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 .
Claim Status
Claims 1-2, 4, 6-10, 12, 16-18, and 20 are pending.
Response to Arguments
Applicant’s arguments, see remarks, filed 05/18/2026, with respect to claims 1-2, 4, 6-10, 12, 16-18, and 20 have been fully considered and are persuasive. The 103 rejection of claims 1-2, 4, 6-10, 12, 16-18, and 20 has been withdrawn.
Examiner has determined the claims are directed to an abstract idea and require a 101 rejection. This new grounds of rejection requires a second non-final rejection.
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 1-2, 4, 6-10, 12, 16-18, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The following is Examiner's analysis of the claimed invention under the 2019 Revised Patent Subject Matter Eligibility Guidance (PEG)
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. Claim 1 recites a process (method), claim 9 recites a machine (system), claim 17 recites a manufacture (non-transitory computer readable medium).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. Claim 1 (and similar claim 9 and 17) recites “score the generated output according to a set of scoring criteria, wherein the scoring criteria comprises one or more factors corresponding to quality criteria associated with the generated output” which falls within the mathematical concepts grouping of abstract ideas. The step of “scoring the generated output according to quality criteria” covers performance of the limitation in the mind; therefore, the claim recites an abstract idea.
Claim 1 (and similar claim 9 and 17) recites “provide the output only when a calculated score, based on the scoring of the generated output, exceeds a threshold value” which falls within the mathematical concepts grouping of abstract ideas. The step of “providing the output based on a threshold value” is a mathematical relationship; therefore, the claim recites an abstract idea.
Claims 9 and 17 recite “leave a specified assert field of each unit test of the one or more unit tests blank” which falls within the mental processes grouping of abstract ideas. The step of “leaving a field blank” covers performance of a human using a pen and paper; therefore, the claim recites an abstract idea.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. Claim 1 recites “instructing a machine learning model via a prompt to generate an output according to a series of steps that reference one or more sections of the prompt” which amounts to merely including instructions to implement an abstract idea on a computer.
Claim 1 recites “instructing the machine learning model via the prompt to..” which amounts to merely including instructions to implement an abstract idea on a computer.
Claim 1 recites “providing the machine learning model, via the prompt, with the one or more sections, wherein: each section of the one or more sections is delineated with a corresponding tag; each section of the one or more sections is referenced in the prompt via the corresponding tag of the section; the one or more sections comprise a first section comprising a set of instructions associated with a higher level of generality than a level of generality associated with a second section of the one or more sections; the second section comprises a reference to the first section; and the one or more sections comprise a third section and a fourth section, wherein the fourth section specifies the series of steps and comprises references to the first section, the second section, and the third section; providing the machine learning model, via the prompt, with an output template indicating a target structure for the output” which is mere necessary data gathering because all uses of the recited judicial exception require such data gathering or data output.
Claim 9 recites “a system for structuring prompt frameworks in language processing machine learning models, comprising: one or more processors; and a memory comprising instructions that, when executed by the one or more processors, cause the system to” which amounts to merely including instructions to implement an abstract idea on a computer.
Claim 9 recites “instruct a machine learning model via a prompt to generate an output according to a series of steps that reference one or more sections of the prompt, wherein the output comprises one or more unit tests related to a software application” which is insignificant-extra solution activity tangentially related to the invention. Adding a final step of “generating an output” does not add a meaningful limitation to the judicial exception, and therefore, the additional element is insignificant-extra solution activity.
Claim 9 recites “instructing the machine learning model via the prompt to leave a specified assert field of each unit test of the one or more unit tests blank” which is mere necessary data gathering or outputting.
Claim 9 recites “provide the machine learning model, via the prompt, with the one or more sections, wherein: each section of the one or more sections is delineated with a corresponding tag;, and wherein each section of the one or more sections is referenced in the prompt via the corresponding tag of the section; the one or more sections comprise a first section comprising a set of instructions associated with a higher level of generality than a level of generality associated with a second section of the one or more sections; the second section comprises a reference to the first section; and the one or more sections comprise a third section and a fourth section, wherein the fourth section specifies the series of steps and comprises references to the first section, the second section, and the third section; provide the machine learning model, via the prompt, with an output template indicating a target structure for the output” which is mere necessary data gathering because all uses of the recited judicial exception require such data gathering or data output.
Claim 17 recites “a non-transitory computer readable medium comprising instructions that, when executed by one or more processors of a computing system, cause the computing system to” which amounts to merely including instructions to implement an abstract idea on a computer.
Claim 17 recites “instruct a machine learning model via a prompt to generate an output according to a series of steps that reference one or more sections of the prompt, wherein the output comprises one or more unit tests related to a software application” which is insignificant-extra solution activity tangentially related to the invention. Adding a final step of “generating an output” does not add a meaningful limitation to the judicial exception, and therefore, the additional element is insignificant-extra solution activity.
Claim 17 recites “instructing the machine learning model via the prompt to leave a specified assert field of each unit test of the one or more unit tests blank” which is mere necessary data gathering or outputting.
Claim 17 recites “provide the machine learning model, via the prompt, with the one or more sections, wherein: each section of the one or more sections is delineated with a corresponding tag;, and wherein each section of the one or more sections is referenced in the prompt via the corresponding tag of the section; the one or more sections comprise a first section comprising a set of instructions associated with a higher level of generality than a level of generality associated with a second section of the one or more sections; the second section comprises a reference to the first section; and the one or more sections comprise a third section and a fourth section, wherein the fourth section specifies the series of steps and comprises references to the first section, the second section, and the third section; provide the machine learning model, via the prompt, with an output template indicating a target structure for the output” which is mere necessary data gathering because all uses of the recited judicial exception require such data gathering or data output.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined merely including instructions to implement the abstract idea on a computer does not qualify as “significantly more” when recited in a claim with a judicial exception (See Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984).
The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Claims 9 and 17 recite “instruct a machine learning model via a prompt to generate an output according to a series of steps that reference one or more sections of the prompt, wherein the output comprises one or more unit tests related to a software application” which is transmitting data over a network. The courts have determined transmitting data over a network is well‐understood, routine, and conventional functionality when claimed in a merely generic manner (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362).
There is no indication that the elements of the claim, individually nor in combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
For the reasons above, claims 1,9, and 17 are rejected as being directed to nonpatentable subject matter under §101. This rejection applies equally to the dependent claims. The additional limitations of the dependent claims are addressed briefly below:
Regarding claim 2
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein each section of the one or more sections comprises additional details of at least one step in the series of steps” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Regarding claim 4
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the third section includes one or more of: the output template; contextual information related to generating the output; or a set of inputs, wherein the set of inputs corresponds to data of a software application” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Regarding claim 6
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the output comprises one or more unit tests related to a software application” which is merely indicating a field of use in which to apply a judicial exception (units test).
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined merely indicating a field of use in which to apply a judicial exception does not amount to significantly more than the judicial exception (see Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981)).
Regarding claim 7
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim recites “further comprising instructing the machine learning model via the prompt to leave a specified assert field of each unit test of the one or more unit tests blank” which falls within the mental processes grouping of abstract ideas.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. There is no indication that the elements of the claim
integrate the judicial exception into a practical application.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. There is no indication that the elements of the claim, individually nor in
combination, integrate the judicial exception into a practical application or amount to significantly more than the judicial exception.
Regarding claim 8
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a process (method).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “receiving the output from the machine learning model in response to the prompt; and performing an action based on the output, wherein the performing of the action comprises one or more of: displaying the output via a user interface; or sending the output to one or more elements of a software application” which is insignificant-extra solution activity tangentially related to the invention.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The claim recites “receiving the output from the machine learning model in response to the prompt; and performing an action based on the output, wherein the performing of the action comprises one or more of: displaying the output via a user interface; or sending the output to one or more elements of a software application” which is transmitting data over a network is well‐understood, routine, and conventional functionality when claimed in a merely generic manner (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362).
Regarding claim 10
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (system).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein each section of the one or more sections comprises additional details of at least one step in the series of steps” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Regarding claim 12
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (system).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the third section includes one or more of: the output template; contextual information related to generating the output; or a set of inputs, wherein the set of inputs corresponds to data of a software application” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Regarding claim 16
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a machine (system).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the instructions, when executed by the one or more processors, further cause the system to: receive the output from the machine learning model in response to the prompt; and perform an action based on the output, wherein the performing of the action comprises one or more of: displaying the output via a user interface; or sending the output to one or more elements of a software application” which is insignificant-extra solution activity tangentially related to the invention.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The claim recites “wherein the instructions, when executed by the one or more processors, further cause the system to: receive the output from the machine learning model in response to the prompt; and perform an action based on the output, wherein the performing of the action comprises one or more of: displaying the output via a user interface; or sending the output to one or more elements of a software application” which is transmitting data over a network. The courts have determined transmitting data over a network is well‐understood, routine, and conventional functionality when claimed in a merely generic manner (see Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362).
Regarding claim 18
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a manufacture (non-transitory computer readable medium).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein each section of the one or more sections comprises additional details of at least one step in the series of steps” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Regarding claim 20
STEP 1 ls the claim to a Process, Machine, Manufacture or Composition of matter? Yes. The claim recites a manufacture (non-transitory computer readable medium).
STEP2A Prong one: Does The Claim Recite An Abstract Idea, Law Of Nature, or Natural Phenomenon? Yes. The claim inherits the abstract idea of the parent claim.
STEP2A Prong two: Does The Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application? No. The claim recites “wherein the a-third section that includes one or more of: the output template; contextual information related to generating the output; or a set of inputs, wherein the set of inputs corresponds to data of a software application” which is mere necessary data gathering.
Step 2B: Does the claim recite additional elements that amount to significantly more than the judicial exception? No. The courts have determined mere data gathering to not be enough to qualify as “significantly more” when recited in a claim with a judicial exception (See CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir. 2011)).
Taken alone, the additional elements of the dependent claims 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.
Conclusion
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/B.T.H./Examiner, Art Unit 2166
/KHANH B PHAM/Primary Examiner, Art Unit 2166
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