DETAILED ACTION
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 .
Status of Claims
The present application is examined under the claims filed on 10/04/2023.
Claims 1-20 are rejected.
Specification
The disclosure is objected to because of the following informalities: reference character “100” has been used to designate both “FIG. 1 Generative AI” and “FIG. 1 Prompt” within the specification. (“When a user wishes to generate a digital item using a system and process in accordance with implementations of the disclosure, the user submits a prompt 100 to a generative AI 100. By way of example without limitation, the prompt 100 can consist of text, spoken audio, images, or other types of data which can be entered by the user as input to the generative AI 100.” ([0033], Jin, “Reverse Auto Generation of Generative AI Engine Prompts Based on Output Results for Self-Validation”, 18/480802, 2023). Appropriate correction is required.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
The term “substantially the same training data” in claims 7, 13, 20 are relative terms which renders the claim indefinite. The term “substantially the same training data” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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 an abstract idea without significantly more. The analysis of the claims will follow the 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (“2019 PEG”).
Claim 1
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
Claim 1 states: “A method for validating a generated output of a generative artificial intelligence (AI), comprising:” therefore it is directed to a process.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 1 states: “determining a similarity of the reverse-generated prompt to the input prompt;” Under its broadest reasonable interpretation in light of the
specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
“Responsive to determining that the similarity meets or exceeds a predefined threshold, [then providing the generated output for rendering through the user interface]” Under its broadest reasonable interpretation in light of the
specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 1 states the additional elements:
“Receiving an input prompt through a user interface rendered by a user device”
This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
“Applying the input prompt to a generative Al to produce a generated output” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
“Applying the generated output to a reverse generative AI to produce a reverse-generated prompt” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
“[Responsive to determining that the similarity meets or exceeds a predefined threshold], then providing the generated output for rendering through the user interface.” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “Receiving an input prompt through a user interface rendered by a user device” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
“Applying the input prompt to a generative Al to produce a generated output” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05f)).
“Applying the generated output to a reverse generative AI to produce a reverse-generated prompt” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
“[Responsive to determining that the similarity meets or exceeds a predefined threshold], then providing the generated output for rendering through the user interface.” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(d)(II)(i)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 2
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The claim does not recite an abstract idea, law of nature, or natural phenomenon.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 2 states the additional elements:
“The method of claim 1, wherein the input prompt and reverse-generated prompt are defined by text” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “The method of claim 1, wherein the input prompt and reverse-generated prompt are defined by text” amount to nothing more than generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 3
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The claim does not recite an abstract idea, law of nature, or natural phenomenon.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 3 states the additional elements:
“The method of claim 1, wherein the generated output is an image or audio.” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “The method of claim 1, wherein the generated output is an image or audio” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(d)(II)(i)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 4
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 4 states: “The method of claim 1, further comprising: responsive to determining that the similarity does not meet or exceed the predefined threshold” Under its broadest reasonable interpretation in light of the specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 4 states the additional elements:
“Then re-applying the input prompt to the generative AI to produce a second generated output” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “then re-applying the input prompt to the generative AI to produce a second generated output” amount to nothing more than generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 5
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 5 states: “The method of claim 1, further comprising: responsive to determining that the similarity does not meet or exceed the predefined threshold” Under its broadest reasonable interpretation in light of the specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 5 states the additional elements:
“Then receiving through the user interface, edits to the input prompt”
This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
“Applying the edited input prompt to the generative Al to produce a second generated output.” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “then receiving through the user interface, edits to the input prompt” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(d)(II)(i)).
“Applying the edited input prompt to the generative Al to produce a second generated output.” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 6
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 6 states: “The method of claim 1, wherein determining the similarity uses a similarity model” Under its broadest reasonable interpretation in light of the specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 6 states no additional elements.
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The claim is subject matter ineligible.
Claim 7
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 7 states: “The method of claim 1, wherein the generative Al and the reverse generative Al are trained on substantially the same training data” Under its broadest reasonable interpretation in light of the specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
The claim does not recite additional elements.
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The claim is subject matter ineligible.
Claim 8
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
Claim 8 states: “A method for validating a generated output of a generative artificial intelligence (AI), comprising:” therefore it is directed to a process.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 8 states: “determining a similarity of the reverse-generated prompt to the input prompt;” Under its broadest reasonable interpretation in light of the
specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
“[Providing, for rendering through the user interface,] ones of the generated outputs whose determined similarity meets or exceeds a predefined threshold” Under its broadest reasonable interpretation in light of the
specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 8 states the additional elements:
“Receiving an input prompt through a user interface rendered by a user device”
This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
“Applying the input prompt to a generative Al to produce a generated output” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
“For each given generated output, applying the given generated output to a reverse generative Al to produce a reverse-generated prompt” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
“Providing, for rendering through the user interface, [ones of the generated outputs whose determined similarity meets or exceeds a predefined threshold]” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “Receiving an input prompt through a user interface rendered by a user device” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
“Applying the input prompt to a generative Al to produce a generated output” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
“Applying the generated output to a reverse generative AI to produce a reverse-generated prompt” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
“[Responsive to determining that the similarity meets or exceeds a predefined threshold], then providing the generated output for rendering through the user interface.” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(d)(II)(i)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 9
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The claim does not recite an abstract idea, law of nature, or natural phenomenon.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 9 states the additional elements:
“The method of claim 8, wherein the input prompt and reverse-generated prompt are defined by text.” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “The method of claim 8, wherein the input prompt and reverse-generated prompt are defined by text;” amount to nothing more than generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 10
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The claim does not recite an abstract idea, law of nature, or natural phenomenon.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 10 states the additional elements:
“The method of claim 8, wherein the generated output is an image or audio.” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “The method of claim 8, wherein the generated output is an image or audio” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(d)(II)(i)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 11
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 11 states: “The method of claim 8, further comprising: [discarding ones of the generated outputs] whose determined similarity does not meet or exceed the predefined threshold” Under its broadest reasonable interpretation in light of the specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 11 recites the additional elements: “The method of claim 8, further comprising: discarding ones of the generated outputs [whose determined similarity does not meet or exceed the predefined threshold]” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “The method of claim 8, further comprising: discarding ones of the generated outputs [whose determined similarity does not meet or exceed the predefined threshold];” amount to nothing more than generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 12
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 12 states: “The method of claim 8, wherein determining the similarity uses a similarity model.” Under its broadest reasonable interpretation in light of the specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 12 does not state additional elements.
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The claim is subject matter ineligible.
Claim 13
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 13 states: “The method of claim 8, wherein the generative Al and the reverse generative Al are trained on substantially the same training data.” Under its broadest reasonable interpretation in light of the specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 13 does not state additional elements.
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The claim is subject matter ineligible.
Claim 14
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
Claim 14 states: “A non-transitory computer readable medium having program instructions embodied thereon that, when executed by at least one server computer, cause said at least one server computer to perform a method for validating a generated output of a generative artificial intelligence (Al), said method comprising:” therefore it is directed to a machine.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 14 states: “determining a similarity of the reverse-generated prompt to the input prompt” Under its broadest reasonable interpretation in light of the
specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
“Responsive to determining that the similarity meets or exceeds a predefined threshold, [then providing the generated output for rendering through the user interface.]” Under its broadest reasonable interpretation in light of the
specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 14 states the additional elements:
“Receiving an input prompt through a user interface rendered by a user device;”
This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
“Applying the input prompt to a generative Al to produce a generated output;” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
“Applying the generated output to a reverse generative Al to produce a reverse-generated prompt” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
“[Responsive to determining that the similarity meets or exceeds a predefined threshold,] then providing the generated output for rendering through the user interface.” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “Receiving an input prompt through a user interface rendered by a user device;” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(d)(II)(i)).
“Applying the input prompt to a generative Al to produce a generated output;” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
“Applying the generated output to a reverse generative Al to produce a reverse-generated prompt” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
“[Responsive to determining that the similarity meets or exceeds a predefined threshold,] then providing the generated output for rendering through the user interface.” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(d)(II)(i)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 15
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The claim does not recite an abstract idea, law of nature, or natural phenomenon.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 15 states the additional elements:
“The non-transitory computer readable medium of claim 14, wherein the input prompt and reverse-generated prompt are defined by text.” This amounts to generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “The non-transitory computer readable medium of claim 14, wherein the input prompt and reverse-generated prompt are defined by text;” amount to nothing more than generic instructions to perform a process. Thus, the additional elements amount to no more than the recitation of the words “apply it” (see MPEP § 2106.05(f)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 16
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The claim does not recite an abstract idea, law of nature, or natural phenomenon.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 16 states the additional elements:
“The non-transitory computer readable medium of claim 14, wherein the generated output is an image or audio.” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “The non-transitory computer readable medium of claim 14, wherein the generated output is an image or audio;” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(d)(II)(i)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 17
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 17 states: “The non-transitory computer readable medium of claim 14, further comprising: responsive to determining that the similarity does not meet or exceed the predefined threshold, [then re-applying the input prompt to the generative Al to produce a second generated output]” Under its broadest reasonable interpretation in light of the specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 17 recites the additional elements: “[The non-transitory computer readable medium of claim 14, further comprising: responsive to determining that the similarity does not meet or exceed the predefined threshold,] then re-applying the input prompt to the generative Al to produce a second generated output” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “[The non-transitory computer readable medium of claim 14, further comprising: responsive to determining that the similarity does not meet or exceed the predefined threshold,] then re-applying the input prompt to the generative Al to produce a second generated output;” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(d)(II)(i)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 18
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 18 states: “The non-transitory computer readable medium of claim 14, further comprising: responsive to determining that the similarity does not meet or exceed the predefined threshold, [then re-applying the input prompt to the generative Al to produce a second generated output]” Under its broadest reasonable interpretation in light of the specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 18 recites the additional elements: “[The non-transitory computer readable medium of claim 14, further comprising: responsive to determining that the similarity does not meet or exceed the predefined threshold,] then re-applying the input prompt to the generative Al to produce a second generated output” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(g)).
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The additional elements, “[The non-transitory computer readable medium of claim 14, further comprising: responsive to determining that the similarity does not meet or exceed the predefined threshold,] then re-applying the input prompt to the generative Al to produce a second generated output;” This is receiving or transmitting data over a network, which amounts to an insignificant extra-solution activity required for any uses of the mental processes (see MPEP § 2106.05(d)(II)(i)). Taken alone or in combination, the additional elements of the claim do not provide an inventive concept and the claim is subject matter ineligible.
Claim 19
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 19 states: “The non-transitory computer readable medium of claim 14, wherein determining the similarity uses a similarity model.” Under its broadest reasonable interpretation in light of the specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 19 does not state additional elements.
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The claim is subject matter ineligible.
Claim 20
Step 1 – Is the claim to a process, machine, manufacture or composition of matter?
A process, as above.
Step 2A Prong 1 – Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 20 states: “The non-transitory computer readable medium of claim 14, wherein the generative Al and the reverse generative Al are trained on substantially the same training data.” Under its broadest reasonable interpretation in light of the specification, this limitation encompasses the mental process of evaluating and observing data, which is an evaluation or observation that is practically capable of being performed in the human mind with the assistance of pen and paper.
Step 2A Prong 2 – Does the claim recite additional elements that integrate the judicial exception into a practical application?
Claim 20 does not state additional elements.
Step 2B – Does the claim recite additional elements that amount to significantly more than the judicial exception?
The claim taken as a whole does not contain an inventive concept which provides significantly more than the abstract idea. The claim is subject matter ineligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claim(s) 1-20 are rejected under 35 U.S.C. 103 as being unpatentable over Padgett et al (Padgett et al, “Similarity-based Generative AI Output Filtering”, US Patent 12626108, 2023, hereinafter Padgett) in view of Tsue et al (Tsue et al, “Cycle Text-to-Image with BERT”, 2020, hereinafter Tsue).
Regarding claim 1, Padgett discloses:
“A method for validating a generated output of a generative artificial intelligence (AI), comprising: receiving an input prompt through a user interface rendered by a user device” (FIG 1. Shows a user device (110) which receives a user-supplied prompt/input and passes it to a Generative AI model (102)).
“Applying the input prompt to a generative AI to produce a generated output” (FIG 1. Shows a Generative AI model (102) which receives an input prompt from a user device (110) and generates an output/result).
“Responsive to determining that the similarity meets or exceeds a predefined threshold, then providing the generated output for rendering through the user interface.” (FIG 1. Shows an output/result which is evaluated by a Similarity-assessment layer (104) which then sends an output/result to a user device (110), “the layer 104 may then determine whether the highest similarity measure exceeds a threshold indicative of “too similar” (Padgett, par. 60)”).
Padgett does not disclose:
“Applying the generated output to a reverse generative AI to produce a reverse-generated prompt”
“Determining a similarity of the reverse-generated prompt to the input prompt”
Tsue discloses:
“Applying the generated output to a reverse generative AI to produce a reverse-generated prompt” (“Finally, Gorti et al. incorporate the ideas of stacking, attention, and cycle consistency in their state-of-the-art model, MirrorGAN (Qiao et al., 2019). Influenced by the CycleGAN architecture, the model adds an image-to-text component” (pp. 2, Section 2, Paragraph 6) Under its broadest reasonable interpretation in light of the specification, a reverse generative AI is a generative AI that takes the output of a generative AI and returns the input of the generative AI as a prompt. The image-to-text component acts as a reverse generative AI when coupled with the text-to-image generative AI).
“Determining a similarity of the reverse-generated prompt to the input prompt” (“Influenced by the CycleGAN architecture, the model adds an image-to-text component which acts as a sanity check that the image generated is indeed semantically consistent with the input caption text” (pp. 2, Section 2, Paragraph 6) The image-to-text generative AI produces an output which is then compared to the original text input).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the present application to combine Padgett and Tsue. Padgett teaches a method for receiving user input into a generative AI to produce an output, which is then checked against a database of pre-existing data to determine whether the output meets a similarity threshold. Tsue teaches a method of applying generative AI output to a reverse generative AI influenced by CycleGAN architecture in order to determine the similarity of input to the reverse generated output. One of ordinary skill would have motivation to substitute the database of pre-existing data of Padgett with the method of similarity validation of Tsue in order to utilize MirrorGAN, “the culmination of the work on the text-to-image problem” (Tsue, pp.3, Section 2 Paragraph 7). Furthermore, it would be obvious to combine the method of output validation of Padgett utilizing a database with pre-existing data with the image-to-text component of Tsue in order to have a “sanity check that the image generated is indeed semantically consistent with the input caption text” (Tsue, pp.6, Section 2 Paragraph 6).
Regarding claim 2, Padgett discloses:
“The method of claim 1, wherein the input prompt and reverse-generated prompt are defined by text” (“[0019] In some implementations, the input includes a prompt and wherein adjusting the input includes changing the prompt. In some examples, the prompt includes text and changing the prompt includes changing the text.”).
Regarding claim 3, Padgett discloses:
“The method of claim 1, wherein the generated output is an image or audio” (“[0022] In some implementations, the output content includes a textual or graphic brand” A graphic brand is an image).
Regarding claim 4, Padgett discloses:
“The method of claim 1, further comprising: responsive to determining that the similarity does not meet or exceed the predefined threshold, then re-applying the input prompt to the generative AI to produce a second generated output”. (FIG 1. Shows an output/result which is evaluated by a Similarity-assessment layer (104) which then sends an output/result to a user device (110), “the layer 104 may then determine whether the highest similarity measure exceeds a threshold indicative of “too similar” If the index is above the threshold, i.e. the output is too similar to an item in the repository of pre-existing content 106, then the layer 104 triggers the generative AI model 102 to produce a new output. (Padgett, par. 60)”).
Regarding claim 5, Padgett discloses:
“The method of claim 1, further comprising: responsive to determining that the similarity does not meet or exceed the predefined threshold, then receiving through the user interface, edits to the input prompt, and applying the edited input prompt to the generative AI to produce a second generated output”. (FIG. 2 shows determining a similarity for the result based on one or more items in a repository of pre-existing content (208), comparing similarity measure to threshold (210), and adjusting input and reapplying (212) to generative AI (206) if it is too similar).
Regarding claim 6, Tsue discloses:
“The method of claim 1, wherein determining the similarity uses a similarity model” (“Finally, they add a Deep Attentional Multimodal Similarity Model, which is constructed to learn an attention-based matching score between the image-sentence pairs” (pp. 2, Section 2, Paragraph 5)).
Regarding claim 7, Tsue discloses:
“The method of claim 1, wherein the generative Al and the reverse generative Al are trained on substantially the same training data” (“We used the 2011 Caltech-UCSD Birds 200 dataset (CUB-200), which contains 11,788 images of 200 different types of birds and is a widely used benchmark for text-to-image generation (Wah et al., 2011). These images provide a boundary box and vary in size. Additionally, we have 10 text descriptions of the dataset down loaded from a GitHub repository that serve as the text descriptions of the generated images.” Both the image to text and text to image models are trained using the CUB-200 dataset.)
Regarding claim 8, Padgett discloses:
“A method for validating a generated output of a generative artificial intelligence (Al), comprising: receiving an input prompt through a user interface rendered by a user device” (FIG 1. Shows a user device (110) which receives a user-supplied prompt/input and passes it to a Generative AI model (102)).
“Applying the input prompt to a generative Al to produce a plurality of generated outputs” (FIG 1. Shows an output/result which is evaluated by a Similarity-assessment layer (104) which then sends an output/result to a user device (110)).
“Providing, for rendering through the user interface, ones of the generated outputs whose determined similarity meets or exceeds a predefined threshold.” (FIG 1. Shows an output/result which is evaluated by a Similarity-assessment layer (104) which then sends an output/result to a user device (110), “the layer 104 may then determine whether the highest similarity measure exceeds a threshold indicative of “too similar” (Padgett, par. 60)”).
Padgett does not disclose:
“For each given generated output, applying the given generated output to a reverse generative Al to produce a reverse-generated prompt,”
“Determining a similarity of the reverse-generated prompt to the input prompt”
Tsue discloses:
“Applying the input prompt to a generative Al to produce a plurality of generated outputs” (“Finally, Gorti et al. incorporate the ideas of stacking, attention, and cycle consistency in their state-of-the-art model, MirrorGAN (Qiao et al., 2019). Influenced by the CycleGAN architecture, the model adds an image-to-text component” (pp. 2, Section 2, Paragraph 6) Under its broadest reasonable interpretation in light of the specification, a reverse generative AI is a generative AI that takes the output of a generative AI and returns the input of the generative AI. The image-to-text component acts as a reverse generative AI when coupled with the text-to-image generative AI).
“Determining a similarity of the reverse-generated prompt to the input prompt” (“acts as a sanity check that the image generated is indeed semantically consistent with the input caption text” (pp. 2, Section 2, Paragraph 6) The image-to-text generative AI produces an output which is then compared to the original text input).
Regarding claim 9, Padgett discloses:
“The method of claim 8, wherein the input prompt and reverse-generated prompt are defined by text” (“[0019] In some implementations, the input includes a prompt and wherein adjusting the input includes changing the prompt. In some examples, the prompt includes text and changing the prompt includes changing the text.”).
Regarding claim 10, Padgett discloses:
“The method of claim 8, wherein the generated output is an image or audio” (“[0022] In some implementations, the output content includes a textual or graphic brand” A graphic brand is an image).
Regarding claim 11, Padgett discloses:
“The method of claim 8, further comprising: discarding ones of the generated outputs whose determined similarity does not meet or exceed the predefined threshold”. (FIG. 3C shows a generative AI producing outputs (306), determining a similarity (308), and excluding outputs with a respective similarity measure greater than a threshold value (322)).
Regarding claim 12, Tsue discloses:
“The method of claim 8, wherein determining the similarity uses a similarity model” (“Finally, they add a Deep Attentional Multimodal Similarity Model, which is constructed to learn an attention-based matching score between the image-sentence pairs” (pp.2, Section 2, Paragraph 5)).
Regarding claim 13, Tsue discloses:
“The method of claim 8, wherein the generative Al and the reverse generative Al are trained on substantially the same training data” (“We used the 2011 Caltech-UCSD Birds 200 dataset (CUB-200), which contains 11,788 images of 200 different types of birds and is a widely used benchmark for text-to-image generation (Wah et al., 2011). These images provide a boundary box and vary in size. Additionally, we have 10 text descriptions of the dataset down loaded from a GitHub repository that serve as the text descriptions of the generated images 2.” Both the image to text and text to image models are trained using the CUB-200 dataset.)
Regarding claim 14, Padgett discloses:
“A non-transitory computer readable medium having program instructions embodied thereon that, when executed by at least one server computer, cause said at least one server computer to perform a method for validating a generated output of a generative artificial intelligence (Al), said method comprising: receiving an input prompt through a user interface rendered by a user device” (FIG 1. Shows a user device (110) which receives a user-supplied prompt/input and passes it to a Generative AI model (102)).
“Responsive to determining that the similarity meets or exceeds a predefined threshold, then providing the generated output for rendering through the user interface.” (FIG 1. Shows an output/result which is evaluated by a Similarity-assessment layer (104) which then sends an output/result to a user device (110), “the layer 104 may then determine whether the highest similarity measure exceeds a threshold indicative of “too similar” (Padgett, par. 60)”).
Padgett does not disclose:
“Applying the generated output to a reverse generative Al to produce a reverse-generated prompt,”
“Determining a similarity of the reverse-generated prompt to the input prompt”
Tsue discloses:
“Applying the generated output to a reverse generative Al to produce a reverse-generated prompt” (“Finally, Gorti et al. incorporate the ideas of stacking, attention, and cycle consistency in their state-of-the-art model, MirrorGAN (Qiao et al., 2019). Influenced by the CycleGAN architecture, the model adds an image-to-text component” (pp. 2, Section 2, Paragraph 6) Under its broadest reasonable interpretation in light of the specification, a reverse generative AI is a generative AI that takes the output of a generative AI and returns the input of the generative AI. The image-to-text component acts as a reverse generative AI when coupled with the text-to-image generative AI).
“Determining a similarity of the reverse-generated prompt to the input prompt” (“acts as a sanity check that the image generated is indeed semantically consistent with the input caption text” (pp. 2, Section 2, Paragraph 6) The image-to-text generative AI produces an output which is then compared to the original text input).
Regarding claim 15, Padgett discloses:
“The non-transitory computer readable medium of claim 14, wherein the input prompt and reverse-generated prompt are defined by text” (“[0019] In some implementations, the input includes a prompt and wherein adjusting the input includes changing the prompt. In some examples, the prompt includes text and changing the prompt includes changing the text.”).
Regarding claim 16, Padgett discloses:
“The non-transitory computer readable medium of claim 14, wherein the generated output is an image or audio” (“[0022] In some implementations, the output content includes a textual or graphic brand” A graphic brand is an image).
Regarding claim 17, Padgett discloses:
“The non-transitory computer readable medium of claim 14, further comprising: responsive to determining that the similarity does not meet or exceed the predefined threshold, then re-applying the input prompt to the generative Al to produce a second generated output”. (FIG. 2 shows determining a similarity for the result based on one or more items in a repository of pre-existing content (208), comparing similarity measure to threshold (210), and adjusting input and reapplying (212) to generative AI (206) if it is too similar).
Regarding claim 18, Tsue discloses:
“The non-transitory computer readable medium of claim 14, wherein the method further comprising: responsive to determining that the similarity does not meet or exceed the predefined threshold, then receiving through the user interface, edits to the input prompt, and applying the edited input prompt to the generative Al to produce a second generated output”(“ FIG. 2 shows determining a similarity for the result based on one or more items in a repository of pre-existing content (208), comparing similarity measure to threshold (210), and adjusting input and reapplying (212) to generative AI (206) if it is too similar).
Regarding claim 19, Tsue discloses:
“The non-transitory computer readable medium of claim 14, wherein determining the similarity uses a similarity model” (“Finally, they add a Deep Attentional Multimodal Similarity Model, which is constructed to learn an attention-based matching score between the image-sentence pairs” (pp.2, Section 2, Paragraph 5)).
Regarding claim 20, Tsue discloses:
“The non-transitory computer readable medium of claim 14, wherein the generative Al and the reverse generative Al are trained on substantially the same training data” (“We used the 2011 Caltech-UCSD Birds 200 dataset (CUB-200), which contains 11,788 images of 200 different types of birds and is a widely used benchmark for text-to-image generation (Wah et al., 2011). These images provide a boundary box and vary in size. Additionally, we have 10 text descriptions of the dataset down loaded from a GitHub repository that serve as the text descriptions of the generated images 2.” Both the image to text and text to image models are trained using the CUB-200 dataset.)
Conclusion
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/HOWIE CHAN/Examiner, Art Unit 2147
/VIKER A LAMARDO/Supervisory Patent Examiner, Art Unit 2147
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