DETAILED ACTION
This is responsive to the amendment filed 23 March 2026.
Claims 1-20 remain pending and are considered below.
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 .
Response to Arguments
Regarding the Double Patenting rejection, Applicant alleges that a terminal disclaimer has been filed. However, no such document was filed with Applicant’s response. Therefore, the Double Patenting rejection still stands.
Applicant's arguments filed 23 March 2026 regarding the 35 USC 101 rejection have been fully considered but they are not persuasive.
Applicant argues:
The Manual of Patent Examining Procedure (MPEP) at section 2106.04(a)(2)(Ill)
In evaluating whether a claim that requires a computer recites a mental process, examiners should carefully consider the broadest reasonable interpretation of the claim in light of the specification. For instance, examiners should review the specification to determine if the claimed invention is described as a concept that is performed in the human mind and applicant is merely claiming that concept performed 1) on a generic computer, or 2) in a computer environment, or 3) is merely using a computer as a tool to perform the concept.
Applicant notes that the Report does not cite any portion of the specification in the analysis under Step 2A, Prong One, to support the allegation that the claimed invention is described as a concept that is performed in the human mind.
The Examiner respectfully disagrees. Citing specification portions supporting “that the claimed invention is described as a concept that is performed in the human mind” is not a requirement (merely a suggestion as cited in the MPEP) to show that claims recite an abstract idea. The rejection clearly supported the position that the claimed invention may be performed in the human mind. In particular, a person may classify an input to determine a category associated with the input (e.g. a human may classify a picture as an image of a shoe); obtain, based on the determined category, a grammar, wherein the grammar defines valid sequences of symbols describing attributes of the category (e.g. a human may determine a grammar defining “color” and “brand” based on the image of the shoe); and generate a sequence of symbols describing one or more of the attributes of the category which are also associated with the input, the sequence based on the input and conforming to the grammar (e.g. a human may generate a sequence of symbols such as “color: white” and “brand: nike”).
The Applicant further argues:
Instead, Applicant disagrees that the step of "generating, using a generative language model, a sequence of symbols [...] the sequence based on the input and conforming to the grammar" (emphasis added) can practically be performed in the human mind, as the step explicitly recites the use of a generative language model. Similarly, the specification as published at paragraphs [0162]-[0164], with reference to FIG. 7 (reproduced below), also clearly explains that the above- noted limitations, even under their broadest interpretation, cannot practically be performed in the human mind:
…
Thus, even under the broadest interpretation, the human mind is not equipped to perform the above-noted limitations of claim 1, as the limitations are explicitly recited as being performed using a generative language model and using generative language model concepts, e.g. a sequence of symbols and a grammar, such as depicted in FIG. 7. For at least these reasons the claim does not recite a mental process.
Therefore, claim 1 does not recite a judicial exception and is patent eligible. Similar remarks apply to independent claim 12 and 20, which recite similar features as claim 1. Similar remarks also apply to the dependent claims, at least by virtue of their claim dependency.
However, the “generative language model” is recited at a high-level of generality (i.e., as generic processors performing generic computer functions) such that they amount to no more than mere instructions to apply the abstract idea using a generic computer components.
Accordingly, the “generative language model” does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claims are therefore directed to an abstract idea.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-3, 5, 11-14 and 20 are provisionally rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-3, 10-14 and 19-20 of copending Application No. 18/744,792 (reference application). Although the claims at issue are not identical, they are not patentably distinct from each other because the claims of the reference application anticipate the currently pending ones (see examples in table below).
This is a provisional nonstatutory double patenting rejection because the patentably indistinct claims have not in fact been patented.
Currently pending claims
Claims of 18/744,792
1. A computer-implemented method comprising:
classifying an input to determine a category associated with the input;
obtaining, based on the determined category, a grammar defining valid sequences of symbols describing attributes of the category; and
generating, using a generative language model, a sequence of symbols describing one or more of the attributes of the category which are also associated with the input, the sequence based on the input and conforming to the grammar.
2. The computer-implemented method of claim 1, further comprising outputting a description of the one or more of the attributes associated with the input, the description based on the sequence of symbols.
3. The computer-implemented method of claim 1, wherein the symbols comprise tokens, and wherein generating the sequence of symbols includes: generating a plurality of values using the generative language model, each of the values indicative of a probability of a respective token being a next token of the sequence; applying a mask to the plurality of values, the mask operating on each value that corresponds to a token not compliant with the grammar to reduce or zero the probability of the token being the next token; and determining the next token based on the plurality of values after the mask is applied.
5. The computer-implemented method of claim 1, wherein the generative language model is a large language model.
11. The computer-implemented method of claim 2, wherein the grammar further constrains the valid sequences of symbols to a syntax of a programming language; and wherein outputting a description of the one or more of the attributes associated with the input comprises outputting code of the programming language.
1. A computer-implemented method comprising:
receiving a prompt that instructs a generative language model to classify an input to the generative language model;
obtaining a grammar responsive to the prompt, the grammar defining valid sequences of symbols corresponding to a plurality of categories, wherein the input can be classified into one or more of the plurality of categories; and
generating, using the generative language model, a sequence of symbols identifying the one or more categories, the sequence based on the input and conforming to the grammar.
2. The computer-implemented method of claim 1, further comprising outputting an indication of the one or more categories into which the input has been classified based on the sequence of symbols.
3. The computer-implemented method of claim 1, wherein the symbols comprise tokens, and wherein generating the sequence of symbols includes: generating a plurality of values using the generative language model, each of the values indicative of a probability of a respective token being a next token of the sequence; applying a mask to the plurality of values, the mask operating on each value that corresponds to a token not compliant with the grammar to reduce or zero the probability of the token being the next token; and determining the next token based on the plurality of values after the mask is applied.
10. The computer-implemented method of claim 1, wherein the generative language model is a large language model (LLM).
11. The computer-implemented method of claim 2, wherein the grammar further constrains the valid sequences of symbols to a syntax of a programming language; and wherein outputting an indication of the one or more categories into which the input has been classified based on the sequence of symbols comprises outputting code of the programming language.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. Further, this judicial exception is not integrated into a practical application.
In claims 1, 12 and 20, the limitations a
That is, other than reciting “computer-implemented” and “generative language model” (claim 1), an “system comprising: a memory to store a grammar; and at least one processor” and “generative language model” (claim 11) and “One or more non-transitory computer readable media having stored thereon computer-executable instructions that, when executed by at least one computer, cause the at least one computer to perform a method” and “generative language model” (claim 20) nothing in the claims precludes the steps from practically being performed in the mind. For example, a person may classify an input to determine a category associated with the input (e.g. a human may classify a picture as an image of a shoe); obtain, based on the determined category, a grammar, wherein the grammar defines valid sequences of symbols describing attributes of the category (e.g. a human may determine a grammar defining “color” and “brand” based on the image of the shoe); and generate a sequence of symbols describing one or more of the attributes of the category which are also associated with the input, the sequence based on the input and conforming to the grammar (e.g. a human may generate a sequence of symbols such as “color: white” and “brand: nike”).
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
This judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements – “computer-implemented” and “generative language model” (claim 1), an “system comprising: a memory to store a grammar; and at least one processor” and “generative language model” (claim 11) and “One or more non-transitory computer readable media having stored thereon computer-executable instructions that, when executed by at least one computer, cause the at least one computer to perform a method” and “generative language model” (claim 20) which are recited at a high-level of generality (i.e., as generic processors performing generic computer functions) such that they amount to no more than mere instructions to apply the exception using a generic computer components.
Accordingly, the 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. The claims are therefore directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more than the abstract idea. As stated above, the claims recite the additional limitations of “computer-implemented” and “generative language model” (claim 1), an “system comprising: a memory to store a grammar; and at least one processor” and “generative language model” (claim 11) and “One or more non-transitory computer readable media having stored thereon computer-executable instructions that, when executed by at least one computer, cause the at least one computer to perform a method” and “generative language model” (claim 20). However, these are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications (see Applicant’s specification [0053]-[0055], [0075], [0078] and [0260]-[0262]). Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system.
Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide conventional computer implementation. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claims are not patent eligible.
The dependent claims, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to an abstract idea.
The dependent claims recite:
further comprising outputting a description of the one or more of the attributes associated with the input, the description based on the sequence of symbols;
wherein the symbols comprise tokens, and wherein generating the sequence of symbols includes: generating a plurality of values using the generative language model, each of the values indicative of a probability of a respective token being a next token of the sequence; applying a mask to the plurality of values, the mask operating on each value that corresponds to a token not compliant with the grammar to reduce or zero the probability of the token being the next token; and determining the next token based on the plurality of values after the mask is applied;
further comprising: receiving a prompt that instructs the generative language model to describe the attributes associated with the input; and generating the sequence of symbols based on the input, the grammar and the prompt;
wherein the generative language model is a large language model.
wherein the input is an image and the sequence of symbols describes the one or more of the attributes associated with the image;
wherein obtaining the grammar further comprises: determining that a category associated with the grammar matches the category of the input; and selecting the grammar from a set of one or more grammars;
wherein obtaining the grammar further comprises: identifying category information associated with the category of the input; and encoding the category information within the grammar, wherein the encoding is in a format for parsing;
further comprising: reducing at least one of a resolution of the input or a color of the input before determining the category of the input;
wherein determining the category associated with the input is performed using the generative language model;
wherein the grammar further constrains the valid sequences of symbols to a syntax of a programming language; and wherein outputting a description of the one or more of the attributes associated with the input comprises outputting code of the programming language.
The additional recited limitations further narrow the steps of the independent claims without however providing “a practical application of” or "significantly more than" the underlying “Mental Processes” abstract idea. Therefore, the dependent claims are also not patent eligible.
Moreover, see Recentive Analytics, Inc. v. Fox Corp. (Fed. Cir. April 18, 2025)- “Machine learning is a burgeoning and increasingly important field and may lead to patent-eligible improvements in technology. Today, we hold only that patents that do no more than claim the application of generic machine learning to new data environments, without disclosing improvements to the machine learning models to be applied, are patent ineligible under § 101.”
Conclusion
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SAMUEL G NEWAY whose telephone number is (571)270-1058. The examiner can normally be reached Monday-Friday 9:00am-5:00pm EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Daniel Washburn can be reached at 571-272-5551. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/SAMUEL G NEWAY/Primary Examiner, Art Unit 2657
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