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 1-8 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 2-7 the objected claim 1 and not cure the deficiencies of this claim. Accordingly, they are also objected 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 explicitly exclude signals or electromagnetic waves from the claimed computer readable storage medium. Thus, they do not fall within the statutory categories.
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 description of one or more features of the software application via a chat module;
determining, by a generative AI system, a template for the software application based on the one or more features; and
modifying, by the generative AI system, the template based on one or more responses from the user received via the chat module.”
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:
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,” “template… displayed to the user,” “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. Step (c) 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 “wherein the template is a preexisting template from a prior 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 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 “wherein the template is a custom template created based on input from 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 and 11, they recite additional element recitation of “wherein the template is a template website” 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 18, they recite additional element recitation of “wherein the template is modified to include different colors, imagery, or textual components” 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 19, they recite additional element recitation of “wherein the template is repeatedly modified using an iterative process and displayed to the user in real time” 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 “generating a machine-readable specification for the software application based on the template” 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 determining a template for a software application, comprising:
receiving, from a user, a description of one or more features of the software application [[via a chat module]] (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.” (Underline added – See paras [0027] – [0028]). 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 for a package design. The creator module 305 is used for design realization and modification. The creator module 305 generates new candidate designs based on the input data 205 and any constraints or conditions provided by the user 105. The candidate designs are images generated by one or more ML models 307 and are to be used in the design proposal.” (Underline added – See para [0031]));
determining, by a generative AI system, a template for the software application based on the one or more features (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.” (Underline added – See paras [0027] – [0028]). 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 for a package design. The creator module 305 is used for design realization and modification. The creator module 305 generates new candidate designs based on the input data 205 and any constraints or conditions provided by the user 105. The candidate designs are images generated by one or more ML models 307 and are to be used in the design proposal.” (Underline added – See para [0031])); and
modifying, by the generative AI system, the template based on one or more responses from the user received (FIG. 1 and associated text, such as, “Based on feedback received from the user 105 (or other individuals involved in the design process, such as designated reviewers), the design proposal is updated or modified. In some examples, upon receiving approval from the user 105 (and/or other designated reviewers of the design process), the final design 170 is generated.” (Underline added – See para [0027]). FIG. 3 and associated text, such as, “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… 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. The evaluator module 325 can utilize different techniques to generate outputs for particular elements of the design... The evaluation module 325 generates an evaluation of the candidate designs that include scores along the different dimensions or metrics evaluated. The scores of the evaluation can be used by the adaptive design proposal generator 320 to modify, update, or otherwise alter the design proposal to identify or select candidate designs that are more likely to succeed” (See paras [0033] – [0034])) [[via the chat module]].
But Sun does not explicitly teach:
a chat module
However, Sheive discloses:
a chat module (“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 template is a preexisting template from a prior software application (FIG. 3 and associated text, such as, “The ML models 307 learn how to model and generate new designs using a set of existing designs” (See para [0032])).
Regarding claim 3:
The rejection of claim 2 is incorporated, Sun further discloses wherein the template is a custom template created based on input from the user (FIG. 4 and associated text, such as, “In some example embodiments, the ML models of the learned user preference module 410 can learn or identify a specific design goal for each design task associated with a design proposal and/or designated reviewer. In some example embodiments, a design task associated with the design proposal can be a specific unit, job, or component of a design proposal.” (See para [0043]])).
Regarding claim 4:
The rejection of claim 1 is incorporated, but Sun does not explicitly teach:
wherein the template is a template website.
However, Sheive further discloses:
wherein the template is a template website “a user of our framework can modify any application created on our framework by clicking the modification button, and making changes; any changes he makes can be instantly published and hosted using a few clicks. Having an existing application to start from is a big advantage over writing applications from scratch. Not only is there existing source code that would let someone unfamiliar with web standards syntax and libraries to work by example, but at a coarser level there is example architecture to be leveraged. Many people who would consider themselves web developers but not software developers, in the sense that they make simple web pages and not large scale applications, have used JavaScript syntax before but would have no idea how to write, for example, a game. However, those web developers don't have to understand the structure of a game to start modifying the look and gameplay in a way that creates a completely different and unrecognizable game. In the process, he will likely come to understand how games work in general, but would still often prefer to start with some existing game as scaffolding so that the basic code that is present in all games doesn't have to be tediously rewritten. For this reason our framework will include templates for various types of applications and games even if end user modification of applications is not supported. These will be offered to users as a starting point and will be cloned and opened for editing just as existing user applications are when modified by an end user” (See para [0195])).
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 been motivated developers to make better development tools and template applications that did little themselves but provided an excellent starting point for a variety of applications. A developer could label his application's interface in his native language and some other user may create a translated version and promote it in an entirely different culture to the benefit of both the developer and translator as suggested by Sheive (See [0064]).
Regarding claim 5:
The rejection of claim 4 is incorporated, Sun further discloses wherein the template is modified to include different colors, [[imagery, or textual components]] (FIG. 3 and associated text, such as, “The ML models 307 can use a set of designs for the generative model to learn the design space for the design proposal. The output is the trained model, which then can output candidate designs sampled from the design space. If conditional models are used, additional inputs could be the design sketch or outline, some specific design details (e.g., color, size, material, etc.), style inspiration images, etc” (See para [0032])).
Regarding claim 6:
The rejection of claim 1 is incorporated, Sun further discloses wherein the template is repeatedly modified using an iterative process (FIG. 2 and associated text, such as, “During the design recommendation phase 220, the design framework 160 uses the evaluation generated during the design evaluation phase 215 to provide a design proposal using candidate designs associated with the strongest or highest valuation metrics. 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])); and
displayed to the user in real time (FIG. 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)” (See para [0030])).
Regarding claim 7:
The rejection of claim 1 is incorporated, Sun further comprising generating a machine-readable specification for the software application based on the template (“A design proposal is the overall plan for the design and production of a packaging for a product (e.g., blueprint of the packaging, which can include identification of materials, design, cost associated with production, etc.). The design proposal includes one or more proposed candidate designs that are identified as possibilities as designs for the product packaging.” (See para [0043])).
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 claim 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 15 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 March 12th, 2026