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 .
Response to Amendment
Claims 7 and 19 have been amended to correct for the rejection made pursuant to 35 U.S.C. 112 and as such the rejection has been withdrawn.
Claims 2 and 14 have been canceled and as such all rejections to the canceled claims are withdrawn as moot.
Response to Arguments
Applicant's arguments filed 3/9/2026 regarding the rejection made pursuant to 35 U.S.C. 101 have been fully considered but they are not persuasive.
In particular, applicant argues that “[t]he claims are directed to a method and system that train a model based at least in part on one or more depictions of an object[ where the] model is trained to operate on structured data to generate variant images of the object, wherein the variant images meet a threshold level of likeness to the one or more depictions of the object, and wherein the threshold level of likeness is less than total likeness” and “[t]he use of structured descriptions and structured requests that indicate, using one or more characters of a set of characters, one or more elements in a content item that will need to be altered to the threshold level of likeness (which is not total likeness) amounts to a technical improvement in the operation of a computer system” (see page 9 of applicant’s correspondence filed 3/9/2026). Examiner respectfully disagrees.
The claims are not recited to the operations of the computer itself that provides computer functionality, operations, or even improvements to how the computer operates or performs the parsing of language or the model training. Instead, the claim is recited at a high level of generality, merely stating that natural language is used for identifying and generating more language, but not the particulars of how it is done. The claim merely states that a natural language description is received, a “structured description” is generated based on the natural language description, and further generating a “structured request” to alter one or more elements in the content item, merely suing characters of natural language. This is merely reciting that a person receives a natural language description of an image or content item and summarizes the description in some manner, in the very least identifying a word or two, and using those identified words as a request or command to do something. There is no technological improvement involved.
The claim at most captures human mental activity with the aid of natural language, such as a teacher reading a description of an image to themselves, identifying certain words, and speaking those words to students for students to perform a task, or even the teacher himself using those identified words to perform a task (e.g. image is of Michelangelo’s David, and the teacher reads a description of a the bigger than life hand, and draws a stick figure of David with a big hand). Applicant’s claim does not specify how the computer actually parses the sentences (i.e. improvement to OCR techniques that obtain an image, mask out pixels of the image to obtain specific words, identify the words, map the words to context, identify related context, input identified contents to a machine learning system; or how a computer obtains ASCII text, parses the text by splitting the text coded in memory, using a memory system to coordinate mapping of the text to associated data in a database, etc.) The claim furthermore fails to even include any limitations directed to the training of the machine learning model as applicant argues. At most, the claim merely inserts a text prompt as input into a machine learning model that is a black box generating the output. There is no claimed description of the internal functions of the machine learning model, such as weightings of vector values, particular networked data nodes for organizing and traversing associations, etc.
Applicant further cites to Enfish, LLC v. Microsoft Corp as an analogous fact pattern to the current claims (see page 9 of applicant’s correspondence filed 3/9/2026). Examiner disagrees with this comparison. Applicant’s claims do not focus on the specific asserted improvement in computer capabilities, as in Enfish (i.e. the self-referential table for a computer database itself). In Enfish, the claims recited the specific structure of the self-referential table including logical rows and columns, and the indexing for storing the data as used in memory, which improved the functionality of the memory itself. Instead, Applicant’s claims focus on the merely concepts that can be performed mentally by a human with use of pen and paper as an aid. The claims are not directed to how the computer itself is improved upon. Any parsing, context derivation, or even modification of the content item using a machine learning model is recited in such a high level of generality they are merely black boxes that result in the claims at most being apply-it type claims where the computer is merely utilized as a tool for otherwise automating the abstract concepts. Accordingly, applicant’s arguments are not persuasive.
Applicant’s arguments, see applicant’s correspondence, filed 3/9/2026, with respect to rejection of claims under 35 U.S.C. 103 have been fully considered and are persuasive. The rejection of the claims pursuant to 35 U.S.C. 103 has been withdrawn.
Claim Rejections - 35 USC § 112
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 13, 15-20 and 62 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.
Claim 13 recites the limitation "the threshold level of likeness" in line 24 (second to last indented limitation). There is insufficient antecedent basis for this limitation in the claim.
Claims 15-20 and 62 depend from claim 13 and incorporate the same indefinite language.
Claim Rejections - 35 USC § 101
Claims 1, 3-13, 15-20, and 61-62 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. law of nature, natural phenomenon, or abstract idea) without significantly more.
Regarding claim 13, the claim is reproduced below with bracketed paragraph designators added for clarity and emphasis added to the claim language that recites an abstract idea:
13. A system comprising:
[(A)] input/output circuitry configured to:
[(B)] receive an input at a first device;
[(C)] processing circuitry configured to:
[(D)] access, at a computing device, one or more media items associated with a user profile, wherein the one or more media items comprise one or more depictions of an object, and
[(E)] wherein the one or more depictions of the object are provided by a device associated with the user profile;
[(F)] access a content item;
[(G)] receive a natural language description of one or more elements in the content item;
[(H)] generate, based on the natural language description, a structured description, wherein the structured description comprises natural language content, and where the structured description indicates the one or more elements using one or more characters of a set of characters;
[(I)] generate, based on the structured description, a structured request to alter one or more elements in the content item, wherein the structured request indicates the one or more elements using one or more characters of the set of characters;
[(J)] identify, in the content item and based on the structured request, the one or more elements to alter, wherein the identifying comprises detecting, in the structured request, one or more characters of the set of characters which indicate the one or more elements to alter;
[(K)] input the structured request into the trained machine learning model to alter the one or more elements in the content item to the threshold of likeness; and
[(L)] generate, for output, an altered content item comprising the one or more altered content item elements.
In determining whether a claim falls within an excluded category, the office is guided by the Court’s two-step framework, described in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), and Alice, 573 U.S. at 217–18 (citing Mayo, 566 U.S. at 75–77). In accordance with that framework, the Office first determines what concept the claim is “directed to.” See Alice, 573 U.S. at 219 (“On their face, the claims before us are drawn to the concept of intermediated settlement, i.e., the user of a third party to mitigate settlement risk.”); see also Bilski v. Kappos, 561 U.S. 593, 611 (2010) (“Claims 1 and 4 in petitioners’ application explain the basic concept of hedging, or protecting against risk.”)
Concepts determined to be abstract ideas, and thus patent ineligible, include certain methods of organizing human activity, such as fundamental economic practices (Alice, 573 U.S. at 219–20; Bilski, 561 U.S. at 611); mathematical formulas (Parker v. Flook, 437 U.S. 584, 594–95 (1978)); and mental processes (Gottschalk v. Benson, 409 U.S. 63, 67 (1972)). Concepts determined to patent eligible include physical and chemical processes, such as “molding rubber products” (Diamond v. Diehr, 450 U.S. 175, 191 (1981)); “tanning, dyeing, making water-proof cloth, vulcanizing India rubber, smelting ores” (id. At 182 n. 7 (quoting Corning v. Burden, 56 U.S. 252, 267–68 (1854))); and manufacturing flour (Benson, 409 U.S. at 69 (citing Cochrane v. Deener, 94 U.S. 780, 785 (1876))).
Step 1: The claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. § 101: process, machine, manufacture, or composition of matter. Accordingly, we turn to step 2A of the 2019 Guidance.
STEP 2A, PRONG 1: Under step 2A, prong 1, of the 2019 Guidance, we first look to whether the claim recites any judicial exceptions, including certain groupings of abstract ideas (i.e., mathematical concepts, certain methods of organizing human activity such as a fundamental economic practice, or mental processes). MPEP § 2106.04(a).
Regarding claim limitation (H), the limitation recites, “generate, based on the natural language description, a structured description, wherein the structured description comprises natural language content, and where the structured description indicates the one or more elements using one or more characters of a set of characters.”
Regarding claim limitation (I), the limitation recites, “generate, based on the structured description, a structured request to alter one or more elements in the content item.” The claim limitation provides no specifics as to how the request is generated. Instead, the claim limitation is so generic as to include a person looking at a description and making an opinion of what should be changed. Moreover, the specification does not provide any additional explanation as to how any technology performs the steps, other than word association based on labels, and even goes so far as to state that such generated request can be the result of a user providing the request (see US PG-PUB of applicant’s spec. ¶30). In other words, the limitation amounts to claiming a person thinking about provided label data and making a request. Accordingly, this claim limitation at most merely recites a mental process of an abstract concept that can be performed in the human mind, including observation, evaluation, judgement, and opinion. See MPEP 2106.04(a)(2), subsection III.
Regarding claim limitation (J), the limitation recites, “identify, in the content item and based on the structured request, the one or more elements to alter, wherein the identifying comprises detecting, in the structured request, one or more characters of the set of characters which indicate the one or more elements to alter.” The identifying is at most merely a mental process in the form of a concept that can practically be performed in the human mind, or by a human using pen and paper as a physical aid. The limitation is analogous to a human reading a sentence or number of words and identifying associated words that should be altered. Accordingly, this claim limitation at most merely recites a mental process of an abstract concept that can be performed in the human mind, including observation, evaluation, judgement, and opinion. See MPEP 2106.04(a)(2), subsection III.
Regarding claim limitation (L), the limitation recites, “generate, for output, an altered content item comprising the one or more altered content item elements.” The claim merely recites what is input into a trained machine learning model, but does not provide any details how the trained machine learning model operates or how the alteration is made. Note that “for output” is merely recited as intended use. The specification is also vague about how any computation is performed, merely stating that content is altered using the trained machine learning model as a generic black box, without any of the particulars of how the alteration is performed (see e.g. US PG-PUB ¶41 and ¶44 merely disclosing that labelled items are used for altering a content item, but not specifying how). The limitation therefore at most attempts to claim a method of organizing human activity involving altering some content item, by using some description data of the content. This is analogous to grouping photos into a collage of gathered images based on the content (e.g. group all cat images) or even adjusting the perspective of the image, such as turning it upside down based on oral instructions. Without anything more specific as to how the particular machine model technology itself operates, the claim limitation is at most reciting an ineligible abstract concept.
STEP 2A, PRONG 2: Under step 2A, prong 2, of the 2019 Guidance, we next analyze whether the claim recites additional elements that individually or in combination integrate the judicial exception into a practical application. 2019 Guidance, 84 Fed. Reg. at 53–55. The 2019 Guidance identifies considerations indicative of whether an additional element or combination of elements integrate the judicial exception into a practical application, such as an additional element reflecting an improvement in the functioning of a computer or an improvement to other technology or technical field. Id. at 55; MPEP § 2106.05(a).
Claim limitations (D), (E), (F) and (G) are directed to retrieving or accessing data. In particular, limitation (D) recites, “access, at a computing device, one or more media items associated with a user profile, wherein the one or more media items comprise one or more depictions of an object”, limitation (E) recites, “[(E)] wherein the one or more depictions of the object are provided by a device associated with the user profile”, limitation (F) recites, “access a content item”, limitation (G) recites, “receive a structured description of one or more elements in the content item”, and limitation (K) recites “input the structured request into the trained machine learning model to alter the one or more elements in the content item to the threshold of likeness” The claim at most recites the steps are merely performed by a computer at a high level of generality, i.e. as a generic computer performing generic computer functions, such as transmitting, accessing, and retrieving data. The characterization of the device associated with a user profile is moreover merely a description of how the type of data itself, and not a meaningful technological limitation to the functionality or improvement of the image processing or functionality of the trained machine learning model itself. Limitation (K) is furthermore merely the input of data into a system, where the inputted data is merely a result of a mental process of reading text and speaking or typing, or otherwise providing some sort of related input to the computer device, where the computer itself is not being improved upon, but rather used as merely a tool for implementation and data gathering. The courts have held that merely gathering data for use is merely pre-solution activity and does not integrate otherwise abstract ideas into a practical application that renders the claim significantly more than the abstract idea itself (see MPEP 2106.05(g)). Accordingly, merely reciting the generic accessing and obtaining of the data used for processing is not enough to render the claim patent eligible.
STEP 2B: Under step 2B of the 2019 Guidance, we next analyze whether the claim adds any specific limitations beyond the judicial exception that, either alone or as an ordered combination, amount to more than “well-understood, routine, conventional” activity in the field. 2019 Guidance, 84 Fed. Reg. at 56; MPEP § 2106.05(d).
Limitations (A) and (B) recites “input/output circuitry configured to: receive an input at a first device.” The claim, however, does not recite any additional use of said input. This limitation merely recites a generic computer receiving input that is not even used for any additional function. Limitation (C) merely recites that “processing circuitry” performs the otherwise abstract or insignificant pre/post solution concepts. Without more than a general recitation of the conventional components, the limitations do not add significantly more than the abstract concepts themselves. 2019 Guidance, 84 Fed. Reg. at 52-55; MPEP § 2106.05(d). Merely implementing the steps on a computer, as recited in the claims, does not provide any particular technological advance to the operation of the computer or to a particular field of technology, other than the recited abstract ideas themselves.
As such, the claim does not recite additional elements that, either individually or as an ordered combination , amount to significantly more than the judicial exception within the meaning of the 2019 Guidance. 2019 Guidance, 84 Fed. Reg. at 52-55; MPEP § 2106.05(d).
Regarding claim 15, the claim recites “wherein the processing circuitry is further configured to identify a relationship between the user profile and each of the one or more media items by comparing a respective retrieved label with data associated with the user profile.” The limitation is at most merely reciting making a human judgement about a relationship between data by using observation to compare data. The claim further does not include any details as to how a computer performs the function other than generically reciting what can be performed by human in their own mind. Accordingly, this claim limitation at most merely recites a mental process of an abstract concept that can be performed in the human mind, including observation, evaluation, judgement, and opinion. See MPEP 2106.04(a)(2), subsection III. As such, the claim is directed to ineligible subject matter based on the same rationale as claim 13 set forth above.
Regarding claim 16, the claim merely recites wherein the same label is applied to a subset of the one or more media items. This at most merely describes the data that is retrieved, rather than any particular technological improvement. The claim does not add anything significantly more than the abstract ideas themselves. As such, the claim is directed to ineligible subject matter based on the same rationale as claim 13 set forth above.
Regarding claim 17, the claim merely recites wherein the media item comprises an image of a person, pet, or object related to the user profile. This at most merely describes the data that is retrieved, rather than any particular technological improvement. The claim does not add anything significantly more than the abstract ideas themselves. As such, the claim is directed to ineligible subject matter based on the same rationale as claim 13 set forth above.
Regarding claim 18, the claim recites “wherein the structured request to alter an element in the content item comprises using a generic model to perform at least a part of the altering.” This even further supports the rejection under ineligible subject matter as the claim specifically states any functions are merely “generic.” The specification is also vague about how any computation is performed, merely stating that content is altered using the trained machine learning model as a generic black box, without any of the particulars of how the alteration is performed (see e.g. US PG-PUB ¶41 and ¶44 merely disclosing that labelled items are used for altering a content item, but not specifying how). Without anything more specific as to how the particular machine model technology operates, the claim limitation is at most reciting an ineligible abstract concept. Moreover, the claim appears to at the very most state that some generic well-understood and well-known machine learning model is used, which supports that nothing new is added to the claim other than what would have been found well-known, routine and conventional to one of ordinary skill in the art at the time of filing. As such, without more, the claim is directed to ineligible subject matter based on the same rationale as claim 13 set forth above.
Regarding claim 19, the clam recites “comprising processing circuitry configured to: generate, based on the user profile, one or more toggles, each toggle associated with selecting a setting for an element of the one or more of elements; receive input, via the one or more toggles, to select one or more settings, each setting associated with one or more elements; and wherein the processing circuitry configured to alter the one or more elements in the content item further includes processing circuitry configured to apply the selected one or more settings to the associated one or more elements.” This is at most merely a recitation of a manner of organizing human behavior in the form of a checklist. There is nothing in the claim that improves upon a particular technology, but at most is merely an apply-it type claim for using a computer to implement a common checklist for deciding what activities to do, and nothing more. Accordingly, the claim merely recites an additional feature in the form of an abstract concept, without significantly more. As such, without more, the claim is directed to ineligible subject matter based on the same rationale as claim 13 set forth above.
Regarding claim 20, the claim merely categorizes the type of content for altering, stating “wherein the structured request to alter the one or more elements in the content item further comprises an instruction to alter one of the elements in the content item with an element from a subset of the one or more media items.” Again, this is merely a categorization of data used, but not any recitation of anything related to how the technology itself is operating or improved. The limitation therefore at most attempts to claim a method of organizing human activity involving altering some content item, no matter the type, by using some description data of the content. Without anything more specific as to how the particular machine model technology operates, the claim limitation is at most reciting an ineligible abstract concept, and is rejected based on the same rationale as claim 13 set forth above.
Claim 62 merely recites the type of objects depicted in the media items as a person or human, but does not recite any additional functionality or improvement to the computer technology itself. Accordingly, claim 62 is directed to ineligible subject matter for the same rationale as claim 13 set forth above.
Claims 1, 3-8 and 61 merely recite the operations performed by the system of claims 13, 15-20, and 62 respectively, but as method claims. Accordingly, the claims are rejected for the same reasons as claims 1, 3-8 and 61 as the claims do not add anything more to the otherwise ineligible subject matter discussed above. The claims is directed to ineligible abstract concept for the same reasons as claims 1, 3-8 and 61 set forth above.
Regarding claim 9, the claim merely recites that the structured request is to alter a size of the content elements. The limitation therefore at most attempts to claim a method of organizing human activity involving altering a content item using a specific parameter of size, but without any computer elements or functions provided. This is analogous to cutting a photo or otherwise a person doctoring the size of an image or media. Without anything more specific as to how the particular machine model technology operates, the claim limitation is at most reciting an ineligible abstract concept. The claim is directed to ineligible abstract concept for the same reasons as claim 13 set forth above.
Regarding claim 10, the claim merely recites wherein the structured request to alter the one or more elements in the content item further comprises an instruction to change a location of one or more of the altered content item elements in the content item. The limitation therefore at most attempts to claim a method of organizing human activity involving altering a content item by rearranging or moving parts, but without any computer elements or functions provided. This is analogous to shuffling pages on a table or merely moving piece like a jigsaw. Without anything more specific as to how the particular machine model technology operates, the claim limitation is at most reciting an ineligible abstract concept. The claim is directed to ineligible abstract concept for the same reasons as claim 13 set forth above.
Regarding claim 11, the claim merely recites wherein the structured request to alter the one or more elements in the content item further comprises an instruction to alter a background element in the content item. The limitation therefore at most attempts to claim a method of organizing human activity involving altering a content item merely specifying a type of content to change. The limitation attempts to claim a method of organizing human activity involving altering a background of an image in any manner of users judgment, without any computer elements or functions provided. Without anything more specific as to how the particular machine model technology operates, the claim limitation is at most reciting an ineligible abstract concept. The claim is directed to ineligible abstract concept for the same reasons as claim 13 set forth above.
Regarding claim 12, the claim merely specifies a type of data (wherein the content item is a personalized advertisement, movie trailer, movie, other video.) This does nothing other than characterize what data is used, and does nothing to further detail any particular technological improvement. Without more, the claim is directed to ineligible abstract concept for the same reasons as claim 13 set forth above.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Li et al. (US 2025/0225700 A1) discloses a related technology for image generation using prompts, including natural language prompts, inputting two images and a prompt describing what processing to perform on the images, including receive a natural language description of one or more elements in the content item (Li, Fig. 5B, element f, prompt is “a [V2] sculpture in front of a [V3] building” which describes one or more elements in input image of building; ¶69: the fine-tuned DBGNN 100-FT can then receive a new text prompt 112 describing the particular scene with one or more modifications, and process the new text prompt 112 to generate a new image 132 depicting the particular scene with the modification(s).) generate, based on the natural language description, a structured description, (Li, ¶70 discloses processing a text prompt to generate a new image based on particular words of the text prompt, i.e. “Beetle car” as object and “purple color” as object); generate, based on the structured description, a structured request to alter one or more elements in the content item, s (Li, ¶70 discloses processing a text prompt to generate a new image based on particular words of the text prompt, i.e. “Beetle car” as object and “purple color” as object; ¶91: process input text prompt -i.e. structured request - using encoder to generate a contextual embedding of input text prompt) and generating an image from the two input images and prompt (Li, Fig. 5B shows bear image created in front of “building”). The main difference from the current invention, however, is that the prompt is encoded into latent space for Li, and does not perform all the natural text processing performed by the current invention, maintaining the natural text characters as claimed, and further the particular generation using the threshold likeness as claimed.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM A BEUTEL whose telephone number is (571)272-3132. The examiner can normally be reached Monday-Friday 9:00 AM - 5:00 PM (EST).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, DANIEL HAJNIK can be reached at 571-272-7642. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILLIAM A BEUTEL/ Primary Examiner, Art Unit 2616
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