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 .
DETAILED ACTION
This is the initial office action based on the application filed on January 31st, 2024, which claims 1-20 are presented for examination.
Status of Claims
Claims 1-20 are pending in the application and have been examined below, of which, claims 1, 8, and 15 are presented in independent form.
Examiner Notes
Examiner cites particular columns 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 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.
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Specification
Applicant is reminded of the proper language and format for an abstract of the disclosure.
The language should be clear and concise and should not repeat information given in the title. It should avoid using phrases which can be implied, such as, “The disclosure concerns,” “The disclosure defined by this invention,” “The disclosure describes,” etc. In addition, the form and legal phraseology often used in patent claims, such as “means” and “said,” should be avoided.
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed in parent Application No. 18/298053, filed on April 10th, 2023.
Claim Objections
Claims 1-7, 13, and 19 are objected to because of the following informalities:
Claim 1 contains acronym such as AI in which its intended meanings are likely to be changed over the time. Thus, such acronym should have spelled out once in the claim.
Claims 6, 13, and 19 recite the limitation “describe the appearance” in lines 1, 1-2, and 2, respectively. There is insufficient antecedent basis for this limitation in the claims. In the interest of compact prosecution, the examiner subsequently interprets this limitation as reading -- describe [[the]] appearance -- for the purpose of further examination.
Claims 2-7 depend on claim 1 and not cure the deficiencies of this claim. Accordingly, they are also rejected for the same reasons.
Appropriate correction is required.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention recites a judicial exception, is directed to that judicial exception, an abstract idea, as it has not been integrated into practical application and the claims further do not recite significantly more than the judicial exception. Examiner has evaluated the claims under the framework provided in the 2019 Patent Eligibility Guidance published in the Federal Register 01/07/2019 and has provided such analysis below.
Step 1: Claims 1-7 are directed to methods and fall within the statutory category of processes and Claims 8-14 are directed to systems and fall within the statutory category of machines. Therefore, “Are the claims to a process, machine, manufacture or composition of matter?” Yes.
Claims 15-20 are directed to computer readable storage medium but the specification does not exclude signals/electromagnetic waves from the computer readable storage medium. Thus, they do not fall within the statutory category.
In order to evaluate the Step 2A inquiry “Is the claim directed to a law of nature, a natural phenomenon or an abstract idea?” we must determine, at Step 2A Prong 1, whether the claim recites a law of nature, a natural phenomenon or an abstract idea and further whether the claim recites additional elements that integrate the judicial exception into a practical application.
Claims 1, 8, and 15: recite the limitations of “
engaging in a conversation with a user via a chat module about an idea for the software application;
identifying, by a generative AI system, one or more features of the software application based on the conversation with the user;
converting, by the generative AI system, the one or more features into a machine-readable specification for generating the software application”
Step 2A Prong 1:
Steps (a) and (b) as drafted, can be done in human mind with the aid of pen and paper (mental process).
Step 2A Prong 2 Analysis:
Claims 1, 8, and 15: The judicial exception is not integrated into a practical application. In particular, the claims recite the following additional elements – “a generative AI system,” “chat module,” “machine-readable specification,” “natural language processing,” “displaying a template,” “computer system,” “a processor,” “a memory,” and “a computer readable storage medium having data stored therein,” which are merely recitations of generic computing components and functions merely applying the abstract idea using (see MPEP § 2106.05(f)) which does not integrate a judicial exception into practical application. Steps (c) is recited so generic and merely applying the judicial exception.
Therefore, “Do the claims recite additional elements that integrate the judicial exception into a practical application? No, these additional elements do not integrate the abstract idea into a practical application and they do not impose any meaningful limits on practicing the abstract idea. The claims are directed to an abstract idea.
After having evaluating the inquires set forth in Steps 2A Prong 1 and 2, it has been concluded that claims 1, 8, and 15 not only recite a judicial exception but that the claims are directed to the judicial exception as the judicial exception has not been integrated into practical application.
Step 2B Analysis:
Claims 1, 8, and 15: The claims do not include additional elements, alone or in combination, that are sufficient to amount to significantly more than the judicial exception.
Therefore, “Do the claims recite additional elements that amount to significantly more than the judicial exception? No, these additional elements, alone or in combination, do not amount to significantly more than the judicial exception.
Having concluded analysis within the provided framework, claims 1, 8, and 15 do not recite patent eligible subject matter under 35 U.S.C. § 101.
Regarding claims 2, 9, and 16, they recite additional element recitation of “wherein the one or more features are identified by referring to previous software applications” which is merely a field of use/technological environment (see MPEP § 2106.05(h)) which does not integrate the judicial exception into practical application. Moreover, claims 2, 9, and 16 do not recite any other additional elements and for the same reasons as above with regard to integration into practical application and whether additional elements amount to significantly more, claims 2, 9, and 16 also fail both Step 2A prong 2, thus the claims are directed to the judicial exception as they have not been integrated into practical application, and fail Step 2B as not amounting to significantly more. Therefore, claims 2, 9, and 16 do not recite patent eligible subject matter under 35 U.S.C. § 101.
Regarding claims 3, 10, and 17, they recite additional element recitation of “displaying a template of the software application to the user” which is merely a field of use/technological environment (see MPEP § 2106.05(h)) which does not integrate the judicial exception into practical application. Moreover, claims 3, 10, and 17 do not recite any other additional elements and for the same reasons as above with regard to integration into practical application and whether additional elements amount to significantly more, claims 3, 10, and 17 also fail both Step 2A prong 2, thus the claims are directed to the judicial exception as they have not been integrated into practical application, and fail Step 2B as not amounting to significantly more. Therefore, claims 3, 10, and 17 do not recite patent eligible subject matter under 35 U.S.C. § 101.
Regarding claims 4, 11, and 18, they recite additional element recitation of “wherein the one or more features are identified by extracting key words using natural language processing” which is merely a field of use/technological environment (see MPEP § 2106.05(h)) which does not integrate the judicial exception into practical application. Moreover, claims 4, 11, and 18 do not recite any other additional elements and for the same reasons as above with regard to integration into practical application and whether additional elements amount to significantly more, claims 4, 11, and 18 also fail both Step 2A prong 2, thus the claims are directed to the judicial exception as they have not been integrated into practical application, and fail Step 2B as not amounting to significantly more. Therefore, claims 4, 11, and 18 do not recite patent eligible subject matter under 35 U.S.C. § 101.
Regarding claims 5, 12, and 19, they recite additional element recitation of “wherein the keywords are translated into actionable items” which is merely a field of use/technological environment (see MPEP § 2106.05(h)) which does not integrate the judicial exception into practical application. Moreover, claims 5, 12, and 19 do not recite any other additional elements and for the same reasons as above with regard to integration into practical application and whether additional elements amount to significantly more, claims 5, 12, and 19 also fail both Step 2A prong 2, thus the claims are directed to the judicial exception as they have not been integrated into practical application, and fail Step 2B as not amounting to significantly more. Therefore, claims 5, 12, and 19 do not recite patent eligible subject matter under 35 U.S.C. § 101.
Regarding claims 6, 13, and 20, they recite additional element recitation of “wherein the chat module prompts the user to describe the appearance and behavior of the software application” which is merely a field of use/technological environment (see MPEP § 2106.05(h)) which does not integrate the judicial exception into practical application. Moreover, claims 6, 13, and 20 do not recite any other additional elements and for the same reasons as above with regard to integration into practical application and whether additional elements amount to significantly more, claims 6, 13, and 20 also fail both Step 2A prong 2, thus the claims are directed to the judicial exception as they have not been integrated into practical application, and fail Step 2B as not amounting to significantly more. Therefore, claims 6, 13, and 20 do not recite patent eligible subject matter under 35 U.S.C. § 101.
Regarding claims 7, 14, and 20, they recite additional element recitation of “scanning the conversation for inappropriate content” which is merely a field of use/technological environment (see MPEP § 2106.05(h)) which does not integrate the judicial exception into practical application. Moreover, claims 7, 14, and 20 do not recite any other additional elements and for the same reasons as above with regard to integration into practical application and whether additional elements amount to significantly more, claims 7, 14, and 20 also fail both Step 2A prong 2, thus the claims are directed to the judicial exception as they have not been integrated into practical application, and fail Step 2B as not amounting to significantly more. Therefore, claims 7, 14, and 20 do not recite patent eligible subject matter under 35 U.S.C. § 101.
Claims 15-20 are directed to a computer readable storage medium. However, it is noted that the specification does not provide an explicit definition of what constitutes a computer readable storage medium. The broadest reasonable interpretation of a claim drawn to a computer readable storage medium typically covers forms of non-transitory tangible media and transitory propagating signals per se in view of the ordinary and customary meaning of a recordable medium, particularly when the specification is silent. See MPEP § 2111.01. When the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 US.C. § 101 as covering non-statutory subject matter. See In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007) (transitory embodiments are not directed to statutory subject matter) and Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101, Aug. 24, 2009; p. 2. Therefore, the claimed computer readable storage medium is ineligible subject matter under §101.
Claim Rejections - 35 U.S.C § 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 1-20 are rejected under 35 U.S.C. § 103 as being unpatentable over Sun et al. (Pub. No.: US 2021/0365614 – hereinafter, Sun) in view of Sheive et al. (Pub. No.: US 2014/0047413 – hereinafter, Sheive).
Regarding claim 1:
Sun discloses a method for generating a software application, the method comprising:
identifying, by a generative AI system, one or more features of the software application based on the conversation with the user (FIG. 1 and associated text, such as, “In some embodiments of the invention, a user 105 can provide input data to a design framework 160. Examples of input data include inspiration data for a design proposal…The design framework 160 can include a user interface or AI-driven tool configured to receive input data from the user 105…” (Underline added – See para [0027]). FIG. 3 and associated text, such as, “A user 105, such as a designer, can interact with a creator module 305 of the design framework to provide input data 205 (shown in FIG. 2) and additional information to generate a candidate design or a set of candidate designs for a design proposal” (Underline added – See para [0031])); and
converting, by the generative AI system, the one or more features into a machine-readable specification for generating the software application (FIG. 1 and associated text, such as, “In some embodiments of the invention, a user 105 can provide input data to a design framework 160. Examples of input data include inspiration data for a design proposal such as images, audio files, keywords, an existing design, a video, a report outlining parameters or constraints for the design proposal, or the like. The design framework 160 can include a user interface or AI-driven tool configured to receive input data from the user 105. The design framework 160 can generate, using one or more ML models and techniques, a design proposal based on the input data, any identified constraints or conditions, and/or auxiliary data 110 received and/or accessed by the design framework 160.” (Underline added – See para [0027]). FIG. 3 and associated text, such as, “Inputs of the ML model 327 are candidate designs generated by the creator module 305. Additional inputs can include data associated with design modalities that the user wishes to predict, such as the design and sales per region or customer group, consumer testing scores per customer group, or cost per component. Such data is accessed or obtained from one or more data sources, such as the auxiliary data 110.” (Underline added – See para [0034])).
But Sun does not explicitly teach:
engaging in a conversation with a user via a chat module about an idea for the software application.
However, Sheive discloses:
engaging in a conversation with a user via a chat module about an idea for the software application (“In order to facilitate collaboration within the community of developers, our framework will feature its own chat, or instant messaging, system… Each application will have a chat room in which users can discuss the application and how to best modify it, or seek help from other users in creating media or modifying code for that application.” (See paras [0245] – [0252])).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Sheive into the teachings of Sun because that would have provided a continuous framework with which users can interact, on one or more platforms that support web standards, and which supports the hosting of applications, the publication of hosted applications to a portal within the framework, and the creation and direct editing of files, including text files, that embody those applications and conform to web standards as suggested by Sheive (See Abstract).
Regarding claim 2:
The rejection of claim 1 is incorporated, Sun further discloses wherein the one or more features are identified by referring to previous software applications (FIG. 1 and associated text, such as, “Examples of input data include inspiration data for a design proposal such as … an existing design” (See para [0027])).
Regarding claim 3:
The rejection of claim 2 is incorporated, Sun further comprising displaying a template of the software application to the user (FIG. 1 and associated text, such as, “The design proposal can be presented to the user 105.” (See para [0027])).
Regarding claim 4:
The rejection of claim 1 is incorporated, wherein the one or more features are identified by extracting key words using natural language processing FIG. 1 and associated text, such as, “Examples of input data include inspiration data for a design proposal such as … keywords” (See para [0027])).
Regarding claim 5:
The rejection of claim 4 is incorporated, but Sun does not explicitly teach:
wherein the keywords are translated into actionable items.
However, Sheive further discloses:
wherein the keywords are translated into actionable items (“Searching assumes that the user knows enough about what she wants that she can express her desire in text, and that the content she's looking for has associated text that can be matched to her query. It is the job of the recommendation engine to present content to a user based on both explicit data, such as application ratings 309 entered by users on our framework application web page 301, and implicit data, such as what content users select when searching for certain keywords or what applications are used by the same user” (See para [0295])).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Sheive into the teachings of Sun because that would have provided a continuous framework with which users can interact, on one or more platforms that support web standards, and which supports the hosting of applications, the publication of hosted applications to a portal within the framework, and the creation and direct editing of files, including text files, that embody those applications and conform to web standards as suggested by Sheive (See Abstract).
Regarding claim 6:
The rejection of claim 1 is incorporated, but Sun does not explicitly teach:
wherein the chat module prompts the user to describe the appearance and behavior of the software application.
However, Sheive further discloses:
wherein the chat module prompts the user to describe the appearance and behavior of the software application (“In general, our framework will strive to provide such options but not require them as it is important that application developers be free to interact with the actual text in the files 213 that define the behavior and appearance of their application.” (See para [0186]))
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Sheive into the teachings of Sun because that would have provided a continuous framework with which users can interact, on one or more platforms that support web standards, and which supports the hosting of applications, the publication of hosted applications to a portal within the framework, and the creation and direct editing of files, including text files, that embody those applications and conform to web standards as suggested by Sheive (See Abstract).
Regarding claim 7:
The rejection of claim 1 is incorporated, but Sun does not explicitly teach:
scanning the conversation for inappropriate content.
However, Sheive further discloses:
scanning the conversation for inappropriate content (“Nearby the application iFrame will be a button to flag the application as inappropriate 316. Clicking this button 316 will expose an interface in which the user is asked to categorize why the content is inappropriate from a list of choices that mirror our framework's content policy.” (See para [0115])).
It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to combine the teachings of Sheive into the teachings of Sun because that would have provided a continuous framework with which users can interact, on one or more platforms that support web standards, and which supports the hosting of applications, the publication of hosted applications to a portal within the framework, and the creation and direct editing of files, including text files, that embody those applications and conform to web standards as suggested by Sheive (See Abstract).
Regarding claim 8:
This is a computer system version of the rejected method claim 1 above, wherein all the limitations of this claim have been noted in the rejection of claim 1, and is therefore rejected under similar rationale.
Regarding claim 9:
The rejection of base claim 8 is incorporated. All the limitations of this claim have been noted in the rejection of claim 2, and is therefore rejected under similar rationale.
Regarding claim 10:
The rejection of base claim 8 is incorporated. All the limitations of this claim have been noted in the rejection of claim 3, and is therefore rejected under similar rationale.
Regarding claim 11:
The rejection of base claim 8 is incorporated. All the limitations of this claim have been noted in the rejection of claim 4, and is therefore rejected under similar rationale.
Regarding claim 12:
The rejection of base claim 8 is incorporated. All the limitations of this claim have been noted in the rejection of claim 5, and is therefore rejected under similar rationale.
Regarding claim 13:
The rejection of base claim 8 is incorporated. All the limitations of this claim have been noted in the rejection of claim 6, and is therefore rejected under similar rationale.
Regarding claim 14:
The rejection of base claim 8 is incorporated. All the limitations of this claim have been noted in the rejection of claim 7, and is therefore rejected under similar rationale.
Regarding claim 15:
This is a computer readable storage medium version of the rejected method claim 1 above, wherein all the limitations of this claim have been noted in the rejection of claim 1, and is therefore rejected under similar rationale.
Regarding claim 16:
The rejection of base claim 15 is incorporated. All the limitations of this claim have been noted in the rejection of claim 2, and is therefore rejected under similar rationale.
Regarding claim 17:
The rejection of base claim 15 is incorporated. All the limitations of this claim have been noted in the rejection of claim 3, and is therefore rejected under similar rationale.
Regarding claim 18:
The rejection of base claim 15 is incorporated. All the limitations of this claim have been noted in the rejection of claims 4+5, and is therefore rejected under similar rationale.
Regarding claim 19:
The rejection of base claim 15 is incorporated. All the limitations of this claim have been noted in the rejection of claim 6, and is therefore rejected under similar rationale.
Regarding claim 20:
The rejection of base claim 8 is incorporated. All the limitations of this claim have been noted in the rejection of claim 7, and is therefore rejected under similar rationale.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HANH THI MINH BUI whose telephone number is (571)270-1976. The examiner can normally be reached Monday - Friday: 7-3.
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/HANH THI-MINH BUI/Primary Examiner, Art Unit 2192 January 23rd, 2026