DETAILED ACTION
Applicant’s amendment and response dated 7/13/2026 has been provided in response to the 4/30/2026 Office Action which rejected claims 1-20, wherein claims 1, 8, 15, 16, and 19 have been amended and claims 2 and 20 have been cancelled. Thus, claims 1, and 3-19 remain pending in this application and have been fully considered by the examiner.
Applicant' s arguments, see pages 10-11 filed 7/13/2026, with respect to claims 8-9,11-12,14-15, and 17 have been fully considered and are persuasive. The rejection of the claims under 35 U.S.C. 103 has been withdrawn.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
Response to Arguments
Applicant's arguments filed on 7/13/2026 have been fully considered but they are not persuasive.
In response to Applicants’ arguments regarding the rejection of claims under 35 USC
101, the Applicants should please see the rejection below for clarification as it will substantially duplicate any response to the arguments in this section. However, the Applicant should please note that the limitations of the claim, even when taken as an ordered combination, do not provide steps that confine the abstract idea to a particular useful application. Also, the newly added limitations of “ comparing the historic requirement to the user-defined requirement to determine whether the historic requirement is identical to the user-defined requirement” recite an additional “mental processes”, the newly added limitations of deploying the API source code and the endpoint name, wherein the endpoint name specifies a functional endpoint for accessing the API source code recite insignificant extra solution activity of transmitting, which does not integrate the judicial exception into a practical application, as “deploying” provides a user access to the source code, but does not specifically mean executing the code on a computer to make the instructions of the source code perform its tasks, and “registering the user-defined requirement, the API source code, and the endpoint name in the API code creation database” recites insignificant extra solution activity of storing data, which also does not integrate the judicial exception into a practical application. Therefore, the recited judicial exceptions are not integrated into practical application, and the claims are ineligible.
Claim Objections
Claims 8-19 are objected to because of the following informalities:
Claim 8, lines 17-18, “the end point name” lacks proper antecedent basis.
Claim 19, line 17, “and”.
Claims 9-18 depend on the objected claim 8 and inherit the same issue.
Appropriate correction is required.
Claim Interpretation
As to claim 1, Applicant should please note that "The broadest reasonable interpretation of a method (or process) claim having contingent limitations requires only those steps that must be performed and does not include steps that are not required to be performed because the condition(s) precedent are not met. For example, assume a method claim requires step A if a first condition happens and step B if a second condition happens. If the claimed invention may be practiced without either the first or second condition happening, then neither step A or B is required by the broadest reasonable interpretation of the claim. If the claimed invention requires the first condition to occur, then the broadest reasonable interpretation of the claim requires step A. If the claimed invention requires both the first and second conditions to occur, then the broadest reasonable interpretation of the claim requires both steps A and B; See Ex parte Schulhauser, Appeal 2013-007847 (PTAB April 28, 2016) (precedential) for an analysis of contingent claim limitations in the context of both method claims and system claims. In Schulhauser, both method claims and system claims recited the same contingent step. When analyzing the claimed method as a whole, the PTAB determined that giving the claim its broadest reasonable interpretation, "[i]f the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed" (quotation omitted). Schulhauser at 10. When analyzing the claimed system as a whole, the PTAB determined that "[t]he broadest reasonable interpretation of a system claim having structure that performs a function, which only needs to occur if a condition precedent is met, still requires structure for performing the function should the condition occur." Schulhauser at 14. Therefore "[t]he Examiner did not need to present evidence of the obviousness of the [] method steps of claim 1 that are not required to be performed under a broadest reasonable interpretation of the claim (e.g., instances in which the electrocardiac signal data is not within the threshold electrocardiac criteria such that the condition precedent for the determining step and the remaining steps of claim 1 has not been met);" however to render the claimed system obvious, the prior art must teach the structure that performs the function of the contingent step along with the other recited claim limitations. Schulhauser at 9, 14" - see MPEP 2114.04 (II). Therefore, the steps of “in response to determining that the historic requirement being identical to the user-defined requirement, communicating an API endpoint associated with the source code to the user,” “in response to determining that historic requirement is not identical to the user-defined requirement, creating a request comprising the user-defined requirement and the source code, and providing the request to a generative Artificial Intelligence (AI) model to generate an API source code”, as recited in claim 1, are contingent limitations, given their broadest reasonable interpretation, and are not required.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “generative Artificial Intelligence (AI) model configured to”, “a comparator”, and “an API code deployment unit configured to” in claim 8, “message creation unit” in claims 9-11, “response process unit configured to” in claim 11, and “template selection unit configured to” in claim 12.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
Claim Rejections - 35 USC § 112
35 U.S.C. 101 reads as follows:
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.
Claim 10 is 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.
Claim 10, line 3, “the endpoint name” is unclear whether it refers to “the endpoint name” in lines 17-18 of claim 1 or “an endpoint name” in line 2 of claim 10. For the following rejection, “an endpoint name” in line 2 of claim 10 will be treated as --the endpoint name--.
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 and 3-19 are rejected under 35 U.S.C. 101 because under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The analysis specific to Claim 8 is being presented below.
Newly amended claim 8 recites:
A system for automatic source code generation, the system comprising:
a user interface configured to receive a user request associated with an Application Programming Interface (API) type;
a template database configured to store a template that is provided to a user to obtain a user-defined requirement;
an API code creation database configured to provide, in response to receiving the user-defined requirement, a historic requirement associated with a historic source code and provides the user-defined requirement;
a comparator configured to compare the historic requirement to the user-defined requirement to determine whether the historic requirement is identical to the user-defined requirement;
a generative Artificial Intelligence (AI) model configured to in response to a determination that the historic requirement is not identical to the user-defined requirement, receive a request comprising the user-defined requirement and the historic source code, and generate an API source code; and
an API code deployment unit configured to deploy the API source code and the endpoint name, wherein the endpoint name specifies a functional endpoint for accessing the API source code, and to provide the API source code to the user, wherein the API code creation database is further configured to register the user-defined requirement, the API source code, and the endpoint name.
Step 1:
The claim falls within statutory a category of being a system.
Step 2A – Prong 1:
The limitations of “provide, in response to receiving the user-defined requirement, a historic requirement associated with a historic source code and provides the user-defined requirement”, “compare the historic requirement to the user-defined requirement to determine whether the historic requirement is identical to the user-defined requirement” and generate, in response to receiving the user-defined requirement and the historic source code, an API source code are processes that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. That is, nothing in the claim elements precludes the step from practically being performed in the mind or with a pen and paper, i.e. “compare” “providing” and “generating” can be performed in the human mind through observation, evaluation, judgement, opinion with the aid of pen and paper. As such, this limitation fall within the “Mental Processes” grouping of abstract ideas.
Step 2A – Prong 2:
The claim recites additional elements of “a user interface”, “a template database”, “ an API code creation database”, and “a generative Artificial Intelligence (AI) model”, “ a comparator”, and “an API code deployment unit”, which are all recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea and thus do not integrate the judicial exception into a practical application. Also, the additional elements of “receive a user request associated with an Application Programming Interface (API) type”, “receiving a request comprising the user defined requirement and the historic source code”, “store a template that is provided to a user to obtain a user-defined requirement”, “deploy the API source code and the endpoint name, wherein the endpoint name specifies a functional endpoint for accessing the API source code”, and “register the user-defined requirement, the API source code, and the endpoint name” merely recites insignificant extra solution activity such as gathering, transmitting, and storing data, which does not integrate the judicial exception into a practical application. See MPEP 2106.05(d). Accordingly, none of these additional elements integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Step 2B:
As discussed with respect to Step 2A Prong 2, the additional elements of “a user interface”, “a template database”, “ an API code creation database”, and “a generative Artificial Intelligence (AI) model” merely recites generic computer and computer components, and thus do not amount to significantly more than the judicial exception. In addition, the courts have identified functions such as gathering, transmitting, and receiving data as well-understood, routine, conventional activity, as recited in the limitations “receive a user request associated with an Application Programming Interface (API) type and “store a template that is provided to a user to obtain a user-defined requirement” and thus these limitations do not amount to significantly more than the judicial exception. See MPEP 2106.05(d). Therefore, none of the additional elements recite an inventive concept and the claimed invention is patent ineligible under 35 USC 101.
The analysis specific to Claim 1 is being presented below. However, the Applicants should please note that the analysis for claim 19 is similar to that of claim 1 and therefore rejected for the same reasons.
Newly amended claim 1 recites:
A method for automatic source code generation, the method comprising:
in response to receiving a user request associated with an Application Programming Interface (API) type, retrieving a template from a template database;
providing the template to a user to obtain a user-defined requirement;
using the user-defined requirement to obtain from an API code creation database a historic requirement that is associated with the user-defined requirement and is associated with a source code;
comparing the historic requirement to the user-defined requirement to determine whether the historic requirement is identical to the user-defined requirement;
in response to determining that the historic requirement is identical to the user-defined requirement, communicating an API endpoint associated with the source code to the user;
in response to determining that the historic requirement is not identical to the user-defined requirement, creating a request comprising the user-defined requirement and the source code, and providing the request to a generative Artificial Intelligence (AI) model to generate an API source code;
in response to receiving the API source code and an endpoint name from the generative AI model, communicating the endpoint name to the user;
deploying the API source code and the endpoint name, wherein the endpoint name specifies a functional endpoint for accessing the API source code; and
registering the user-defined requirement, the API source code, and the endpoint name in the API code creation database.
Step 1:
The claim falls within statutory a category of being a method.
Step 2A – Prong 1:
The limitations of “using the user-defined requirement to obtain a historic requirement that is associated with the user-defined requirement and is associated with a source code” and “ comparing the historic requirement to the user-defined requirement to determine whether the historic requirement is identical to the user-defined requirement” are processes that, under its broadest reasonable interpretation, covers performance of the limitation in the mind. That is, nothing in the claim elements precludes the step from practically being performed in the mind or with a pen and paper, i.e. “using”, “comparing”, and “obtaining” can be performed in the human mind through observation, evaluation, judgement, opinion with the aid of pen and paper. As such, this limitation fall within the “Mental Processes” grouping of abstract ideas.
Step 2A – Prong 2:
The claim recites additional elements of “an API code creation database”, “a template database”, and “a generative Artificial Intelligence (AI) model”, which are all recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea and thus do not integrate the judicial exception into a practical application. Also, the additional elements of “in response to receiving a user request associated with an Application Programming Interface (API) type, retrieving a template from a template database,” “providing the template to a user to obtain a user-defined requirement”, “in response to determining that the historic requirement is identical to the user-defined requirement, communicating an API endpoint associated with the source code to the user”, “in response to determining that the historic requirement is not identical to the user-defined requirement, creating a request comprising the user-defined requirement and the source code, and providing the request to a generative Artificial Intelligence (AI) model to generate an API source code”, “in response to receiving the API source code and an endpoint name from the generative AI model, communicating the endpoint name to the user”, deploying the API source code and the endpoint name, wherein the endpoint name specifies a functional endpoint for accessing the API source code” and registering the user-defined requirement, the API source code, and the endpoint name in the API code creation database” all merely recites insignificant extra solution activity such as gathering, transmitting and storing data, which does not integrate the judicial exception into a practical application. See MPEP 2106.05(d). Accordingly, none of these additional elements integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Step 2B:
As discussed with respect to Step 2A Prong 2, the additional elements of “a user interface”, “a template database”, “ an API code creation database”, and “a generative Artificial Intelligence (AI) model” merely recites generic computer and computer components, and thus do not amount to significantly more than the judicial exception. In addition, the courts have identified functions such as gathering, transmitting, receiving, and storing data as well-understood, routine, conventional activity, as recited in the limitations “in response to receiving a user request associated with an Application Programming Interface (API) type, retrieving a template from a template database,” “providing the template to a user to obtain a user-defined requirement”, “in response to determining that the historic requirement is identical to the user-defined requirement, communicating an API endpoint associated with the source code to the user”, “in response to determining that the historic requirement is not identical to the user-defined requirement, creating a request comprising the user-defined requirement and the source code, and providing the request to a generative Artificial Intelligence (AI) model to generate an API source code”, “in response to receiving the API source code and an endpoint name from the generative AI model, communicating the endpoint name to the user”, deploying the API source code and the endpoint name, wherein the endpoint name specifies a functional endpoint for accessing the API source code” and registering the user-defined requirement, the API source code, and the endpoint name in the API code creation database” and thus these limitations do not amount to significantly more than the judicial exception. See MPEP 2106.05(d). Therefore, none of the additional elements recite an inventive concept and the claimed invention is patent ineligible under 35 USC 101.
Additionally, claim 3 recites “wherein the API type is a data retrieval API and the API endpoint is a functional API endpoint”, recites insignificant extra solution activity such as gathering data, which does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claims 4 and 17 recite “wherein the historic requirement has been selected based on at least one of a similarity characteristic or a priority associated with the user-defined requirement”, which also falls within the “Mental Processes” grouping of abstract ideas, as discussed above. As such, these claims fail both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 5 recites “updating the template based on the user-defined requirement”, recites applying the abstract idea, which does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 6 recites “updating the template based on the user-defined requirement”, recites applying the abstract idea, which does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 7 recites “analyzing the source code to determine whether the user-defined requirement is associated with the source code”, which also falls within the “Mental Processes” grouping of abstract ideas, as discussed above. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 9 recites “wherein the system further comprises a message creation unit configured to”, which is recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea and “communicate a query to the user interface to obtain a query result.”, recites insignificant extra solution activity such as transmitting data, which does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 10 recites “wherein the message creation unit is configured to”, which is recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea and “communicate an endpoint name to the user in response to receiving the API source code and the endpoint name”, which recites insignificant extra solution activity such as transmitting data, which does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 11 recites “a response process unit configured to”, which is recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea and “communicate the API source code to the message creation unit”, which recites insignificant extra solution activity such as transmitting data, which does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally claim 12 recites “wherein the system further comprises a template selection unit configured to”, which is recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea and use the query result to select the template from the template database, which also falls within the “Mental Processes” grouping of abstract ideas, as discussed above. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 13 recites “wherein the system, in response to the historic requirement being identical to the user-defined requirement, communicates an API endpoint to the user interface”, which recites insignificant extra solution activity such as transmitting data, which does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 14 recites “wherein the generative AI model is configured to”, which is recited at a high level of generality, i.e., merely instructions to implement the abstract idea on a generic computer or merely uses a computer as a tool to perform the abstract idea and “receive the user-defined requirement and the historic source code in response to the historic requirement not being identical to the user-defined requirement”, which recites insignificant extra solution activity such as transmitting data, which does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claims 15 recites “registering at least one of the user-defined requirement, the API source code, or the API endpoint in the API code creation database”, recites insignificant extra solution activity such as storing data, which does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 16 recites “wherein the API type is a data retrieval API, and the endpoint name specifies a functional API endpoint”, recites insignificant extra solution activity such as gathering data, which does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Additionally, claim 18 recites “wherein the template is updated based on the user-defined requirement” recites applying the abstract idea, which does not integrate the judicial exception into a practical application. As such, this claim fails both Step 2A prong 2 and Step 2B and is ineligible.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to CHENECA SMITH whose telephone number is (571)270-1651. The examiner can normally be reached Mon-Fri 8:00AM-4:30PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hyung S Sough can be reached at 571-272-6799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/CHENECA SMITH/Examiner, Art Unit 2192
/S. Sough/SPE, Art Unit 2192
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