This action is in response to the REC filed on 03/02/2026, in which claims 1-20 are presented for the examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03/02/2026 has been entered.
Response to Arguments
Applicant's arguments filed 03/02/2026 have been fully considered but they are not persuasive.
Response to Arguments
Applicant's arguments filed 10/10/2025 have been fully considered but they are not persuasive because they rely on a claim limitation that is not supported by the originally filed disclosure. Applicant contends that the support for the claim amendments can be found in paragraphs [0010], [0017]-[0019], [0021], [0023], [0046], [0047], [0054], [0055], [0063], [0064], and [0086]-[0096] of the originally filed application. Upon carefully reviewing the provided portions of specification for support, the examiner finds that the originally filed disclosure fails to reasonably convey to the one of the ordinary skill in the art that Applicant had possession of the claimed subject matter.
Applicant’s arguments or amendments rely on subject matter not present in the original disclosure, such subject matter would constitute new matter, which is prohibited 35 U.S.C. § 132(a). An RCE filed under 37 CFR 1.114 does not permit the introduction of new matter into the application. Accordingly, the claims remain rejected under 35 U.S.C. § 112(a) for lack of written description support and rejection under 35 U.S.C. § 101 is maintained.
Arguments with regards to Claim Rejections - 35 USC § 101
Step 2A, Prong One - The Claims Are Not Directed to an Abstract Idea
Response:
Although applicant argues that the claims are directed to a “technological improvement in chatbot functionality”, the examiner maintains that the claims as drafted, are directed to receiving data (case data from a prompt), analyzing data testing case data) and generating output, which falls within the abstract idea categories of mental processes (evaluating query similarity and referencing).
The examiner notes that courts have routinely characterized classification, comparison and decision making as abstract.
Thus, claim simply apply an abstract idea using generic computing components, which is not sufficient under 101.
2. Step 2A, Prong Two - The Claims Are Integrated into a Practical Application
Response:
The improvement is to quality of data, not the operation of computer itself. The LLM architecture, prompt engine, processor and memory operate in conventional manner. The claims do not recite any concrete mechanism that reduce computational load, or changed to model architecture.
Step 2B - The Claims Recite Significantly More Than the Alleged Abstract Idea
Response:
claim does not recite an additional element that amounts to adding insignificant extra-solution activity to the judicial exception. Computer implemented method, deploying to an application and LLM do not specify significantly more.
Accordingly, examiner respectfully maintains rejection under 35 U.S.C. §101.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
In particular, the following limitations lack adequate written description support in the originally filed specification:
“the chatbot is executed by one or more hardware processors and maintains, in memory, session state information associated with an active user session”;
“the chatbot modifies the session state information and constructs a prompt for submission to the large language model”
“excluding the prior session information reduces a token length of the constructed prompt and correspondingly reduces computational processing associated with inference by the large language model”;
The newly added limitations introduce subject matter that is not supported by the original disclosure and therefore considered as new matter. The specification does not provide sufficient details to demonstrate possession of these features at the time of filing.
Accordingly, claim is rejected under 35 USC § 112 (a).
Claim Rejections - 35 U.S.C. § 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.
As to claim 1:
Step 1 Analysis: Is the claim to a process, machine, manufacture or composition of matter? See MPEP § 2106.03.
Yes, the claim is to a process.
Step 2A Prong One Analysis: Does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1).
Yes, the method comprises generic data manipulation steps: generating test cases, inserting data into templates, running a test, assigning scores and using a model in a chatbot.
These are tasks that could be performed manually or with conventional computer systems.
Step 2A Prong Two Analysis: Does the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d).
No, there is no indication that the claimed method improves functioning of a computer or other technology.
The use of a model is generic and not tied to specific architecture, structure, or improvement to machine learning.
The steps are described at a high level of generality, with no particular hardware or software configuration.
Step 2B Analysis: Does the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05.
No, claim fails to recite an additional element that amounts to adding insignificant extra-solution activity to the judicial exception. “Computer implemented method” deploying to an application” and LLM do not specify significantly more. See MPEP § 2106.05(g).
Dependent claims 2-12 are rejected for the same rationale as in claim 1.
Because the claims 1-12 are directed to an abstract idea and does not recite significantly more than that idea, it is ineligible under 35 U.S.C. 101.
As to claim 13:
Step 1 Analysis: Is the claim to a process, machine, manufacture or composition of matter? See MPEP § 2106.03.
Yes, the claim is to a composition of matter.
Step 2A Prong One Analysis: Does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1).
Yes, the method comprises generic data manipulation steps: generating test cases, inserting data into templates, running a test and s assigning scores and using a model in a chatbot.
These are tasks that could be performed manually or with conventional computer systems.
Step 2A Prong Two Analysis: Does the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d).
No, there is no indication that the claimed method improves functioning of a computer or other technology.
The use of a model is generic and not tied to specific architecture, structure, or improvement to machine learning.
The steps are described at a high level of generality, with no particular hardware or software configuration.
Step 2B Analysis: Does the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05.
No, claim fails to recite an additional element that amounts to adding insignificant extra-solution activity to the judicial exception. “Computer implemented method” deploying to an application” and LLM do not specify significantly more. See MPEP § 2106.05(g).
Dependent claims 14-20 are rejected for the same rationale as in claim 13.
Because the claim is directed to an abstract idea and does not recite significantly more than that idea, it is ineligible under 35 U.S.C. 101.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten or amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action.
Conclusion
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/KAMINI B PATEL/Primary Examiner, Art Unit 2114