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 .
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 on March 23, 2026. 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and the fee set forth in 37 CFR § 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR § 1.114.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 March 23, 2026 has been entered.
Status of the Application
This office action is prepared in response to Amendments to the Claims and Remarks submitted by Applicant on March 23, 2026 relating to U.S. Patent Application No. 18/634,578, filed on April 12, 2024 which claims priority to U.S. Provisional Application 63/459,511, filed on April 14, 2023. Claims 1, 7, 11, 17 and 19 are amended. Claims 1-2, 4-12 and 14-20 are pending and have been examined. This action is non-final.
Information Disclosure Statement
The Information Disclosure Statement (IDS) submitted by the Applicant on March 12, 2026 is in compliance with the provisions of 37 CFR 1.97 and has been considered by the examiner.
Response to Arguments
The Remarks submitted by Applicant on March 23, 2026 have been fully considered, however, are not persuasive.
With respect to the Section 112 rejections, Applicant has amended independent Claims 1 and 11 and removed the phrase "performing ambiguous modification to the copied subset of responses" and replaced it with “performing stochastic perturbation to the copied subset of responses, wherein the stochastic perturbation comprises at least one of: randomly altering numerical parameters within the copied responses, substituting alternative asset allocations, or introducing noise into the copied responses to create modified variants.” Applicant asserts, that Specification Paragraph 27, supports the aforementioned claim recitation in that the underlying technical concept is a perturbation/mutation operation used to test robustness, which is a technique in AI/ML (adversarial testing, data augmentation). Applicant further asserts that by replacing "ambiguous modification" with "stochastic perturbation" and providing specific examples, the term has been defined with additional clarity and precision, and in the context of ML techniques, and based on the scope of the original disclosure, based on perturbation being the algorithmic mechanism underlying the disclosure in the specification. (Remarks, pp. 7-8). Examiner respectfully disagrees. The term “stochastic perturbation” is not disclosed in Paragraph 27 or anywhere in the Specification. There is no support provided in the Specification as to what the new element “stochastic perturbation” means or any algorithm or explanation as to how the operation to “performing stochastic perturbation to the copied subset of responses” is accomplished.
Applicant has also removed the phrase “using one or more artificial intelligence models to evaluate consistency between the plurality of responses and the copied subset of responses” and replaced it with “using one or more artificial intelligence models to compute a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants, wherein the consistency score quantifies a degree of alignment between investment recommendations in the original response and the corresponding perturbed variant.” Applicant, citing to Specification Paragraph 25, asserts that the amendment provides a recitation of "consistency" as a computable score measuring alignment between original and perturbed responses in that the Specification references specific neural network architectures for consistency evaluation and thus provides an objective standard. (Remarks, pp. 8-9). Examiner respectfully disagrees. There is no support provided in the Specification defining a “consistency score” or any algorithm or explanation as to how “compute a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants” is accomplished. The Specification and drawings fail to show that as of the critical date, the inventors possessed this capability. Further, they fail to provide sufficient instruction to enable a PHOSITA to make or use the invention without undue experimentation (lack of enablement). Further, the claims contain 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 at the time the application was filed, had possession of the claimed invention (lack of possession). The Section 112(a) and 112(b) rejections are maintained.
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.
Claims 1 and 11 and their respective dependent claims, (2 and 4-10 and 12 and 14-20), are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claims contain subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention without undue experimentation. The claimed subject matter is not enabling in Claim 1 with respect to the claim limitations “performing stochastic perturbation to the copied subset of responses, wherein the stochastic perturbation comprises at least one of: randomly altering numerical parameters within the copied responses, substituting alternative asset allocations, or introducing noise into the copied responses to create modified variants” and “using one or more artificial intelligence models to compute a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants, wherein the consistency score quantifies a degree of alignment between investment recommendations in the original response and the corresponding perturbed variant.” Independent Claim 11 recites similar limitations.
“Whether undue experimentation is needed is not a single, simple factual determination, but rather is a conclusion reached by weighing many factual considerations.” In re Wands, 858 F.2d 731,737, 8 USPQ2d 1400,1404 (Fed. Cir. 1988). The Wands factors include: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Id.
In reviewing for lack of enablement, the Wands court elected to consider “all of the factors.” Id. at 740. However, it is not necessary to review all the Wands factors to find a disclosure enabling. Rather, the Wands factors “are illustrative, not mandatory” and what is relevant to an enablement determination depends upon the facts of the particular case. See Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 [18 USPQ2d 1016] (Fed. Cir. 1991). See also Enzo Biochem, Inc. v. Calgene, Inc., 188 F.3d 1362, 1371 (52 USPQ2d 1129) (Fed. Cir. 1999) and Warner-Lambert Company v. Teva Pharmaceuticals USA, Inc., 418 F.3d 1326, 1337 (75 USPQ2d 1865) (Fed. Cir. 2005).
With respect to Wands Factor 2, the amount of direction or guidance provided by Applicant’s disclosure is not sufficient to teach one skilled in the art how to make and/or use the full scope of the claimed invention. There is no support provided in the Specification as to what the new element “stochastic perturbation” means or any algorithm or explanation as to how the operation to perform “stochastic perturbation to the copied subset of responses” is accomplished. Similarly, there is no support for provided in the Specification defining a “consistency score” or any algorithm or explanation as to how “compute a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants” is accomplished. The only guidance for evaluating consistency between the plurality of responses is the naming of a handful of neural network structures that might be utilized in the process. (See Specification, Par. 25). There is no disclosure of any algorithm that the various well-known types of neural networks referenced in Specification Paragraph 25 might utilize in analyzing responses and computing a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants. The Specification and drawings fail to show that as of the critical date, the inventors possessed this capability. Further, they fail to provide sufficient instruction to enable a PHOSITA to make or use the invention without undue experimentation (lack of enablement).
With respect to Wands Factor 3, the Applicant has not provided any working examples as to how “performing stochastic perturbation to the copied subset of responses, wherein the stochastic perturbation comprises at least one of: randomly altering numerical parameters within the copied responses, substituting alternative asset allocations, or introducing noise into the copied responses to create modified variants” and “using one or more artificial intelligence models to compute a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants, wherein the consistency score quantifies a degree of alignment between investment recommendations in the original response and the corresponding perturbed variant” operate within the claimed invention.
A conclusion of lack of enablement means that, based on the evidence regarding each of the above factors, the Specification, at the time the application was filed, would not have taught one skilled in the art how to make and/or use the full scope of the claimed invention without undue experimentation. In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993); see also MPEP 2164.01(a). Here, the Specification lacks sufficient disclosure with respect to “performing stochastic perturbation to the copied subset of responses, wherein the stochastic perturbation comprises at least one of: randomly altering numerical parameters within the copied responses, substituting alternative asset allocations, or introducing noise into the copied responses to create modified variants” and “using one or more artificial intelligence models to compute a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants, wherein the consistency score quantifies a degree of alignment between investment recommendations in the original response and the corresponding perturbed variant” and therefore, at the time the application was filed, one skilled in the art would not have been taught how to make and/or use the full scope of the claimed invention without undue experimentation.
Claims 1 and 11 and their respective dependent claims, (2 and 4-10 and 12 and 14-20), are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain 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 at the time the application was filed, had possession of the claimed invention. For instance, in In re Hayes Microcomputer Products, the written description requirement was satisfied because the specification disclosed the specific type of microcomputer used in the claimed invention as well as the necessary steps for implementing the claimed function. The disclosure was insufficient detail such that one skilled in the art would know how to program the microprocessor to perform the necessary steps described in the specification. In re Hayes Microcomputer Prods., Inc. Patent Litigation, 982 F.2d 1527, 1533-34, 25 USPQ2d 1241, (Fed. Cir. 1992).
The claimed 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 at the time the application was filed, had possession of the claimed invention is “performing stochastic perturbation to the copied subset of responses, wherein the stochastic perturbation comprises at least one of: randomly altering numerical parameters within the copied responses, substituting alternative asset allocations, or introducing noise into the copied responses to create modified variants” and “using one or more artificial intelligence models to compute a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants, wherein the consistency score quantifies a degree of alignment between investment recommendations in the original response and the corresponding perturbed variant.” Independent Claim 11 recites similar limitations. There is no support provided in the Specification as to what the new element “stochastic perturbation” to a response means or any algorithm or explanation as to how the operation to “perform stochastic perturbation to the copied subset of responses” is accomplished. To satisfy the written description requirement, the Specification must describe the claimed invention in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing. Reiffin v. Microsoft Corp., 214 F.3d 1342, 1345, 54 USPQ2d 1915, 1917 (Fed. Cir. 2000). The lack of support in the Specification is indicative that the inventor did not possess the invention. (See MPEP 2161). Similarly, there is no support for provided in the Specification defining a “consistency score” or any algorithm or explanation as to how “compute a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants” is accomplished. The only guidance for evaluating consistency between the plurality of responses is the naming of a handful of neural network structures that might be utilized in the process. (See Specification, Par. 25). There is no disclosure of any algorithm that the various well-known types of neural networks referenced in Specification Paragraph 25 might utilize in analyzing responses and computing a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants. With computer-implemented functional claims, the Specification should disclose the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing. An algorithm is defined as “a finite sequence of steps for solving a logical or mathematical problem or performing a task.” (See MPEP 2161). The Specification and drawings contain no such disclosure and thus fail to show that as of the critical date, the inventor possessed this capability.
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.
Claims 1 and 11 and their respective dependent claims, (2 and 4-10 and 12 and 14-20), are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Regarding Claim 1, it is unclear what is meant by the following recited claim limitations: “performing stochastic perturbation to the copied subset of responses, wherein the stochastic perturbation comprises at least one of: randomly altering numerical parameters within the copied responses, substituting alternative asset allocations, or introducing noise into the copied responses to create modified variants” and “using one or more artificial intelligence models to compute a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants, wherein the consistency score quantifies a degree of alignment between investment recommendations in the original response and the corresponding perturbed variant.” Similarly, regarding Claim 11, it is unclear what is meant by the following recited claim limitations: “perform stochastic perturbation to the copied subset of responses, wherein the stochastic perturbation comprises at least one of: randomly altering numerical parameters within the copied responses, substituting alternative asset allocations, or introducing noise into the copied responses to create modified variants” and “use one or more artificial intelligence models to compute a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants, wherein the consistency score quantifies a degree of alignment between investment recommendations in the original response and the corresponding perturbed variant.” The Specification provides no definition for what the term "stochastic perturbation" means or how to perform it. The term " stochastic perturbation " as an operation on a response is not so well known to a PHOSITA that no definition is required. In addition, with respect to the amended claim language "using one or more artificial intelligence models to compute a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants” the Specification offers no guidance as to how a consistency score for each of the plurality of responses by comparing each response against corresponding stochastically perturbed variants is determined. As such, the aforementioned limitations render the claims indefinite.
Conclusion
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/GEORGE N. PROIOS/Examiner, Art Unit 3694 /BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694
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