DETAILED ACTION
The following is a Non-Final, First Office Action in response to communications filed July 3, 2024. Currently, claims 1–5 are pending.
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 3 and 5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 3 recites “wherein the computing engine is implemented as a configuration of silicon integrated circuits that process data in a manner that would be impossible using conventional computing hardware”. Although page 59, lines 23–27 disclose the recited limitation verbatim, and page 64, lines 14-22 similarly discloses a generalized arrangement of processors, the Specification does not specifically identify or set forth Applicant’s configuration of silicon integrated circuits. As a result, claim 3 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because the Specification does not describe the claimed subject matter in such a way as to reasonably convey possession of the invention.
Claim 5 recites “wherein the computing engine employs an advanced logic architecture implementing one or more artificial intelligence algorithms, … which would be impossible to achieve using known conventional computing arrangements”. Similarly to the above, Applicant’s Specification does not disclose the specific logic architecture claimed by Applicant (See e.g., Spec. pg. 59, lines 18–22). As a result, claim 5 is rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement because the Specification does not describe the claimed subject matter in such a way as to reasonably convey possession of the invention.
Claims 1–5 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains 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.
Claim 1 recites “a configuration of pseudo-analog variable-state machines having states defined by a learning process applied to the pseudo-analog variable-state machines”; “the configuration of pseudo-analog variable-state machines being implemented in a hierarchical arrangement, wherein pseudo-analog variable-state machines higher in the hierarchical arrangement mimic behavior of a human claustrum for performing higher cognitive functions when processing information”.
To meet the enablement requirement, the specification of a patent must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation (Martek Biosciences Corp. v. Nutrinova, Inc., 579 F.3d 1363, 1378 (Fed. Cir. 2009)). The current disclosure does not satisfy the enablement requirement of 35 U.S.C. 112(a) because one reasonably skilled in the art could not make or use the invention without undue experimentation.
There are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” See MPEP 2164.01(a) and In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1998). These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
Regarding Applicant’s disclosure, analysis applying the Wands factors supports a determination that the invention would require undue experimentations. Particularly:
(C) State machines, and specifically, finite state machines are well-known in the art. Finite state machines are typically embodied as either software, wherein the state machine is a behavioral or mathematical model of computation, or hardware, wherein the state machine is built using a programmable logic device. However, the prior art is silent as to pseudo-analog variable-state machines, and Examiner has been unable to ascertain the requisite state of the prior art. Further, Applicant’s Specification neither discloses nor provides a definition for the recited pseudo-analog variable-state machines, such that it is unclear to what extent the pseudo-analog variable-state machines correspond to traditional state machines.
(F) The amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art as well as the predictability in the art. In re Fisher, 427 F.2d 833, 839, 166 USPQ 18, 24 (CCPA 1970). The "amount of guidance or direction” refers to that information in the application, as originally filed, that teaches exactly how to make or use the invention. The more that is known in the prior art about the nature of the invention, how to make, and how to use the invention, and the more predictable the art is, the less information needs to be explicitly state in the specification. MPEP 2164.03 [R-2].
As indicated above, the state of the art does not disclose or describe pseudo-analog variable-state machines, and the amount of guidance or direction needed to enable the invention is inversely related to the amount of knowledge in the state of the art. Here, the Specification does not provide sufficient guidance needed to enable the invention. For example, the claims recite “a configuration of pseudo-analog variable-state machines” and a “hierarchical arrangement”, but the Specification does not provide sufficient detail with respect to the configuration or arrangement. Although the Specification indicates that “[e]ach layer includes an arrangement of data processors” (Spec. pg. 64, line 14), the Specification neither identifies the number of required processors nor the particular arrangement (See e.g., Spec. pg. 68, lines 4–6, wherein the arrangement is “implemented using in a range of 100 to 10000 RISC processors”) that would be required to “mimic behavior of a human claustrum”.
Further, although the claims recite that the variable-state machines have “states that are defined by a learning process”, the Specification does not disclose the associated learning process with any particular guidance (See e.g., Spec. pg. 66, line 7–pg. 67, line 16). As a result, Examiner submits that the inventor has not provided enough direction with respect to the functionality of claim 1.
(G) Compliance with the enablement requirement of 35 U.S.C. 112(a) does not turn on whether an example is disclosed. Lack of a working example, however, is a factor to be considered, especially in a case involving an unpredictable and undeveloped art. But because only an enabling disclosure is required, Applicant need not describe all actual embodiments. MPEP 2164.02.
Here, Applicant has not disclosed a complete working example of the invention. The disclosure of the current application does not provide sufficient information constituting a working example. Rather, Applicant has described a schematic functioning of the layers of a human brain (See e.g., Spec. pg. 61–64) but has not provided any examples detailing the process of arranging the configuration of the pseudo-analog variable-state machines or the applied learning process. As a result, the lack of any example describing the configuration and training of the pseudo-analog variable-state machines indicates an enablement issue.
(H) The quantity of experimentation needed to be performed by one skilled in the art is only one factor involved in determining whether "undue experimentation" is required to make and use the invention. MPEP 2164.06. "[A]n extended period of experimentation may not be undue if the skilled artisan is given sufficient direction or guidance.” In re Colianni, 561 F.2d 220, 224, 195 USPQ 150, 153 (CCPA 1977). Further, "'[t]he test is not merely quantitative, since a considerable amount of experimentation is permissible, if it is merely routine, or if the specification in question provides a reasonable amount of guidance with respect to the direction in which the experimentation should proceed.'" In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988) (citing In re Angstadt, 537 F.2d 489, 502-04, 190 USPQ 214, 217-19 (CCPA 1976)).
As described above, Applicant’s Specification does not provide any guidance with respect to the direction in which the experimentation should proceed. No description of the particular configuration of the pseudo-analog variable-state machines or the applied learning process has been provided. Further, no working examples have been disclosed, and the Specification provides for a vast range of configuration options (See e.g., Spec. pg. 68, lines 4–8, wherein the arrangement is “implemented using in a range of 100 to 10000 RISC processors” and “functions to provide in a range of thousands to millions of the machines”). Accordingly, the quantity of experimentation is immeasurable because no meaningful starting point or direction has been given.
Examiner has weighed all the evidence and believes to have a reasonable basis to question the enablement provided for the claimed invention. The burden falls on Applicant to present persuasive arguments, supported by suitable proofs where necessary, that one skilled in the art would be able to make and use the claimed invention using the application as a guide. In re Brandstadter, 484 F.2d 1395, 1406-7, 179 USPQ 286, 294 (CCPA 1973), MPEP 2164.05.
In view of the above, claim 1 is rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement.
Claims 2–5, which depend from claim 1, inherit the deficiencies described above. As a result, claims 2–5 are similarly rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement.
Claim Rejections - 35 USC § 112(b)
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.
Claims 1–5 are 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 1 recites “a configuration of pseudo-analog variable-state machines” in lines 4–5, “the pseudo-analog variable-state machines” in lines 5–6, and “the configuration of pseudo-analog variable-state machines” in line 7. In view of the above, there is insufficient antecedent basis for “the pseudo-analog variable-state machines” in lines 5–6.
For purposes of examination, claim 1 is interpreted as reciting “wherein the computing engine employs a configuration of pseudo-analog variable-state machines having states defined by a learning process applied to the configuration of pseudo-analog variable-state machines”.
Claim 1 further recites the term “higher” in the element reciting “wherein pseudo-analog variable-state machines higher in the hierarchical arrangement mimic behavior of a human claustrum for performing higher cognitive functions when processing information”. The term "higher" in the context of the recited cognitive functions is a relative term which renders the claim indefinite. The term "higher" is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
In view of the above, claim 1 is 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.
Claims 2–5, which depend from claim 1, inherit the deficiencies described above. As a result, claims 2–5 are similarly 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.
Claim 2 recites the term “consistent” in the element reciting “consistent claim structure, and consistent use of terms and phrases”. The term “consistent” is a relative term which renders the claim indefinite. The term “consistent” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
For purposes of examination, the claim is interpreted as reciting “
Claim 4 recites “the artificial intelligence cognitive engine”, “the training”, and “the human brain” in lines 1–2, 3, and 4, respectively. There is insufficient antecedent basis for these limitations in the claim.
For purposes of examination, the elements are interpreted as reciting “[[the]] an artificial intelligence cognitive engine”, “[[the]] training”, and “[[the]] a human brain” in lines 1–2, 3, and 4, respectively.
Claim 5 recites the term “advanced” in line 2. The term “advanced” is a relative term which renders the claim indefinite. The term “advanced” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
For purposes of examination, the claim is interpreted as reciting “wherein the computing engine employs a logic architecture”.
In view of the above, Examiner respectfully requests that Applicant thoroughly review the claims for compliance with the requirements set forth under 35 U.S.C. 112(b).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 1–2 and 4–5 are rejected under 35 U.S.C. 103 as being unpatentable over Dai (U.S. 2015/0178134) in view of TSYPLIAEV et al. (WO 2014/035283).
Claim 1: Dai discloses a task control system for processing one or more service requests provided by one or more clients, the task control system comprising: a computing engine for providing artificial intelligence processing, wherein the computing engine employs a configuration for processing information associated with the one or more service requests and for performing quality checking of one or more work products generated by one or more contractors in response to executing the one or more service requests (See FIG. 1 and paragraphs 18, 25, and 29, wherein crowdsourced work product is reviewed for accuracy by a learning algorithm). Dai does not expressly disclose the remaining claim elements.
Tsypliaev discloses wherein the computing engine employs a configuration of pseudo-analog variable-state machines having states defined by a learning process applied to the pseudo-analog variable-state machines; the configuration of pseudo-analog variable-state machines being implemented in a hierarchical arrangement, wherein pseudo-analog variable-state machines higher in the hierarchical arrangement mimic behavior of a human claustrum for performing higher cognitive functions when processing information (See page 1, wherein a “state machine allows an execution of the tasks”; page 2, wherein “a task is an activity that needs to be accomplished (or executed) within a defined period of time”; and page 3, wherein a “state machine, also called a finite-state machine (FSM) or finite-state automation, is a mathematical model used to design computer programs and digital logic circuits” and wherein “state machines (or hierarchies of state machines) are used to describe neurological systems”).
Dai discloses a system directed to evaluating crowdsourced tasks for accuracy and cost. Tsypliaev discloses a system directed to processing workflow tasks using a state machine. Each reference discloses a system directed to managing task performance. The technique of utilizing a configuration of state machines is applicable to the system of Dai as they each share characteristics and capabilities; namely, they are directed to managing task performance.
One of ordinary skill in the art would have recognized that applying the known technique of Tsypliaev would have yielded predictable results and resulted in an improved system. It would have been recognized that applying the technique of Tsypliaev to the teachings of Dai would have yielded predictable results because the level of ordinary skill in the art demonstrated by the references applied shows the ability to incorporate task performance management into similar systems. Further, applying a configuration of state machines to Dai would have been recognized by those of ordinary skill in the art as resulting in an improved system that would allow more detailed analysis and more reliable results.
Claim 2: Dai discloses the task control system according to claim 1, wherein the configuration is operable to perform at least one of: translating text from one language to another; performing novelty searches in databases based on identifying essential features in information associated with the one or more service requests; automatically generating one or more claim sets for the one or more contractors; quality assuring work products generated by the one or more contractors in response to processing the one or more service requests, wherein quality assuring includes checking for antecedent basis for terms, consistent claim structure, and consistent use of terms and phrases; analyzing earlier prior art documents relevant to the one or more work products; and devising inventive step arguments to defend against identified earlier prior art (See paragraphs 21–22 and 28, wherein text translation tasks are disclosed). Dai does not expressly disclose the remaining claim elements.
Tsypliaev discloses the configuration of pseudo-analog variable-state machines (See page 1, wherein a “state machine allows an execution of the tasks”; page 2, wherein “a task is an activity that needs to be accomplished (or executed) within a defined period of time”; and page 3, wherein a “state machine, also called a finite-state machine (FSM) or finite-state automation, is a mathematical model used to design computer programs and digital logic circuits” and wherein “state machines (or hierarchies of state machines) are used to describe neurological systems”).
One of ordinary skill in the art would have recognized that applying the known technique of Tsypliaev would have yielded predictable results and resulted in an improved system for the same reasons as stated above with respect to claim 1.
Claim 4: Dai discloses the task control system according to claim 1, wherein the artificial intelligence cognitive engine processes data, at least in part, provided by user interaction (See paragraphs 28–29, wherein learning is disclosed in the context of responses to the units of work). Dai does not expressly disclose the remaining claim elements.
Tsypliaev discloses mimicking the pseudo-logical deterministic behavior of the human brain, which is non-deterministic compared to conventional von Neumann type data processing architectures (See page 1, wherein a “state machine allows an execution of the tasks”; page 2, wherein “a task is an activity that needs to be accomplished (or executed) within a defined period of time”; and page 3, wherein a “state machine, also called a finite-state machine (FSM) or finite-state automation, is a mathematical model used to design computer programs and digital logic circuits” and wherein “state machines (or hierarchies of state machines) are used to describe neurological systems”).
One of ordinary skill in the art would have recognized that applying the known technique of Tsypliaev would have yielded predictable results and resulted in an improved system for the same reasons as stated above with respect to claim 1.
Claim 5: Dai discloses the discloses the task control system according to claim 1, wherein the computing engine employs an advanced logic architecture implementing one or more artificial intelligence algorithms, capable of performing data processing tasks such as drafting and substantively examining patent application texts in relation to one or more complex prior art documents, which would be impossible to achieve using known conventional computing arrangements (See paragraph 51, wherein a logic architecture is disclosed).
Claim 3 is rejected under 35 U.S.C. 103 as being unpatentable over Dai (U.S. 2015/0178134) in view of in view of TSYPLIAEV et al. (WO 2014/035283), and in further view of Rash et al. (U.S. 2014/0380085).
Claim 3: As disclosed above, Dai and Tsypliaev disclose the elements of independent claim 1. Although Dai discloses a configuration of the computing engine (See FIG. 1), Dai and Tsypliaev do not expressly disclose the remaining claim elements.
Rash discloses a configuration of silicon integrated circuits that process data in a manner that would be impossible using conventional computing hardware, enabling data processing at a high cognitive level comparable to human cognitive processes (See paragraph 114).
As disclosed above, Dai discloses a system directed to evaluating crowdsourced tasks for accuracy and cost, and Tsypliaev discloses a system directed to processing workflow tasks using a state machine. Rash discloses a system directed to error monitoring in an execution environment. It would have been obvious to one or ordinary skill in the art at the time of the invention to include the silicon circuit configuration disclosed by Rash into the task performance management systems of Dai and Tsypliaev because the claimed invention is merely a combination of old elements. In the combination, each element merely would have performed the same function as it did separately, and one or ordinary skill in the art would have recognized that the results of the combination were predictable.
Conclusion
The following prior art is made of record and not relied upon but is considered pertinent to applicant's disclosure:
Sears (U.S. 2012/0016859) discloses a system directed to searching prior art and drafting claim sets; and
Gamon et al. (U.S. 2006/0100852) discloses a system directed to assessing the quality of document edits.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WILLIAM S BROCKINGTON III whose telephone number is (571)270-3400. The examiner can normally be reached M-F, 8am-5pm, EST.
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/WILLIAM S BROCKINGTON III/Primary Examiner, Art Unit 3623