utility.
The claimed invention lacks a specific utility.
A "specific utility" is specific to the subject matter claimed and can "provide a well-defined and particular benefit to the public." In re Fisher, 421 F.3d 1365, 1371, 76 USPQ2d 1225, 1230 (Fed. Cir. 2005). This contrasts with a general utility that would be applicable to the broad class of the invention. Office personnel should distinguish between situations where an applicant has disclosed a specific use for or application of the invention and situations where the applicant merely indicates that the invention may prove useful without identifying with specificity why it is considered useful.” (MPEP 2107.01(I)(A))
Claim 1 recites “a method for processing data” comprising generating three distinct models. There are no meaningful limitations in the claim regarding what kind of models are being generated, nor what purpose they serve. Although the claim specifies that the “initial sample set” (ie the input data) comprises “question-answer pairs”, this information suggests but does not strictly limit the purpose of the recited model.
The claimed invention lacks a substantial utility.
"[A]n application must show that an invention is useful to the public as disclosed in its current form, not that it may prove useful at some future date after further research. Simply put, to satisfy the ‘substantial’ utility requirement, an asserted use must show that the claimed invention has a significant and presently available benefit to the public." In re Fisher, 421 F.3d 1365, 1374, 76 USPQ2d 1225, 1232. See also MPEP 2107.01.
Independent claim 1 is directed to a method for generating three unspecified models with unspecified purposes. Because of these deficiencies, the Examiner finds that the claimed invention does not have any significant benefit to the public that was available at the time of filing based on the specification.
For the forgoing reasons, independent claim 1 is rejected as lacking specific and substantial utility. Independent claims 11 and 20 are rejected for the same reasons, and all pending dependent claims inherit this deficiency from their respective parent claims.
Claim Rejections - 35 USC § 112(b) - Indefiniteness
The following is a quotation of the second paragraph of 35 U.S.C. 112:
(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.
Claims 1-20 are rejected under 35 U.S.C. 112(b), as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Independent claim 1 recites “an initial model”, “a first model”, “a second model” and “a third model”. However, the purpose or function of each of these models is unclear. For instance, each ‘model’ could refer to:
a data processing model, eg as discussed in the written description at [0025] and illustrated at fig. 1.
a chatbot model, ie a model for answering user’s natural language questions, eg as discussed in the written description at [0021] and illustrated at fig. 1; or
something else.
The Applicant’s specification does not seem to provide meaningful guidance as to the scope of the ‘model’ terms in question. Because it is not clear which of the above interpretations is applicable, each identified term is ambiguous, and consequently a person of ordinary skill would not be able to understand the scope of the claim with reasonable certainty. Therefore claim 1 is indefinite. This rejection applies equally to independent claims 11 and 20, which recite similar language, as well as all pending dependent claims, which inherit this deficiency.
Additionally, claim 3 recites “removing samples having a match probability lower than a first match probability threshold”. However, it is unclear what “match probability” means:
Is this the probability that a given answer matches a given question?
Is this the probability that a given question matches a query provided by a user?
Is this the probability that the QA pair matches another QA pair in the sample set?
The Applicant’s specification does not seem to provide meaningful guidance as to the scope of the term in question. Because it is not clear which of the above interpretations is applicable, the term is ambiguous, and consequently a person of ordinary skill would not be able to understand the scope of the claim with reasonable certainty. Therefore claim 3 is indefinite. This rejection applies equally to claims 4 and 13-14, which recites similar language.
Claim Rejections - 35 USC § 112(a) - Enablement
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.
Claims 1-20 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Independent claim 1 comprises several limitations which are unclear:
“determine a first sample subset in an initial sample set by an initial model”
What is the initial model? What does it do? (See §112(b) indefiniteness rejections supra.)
How is the subset determined? What is the criterion for selection within the set?
“generating a first model by training the initial model with the first sample subset”
What is the first model? What does it do? (See §112(b) indefiniteness rejections supra.)
“generating a second model by training the first model with the second sample subset”
What is the second model? What does it do? (See §112(b) indefiniteness rejections supra.)
“generating a third model by training the second model with the third sample subset”
What is the third model? What does it do? (See §112(b) indefiniteness rejections supra.)
In determining that the claims do not satisfy the enablement requirement, the examiner has considered each of the factors specified in In re Wands. (858 F.2d 731, 737 (Fed. Cir. 1988).)
(A) the breadth of the claims, and (B) the nature of the invention
The claims are broad in the sense that the claim preamble—as well as the title of the invention—specifies no purpose beyond “processing data”. The nature if the invention is not recited and not clear.
(C) the state of the prior art and (D) the level of one of ordinary skill
The Applicant cites no art in their IDS which makes clear their intentions with the claim language. Even highly skilled machine learning engineers cannot infer the meaning of the identified terms without additional guidance from the applicant.
(E) The level of predictability in the art
Although computer science is a highly predictable field, new techniques must be well described before they can be reproduced by others.
(F) The amount of direction provided by the inventor
The Applicant has provided little guidance on how to accomplish the above-identified critical steps in the claimed invention.
(G) The existence of working examples
The Applicant provides no working example of the claimed invention.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure
Experimentation alone would not bring a computer scientist—even a highly skilled one—closer to reproducing the claimed invention without further guidance as to how to implement the feature in question.
The examiner has considered the factors above and found that the quantity of experimentation necessary to reproduce the claimed invention is undue. Accordingly, claim 1 is rejected for lack of enablement. This rejection applies equally to independent claims 11 and 20, as well as to dependent claims 2-10 and 12-19.
No Prior Art Search Performed
Because the claims are insolubly ambiguous, no examination with respect to the prior art has been performed. See In re Wilson, 424 F.2d 1382, 165 USPQ 494 (CCPA 1970) (if no reasonably definite meaning can be ascribed to certain claim language, the claim is indefinite, not obvious); In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962) (it is improper to rely on speculative assumptions regarding the meaning of a claim and then base a rejection under 35 U.S.C. 103 on these assumptions).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Vincent Gonzales whose telephone number is (571) 270-3837. The examiner can normally be reached on Monday-Friday 7 a.m. to 4 p.m. MT. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Miranda Huang, can be reached at (571) 270-7092.
Information regarding the status of an application may be obtained from the USPTO Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov.
/Vincent Gonzales/Primary Examiner, Art Unit 2124
Prosecution Insights