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
Status of the Application
Claims 1-20 have been examined in this application. This communication is the first action on the merits.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/4/2024 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: communication device configured to / processing device configured to / storage device configured to, in claims 11-20.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof – i.e. the devices noted above represent generic computing elements.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 6 is 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 6 recites the limitation “the storage device”. There is insufficient antecedent basis for this limitation in the claim. Appropriate correction is required.
Claims 8, 18 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. The term “compatible with a conventional implementation of the software functionality” in claims 8, 18 is a relative term which renders the claim indefinite. The term “compatible with a conventional implementation” 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. Appropriate correction and/or clarification is required. For Examination purposes, Examiner will consider the limitation as “compatible with the software functionality”.
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 a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 is directed towards a method, thus meeting the Step 1 eligibility criterion. Claim 1 does recite the abstract concept of a mental concept – i.e. mental process including an observation/evaluation/judgment, which can be performed in the human mind or using pen/paper, which has been identified as an abstract idea by the MPEP. The relevant claimed limitations include:
Receive an input data / transmitting the output data. These claimed limitations, under their broadest reasonable interpretation, cover performance in the human mind or using pen/paper, but for the recitation of generic computing elements- see below, thus still being in the mental process category.
This judicial exception is not integrated into a practical application. Claim 1 includes the additional elements of a communication device/user device/ generating data using a trained LLM (‘generating an output data based on the input data and a first LLM , wherein the first LLM is trained on training data corresponding to the software functionality, wherein the training data comprises an input training data and an output training data, wherein the output training data is generated by an implementation of the software functionality based on the input training data’). The devices noted above represent generic computing elements. Using a trained LLM to generate data does no more than apply or link the use of the recited judicial exception to a particular technological environment. The additional elements do not, alone or in combination, improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. The claim is directed to an abstract idea.
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception, because as noted above, the claimed computing elements represent generic computing elements; they are recited at a high level of generality. Using a trained LLM to generate data does no more than apply or link the use of the recited judicial exception to a particular technological environment. The additional elements do not, alone or in combination, improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. Therefore, Claim 1 does not amount to significantly more than the abstract idea itself. The claim is not patent eligible.
Independent claim 11 is directed to a system for performing similar claimed limitations to those of claim 1, thus meeting the Step 1 eligibility criterion. Claim 11 recites the same abstract idea(s) as Claim 1. Claim 11 performs the claimed limitations using only generic components of a networked computer system. Therefore, claim 11 is directed to an abstract idea without significantly more for the reasons given in the discussion of claim 1.
Remaining dependent claims 2-10, 12-20 further recite and narrow the abstract ideas of independent claims 1/11. The claims further recite the abstract idea of a commercial interaction, which represents a method of organizing human activity and has been identified as an abstract idea by the MPEP: each of the software functionality and the training data is associated with a domain. The claims further recite the additional elements of training the LLM and generating a prompt using a LLM / a vector database/ a storage device / storing data in a database/ a database management system . The database/ device/ system represent generic computing elements that are recited at a high level of generality. Storing data in a database represents insignificant extra-solution activity – i.e. storing data. Training the LLM and generating a prompt using the LLM does no more than link or apply the use of the recited judicial exception to a particular technology/technical field. The additional elements do not, alone or in combination with the other additional elements , improve the functioning of the computing device or another technology/technical field, nor do they apply or use the judicial exception in some other meaningful way beyond generally linking its use to a particular technological environment. Therefore, the claims above do not amount to significantly more than the abstract idea itself. The claims are not patent eligible.
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 1-3, 7, 9, 10, 11-13, 17, 19 , 20 are rejected under 35 U.S.C. 102(a)(2) as being unpatentable over Boyer (20240414211).
As per Claims 1 , 11 , Boyer discloses a method and system comprising:
receiving, using a communication device, an input data from a user device; (the devices represent generic computing elements that perform the claimed limitations. User input – at least para 22, 65; devices – at least para 233-235 and fig 7 and associated/related text)
generating, using a processing device, an output data based on the input data and a first LLM, wherein the first LLM is trained on training data corresponding to the software functionality, wherein the training data comprises an input training data and an output training data, (the processor represents a generic computing element that performs the claimed limitations. At least para 234 – computing processor; generating output data using the input data and a LLM – at least para 22, 234; training the LLM comprises input and output training data – at least para 25, 51, 65; the training data corresponds to software functionality – at least para 21, 48: “’ trained on one or more API specifications for one or more cyber security components”)
wherein the output training data is generated by an implementation of the software functionality based on the input training data; transmitting, using the communication device, the output data. (at least: para 61, 183, 185)
As per Claims 2 , 12 , Boyer discloses:
Each of the software functionality and the training data is associated with a domain (at least: para 97, 111, 154)
As per Claims 3 , 13 , Boyer discloses:
Training, using the processing device, the first LLM (at least: para 20-22)
As per Claims 7 , 17 , Boyer discloses:
The software functionality corresponds to at least one of a front-end functionality and a backend functionality (at least para 21, 48: “’ trained on one or more API specifications for one or more cyber security components”)
As per Claims 9 , 19 , Boyer discloses:
The software functionality corresponds to a database management system (the system represents a generic computing element that performs the claimed limitations. At least: para 9: “
FIG. 1 illustrates a diagram of an embodiment of one or more cybersecurity components configured to cooperate with one or more large language models (LLMs) including i) a cyber security appliance with a cyber threat detect engine to detect a cyber threat in one or more of an email system, an Information Technology network, a cloud network, and any combination of these, “)
As per Claims 10 , 20 , Boyer discloses:
The training of the first LLM comprises tuning, using the processing device, a computation logic associated with a domain, wherein the generation of the output data is based on the computation logic. (at least: para 22, 234; training the LLM comprises input and output training data – at least para 25, 51, 65)
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 4, 5, 6, 8, 14, 15 , 16 , 18 are rejected under 35 U.S.C. 103 as being unpatentable in view of Boyer (20240414211) in further view of Gharibi (20250103746).
As per Claims 4, 14 , Boyer teaches the input data , as noted above, and Gharibi teaches:
Retrieving, using a storage device, a database data from a vector database, wherein the generating of the output data is further based on the database data. (the device/database represent generic computing elements that perform the claimed limitations. At least para 47-48)
It would have been obvious for someone skilled in the art at the time of the filing of the
invention to modify Boyer’s existing features, with Gharibi’s feature of retrieving, using a storage device, a database data from a vector database, wherein the generating of the output data is further based on the database data, to allow for semantic storing/searching- Gharibi, para 74. Furthermore, the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per Claims 5, 15 , Boyer teaches the input data , as noted above, as well as:
Analyzing, using the processing device, the input data; (Boyer, at least para 22, 234; training the LLM comprises input and output training data – at least para 25, 51, 65)
Gharibi further teaches:
Generating, using the processing device, a prompt , wherein the retrieving of the database data is based on a semantic search in the vector database based on the prompt (at least: abstract, para 47-48)
As per Claims 6, 16 , Gharibi teaches:
Storing, using the storage device, a database data in a vector database based on the input data (the device/database represent generic computing elements that perform the claimed limitations. At least: para 47-48)
It would have been obvious for someone skilled in the art at the time of the filing of the
invention to modify Boyer’s existing features, with Gharibi’s feature of storing, using the storage device, a database data in a vector database based on the input data , to allow for semantic storing/searching- Gharibi, para 74. Furthermore, the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
As per Claims 8, 18 , Boyer in view of Gharibi teach:
analyzing, using the processing device, the input data; generating, using the processing device, a prompt data based on the analysis and a second LLM, wherein the second LLM model is trained on a second training data corresponding to a prompt generation, wherein the second training data comprises a second input data and a second output data, wherein the second output data comprises a training input data compatible with a conventional implementation of the software functionality, wherein the second output data comprises a training prompt data compatible with the first LLM, wherein the generation of the output data is further based on the prompt data. (Boyer teaches analyzing input data and generating second output data based on the input data and LLM data, as noted above; Gharibi further teaches prompt data using a LLM that is trained on a training data comprising input and output data, wherein the second output data is compatible with the LLM, and wherein output data is generated based on the prompt data – at least para 47, 48 , 50-51, 54)
It would have been obvious for someone skilled in the art at the time of the filing of the
invention to modify Boyer’s existing features, with Gharibi’s features above, to augment prompts to make them more relevant and likely to generate the desired prompt from the machine learning model – Gharibi, para 8. Furthermore, the claimed invention is merely a combination of old elements, and in the combination each element merely would have performed the same function as it did separately, and one of ordinary skill in the art would have recognized that the results of the combination were predictable.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Kulkarni (20180039486) teaches facilitating construction of and/or adaptation of a dynamic software model. One embodiment provides for generating software models by mapping user selections to one or more model features as specified by feature definitions. An initial software model is used to obtain the user selections. Artifacts are associated with the initial business planning model according to the selections by mapping the selections to model features according to previously determined feature definitions. However, it lacks the combination of claimed elements of pending independent claims 1/11.
Hasabnis (20240143296) teaches instantiating or executing the machine readable instructions to receive an input source code by a code large language model (LLM), generate one or more code representations of the input source code, analyze the one or more code representations of the input source code, and compile the one or more code representations of the input source code into one or more computer executable instructions. However, it lacks the combination of claimed elements of pending independent claims 1/11.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Alexandru Cirnu whose telephone number is (571) 272-7775. The examiner can normally be reached on 8:00 AM - 5:00 PM. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ilana Spar can be reached on (571) 270-7537. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Alexandru Cirnu/
Primary Patent Examiner, Art Unit 3622
7/6/2026
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