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.
Internet E-mail
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(AER) at http://www.uspto.gov/interviewpractice.
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 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; Claims 8-14 are directed to systems and fall within the statutory category of machines; and Claims 15-20 are directed to computer readable storage medium and fall within the statutory category of articles of manufacture. Therefore, “Are the claims to a process, machine, manufacture or composition of matter?” Yes.
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 “
receiving, from a user, a request to generate a software application;
determining a product or service to which the software application is directed;
determining a template for the software application based on the product or service;
generating a machine readable specification for the software application, the machine readable specification having one or more features based on the template.”
Step 2A Prong 1:
Steps (a), (b), and (c) as drafted, can be done in human mind with the aid of pen and paper (mental process).
Step 2A Prong 2:
Claims 1, 8, and 15: The judicial exception is not integrated into a practical application. In particular, the claims recite the following additional elements – “generate a software application,” “generate one or more prompts,” “machine readable specification,” “generating a prototype,” “demonstrating the prototype,” “computer system,” “a processor,” “a memory,” “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. Furthermore, step (d) is merely applying the abstract idea and field of use/technological environment.
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:
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 “determining one or more features for the software application based on the determined product or service” 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 “generating one or more prompts that are configured to produce a response, from the user, that refines the determined product or service” 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 “determining one or more features for the software application based on the refined determined product or service” 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 recitations of “determining a price to develop the software application; and transmitting the price 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 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 recitations of “determining a timeline to develop the software application; and transmitting the timeline 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 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 recitations of “generating a prototype of a feature of the software application based on a response to a prompt; and demonstrating the prototype 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 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 USC § 102
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 the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Sun et al. (Pub. No.: US 2021/0365614 – hereinafter, Sun).
Regarding claim 1:
Sun discloses a method for generating a software application, the method comprising:
receiving, from a user, a request to generate a 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” (Underline added – See para [0027]). FIG. 9 and associated text, such as, “In the example depicted, a user 105 (shown in FIG. 1) can provide an inspiration picture 910 of bottle design and identify the lid as a point of interest. The user 105 can also provide another inspiration picture 920 of bottle design and identify the bottle shape as a point of interest.” (See para [0053]));
determining a product or service to which the software application is directed (FIG. 1 and associated text, such as, “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. Examples of auxiliary data 110 include product descriptions 115, consumer insights 120, trend data 130, cost constraints 140, and/or historical sales data 150.” (See para [0027]). FIG. 9 and associated text, such as, “In the example depicted, a user 105 (shown in FIG. 1) can provide an inspiration picture 910 of bottle design and identify the lid as a point of interest. The user 105 can also provide another inspiration picture 920 of bottle design and identify the bottle shape as a point of interest.” (see para [0053]));
determining a template for the software application based on the product or service (FIG. 3 and associated text, such as, “The creator module 305 can also use computer graphics techniques to aid in the generation of candidate designs. For example, the creator module 305 can use shape morphing, such as mesh morphing or image morphing to generate and/or refine a candidate design. Mesh morphing involves creating a mesh from triangulation and optimizing the conversion of one mesh to another. The ML models 307 can use a set of designs for the generative model to learn the design space for the design proposal.” (See para [0032]). FIG. 9 and associated text, such as, “The creator module 305 (shown in FIG. 3) can morph the style of the inspiration pictures 910 and 920 using an ML model 307 (shown in FIG. 3) and/or a computer graphics technique to generate a candidate design image 830 with the lid shape of the inspiration picture 910 with the bottle shape of the inspiration picture 920” See para [0053])); and
generating a machine readable specification for the software application, the machine readable specification having one or more features based on the template (FIG. 1, 3 and associated text, such as, “In some examples, the adaptive design proposal generator 320 can produce a plan for production that includes at least one of a vendor, a price list, and/or a timeline for production of the final design 170. In some examples, the adaptive design proposal generator 320 can generate a report that includes an image of the final design 170 as well as any metrics or valuations used to designate the final design.” (See para [0037])).
Regarding claim 2:
The rejection of claim 1 is incorporated, Sun further discloses further comprising determining one or more features for the software application based on the determined product or service (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. Examples of auxiliary data 110 include product descriptions 115, consumer insights 120, trend data 130, cost constraints 140, and/or historical sales data 150.” (See para [0027])).
Regarding claim 3:
The rejection of claim 2 is incorporated, Sun further comprising generating one or more prompts that are configured to produce a response, from the user, that refines the determined product or service (FIG. 1, 2 and associated text, such as, “The design proposal can then be presented to the user for iterative refinement (e.g., receiving feedback and updating candidate designs based on the feedback). The design process iterates through multiple rounds of the design process until a final design 170 (shown in FIG. 1) is identified” (See para [0030])).
Regarding claim 4:
The rejection of claim 1 is incorporated, Sun further comprising determining one or more features for the software application based on the refined determined product or service (FIG. 3 and associated text, such as, “The creator module 305 transmits the candidate designs to the adaptive design proposal generator 320 of the iterator 310. The iterator 310 includes a design explorer module 315 and/or an adaptive design proposal generator 320 and facilitates the iterative design process for package design. In response to receiving the candidate designs from the creator module 305, the adaptive design proposal generator 320 can communicate with the evaluator module 325 to evaluate the candidate designs generated by the creator module 305. The evaluator module 325 can use one or more ML models 327 to evaluate the candidate designs” (See para [0033])).
Regarding claim 5:
The rejection of claim 4 is incorporated, Sun further comprising:
determining a price to develop the software application (FIGS. 1, 3 and associated text, such as, “In some examples, the adaptive design proposal generator 320 can produce a plan for production that includes at least one of a vendor, a price list, and/or a timeline for production of the final design 170.” (See para [0037])); and
transmitting the price to the user (FIGS. 1, 3 and associated text, such as, “The final design 170, report, and/or plan for production can be transmitted to one or more designated reviewers of the design process” (See para [0037])).
Regarding claim 6:
The rejection of claim 1 is incorporated, Sun further comprising:
determining a timeline to develop the software application (FIGS. 1, 3 and associated text, such as, “In some examples, the adaptive design proposal generator 320 can produce a plan for production that includes at least one of a vendor, a price list, and/or a timeline for production of the final design 170” (See para [0037])); and
transmitting the timeline to the user (FIGS. 1, 3 and associated text, such as, “The final design 170, report, and/or plan for production can be transmitted to one or more designated reviewers of the design process” (See para [0037])).
Regarding claim 7:
The rejection of claim 1 is incorporated, Sun further comprising:
generating a prototype of a feature of the software application based on a response to a prompt (FIG. 600 and associated text, such as, “FIG. 6 depicts an illustrative example 600 for rapid prototyping of package designs by a machine learning based design framework in accordance with one or more embodiments of the present invention. In one example, the creator module 305 (shown in FIG. 3) uses ML models 307 (shown in FIG. 3) or computer graphics techniques for rapid prototyping of package designs. For example, the creator module 305 receives a design sketch 605 of a bottle as input data 205. The input data 205 (shown in FIG. 2) can also include design inspiration images 610 (e.g., color palette). The creator module 305 can use the input data to generate realistic candidate design images 615 to be used for the design proposal. The candidate design images 615 can be based on the design sketch 605 and the design inspiration images 610.” (See para [0050])); and
demonstrating the prototype to the user (FIGS. 1, 3 and associated text, such as, “The iterative process of receiving feedback from users and updating the design proposal to include modified or replacement candidate designs can continue until approval of a candidate design or a set of candidate designs is received from the users 105. For example, in some examples, approval can be required from the user that initiated the design process while other examples can require approval from all designated reviewers before identifying and finalizing a candidate design or a set of candidate designs of the design proposal as a final design/design set. The adaptive design proposal generator 320 can generate a final design 170 upon receiving an appropriate level of approval from one or more users 105.” (See para [0037])).
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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hyung S. Sough can be reached at 571-272-6799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HANH THI-MINH BUI/Primary Examiner, Art Unit 2192 February 23rd, 2026