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 .
DETAILED ACTION
This action is responsive to the Application filed on 5/31/2024, which has provisional application 63/470754 filed on 6/2/2023. Claims 1-20 are pending in the case. Claims 1, 10, and 19 are independent claims.
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 1-18 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (Step 1). If the claim does fall within one of the statutory categories, the second step in the analysis is to determine whether the claim is directed to a judicial exception (Step 2A). The Step 2A analysis is broken into two prongs. In the first prong (Step 2A, Prong 1), it is determined whether or not the claims recite a judicial exception (e.g., mathematical concepts, mental processes, certain methods of organizing human activity). If it is determined in Step 2A, Prong 1 that the claims recite a judicial exception, the analysis proceeds to the second prong (Step 2A, Prong 2), where it is determined whether or not the claims integrate the judicial exception into a practical application. If itis determined at step 2A, Prong 2 that the claims do not integrate the judicial exception into a practical application, the analysis proceeds to determining whether the claim is a patent-eligible application of the exception (Step 2B). If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim integrates the judicial exception into a practical application, or else amounts to significantly more than the abstract idea itself. Applicant is advised to consult the 2019 PEG for more details of the analysis.
Step 1 Analysis: Is the claim to a process, machine, manufacture or composition of matter? See MPEP § 2106.03.
Claims 1-9 are drawn to a method, claims 10-18 are drawn to a non-transitory computer-readable media, therefore each of these claim groups falls under one of four categories of statutory subject matter (machine/products/apparatus, process/method, manufactures and compositions of mater; Step 1). Nonetheless, the claims are directed to a judicially recognized exception of an abstract idea without significant more (Step 2A, see below). Independent claims 1, and 10 are non-verbatim but similar in claim construction, hence share the same rationale that the claimed inventions are directed to non-statutory subject matter as follows:
As to claim 1:
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 limitation “prompting … to isolate, from a plurality of service or warranty records, a problem, a cause, and a solution indicated in the service or warranty record”, “structuring, for the plurality of service or warranty records, the problem, the cause, and the solution as at least one question-and-answer pair” are the abstract idea of a mental process that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper (including an observation, evaluation, judgment, opinion). See MPEP § 2106.04(a)(2)(III).
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, this limitation “a generative AI model” and “a second AI model” are additional elements that amounts to adding the words “apply it” (or an equivalent) with the judicial exception and reciting only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished because it is unclear how the “a generative AI model” and “a second AI model” are used nor the specification makes it clear how these actions are performed. Thus, these additional elements are recited in a manner that represent no more than mere instructions to apply the judicial exceptions on a computer. See MPEP § 2106.05(f) and § 2106.04(d).
No, This limitation “aggregating the question-and-answer pairs for the plurality of service or warranty records as the fine-tuning dataset” and “fine-tuning … using the fine-tuning dataset” is merely a post-solution step and as such is an additional element that amounts to adding insignificant extra-solution activity to the judicial exception. See MPEP §§ 2106.04(d), 2106.05(g).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea when considered as an ordered combination and as a whole.
Step 2B Analysis: Does the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05.
First, the additional elements directed to generally linking the use of a judicial exception to a particular technological environment or field of use are deemed insufficient to transform the judicial exception to a patentable invention because the claimed limitations generally link the judicial exception to the technology environment, see MPEP 2106.05(h). However, they are included below for the sake of completeness.
Second, the additional elements mere application of the abstract idea or mere instructions to implement an abstract idea on a computer are deemed insufficient to transform the judicial exception to a patentable invention because the limitations generally apply the use of a generic computer and/or process with the judicial exception. See MPEP 2106.05(f). However, they are included below for the sake of completeness.
No, this limitation “a generative AI model” and “a second AI model” are additional elements that amounts to adding the words “apply it” (or an equivalent) with the judicial exception and reciting only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished because it is unclear how the “a generative AI model” and “a second AI model” are used nor the specification makes it clear how these actions are performed. Thus, these additional elements are recited in a manner that represent no more than mere instructions to apply the judicial exceptions on a computer. See MPEP § 2106.05(f) and § 2106.04(d).
No, This limitation “aggregating the question-and-answer pairs for the plurality of service or warranty records as the fine-tuning dataset” and “fine-tuning … using the fine-tuning dataset” is merely a post-solution step and as such is an additional element that amounts to adding insignificant extra-solution activity to the judicial exception. See MPEP §§ 2106.04(d), 2106.05(g).
Thus, considering the additional elements individually and in combination and the claims as a whole, the additional elements do not provide significantly more than the abstract idea. The claims are not eligible subject matter.
Therefore, in examining elements as recited by the limitations individually and as an ordered combination, as a whole the independent claim limitations do not recite what have the courts have identified as “significantly more”.
Furthermore, regarding dependent claims 2-9 which are dependent on claim 1, claims 11-18 which are dependent on claim 10, the claims are directed to a judicial exception without significantly more as highlighted below in the claim limitations by evaluating the claim limitations under Step 2A and 2B:
Dependent claims 2 and 11
Incorporates the rejection of independent claim
Step 2A Prong 1: does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1). Yes, the limitation “generating and executing a maintenance action using … after the fine-tuning …” is the abstract idea of a mental process that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper (including an observation, evaluation, judgment, opinion). See MPEP § 2106.04(a)(2)(III).
Step 2A prong 2: the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d) No, this limitation “a generative AI model” and “a second AI model” are additional elements that amounts to adding the words “apply it” (or an equivalent) with the judicial exception and reciting only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished because it is unclear how the “a generative AI model” and “a second AI model” are used nor the specification makes it clear how these actions are performed. Thus, these additional elements are recited in a manner that represent no more than mere instructions to apply the judicial exceptions on a computer. See MPEP § 2106.05(f) and § 2106.04(d).
Step 2B: the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05. and Is the additional element recognized as well-understood, routine, and conventional? No, this limitation “a generative AI model” and “a second AI model” are additional elements that amounts to adding the words “apply it” (or an equivalent) with the judicial exception and reciting only the idea of a solution or outcome, i.e., the claim fails to recite details of how a solution to a problem is accomplished because it is unclear how the “a generative AI model” and “a second AI model” are used nor the specification makes it clear how these actions are performed. Thus, these additional elements are recited in a manner that represent no more than mere instructions to apply the judicial exceptions on a computer. See MPEP § 2106.05(f) and § 2106.04(d).
Dependent claims 3 and 12
Incorporates the rejection of independent claim
Step 2A Prong 1: does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1). Incorporate the abstract idea of the independent Claim.
Step 2A prong 2: the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d) No.
Step 2B: the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05. and Is the additional element recognized as well-understood, routine, and conventional? No.
Dependent claims 4 and 13
Incorporates the rejection of independent claim
Step 2A Prong 1: does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1). Yes, the limitation “inserting the problem and the cause into a first template question and the solution into a first template answer” and “inserting the problem into a second template question and the cause and the solution into a second template answer” are the abstract idea of a mental process that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper (including an observation, evaluation, judgment, opinion). See MPEP § 2106.04(a)(2)(III).
Step 2A prong 2: the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d) No.
Step 2B: the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05. and Is the additional element recognized as well-understood, routine, and conventional? No.
Dependent claims 5 and 14
Incorporates the rejection of independent claim
Step 2A Prong 1: does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1). Yes, the limitation “receiving a freeform natural language input to … from a user;” and “generating the service recommendation as an output of the generative AI model and providing the service recommendation to the user ....” is the abstract idea of a mental process that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper (including an observation, evaluation, judgment, opinion). See MPEP § 2106.04(a)(2)(III).
Step 2A prong 2: the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d) No, this limitation “device” is an additional element that amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or merely uses a computer in its ordinary capacity as a tool to perform an existing process, and as such is deemed insufficient to transform the judicial exception to a patentable invention. See MPEP §§ 2106.04(d), 2106.05(f)(2). Further, this limitation “providing the freeform natural language input as an input to …;” amounts to mere data gathering. It is necessary to acquire the data in order to use the recited judicial exception to perform “providing”. Therefore, the additional limitation is insignificant extra-solution activity to the judicial exception, and as such is deemed insufficient to transform the judicial exception to a patentable invention. See MPEP §§ 2106.04(d), 2106.05(g).
Step 2B: the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05. and Is the additional element recognized as well-understood, routine, and conventional? No, this limitation “device” is an additional element that amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or merely uses a computer in its ordinary capacity as a tool to perform an existing process, and as such is deemed insufficient to transform the judicial exception to a patentable invention. See MPEP §§ 2106.04(d), 2106.05(f)(2). Further, this limitation “providing the freeform natural language input as an input to …;” amounts to mere data gathering. It is necessary to acquire the data in order to use the recited judicial exception to perform “providing”. Therefore, the additional limitation is insignificant extra-solution activity to the judicial exception, and as such is deemed insufficient to transform the judicial exception to a patentable invention. See MPEP §§ 2106.04(d), 2106.05(g). Furthermore the additional element is directed to receiving or transmitting data over a network / performing repetitive calculations / electronic recordkeeping / storing and retrieving information in memory / electronically scanning or extracting data from a physical document, which the courts have recognized as well‐understood, routine, and conventional when they are claimed in a generic manner. See MPEP § 2106.05(d)(II).
Dependent claims 6 and 15
Incorporates the rejection of independent claim
Step 2A Prong 1: does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1). Incorporate the abstract idea of the independent Claim.
Step 2A prong 2: the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d) No.
Step 2B: the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05. and Is the additional element recognized as well-understood, routine, and conventional? No.
Dependent claims 7 and 16
Incorporates the rejection of independent claim
Step 2A Prong 1: does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1). Yes, the limitation “further comprising generating, responsive to an indication of an … problem and by the … after fine-tuning, a description of at least one of a inferred cause or an inferred solution to the … problem.” is the abstract idea of a mental process that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper (including an observation, evaluation, judgment, opinion). See MPEP § 2106.04(a)(2)(III).
Step 2A prong 2: the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d) No, this limitation “equipment” is an additional element that amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or merely uses a computer in its ordinary capacity as a tool to perform an existing process, and as such is deemed insufficient to transform the judicial exception to a patentable invention. See MPEP §§ 2106.04(d), 2106.05(f)(2).
Step 2B: the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05. and Is the additional element recognized as well-understood, routine, and conventional? No, this limitation “equipment” is an additional element that amounts to adding the words “apply it” (or an equivalent) with the judicial exception, or merely uses a computer in its ordinary capacity as a tool to perform an existing process, and as such is deemed insufficient to transform the judicial exception to a patentable invention. See MPEP §§ 2106.04(d), 2106.05(f)(2).
Dependent claims 8 and 17
Incorporates the rejection of independent claim
Step 2A Prong 1: does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1). Incorporate the abstract idea of the independent claim.
Step 2A prong 2: the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d) No.
Step 2B: the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05. and Is the additional element recognized as well-understood, routine, and conventional? No.
Dependent claims 9 and 18
Incorporates the rejection of independent claim
Step 2A Prong 1: does the claim recite an abstract idea, law of nature, or natural phenomenon? See MPEP § 2106.04(II)(A)(1). Incorporate the abstract idea of the independent claim.
Step 2A prong 2: the claim recite additional elements that integrate the judicial exception into a practical application? See MPEP § 2106.04(d) No.
Step 2B: the claim recite additional elements that amount to significantly more than the judicial exception? See MPEP § 2106.05. and Is the additional element recognized as well-understood, routine, and conventional? No.
The dependent claims as analyzed above, do not recite limitations that integrated the judicial exception into a practical application. In addition, the claim limitations do not include additional elements that are sufficient to amount to significantly more than the judicial exception (Step 2B). Therefore, the claims do not recite any limitations, when considered individually or as a whole, that recite what the courts have identified as “significantly more”, see MPEP 2106.05; and therefore, as a whole the claims are not patent eligible.
As shown above, the dependent claims do not provide any additional elements that when considered individually or as an ordered combination, amount to significantly more than the abstract idea identified. Therefore, as a whole the dependent claims do not recite what the courts have identified as “significantly more” than the recited judicial exception.
Therefore, claims 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception and does not recite, when claim elements are examined individually and as a whole, elements that the courts have identified as “significantly more” than the recited judicial exception.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-20 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Cella et al (US 20220197306 A1).
Referring to claims 1, and 10, Cella discloses a method, comprising: generating a fine-tuning dataset by: prompting a generative AI model to isolate, from a plurality of service or warranty records, a problem, a cause, and a solution indicated in the service or warranty record; ([0093] and [1137] of Cella, AI system provides for generative design and topology, and the AI digital frame is contextually interconnected for services to detect problems, find out the conditions and provide help to the problems to solve it to prevent future failures)
structuring, for the plurality of service or warranty records, the problem, the cause, and the solution as at least one question-and-answer pair; ([0672] and [0714] of Cella, the system provides answers based on a question) and
aggregating the question-and-answer pairs for the plurality of service or warranty records as the fine-tuning dataset; ([0387], [0587], [0715] of Cella, the system provides answers based on a question and use those data to train the AI system for more customized answers to questions) and
fine-tuning at least one of the generative AI model or a second AI model using the fine-tuning dataset. ([0387], [0587], [0715], [1125] and [1435] of Cella, the system provides answers based on a question and use those data to train the AI system for more customized answers to questions)
Referring to claims 2 and 11, Cella discloses the method of Claim 1, further comprising generating and executing a maintenance action using the at least one of the generative AI model or the second AI model after the fine-tuning of the generative AI model or the second AI model. ([1051] of Cella, the AI system trains to perform using different tools to maintain the equipment/system)
Referring to claims 3 and 12, Cella discloses the method of Claim 1, further comprising providing learning of the generative AI model based on exposure of the generative AI model to the plurality of service or warranty records. ([1051] of Cella, the AI system trains to perform using different tools to maintain the equipment/system)
Referring to claims 4 and 13, Cella discloses the method of Claim 1, wherein structuring the problem, the cause, and the solution as the at least one question-and-answer pair comprises: inserting the problem and the cause into a first template question and the solution into a first template answer; and inserting the problem into a second template question and the cause and the solution into a second template answer. ([0387], [0587], [0715], [1125] and [1435] and [1024] of Cella, the system provides answers based on a question and use those data to train the AI system for more customized answers to questions and by using different domain-specific models or templates for different types of industry)
Referring to claims 5 and 14, Cella discloses the method of Claim 1, comprising automatically providing a service recommendation by: receiving a freeform natural language input to a device from a user; providing the freeform natural language input as an input to the generative AI model; and generating the service recommendation as an output of the generative AI model and providing the service recommendation to the user via the device. ([0387], [0587], [0715], [1125] and [1435] and [1024] of Cella, the system provides answers based on a question and use those data to train the AI system for more customized natural language inputted answers to questions and by using different domain-specific models or templates for different types of industry)
Referring to claims 6 and 15, Cella discloses the method of Claim 1, wherein the plurality of service or warranty records comprises natural language data input by humans relating to warranty or service requests and completed service or warranty tasks. ([1051] of Cella, the AI system trains to perform using different tools to maintain the equipment/system and the expert agent using different input to train the AI system )
Referring to claims 7 and 16, Cella discloses the method of Claim 1, further comprising generating, responsive to an indication of an equipment problem and by the at least one of the generative AI model or a second AI model after fine-tuning, a description of at least one of a inferred cause or an inferred solution to the equipment problem. ([1051]-[1058] of Cella, the AI system trains to perform using different tools to maintain the equipment/system)
Referring to claims 8 and 17, Cella discloses the method of Claim 7, wherein the description is a service summary, a labelling of services, or an investigative service report. ([1051] of Cella, the AI system trains to perform using different tools to maintain the equipment/system with summary of data)
Referring to claims 9 and 18, Cella discloses the method of claim 1, wherein the fine-tuning dataset comprises different question-and-answer pairs associated with different service or warranty records of the plurality of service or warranty records. ([0387], [0587], [0715], [1125] and [1435] and [1024] of Cella, the system provides answers based on a question and use those data to train the AI system for more customized natural language inputted answers to questions and by using different domain-specific models or templates for different types of industry)
Referring to claim 19. A building system, comprising: building equipment configured to heat, cool, or ventilate a building; a computer system programmed to: generate a fine-tuning dataset by: prompting a generative AI model to isolate, from a plurality of service or warranty records, a problem, a cause, and a solution indicated in the service or warranty record; structuring, for the plurality of service or warranty records, the problem, the cause, and the solution as at least one question-and-answer pair; and aggregating the question-and-answer pairs for the plurality of service or warranty records as the fine-tuning dataset; and generate a fine-tuned model by fine-tuning at least one of the generative AI model or a second AI model using the fine-tuning dataset; apply the fine-tuned model to affect operations of the building equipment. ([0387], [0587], [0715], [1125] and [1435] and [1024] of Cella, the system provides answers based on a question and use those data to train the AI system for more customized natural language inputted answers to questions and by using different domain-specific models or templates for different types of industry, and [1051]-[1058] of Cella, the AI system trains to perform using different tools to maintain the equipment/system)
Referring to claim 20. The building system of Claim 19, wherein the computer system is programmed to apply the fine-tuned model to affect the operations of the building equipment by: applying an indication of an actual problem relating to the building equipment as part of an input to the fine-tuned model; generating, by the fine-tuned model, an output comprising an inferred cause of the problem and an inferred solution to the problem; and causing implementation of the inferred solution to the problem. ([0387], [0587], [0715], [1125] and [1435] and [1024] of Cella, the system provides answers based on a question and use those data to train the AI system for more customized natural language inputted answers to questions and by using different domain-specific models or templates for different types of industry, and [1051]-[1058] of Cella, the AI system trains to perform using different tools to maintain the equipment/system)
The prior art made of record and not relied upon is considered pertinent to Applicant's disclosure:
Li et al (CN 111813907 A): The invention provides a question and sentence intention identification method in a natural language question and answer technology, which comprises the following steps: an end-to-end executable revision problem generation model comprises an input layer, a coding layer, a matching layer and a decoding layer, and generates revised problems by combining sentence generation, machine reading understanding and a copying mechanism; and a method for automatically generating training data by article compression. The method can improve the accuracy of machine reading answers when the input questions of the conventional question-answering system are too short to identify the answers, and can select the questions matched with the question intentions of the questioners in the candidate set by giving the corrected question candidate set even if the input questions are long enough, so that the answers with higher accuracy are obtained in the question-answering system.
Applicant is required under 37 C.F.R. § 1.111(c) to consider these references fully when responding to this action.
It is noted that any citation to specific pages, columns, lines, or figures in the prior art references and any interpretation of the references should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. In re Heck, 699 F.2d 1331, 1332-33, 216 U.S.P.Q. 1038, 1039 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009, 158 U.S.P.Q. 275, 277 (C.C.P.A. 1968)).
In the interests of compact prosecution, Applicant is invited to contact the examiner via electronic media pursuant to USPTO policy outlined MPEP § 502.03. All electronic communication must be authorized in writing. Applicant may wish to file an Internet Communications Authorization Form PTO/SB/439. Applicant may wish to request an interview using the Interview Practice website: http://;www.uspto.gov/patent/laws-and-regulations/interview-practice.
Applicant is reminded Internet e-mail may not be used for communication for matters under 35 U.S.C. § 132 or which otherwise require a signature. A reply to an Office action may NOT be communicated by Applicant to the USPTO via Internet e- mail. If such a reply is submitted by Applicant via Internet e-mail, a paper copy will be placed in the appropriate patent application file with an indication that the reply is NOT ENTERED. See MPEP § 502.03(II).
Conclusion
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/HAIMEI JIANG/Primary Examiner, Art Unit 2142
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