DETAILED ACTION
Introduction
This Office action is responsive to the communications filed November 20, 2025. Claims 1, 5, 7, 12, 16, 20, and 21 were amended. Claims 4, 6, 8, 15, 17 and 24 were canceled. Claim 27 was added. Claims 1, 5, 7, 9, 10, 12, 16, 18, 20-23 and 25-27 are pending.
Response to Arguments
Applicant asserts that Sethuraman and the other cited art fail to teach “a current webpage being associated with a particular software product of the one or more software.” p.12
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Applicant amended the claim to include “the determined page context includes a name of the particular software product” and argues that the prior art of record fails to teach this feature. As per this feature, Applicant is directed to the 35 U.S.C. 103 rejection below.
Applicant argues that Sethuraman does not disclose “AI model is not able to generate the response based on at least a predetermined threshold portion of the prompt.”
The Examiner respectfully disagrees. At least claim 1 recites “generate a response indicating that no valid result is found when the AI model is not able to generate the response based on at least a predetermined threshold portion of a prompt” A predetermined threshold is considered a set of rules instructing the model when to perform an action. In Sethuraman, “in response to determining less than at least the threshold similarity between the prompt and the corresponding response and any of the plurality of predefined verified prompt-response pairs… a default response is provided. See paragraph [0029].
As per the 35 USC 101 rejection of the claims, Applicant has amended the claims and asserts that the abstract idea is integrated into a practical application when the claims are considered as a whole. Applicant submits that the “claims recite specific features to provide the technical improvement of reducing the likelihood that an AI model will hallucinate.”
However, the Examiner respectfully disagrees and directs Applicant to the 35 USC 101 rejection below for the newly amended claims.
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, 5, 7, 9, 10, 12, 16, 18, 20-23 and 25-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
In the instant case, claims 1, 5, 7, 9, 10, and 21-27 are directed to a method. Claims 12, 16, 18 are directed to a system comprising a processor. Claim 20 is directed to a non-transitory computer readable medium. Therefore, these claims fall within the four statutory categories of invention.
For example, claim 1 recites an abstract idea of outputting a response based on a prompt. The claim under its broadest reasonable interpretation recites limitations grouped within the “mental processes” grouping of abstract ideas. The "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions. The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). See MPEP § 2106.04(a)(2), subsection III.
The claim limitations reciting the abstract idea are grouped within the “method processes” grouping of abstract ideas as they relate to outputting a response based on a prompt. More specifically, the following the bolded claim elements recite additional elements while the other claim elements recite the abstract idea. according to MPEP 2106.04(a).
A method comprising:
instructing an artificial intelligence (AI) model to generate a response indicating that no valid result is found when the Al model is not able to generate the response based on at least a predetermined threshold portion of a prompt;
receiving via a current webpage a request in natural language format regarding software licensing associated with one or more software products for one or more computing devices, wherein the current webpage is associated with a particular software product of the one or more software products; and
in response to receiving the request:
obtaining information associated with the one or more computing devices, wherein the obtained information associated with the one or more computing devices comprises licensing reconciliation or optimization rules that have been applied to the one or more computing devices, wherein the obtained information associated with the one or more computing devices comprises hardware configuration information, software configuration information, and current software licensing configuration information for the one or more computing devices;
determining a page context based on the current webpage, wherein the page context includes a name of the particular software product;
determining at least one of the one or more software products based on the determined page context;
obtaining one or more software licensing guides associated with the one or more software products;
generating the prompt using at least a portion of the request, at least a portion of the obtained information, at least a portion of the page context, and at least a portion of the one or more software licensing guides;
generating, using the Al model, the response in natural language format based on the prompt, wherein the response indicates no valid result when the prompt does not does not exceed at least the predetermined threshold; and
outputting at least a portion of the response.
Independent claims 12 and 20 recite similar language.
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A of the Alice/Mayo test (See MPEP 2106.04(d)), the additional element(s) of the claim(s) such as the AI model, computer devices, and web page are merely used as tools to perform an abstract idea and/or generally link the use of a judicial exception to a particular technological environment. Specifically, these additional elements perform the steps or functions of outputting a response based on a prompt. Viewed as a whole, the use of AI model, computer devices, and web page as tools to implement the abstract idea and/or generally linking the use of the abstract idea to a particular technological environment does not integrate the abstract idea into a practical application because it requires no more than a computer or computer networks performing functions that correspond to acts required to carry out the abstract idea. The additional elements do not involve improvements to the functioning of a computer, or to any other technology or technical field (MPEP 2106.05(a)), and the claims do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception (MPEP 2106.05(e) and Vanda Memo). Therefore, the claims do not, for example, purport to improve the functioning of a computer. Nor do they effect an improvement in any other technology or technical field. Accordingly, the additional elements do not impose any meaningful limits on practicing the abstract idea, and the claims are directed to an abstract idea.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when analyzed under step 2B of the Alice/Mayo test (See MPEP 2106.05), the additional element(s) of the AI model, computer devices, and web page to perform the steps amounts to no more than using generic hardware or software to automate and/or implement the abstract idea of outputting a response based on a prompt. Viewed as a whole, the combination of elements recited in the claims merely recite the concept of outputting a response based on a prompt. Therefore, the use of these additional elements does no more than employ the computer as a tool to automate and/or implement the abstract idea. The use of a computer or processor to merely automate and/or implement the abstract idea cannot provide significantly more than the abstract idea itself (MPEP 2106.05 (f) & (h)). Therefore, the claim is not patent eligible.
The dependent claims further describe the abstract idea such as: extracting the relevant portions from the one or more software licensing guides based on a vector-based embedding similarity search.
The dependent claims do not include additional elements that integrate the abstract idea into a practical application or that provide significantly more than the abstract idea. Therefore, the dependent claims are also not patent eligible.
Claim Rejections - 35 USC § 103
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.
Claims 1, 6, 8, 12, 17 and 20-27 are rejected under 35 U.S.C. 103 as being unpatentable over U.S. Publication No. 2025/0156632 to Sethuraman et al. (“Sethuraman”) and of U.S. Publication No. 2023/0095793 to Agrawal et al. (“Agrawal”) and U.S. Publication No. 2006/0080257 to Vaughan et al. (“Vaughan”) in view of U.S. Publication No. 2020/038/0387584 to Gaber et al. (“Gaber”).
As per claim 1, Sethuraman discloses instructing an artificial intelligence (AI) model to generate a response indicating that no valid result is found when the AI model is not able to generate the response based on at least a predetermined threshold portion of a prompt (abstract - processing a prompt for a target generative AI model and a corresponding response generated by the target generative AI model for the prompt…. In response to determining at least a threshold similarity between the prompt and the corresponding response and a predefined verified prompt-response pair, the corresponding response from the target generative AI model is provided to a source of the prompt; Fig. 1A; paragraphs [0014] – a generative AI model is configured to receive natural language prompts and/or example entries and/or contextual information concerning a request to generate a response; [0029] – default response);
in response to receiving the request in natural language format (paragraphs [0008] and [0014]):
obtaining information associated with the one or more computing devices; determining a page context based on a current webpage (paragraphs [0014] - a generative AI model is configured to receive natural language prompts and/or example entries and/or contextual information concerning a request to generate a response and [0017] – paragraph level extraction is performed by parsing breaks or tags in HTML documents);
generating the prompt using at least a portion of the request, at least a portion of the obtained information, at least a portion of the page context and generating, using the AI model, the response based on the prompt (paragraphs [0016] - extracting 108 each paragraph of content from a verified document; generating 110 a prompt for each extracted paragraph using a generative AI model; and generating 112 a corresponding response to each prompt by processing the prompt and a corresponding extracted paragraph using the generative AI model and [0018] - generates a prompt for each extracted paragraph using a generative AI model….generates questions/prompts);
and outputting at least a portion of the response (Fig. 3; paragraph [0022] -provides prompt and corresponding response to a comparator system).
Sethuraman does not expressly disclose receiving via a current webpage a request in natural language format regarding software licensing associated with one or more software products for one or more computing devices; obtaining one or more software licensing guides associated with the one or more software products; determining a page context based on the current webpage, wherein the page context includes a name of the particular software product; generating the prompt using the at least a portion of the one or more software licensing guides.
Agrawal discloses receiving via a current webpage a request in natural language format for a product for one or more computing devices (Fig. 1 and Fig. 2);
obtaining information associated with the one or more computing devices (paragraph [0030] – the web client may locate the page based on an identifier… the first input may be associated with execution of “ABC web client” on the user device);
determining one or more products based on the determined page context based on the current webpage(abstract – the system further determines a set of attributes associated with the detected page; paragraph [0016] -based on the determined context of the page, the disclosed system may determine a set of action items that may be contextually related to the product);
obtaining a guide associated with the one or more product (abstract – searches a catalog of actions items based on the determined set of attribute; paragraph [0017] – each action item of the determined set of action items may be contextually related to the product; paragraph [0047] – “Need help with company …specification”)
generate the prompt using at least a portion of the request, at least a portion of the obtained information, at least a portion of the page context, and at least a portion of the one or more guides (paragraphs [0026] -train the model on a task of finding optimal action items from the catalog of actions items [0061] and [0066]).
Vaughan discloses receiving a request regarding a software licensing associated with one or more software products for one or more computing devices and obtaining one or more software licensing guides associated with the one or more software products (paragraph [0117] - Responsive to receiving a request for a particular software product through the catalog interface, the SDF client API of the enterprise checks with the rights authority to ensure that a license is available for the requested software product. If a license is available, the enterprise user is directed to an appropriate web page to guide him/her through the software download and installation process; claim 1 - an access control component configured to maintain information regarding access rights of the plurality of participants to digital content accessible via the digital content distribution system);
wherein the obtained information associated with the one or more computing devices comprises hardware configuration information, software configuration information, and current software licensing configuration information for the one or more computing devices (see claim 1; Vaughan at paragraph [0102] - Session establishment begins at block 610 with the SDF client API 601 reading configuration information from an appropriate configuration file. Depending upon the particular implementation, the configuration information may include one or more of the following: a public key for the identity manager 602, a URL to the identity manager 602, the client public key, a session timeout length for both the client session and any future user sessions, a list of local domains identifying the name of the current local machine the SDF client API 601 is running on).
Gaber discloses obtained information associated with the one or more computing devices comprises licensing reconciliation or optimization rules that have been applied to the one or more computing devices (abstract; Fig. 1 and 2).
As for the response indicating that no valid result is found when the AI model is not able to generate the response, the examiner notes that this data is a matter of design choice, Sethuraman discloses a default response to prevent hallucinations. Therefore, the examiner notes that it is obvious to one of ordinary skill in the art to modify the response of Sethuraman with a message indicating “no valid result is found.”
Also, the references do not expressly disclose the page context includes a name of the particular software product. However, this difference is only found in the non-functional descriptive material and is not functionally involved in the steps recited. The steps would be performed the same regardless of the name of the particular software product. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to substitute the request taught by Sethuraman in combination with Agrawal to include the licensing information of Vaughan and Gaber. One would be motivated to do this because this is a simple substitution of one known element for another producing a predictable result, which renders the claim obvious.
As per claim 5, Sethuraman, Agrawal, Vaughan in combination with Gaber disclose the licensing reconciliation rules that have been applied to the one or more computing devices are determined based on one or more of the following: a portion of the request or the page context (see claims 1 and 4 above; Gaber at paragraph [0017]).
As per claim 7, Sethuraman, Agrawal, Vaughan in combination with Gaber disclose the obtained information comprises one or more of the following: a number of virtual machines (VMs), a number of VMs that have the one or more software products installed, whether host affinity rules are configured, whether licensing is by Host or by VM, a list of resources of hosts, or a list of resources of the VMs (see claim 1 above; Gaber at paragraph [0020]). Also, this information is included non-functional descriptive material and is not functionally involved in the steps recited. The obtaining step would be performed the same regardless of what data is included. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 703 F.2d 1381,1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
Claim 12 is rejected on the same rationale as claim 1.
Claim 16 is rejected on the same rationale as claim 5.
Claim 20 is rejected on the same rationale as claim 1.
As per claim 21, Vaughan discloses providing a user interface comprising information associated with at least one of the one or more software products for the one or more computing devices (see claim 1 above).
As per claim 22, Vaughan discloses wherein the information comprises information about software licenses for one or more vendors associated with the at least one of the one or more software products (paragraph [0176] – deployment option). Also, this is considered in the non-functional descriptive material and is not functionally involved in the steps recited. The providing step would be performed the same regardless of the type of information. Thus, this descriptive material will not distinguish the claimed invention from the prior art in terms of patentability, see In re Gulack, 703 F.2d 1381, 1385, 217 USPQ 401, 404 (Fed. Cir. 1983); In re Lowry, 32 F.3d 1579, 32 USPQ2d 1031 (Fed. Cir. 1994).
As per claim 23, Sethuraman and Agrawal in combination with Vaughan disclose wherein the user interface further comprises a conversation user interface element, wherein the request is provided using the conversation user interface element (Sethuraman at paragraph [0014] – at least Bing Chat and Agrawal at paragraph [0015]).
As per claim 25, Sethuraman discloses wherein the prompt is generated further using at least a portion of a fine-tuning dataset (paragraph [0040]- applying 146 feedback 400 to generative AI model 300 includes using feedback 400 in subsequent training or tuning of generative AI model 300.)
As per claim 26, Sethuraman discloses the fine-tuning dataset comprises assistant information representing an expected output (see claim 25 – the training will include information representing an expected output; also, this is a known process of the modeling pipeline.)
As per claim 27, Sethuraman and Agrawal in combination with Vaughan discloses training the AI model based on the one or more software licensing guides associated with the one or more software products, the licensing reconciliation or optimization rules that have been applied to the one or more computing devices, the hardware configuration information, the software configuration information, and the current software licensing configuration information (see claim 1 above and Agrawal at paragraph [0026]] – server may be also configure to train and store a ML; Sethuraman at paragraph [0009] -applying the user feedback to generative AI model training).
Claims 9, 10, and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Sethuraman, Agrawal, Vaughan in combination with Gaber as applied to claim 2 above, and further in view of U.S. Publication No. 2022/0138240 to Bahrami et al. (“Bahrami”).
As per claims 9 and 10, Sethuraman and Agrawal in combination with Vaughan disclose the method of claim 1. Sethuraman discloses extracting and using vector-based embedding similarity search Vaughan paragraphs [0011], [0017], [0020]).
The references do not expressly disclose extracting relevant portion from the one or more software licensing guides and using the extracted relevant portions as the at least a portion of the one or more software licensing guides for generating the prompt or extracting the relevant portions from the one or more software licensing guides based on a vector-based embedding similarity search.
Bahrami discloses extracting relevant portions from the one or more software licensing guides; using the extracted relevant portions as the at least a portion of the one or more software licensing guides for generating the prompt; and extracting the relevant portions from the one or more software licensing guides based on a vector-based embedding similarity search (see claim 3 of Bahrami-extracting at least one of code snippets, software documentation, code comments, or test-case logs; paragraphs [0005] – the extracted features of the training code may be mapped to natural language code vectors).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to include the elements of Agrawal, Vaughan and Bahrami into Sethuraman. Hence, since the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Claim 18 is rejected on the same rationale as claim 9.
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.
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/Jalatee Worjloh/Primary Examiner, Art Unit 3697