Prosecution Insights
Last updated: April 19, 2026
Application No. 18/516,862

PREVENTING ATTACKS ON GENERATIVE MODELS

Final Rejection §101§112
Filed
Nov 21, 2023
Examiner
POUDEL, SAMIKSHYA NMN
Art Unit
2436
Tech Center
2400 — Computer Networks
Assignee
Microsoft Technology Licensing, LLC
OA Round
2 (Final)
44%
Grant Probability
Moderate
3-4
OA Rounds
2y 10m
To Grant
99%
With Interview

Examiner Intelligence

Grants 44% of resolved cases
44%
Career Allow Rate
8 granted / 18 resolved
-13.6% vs TC avg
Strong +80% interview lift
Without
With
+80.0%
Interview Lift
resolved cases with interview
Typical timeline
2y 10m
Avg Prosecution
29 currently pending
Career history
47
Total Applications
across all art units

Statute-Specific Performance

§101
16.2%
-23.8% vs TC avg
§103
54.8%
+14.8% vs TC avg
§102
17.5%
-22.5% vs TC avg
§112
11.5%
-28.5% vs TC avg
Black line = Tech Center average estimate • Based on career data from 18 resolved cases

Office Action

§101 §112
CTFR 18/516,862 CTFR 99041 Notice of Pre-AIA or AIA Status 07-03-aia AIA 15-10-aia The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA. Response to Amendment In the response filed on 06/28/2024. The applicant amended claims 1-5,7, 13-15, and 18-19. No claims were added. Response to Arguments With respect to claim objections: Applicant’ claim amendments and remarks filed on 12/31/2025 have been fully considered and overcame the claim objections as presented in the non-final office action filed 10/01/2025. Therefore, objections have been withdrawn. With respect to 35 U.S.C. §101 rejections: Applicant’ claim amendments and remarks filed on 12/31/2025 have been fully considered and does not overcome 101 as presented in the non-final office action filed 10/01/2025. Applicant’s argument have been considered but are not persuasive. Applicant argues that the claims are not directed to an abstract idea because they provide a specific technological solution to prompt injection attacks in generative AI systems and cannot be performed in human mind. This argument is not persuasive. The claims recite steps including receiving input data, transforming the input data, generating prompt sections, providing instructions, and directing how certain instructions are to be treated (i.e. ignored). These steps amount to managing, organizing, and modifying information and instructions which constitutes a mental process. Such operations can be practically performed in a human mind such as reviewing input, separating portions, applying rules, and disregarding certain instructions. Applicant’s argument that “prompt injection” is unique to generative AI systems does not correspond to scope claims. The claims do not recite any specific technological implementation of generative model, nor they require any model architecture or processing mechanism. Instead, the recited “generative model” is described functionally and broadly. Applicant further argues that the claims integrate abstract idea into a practical application by improving computer security and preventing prompt injection attacks. This argument is not persuasive. The additional elements recited in the claims including applying a “transformation” (e.g., encoding , interleaving), defining boundaries for portions of input data, and instructing a model to ignore certain instructions do not constitute an improvement to computer functionality or to a specific technological field. Rather these elements represent data manipulation, and rule-based processing of information which are also abstract. The claims merely use generic computing components to apply rules to input data to achieve a desired result. Applicant further argues that the claims recite a combination of features that provides an inventive concept. The additional elements of the claims such a s receiving data, transforming data, generating prompt sections, and providing instructions are well understood routine, and conventional computer functions. Moreover, the ordered combination of these elements does not amount to significantly more than the abstract idea. The combination merely applies generic data processing techniques to implement rules for handling instructions and input data. Thus, 101 rejection is maintained. With respect to 135 U.S.C. §103 rejections: Applicant's arguments filed on 12/31/2025 have been received and entered. Applicant's arguments, see Applicant Arguments 10-15, with respect to the rejection (s) of independent claims 1,14 and 19 have been fully considered. Examiner withdraws 103 rejections based on the amendment submitted. Claim Rejections - 35 USC § 112 07-30-02 AIA 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. 07-34-01 Claims 1-20 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 1,14 and 19 recite the limitation “receiving input data injected with an attack payload”, The phrase “input data injected with an attack payload” is unclear clear whether the method requires detection/identification of attack payload, or merely receipt of the input data that happens to contain malicious instructions. Claims 1, 14, and 19 further recites “receiving” the first, second, and third instructions. The term “receiving” is vague because it does not clearly distinguish whether the instruction are received from a user, retrieved from storage, generated internally or obtained from another source. The claims recites “receiving a second instruction that informs the generative model of a boundary of the first prompt section”. The phrase “boundary” is unclear because the first prompt section would have at least a beginning and end. It is ambiguous whether the claim requires identification of one boundary, both boundaries or some other form of delimitation of the first prompt section. The claims also recites “ignore any instruction present in the first prompt section”. It is unclear how an instruction is determined to be “present” in the first prompt section and what count as an “instruction”. The claims further recites “generating a prompt to prevent execution of the attack payload by the generative model”. The phrase “to prevent execution of the attack payload by the generative model” is unclear whether “execution” refers to following malicious prompt instructions, or literal execution of code. Examiner suggest to clarify the scope of these claims. Dependent claims are also rejected for inheriting the deficiencies set forth above for independent claims. Appropriate correction is required. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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. Independent claims 1, 14 and 20: Step1: Claims 1 is drawn to “a method”, claim 14 is drawn to “a non-transitory computer-readable storage media configured to store instructions to perform the method”, and claim 20 is drawn to “a system”, therefore each of these claim groups falls under one of four categories of statutory subject matter (process/method, machines/products/apparatus, manufactures, and compositions of matter). Step 2A, Prong 1: Claims 1, 14, and 20 are directed to a judicially recognized exception of an abstract idea without significantly more. Each of claims 1, 14, and 19 recites limitations "receiving input data" is merely data gathering, and " receiving input data injected with an attack payload ", “applying a transformation to the input data to generate transformed input data generating, from the transformed input data, a first prompt section”, " receiving a first instruction that instructs a generative model to carry out a task based on the first prompt section", "receiving a second instruction that informs the generative model of a boundary of the first prompt section, wherein the second instruction comprises an explanation of the transformation applied to the input data", "receiving a third instruction that instructs the generative model to ignore any instruction present in the first prompt section, wherein the first instruction, the second instruction, and the third instruction form a second prompt section", and "generating a prompt to prevent execution of the attack payload by the generative model, the prompt comprising the transformed input data in the first prompt section and the first instruction, the second instruction, and the third instruction in the second prompt section" that under its broadest reasonable interpretation, enumerates a mental evaluation and abstract ideas. Other than reciting a generic "one or more computer processors" (Claim 19) and "generative model" in high level generality (Claims 1, 14, and 19) nothing in the claims preclude the steps from practically being performed in the human mind. The mere nominal recitation of a generic computer component (computer processor), to automate the mental and abstract ideas, and generic generative model are nothing more than abstract mental and mathematical concepts (See MPEP 2106.04(a)(2)(1)(111)). Step 2A, Prong 2: Claims 1,14, and 19 recite additional element "non-transitory computer-readable medium" to store computer program instructions and "a processor" to execute the computer program instructions, and "a generative model" to carry out the task. The computer readable storage media, the computer processor, and generative model are recited at a high level of generality (i.e., as generic computer components/tools performing generic computer functions to store and to process data respectively). These generic computer functions are no more than mere instructions to apply the exception using generic computer components. The combination of these additional elements does not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea (MPEP 2106.05(f)). Step 2B: The additional elements "non-transitory computer-readable medium" to store computer program instructions and "a processor" to execute the computer program instructions are no more than generic, off-the-shelf computer components, and the Symantec, TLI, OIP Techs, and Versata court decisions cited in MPEP 2106.05(d)(II) indicate that mere collection/receipt of input data and/or storing and retrieving information in memory are well-understood, routine, and conventional functions when it is claimed in a merely generic manner (See M PEP 2106.05(d)(ll)(IV)). As such, claims 1 , 14, and 19 are not patent eligible. Dependent claims 2-7, 9-14, and 16-20: Step 1: Claims 2-13 are drawn to “a method” and 15-19 are drawn to “Computer program product” and 20 is drawn to "a system", therefore each of these claims falls under one of four categories of statutory subject matter (process/method, machines/products/apparatus, manufactures, and compositions of matter). Steps 2A-2B: Dependent claims 2-13, 15-18, and 20 are also ineligible for the same reasons given with respect to claims 1, 14, and 19. Claims 2-13, 15-18, and 20 recite further abstract ideas of specific formatting techniques on the input data (delimiters, encoding, interleaving with a special character) which are common practices in the art of text data handling, retrieving a template prompt, retrieving input data from databases or webpage just data gathering, using generative model to perform summarization, Q&A, translation, or code generation is merely applying the abstract idea to a generic Al model without improving how model operates, post processing steps such as displaying results on user interface or triggering standard computer action such as email, executing transaction, executing code are routine computer functions (MPEP 2106.04(a)(2)(I)). Claims 2-13, 15-18, and 20 fail to recite any additional elements/steps that might integrates the abstract idea into a practical application. As such, claims 2-13, 15-18, and 20 are not patent eligible. Allowable Subject Matter 07-43-01 AIA Claim s 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA), 2nd paragraph, set forth in this Office action. Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101 rejection, set forth in this Office action. Conclusion 07-39 AIA THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a). A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action. Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMIKSHYA POUDEL whose telephone number is (703)756-1540. The examiner can normally be reached 7:30 AM - 5PM Mon- Fri. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SHEWAYE GELAGAY can be reached at (571)272-4219. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /S.N.P./Examiner, Art Unit 2436 /TRONG H NGUYEN/Primary Examiner, Art Unit 2436 Application/Control Number: 18/516,862 Page 2 Art Unit: 2436 Application/Control Number: 18/516,862 Page 3 Art Unit: 2436 Application/Control Number: 18/516,862 Page 4 Art Unit: 2436 Application/Control Number: 18/516,862 Page 5 Art Unit: 2436 Application/Control Number: 18/516,862 Page 6 Art Unit: 2436 Application/Control Number: 18/516,862 Page 7 Art Unit: 2436 Application/Control Number: 18/516,862 Page 8 Art Unit: 2436 Application/Control Number: 18/516,862 Page 9 Art Unit: 2436 Application/Control Number: 18/516,862 Page 10 Art Unit: 2436
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Prosecution Timeline

Nov 21, 2023
Application Filed
Sep 26, 2025
Non-Final Rejection — §101, §112
Dec 11, 2025
Examiner Interview (Telephonic)
Dec 11, 2025
Examiner Interview Summary
Dec 31, 2025
Response Filed
Mar 27, 2026
Final Rejection — §101, §112 (current)

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Study what changed to get past this examiner. Based on 5 most recent grants.

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Prosecution Projections

3-4
Expected OA Rounds
44%
Grant Probability
99%
With Interview (+80.0%)
2y 10m
Median Time to Grant
Moderate
PTA Risk
Based on 18 resolved cases by this examiner. Grant probability derived from career allow rate.

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