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 Arguments
Drawings
The applicant’s amendments have overcome the previous objections which is/are consequently withdrawn.
Specification
The applicant’s amendments have overcome the previous objections which is/are consequently withdrawn.
Claim Rejections under 35 U.S.C. §102
Applicant’s arguments have been considered but are moot because the new ground of rejection does not rely on any reference applied in the prior rejection of record for any teaching or matter specifically challenged in the argument.
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 1-20 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.
Claim 1 recites:
… determining a purpose associated with the prompt and the computer code;
searching a prompt index database of previously used prompts based on the prompt and the purpose of the prompt resulting in prompt search results;
selecting a previously used prompt from the prompt search results resulting in a selected prompt; and
based on the selected prompt, generating the computer code utilizing an artificial intelligence software application; …
The applicant indicates this is supported by par. [0013] of the specification. Par. [0013] does not disclose “determining a purpose” (the term “purpose” here appears to only describe the desired functionality of the software and not, e.g., as a sub-string of the prompt to be parsed out), searching a prompt index database (only disclosing searching a “cache”, or submitting a found/selected previously run prompt to the AI to generate the code (only generating code when no previous prompt matched). Accordingly, par. [0013] does not support the amendment as presented.
The examiner believes this amendment was intended to reflect the functionality, e.g., of the applicant’s fig. 3. The applicant’s par. [0023] discloses:
… The server, at 300c, searches a prompt index database 300b to determine a prompt index results that can be a list of previously received prompts that may be similar to the received prompt. … the server, 300g, obtains search results of multiple pieces of computer code form cache 300f based on the list of prompts.
This does not disclose a step of determining and searching for a “purpose” associated with the “prompt” separate from searching for the “prompt” itself and does not disclose the AI re-running the “selected prompt”. Accordingly it does not appear the claim amendments are supported in the specification in such a way as to convey to one skilled in the relevant art(s) that the inventor, at the time the application was filed, had possession of the claimed invention.
Claims 2-10 depend from claim 1 and are rejected accordingly.
Claim 11 recites language similar to that of claim 1 and is thus similarly rejected.
Claims 12-20 depend from claim 11 and are rejected accordingly.
Examiner’s Note
It is the examiner’s understanding that those of ordinary skill in the art would not have been reasonably motivated to re-run a “previously used prompt” without changing the principle of operation disclosed in Kunz (e.g. avoiding re-running prompts). In view of this, and the discussion above the claims are being understood in view of the functionality shown in applicant’s fig. 3. However, if it were shown that the limitation is in fact supported, the claim would likely be found allowable.
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2025/0085934 to Kunz (Kunz) in view of US 12,579,974 to Lu et al. (Lu).
Claim 1: Kunz discloses a device, comprising:
a processing system including a processor; and
a memory that stores executable instructions that, when executed by the processing system, facilitate performance of operations, the operations comprising:
receiving, over a communication network, first user-generated input from a first communication device associated with a first user, wherein the first user-generated input comprises a prompt that indicates to generate computer code (par. [0053] “one or more specific command in the software programming code … a first natural language prompt to generate a piece of software code”, par. [0035] “the application development client 104 may be were the user creates a software application 106”);
searching a cache comprising a group of computer code based on the prompt (par. [0054] “a file system cache is checked using the hash … the piece of software code”);
determining that there are no cache search results associated with the computer code in response to the searching of the cache (par. [0055] “If not, …”); and
based on the prompt, generating the computer code utilizing an artificial intelligence software application (par. [0055] “If not, … the second natural language prompt is sent as input to an LLM, which generates the piece of software code”).
Kunz does not explicitly disclose:
determining a purpose associated with the prompt and the computer code;
searching a prompt index database of previously used prompts based on the prompt and the purpose of the prompt resulting in prompt search results;
selecting a previously used prompt from the prompt search results resulting in a selected prompt.
Lu teaches:
determining a purpose associated with the prompt and the computer code (col. 25, lines 28-31 “processes the prompt data 735 to generate model output data representing the task to be completed”);
searching a prompt index database of previously used prompts based on the prompt and the purpose of the prompt resulting in prompt search results (col. 14, lines 45-51 “a cache to store outputs generated by a task selection language model 740 … keys for the cache may be generated using prompt data 735”);
selecting a previously used prompt from the prompt search results resulting in a selected prompt (col. 14, lines 45-51 “store LLM outputs that can be used to respond to similar/same prompt data 735”).
It would have been obvious before the effective filing date of the claimed invention to determine and search a prompt index database to select a previously used prompt. Those of ordinary skill in the art would have been motivated to do so “rather than … re-processing the prompt data” (Lu, col. 14, lines 45-51).
Claim(s) 2-8 and 11-17 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2025/0085934 to Kunz (Kunz) in view of US 12,579,974 to Lu et al. (Lu) in view of US 6,651,244 to Smith et al. (Smith).
Claims 2 and 11: Kunz and Lu teach claim 1, wherein the operations further comprise:
providing the computer code to a second communication device associated with a second user (par. [0035] “stored at the application development server 102 … allow other users to edit it”);
receiving s input (par. [0035] “allow other users to edit it”, par. [0009] “to be fixed manually and iteratively by a user”); and
adjusting the computer code based on the input resulting in an adjusted computer code (par. [0009] “to be fixed manually and iteratively by a user”).
Kunz does not explicitly disclose
providing the computer code to a second communication device associated with a second user;
receiving second user-generated input from the second communication device; and
adjusting the computer code based on the second user-generated input resulting in an adjusted computer code.
Smith teaches:
providing computer code to a device associated with a user (col. 3, lines 41-45 “The editor”);
receiving user-generated input from the device (col. 4, lines 30-32 “the programmer may go back and revise the subroutine to reduce the overall complexity”); and
adjusting the computer code based on the user-generated input resulting in an adjusted computer code (col. 4, lines 30-32 “revise the subroutine to reduce the overall complexity”).
It would have been obvious at the time of filing to provide the computer code to a second user device for revision/correction. Those of ordinary skill in the art would have been motivated to do so to improve code quality and/or confirm the quality of the generated code.
Claims 3, 12 and 20: Kunz, Lu and Smith teach claims 2 and 11, wherein the operations further comprise providing the adjusted computer code to the first communication device (Kunz par. [0053] “inserted into the software programming code”).
Claims 4 and 13: Kunz, Lu and Smith teach claims 2 and 11, wherein the operations further comprise storing the adjusted computer code in the cache (Kunz par. [0059] “the generated piece of software code is store in the file system cache”).
Claims 5 and 14: Kunz, Lu and Smith teach claims 2 and 11, wherein the operations further comprise:
determining a complexity of the computer code (col. 4, lines 21-30 “the complexity factor of the routine”); and
providing the complexity of the computer code to the second communication device (Smith col. 4, lines 43-47 “a warning message … error message is displayed to the programmer”).
Claims 6 and 15: Kunz, Lu and Smith teach claims 5 and 14, wherein the adjusting of the computer code comprises adjusting the computer code based on the complexity of the computer code (Smith col. 4, lines 30-32 “revise the subroutine to reduce the overall complexity”).
Claims 7 and 16: Kunz, Lu and Smith teach claims 6 and 15, wherein the adjusting the computer code based on the complexity of the computer code comprises adjusting the computer code by reducing the complexity of the computer code (Smith col. 4, lines 30-32 “revise the subroutine to reduce the overall complexity”).
Claims 8 and 17: Kunz, Lu and Smith teach claims 6 and 15, wherein the adjusting the computer code based on the complexity of the computer code comprises reducing a size of the computer code (Kunz par. [0057] “extraneous text is removed”).
Claim(s) 9-10 and 18-19 is/are rejected under 35 U.S.C. 103 as being unpatentable over US 2025/0085934 to Kunz (Kunz) in view of US 6,651,244 to Smith et al. (Smith) in view of US 2013/0311224 to Heroux et al. (Heroux).
Claims 9 and 18: Kunz, Lu and Smith teach claims 2 and 11, but do not explicitly disclose wherein the operations further comprise:
determining compliance changes associated with the computer code; and
providing the compliance changes to the second communication device.
Heroux teaches:
determining compliance changes associated with the computer code (par. [0049] “A request for remediation action may include … a list of remediation actions”, e.g. par. [0041] “compliance with HIPAA, HITECT, or other requirements”); and
providing the compliance changes (par. [0050] “a user may … select a remediation action”).
It would have been obvious to determine and provide needed compliance changes. Those of ordinary skill in the art would have been motivated to do so to address risks associated with non-compliance (see e.g. Heroux par. [0032]).
Claims 10 and 19: Kunz, Smith and Heroux teach claims 9 and 18, wherein the adjusting of the computer code comprises adjusting the computer code based on the compliance changes (e.g. Smith col. 4, lines 30-32 “revise the subroutine to reduce the overall complexity”).
Conclusion
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 JASON D MITCHELL whose telephone number is (571)272-3728. The examiner can normally be reached Monday through Thursday 7:00am - 4:30pm and alternate Fridays 7:00am 3:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Lewis Bullock can be reached at (571)272-3759. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JASON D MITCHELL/Primary Examiner, Art Unit 2199
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