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 .
This office action is sent in response to Applicant’s communication received on 7/8/2024
for the application number 18766338. The office hereby acknowledges receipt of the following
placed of record in the file: Specification, Abstract, Oath/Declaration and claims.
Status of the claims
Claims 1-20 are presented for examination.
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 7/8/2024 & 10/20/2025 was filed before the mailing date of the first office action. The submission is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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.
Claim 1, 3, 5, 6, 8, 10, 12, 13, 15, 17, 19, 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because as explained below.
Claim 1 recites a system comprising: at least one hardware processor; and a non-transitory computer-readable medium storing instructions that, when executed by the at least one hardware processor, cause the at least one hardware processor to perform operations comprising:
(a) Receiving a request to perform a computer task, the request comprising an identification of a first software tool;
(b) generating a first prompt comprising a set of instructions, a listing of a plurality of software tools, and the request;
(c) sending the first prompt to a large language model (LLM);
(d) receiving a first response from the LLM, the first response comprising an indication of a subset of the plurality of software tools in the listing;
(e) executing the subset in the first response to obtain context regarding the request;
(f) generating a second prompt comprising the set of instructions, the listing, the request, and the context;
(g) sending the second prompt to the LLM;
(h) receiving the second response from the LLM.
Step (a) is a data gathering activity. This step can be done by a human as one
person can speak, and the other person can receive the request comprising an identification of a first software tool.
Step (b) can be performed by a human as a person can generate a prompt.
Step (c) can be performed by a human as a human can send a prompt to an LLM.
Step (d), like Step (a), is a data gathering activity. This can be accomplished by a human as one person can speak and another person can receive a response.
Step (e) can be performed by a human, as a person can determine context based on a subset.
Step (f) can be performed by a human as a person can generate a prompt.
Step (g) can be performed by a human as a person can send a prompt to an LLM.
Step (h), like (a) and (d), is a data gathering activity. This can be accomplished by a human as one person can speak and another person can receive a response.
Step 1: This part of the eligibility analysis evaluates whether the claim falls within
any statutory category. See MPEP 2106.03. The claim recites at least system. Thus, the
claim is a machine, which is one of the statutory categories of invention. (Step 1: YES).
Step 2A, Prong One: This part of the eligibility analysis evaluates whether the
claim recites a judicial exception. As explained in MPEP 2106.04, subsection II, a claim
“recites” a judicial exception when the judicial exception is “set forth” or “described” in
the claim. As discussed above, the broadest reasonable interpretation of steps (a)-(h)
recites a mental process.
Specifically, step (a) can be done by a human as one person can speak, and another person can receive a request.
Step (b) can be performed by a human as a person can generate a prompt to be used in communication with another human.
Step (c) can be performed by a human as a person can direct a prompt towards another person in conversation.
Step (d) can be performed by a human as one person can speak, and another person can receive a request.
Step (e) can be performed by a human, as a person can determine context based on a subset.
Step (f) can be performed by a human as a person can generate a prompt to be used in communication with another human.
Step (g) can be performed by a human as a person can direct a prompt towards another person in conversation.
Step (h) can be performed by a human as one person can speak, and another person can receive a request.
Hence the claim encompasses mental processes practically performed in the human mind by observation, evaluation, judgement, and opinion. See MPEP 2106.04(a)(2), subsection III.. (Step 2A, Prong One: YES).
Step 2A, Prong Two: This part of the eligibility analysis evaluates whether the
claim as a whole integrates the recited judicial exception into a practical application of
the exception or whether the claim is “directed to” the judicial exception. This evaluation
is performed by (1) identifying whether there are any additional elements recited in the
claim beyond the judicial exception, and (2) evaluating those additional elements
individually and in combination to determine whether the claim as a whole integrates the
exception into a practical application. See MPEP 2106.04(d).
The claim recites a non-transitory computer readable medium, a plurality of software tools, and an LLM. However, the non-transitory computer readable medium and plurality of software tools are generic computer components. The LLM as described (Para 0002, artificial intelligence system trained on an dataset) is a generic computer component as recited in the specification. The user interface and the action of evoking a response is used to perform an abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. (Step 2A, Prong Two: NO), and the claim is directed to the judicial exception. (Step 2A: YES).
Step 2B: This part of the eligibility analysis evaluates whether the claim as a
whole amounts to significantly more than the recited exception i.e., whether any
additional element, or combination of additional elements, adds an inventive concept to
the claim. As explained with respect to Step 2A, Prong Two, the LLM comprises additional elements that do not contribute to the patentability of the claim as a whole. The additional element of the “LLM” in limitations (c), (d), (e), and (h) is at best mere instructions to “apply” the abstract ideas, which cannot provide an inventive concept. See MPEP 2106.05(f). At Step 2B, the evaluation of the insignificant extra-solutional activity consideration takes into account whether or not the extra-solutional activity is well understood, routine, and conventional in the field. See MPEP 2106.05(g). As known in the art these elements are well routine and conventional. Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer and insignificant extra-solutional activity which do not provide an inventive concept. The claim is not patent
eligible.
Claim 3 recites a mental process as a human can generate code based on names, descriptions, and example syntax.
Claim 5 recites a mental process as a human can receive a response comprising an indication of the first software tool.
Claim 6 recites a mental process as a person can receive an indication of a second subset of the plurality of software tools and can determine context based on a request. Additionally, a human can generate a prompt comprising a set of instructions, the listing, the request, the context, and the second context; a human can send that prompt, and can determine whether to utilize a third response as a final response based on indications that it is final.
Regarding claim 8 & 15, analysis analogous to claim 1 is applicable.
Regarding claim 10 & 17, analysis analogous to claim 3 is applicable.
Regarding claim 12 & 19, analysis analogous to claim 5 is applicable.
Regarding claim 13 & 20, analysis analogous to claim 6 is applicable.
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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 5, 8, 12, 15 & 19 is/are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Elnaz et al. (WO 2025141192 A1 / US Provisional: 63/616,230).
Regarding claim 1, Enlaz teaches a system comprising: at least one hardware processor; and a non-transitory computer-readable medium storing instructions that, when executed by the at least one hardware processor, cause the at least one hardware processor to perform operations comprising: (Fig 2: Teaches the system as a whole).
receiving a request to perform a computer task, the request comprising an identification of a first software tool (Para 0043: “receiving the data specifying the new software tool”)
generating a first prompt comprising a set of instructions, a listing of a plurality of software tools, and the request (Para 0024: “generating a software tool selection input sequence that includes the software tool selection embedding and a first set of embeddings characterizing the query input.” where Para 00138 teaches: “the input sequence can include a prompt”)
sending the first prompt to a large language model (Para 0043, “The operations include processing the software tool selection input sequence using a language model neural network”);
receiving a first response from the LLM, the first response comprising an indication of a subset of the plurality of software tools in the listing (Para 0024: “software tool selection output that identifies a particular software tool from the set of software tools”);
executing the subset in the first response to obtain context regarding the request (Para 0025: “providing the input to the particular software tool, obtaining an output from the particular software tool” in this case where the output is the context.);
generating a second prompt comprising the set of instructions, the listing, the request, and the context; sending the second prompt to the LLM (Para 81: “an input sequence that is generated from the response from the particular software tool and in some implementations, the query input” where Para 00138 teaches: “the input sequence can include a prompt”);
receiving the second response from the LLM (Para 0081: “the response integrator 218 uses the language model neural network 112 to generate a response to the query input”)
Regarding claim 5, Enlaz teaches the system wherein the indication of a subset comprises an indication of the first software tool (Para 0024: “a software tool selection output that identifies a particular software tool from the set of software tools”);
Regarding claims 8 & 15, arguments analogous to claim 1 are applicable.
Regarding claim 12 & 19, arguments analogous to claim 5 are applicable.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 2-3, 6, 9-10, 13, 16-17 and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Enlaz et al. (WO 2025141192 / US Provisional: 63/616,230) in view of Eghbali et al.
Regarding claim 2, Enlaz does not teach the system wherein the computer task comprises generating computer code in an application development environment.
However, Eghbali does teach the system wherein the computer task comprises generating computer code in an application development environment. (Fig 3: the output is generated computer code, 3.2.4: “an IDE-based implementation”, where an integrated development environment (IDE) can be interpreted as an application development environment).
It would have been obvious to a person of ordinary skill in the art to modify Enlaz before the effective filing date in such a way as to incorporate the teachings of Eghbali to gain the benefit of being able to reuse static variables from the developer environment (3.2.4: “could reuse information about the current project that is anyway computed by the static code indexing in an IDE.”).
Regarding claim 3, Enlaz does not teach the system wherein the listing of the plurality of software tools comprises, for each software tool, a name, a description, and example syntax.
However, Eghdali teaches the system wherein the listing of the plurality of software tools comprises, for each software tool, a name, a description, and example syntax. (Fig 4., Definition 3.1: function reference includes name, type annotations, available docstring).
It would have been obvious to a person of ordinary skill in the art before the effective filing date to modify Enlaz in such a way as to incorporate the teachings of Eghbali to gain the benefit of providing further information about project specific tools. (3.2.1: “provide further information about a project-specific API”).
Regarding claim 6, Enlaz does not teach the system wherein the second response comprises a second indication of a second subset of the plurality of software tools in the listing; and wherein the operations further comprise: executing the second subset to obtain second context regarding the request; generating a third prompt comprising the set of instructions, the listing, the request, the context, and the second context; sending the third prompt to the LLM; receiving the third response from the LLM; or utilizing the third response as a final response, based on a determination that the third response contains an indication that it is final.
However, Eghbali does teach the system wherein the second response comprises a second indication of a second subset of the plurality of software tools in the listing; and wherein the operations further comprise: executing the second subset to obtain second context regarding the request; generating a third prompt comprising the set of instructions, the listing, the request, the context, and the second context; sending the third prompt to the LLM; receiving the third response from the LLM; or utilizing the third response as a final response, based on a determination that the third response contains an indication that it is final (Eghbali 3.1, “De-Hallucinator repeats the iterative prompt refinement, i.e., the dashed loop in the figure until exhausting a configurable maximum number k of queries to the model”).
It would be obvious to a person of ordinary skill in the art before the effective filing date to modify Enlaz to gain the benefit of helping the model predict better code (3.1 “To help the model predict better code…”).
Regarding claim 9 & 16, arguments analogous to claim 2 are applicable.
Regarding claim 10 & 17, arguments analogous to claim 3 are applicable.
Regarding claim 13 & 20, arguments analogous to claim 6 are applicable.
Claims 4, 11 & 18 are rejected under 35 U.S.C. 103 as being unpatentable over Enlaz et al. (WO 2025141192 / US Provisional: 63/616,230) in view of Eghbali et al., as applied to claim 2, 3, 5 & 6 above, and further in view of Albert et al. (U.S. 20080263517).
Regarding claim 4, Enlaz modified by Eghbali does not teach the system wherein at least one of the pluralities of software tools in the listing is a function that returns a current location in computer code that is being edited by a user with the application development environment.
However, Albert teaches the system wherein at least one of the pluralities of software tools in the listing is a function that returns a current location in computer code that is being edited by a user with the application development environment. (Para 0048, “In an example, code relevance UI component 111 identifies a current code location of interest from code being edited in code editor”).
It would be obvious to a person of ordinary skill in the art before the effective filing date to modify Enlaz in such a way as to incorporate these teachings to identify a source code location (Para 0048, “comprises an act 402 of identifying a source code location”)
Regarding claim 11 & 18, arguments analogous to claim 4 are applicable.
Claims 7 & 14 are rejected under 35 U.S.C. 103 as being unpatentable over Enlaz et al. (WO 2025141192) in view of Eghbali et al., as applied to claim 2, 3 & 6 above, and further in view of Taihong et al. (WO2025145584).
Regarding claim 7, Enlaz modified by Eghbali does not teach the system wherein the request is received from an Application Development Environment and wherein the utilizing comprises sending the third response to the application development environment.
However, Taihong teaches the system wherein the request is received from an Application Development Environment and wherein the utilizing comprises sending the third response to the application development environment. (Summary of invention Para 2, “The method can be executed by a code development platform. The code development platform supports code generation.”).
It would be obvious to a person of ordinary skill in the art before the effective filing date to modify Enlaz in such a way as to incorporate these teachings to improve the accuracy of code generation (Taihong, Abstract: “Thereby improving the accuracy of generating code”).
Regarding claim 14, arguments analogous to claim 7 are applicable.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MICHAEL ALAN FOSTER JR. whose telephone number is (571)272-8874. The examiner can normally be reached M - Th 8:00am - 6:00pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Hai Phan can be reached at (571) 272-6338. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MICHAEL A FOSTER JR/Examiner, Art Unit 2654
/HAI PHAN/Supervisory Patent Examiner, Art Unit 2654