DETAILED ACTION
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 . Claims 1, 3-8, 10-15, and 17-20 have been reviewed and are under consideration by this office action.
Notice to Applicant
The following is a Non-Final Office action. Applicant, on 07/16/2026, amended claims and cancelled claims 2, 9, and 16. Claims 1, 3-8, 10-15, and 17-20 are pending in this application and have been rejected below.
Response to Amendment
Applicant’s amendments are received and acknowledged.
Applicant incorporated subject matter from dependent claims previously deemed to overcome prior art in to independent claims. The 102/103 rejections are overcome and withdrawn.
Response to Arguments - 35 USC § 101
Applicant’s arguments with respect to the 35 USC 101 rejections have been fully considered, but they are not persuasive.
Applicant contends that the claims cannot be performed mentally as claims providing an AI agent system with malicious requests associated with techniques for compromising AI agents
including prompt injection, and evaluating whether the AI agent system refrains from providing answers to the malicious requests. Applicant contends claims further recite a planner and seed variation via AI- amplification.
Examiner respectfully disagrees. The cited elements are each additional elements (recited at a high level of generality and as such are performing the steps would be no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f) and/or amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h). The claims recite the mental processes of providing requests, breaking prompts into subparts, receiving responses to requests, and evaluating performance all of which are concepts capable of being performed in the human mind (i.e. via pen and paper).
Applicant contends that the claims do not recite mental processed as the claims are not directed towards commercial or legal interaction, agreement, advertising, marketing, sales activity, or business relation, nor to managing personal behavior, relationships, or
interactions between people.
Examiner respectfully disagrees. While the Specification does provide evidence of provide insights regarding business, customers, and products; the claims further recite certain methods of organizing human activity as the claims are directed towards providing requests, breaking prompts into subparts, receiving responses to requests, and evaluating performance
Applicant contends at Step 2A-P2 that the claims reflect an improvement to the technology. Applicant asserts that training generative AI models presents a challenge. Applicant further points to the specification and further limitations such as AI-assisted amplification, evaluating the AI agent, etc.
Examiner respectfully disagrees. The additional elements are bolded below and determined to be performing the steps would be no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f) and/or amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h). Further the Examiner notes the AI elements are each recited at a high level of generality, for example the use of AI-assisted amplification does not provide any technical details as to how the process is performed or what specific technology is performing the process.
Applicant contends that claims provide a technological improvement analogous to security testing and network context. Applicant further asserts that the claims impose meaningful constraints and that the claims are non-obvious while solving a technical problem.
Examiner respectfully disagrees. As described above the AI features of the claims are recited at a high level of generality and addressed above. Further the Examiner notes that the claims do not provide a technical improvement to the technology nor technological field but merely improve upon the abstract idea evaluating the performance of an AI agent (as the additional elements are recited at a high level of generality).
The 101 Rejection is updated and maintained below.
Claim Rejections - 35 USC § 112
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, 3-8, 10-15, and 17-20 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.
The term “sufficiently” in claims 1, 8, and 15 is a relative term which renders the claim indefinite. The term “sufficiently” 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. The claims recite the phrase “sufficiently match,” but is unclear what would constitute the level of “sufficiently” matching.
Claim 3-7, 10-15, and 17-20 inherit the deficiency of the parent and are rejected similarly.
Appropriate correction is required.
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, 3-8, 10-15, and 17-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step One - First, pursuant to step 1 in the January 2019 Guidance on 84 Fed. Reg. 53, the claim(s) is/are directed to statutory categories.
Step 2A, Prong One – The claims are found to recite limitations that set forth the abstract idea(s), namely in independent claims recite a series of steps for the abstract idea recited below.
Regarding independent claim(s), (additional elements bolded)
Regarding Claim(s) 1, 8, and 15, A method comprising steps of: A method comprising steps of:
operating, in a test environment prior to deployment, an Artificial Intelligence (Al) agent system that includes an agent core connected to a memory module, one or more tools, and a planner;
receiving a seed request that includes an expert curated question for a target application of the Al agent system and an associated expected response:
generating one or more variations of the seed request via an Al-assisted amplification process (recited at a high level of generality) configured to expand a question set based on the seed request while preserving an evaluation against the associated expected response:
providing the Al agent system with one or more requests that include the seed request and the one or more variations of the seed request, the one or more requests including one or more legitimate requests and one or more malicious requests associated with techniques for compromising Al agents including prompt injection;
in response to the one or more requests, utilizing the planner to break at least one of the one or more requests into a plurality of sub-parts and to formulate a sequence of actions based on the plurality of sub-parts; and
generating, by the agent core, an answer using the plurality of sub-parts with the memory module and the one or more tools;
receiving a response to each of the one or more requests;
evaluating performance of the Al agent system based on the responses by determining (a) whether the responses to the one or more legitimate requests, including the seed request and the one or more variations, sufficiently match the associated expected response and (b) whether the Al agent system refrains from providing answers to the one or more malicious requests; and
storing results and performance metrics of the evaluation in a result store prior to deployment of the Al agent system.
Further regarding Claim 8, A non-transitory computer-readable storage medium having computer-readable code stored thereon for programming one or more processors to perform steps of:
Further regarding Claim 15, A cloud-based system comprising: one or more processors; and memory storing computer-executable instructions that, when executed, cause the one or more processors to:
As drafted, this is, under its broadest reasonable interpretation, within the Abstract idea groupings of “Mental processes—concepts performed in the human mind” (observation, evaluation, judgment, opinion) as the claims are directed towards providing requests, breaking prompts into subparts, receiving responses to requests, and evaluating performance all of which are concepts capable of being performed in the human mind (i.e. via pen and paper).
Further the claims are directed towards the abstract idea grouping of “Certain methods of organizing human activity” — commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations) and/or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) as the claims are directed towards providing insights on which helps understand various aspects of business, customers, and products (See Specification, [102]).
Step 2A, Prong Two - This judicial exception is not integrated into a practical application. The independent claims utilize at least the additional elements bolded above. The additional elements are performing the steps would be no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f) and/or amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h).
Step 2B - The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements are just “apply it” on a computer. (See MPEP 2106.05(f) – Mere Instructions to Apply an Exception – “Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible.” Alice Corp., 134 S. Ct. at 235) and/or amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h).
Regarding Claims 4-5, 7, 11-12, 14, 18, and 20, the claim further narrows the abstract idea or recite additional elements previously addressed in the independent claims.
Regarding Claims 3, 10, and 17, the claim further recite the additional element(s) of Large Language Model. This element(s) is performing the steps would be no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f) and/or amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) in Steps 2A-Prong 2 and 2B.
Regarding Claims 6, 13, and 19, the claim further recite the additional element(s) of a processing agent, scanning the web and the external feeds. This element(s) is performing the steps would be no more than mere instructions to apply the exception using a generic computer component. See MPEP 2106.05(f) and/or amounts to no more than generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h) in Steps 2A-Prong 2 and 2B.
Accordingly, the claim fails to recite any improvements to another technology or technical field, improvements to the functioning of the computer itself, use of a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding unconventional steps that confine the claim to a particular useful application, and/or meaningful limitations beyond generally linking the use of an abstract idea to a particular environment. See 84 Fed. Reg. 55. Viewed individually or as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.
Examining Claims with Respect to Prior Art
Claims 1, 3-8, 10-15, and 17-20, though directed to non-statutory subject matter, are deemed to define over the currently known prior art under 35 USC 102 and 103. Examiner interprets based upon the claim limitations that there is no currently known prior art that discloses the features relating to: “The method of claim 1, wherein the steps further comprise: receiving a seed request comprising an expert curated question for a target application of the Al agent system and an associated expected response; generating one or more variations of the seed request via an Al-assisted amplification process configured to expand a question set based on the seed request while preserving an evaluation against the associated expected response; and providing the seed request and the one or more variations of the seed request to the Al agent system in the test environment for evaluating whether responses to the seed request and the one or more variations sufficiently match the associated expected response;” and “The method of claim 1, wherein the steps further comprise: scanning external feeds for examples of prompt injection; via a processing agent, scanning the web and the external feeds for the examples of prompt injection, wherein the external feeds include one or more third-party sources publishing LLM-related threat vectors; selecting an example of prompt injection as a seed request and generating one or more variations of the seed request; and providing the seed request and the one or more variations of the seed request to the Al agent system as at least a portion of the one or more malicious requests.”
The reason to withdraw the 35 USC 103 rejection of claims 2-4, 6-7, 9-11, 13-14, 16-17, and 20 in the instant application is because the prior art of record fails to teach the overall combination as claimed. Therefore, it would not have been obvious to one of ordinary skill in the art to modify the prior art to meet the combination above without unequivocal hindsight and one of ordinary skill would have no reason to do so. Upon further searching the examiner could not identify any prior art to teach these limitations. The prior art on record, alone or in combination, neither anticipates, reasonably teaches, not renders obvious the Applicant’s claimed invention.
Known Prior Art (patent)
US 20250252265 A1
GENERATING ANSWERS TO CONTEXTUAL QUERIES WITHIN A CLOSED DOMAIN
US 20250259005 A1
DATASET PARSING AND SEARCHING METHOD AND SYSTEM
US 20250190459 A1
SYSTEMS AND METHODS FOR DEVELOPMENT, ASSESSMENT, AND/OR MONITORING OF A GENERATIVE AI SYSTEM
US 20230359903 A1
Mitigation for Prompt Injection in A.I. Models Capable of Accepting Text Input
US 20250378386 A1
Managed Design and Generation of Artificial Intelligence Agents
US 20250103962 A1
SYSTEMS AND METHODS FOR GENERATING CUSTOMIZED AI MODELS
US 20240265114 A1
AN APPARATUS AND METHOD FOR ENHANCING CYBERSECURITY OF AN ENTITY
US 20250190461 A1
Method and System for Optimizing Use of Retrieval Augmented Generation Pipelines in Generative Artificial Intelligence Applications
US 20230205824 A1
Contextual Clarification and Disambiguation for Question Answering Processes
Known Prior Art (NPL)
Morales et al. "LangBiTe: A Platform for Testing Bias in Large Language Models", ARXIV.ORG, CORNELL UNIVERSITY LIBRARY, 201 OLINE LIBRARY CORNELL UNIVERSITY ITHACA, NY 14853, 29 April 2024
Known Prior Art (foreign)
CN116702146A
Injection vulnerability scanning method and system of Web server
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JEREMY L GUNN whose telephone number is (571)270-1728. The examiner can normally be reached Monday - Friday 6:30-4:30.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jerry O'Connor can be reached on (571) 272-6787. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JEREMY L GUNN/ Examiner, Art Unit 3624
