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 .
Priority
Receipt is acknowledged of certified copies of papers submitted under 35 U.S.C. 119(a)-(d), which papers have been placed of record in the file.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 10/14/2025 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
Claim Objections
Claim 1 is objected to because of the following informalities:
Claim 1 recite “training the model”. When reciting a term at the first time, a definite article (“the”) should not be used. Note, a preamble phrase: “a model training method” defines a method, not a model. Many dependent claims also have a similar formality issue. The examiner suggests applicant reviewing all claims to correct the formality issue. Appropriate correction is required.
Specification
The title of the invention is not descriptive. A new title is required that is clearly indicative of the invention to which the claims are directed.
The claimed invention is related to training and evaluating a neural network model by compressing inputs to the model (Spec. [0024], [0050], [0052]).
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.
The Manual of Patent Examining Procedure (MPEP) provides detailed rules for determining subject matter eligibility for claims in §2106. Those rules provide a basis for the analysis and finding of ineligibility that follows. MPEP §2106(III) states that examiners should determine whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the flowchart in this section.
Claims 1-20 are rejected under 35 U.S.C. §101. The claimed invention is directed to unpatentable subject matter because the claimed invention recites a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. The examiner analyzes the instant claims according to a flowchart for subject matter eligibility test for products and processes (MPEP 2106).
Eligibility Step 1 (MPEP 2106.03, Statutory category):
Claims 1-16 are directed to a method, claims 17-18 are directed to a system and claims 19-20 are directed to a computer readable medium. The claims 1-20 fall into one of the four statutory categories of invention (YES branch of step 1).
Eligibility Step 2A, Prong One (does a claim recites a judicial exception?) (MPEP 2106.04(a) – (c)):
Step 2A is a two-prong inquiry, in which examiners determine in Prong One whether a claim recites a judicial exception, and if so, then determine in Prong Two if the recited judicial exception is integrated into a practical application of that exception. Together, these prongs represent the first part of the Alice/Mayo test, which determines whether a claim is directed to a judicial exception (See a flowchart in MPEP 2106.04(II)(A)). In the prone one of the two prong inquiry, the above limitations recited in claims are directed to at least one of groups of abstract ideas (MPEP 2106.04(a), “Mathematical concepts”, “Certain methods of organizing human activity”, “Mental Processes”). It should be noted that these groupings are not mutually exclusive, i.e., some claims recite limitations that fall within more than one grouping or sub-grouping (MPEP 2106.04(a)(2)).
Although claims 1-20 fall into one of the four statutory categories the patent eligible subject matter, the claims 1-20 recite a number of steps of (“folding an initial token sequence”, “inputting …”, “adjusting …”, etc.). These limitations fall into a judicial exception (MPEP 2106.04 (II), “laws of nature”, “natural phenomena” and “abstract idea”). The Supreme Court has explained that the judicial exceptions reflect the Court’s view that abstract ideas, laws of nature, and natural phenomena are "the basic tools of scientific and technological work", and are thus excluded from patentability because "monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it." Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980. It should be noted that there are no bright lines between the types of exceptions, and that many of the concepts identified by the courts as exceptions can fall under several exceptions (MPEP 2106.04 (I) and (II)).
In light of the disclosure (Spec. [0057-0060], [0063-0065]; Fig. 5, Fig. 6), independent claim 1 is directed to processing input data (i.e., manipulating numerical input data) for training a neural network. Independent claim 9 is directed to manipulating input numerical data when using a neural network. Independent claims 17 and 18 are directed to a device that implementing claim 1 or claim 9. Independent claims 19 and 20 are directed to non-transitory computer-readable medium to perform a method claim 1 or 9, respectively. Dependent claims 2-8 recite limitations by including additional mathematical operations when training a neural network. Dependent claims 10-16 recite additional mathematical operations for evaluating a neural network. Claims 1-20 recite either mathematical operations in words or using mathematical equations.
The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations. It is important to note that a mathematical concept need not be expressed in mathematical symbols, because “[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula.” In re Grams, 888 F.2d 835, 837 and n.1,12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989). See MPEP 2106.04(a)(2)(I) ).
Eligibility Step 2A, Prong two (integrated into a practical application? MPEP 2106.04(d)).
Since the claimed invention falls into a judicial exception according above analysis (YES branch of PRONG ONE in the step 2A), a claim that is directed to a judicial exception must be evaluated to determine whether the claim recite additional elements that integrate the judicial exception into a practical application (MPEP 2106.04(II)(A)(2)). Prong Two asks whether the claim recite additional elements that integrate the judicial exception into a practical application. In Prong Two, examiners evaluate whether the claim as a whole integrates the exception into a practical application of that exception. Court in Gottschalk v. Benson ‘‘held that simply implementing a mathematical principle on a physical machine, namely a computer was not a patentable application of that principle. Accordingly, after determining that a claim recites a judicial exception in Step 2A Prong One examiners should evaluate whether the claim as a whole integrates the recited judicial exception into a practical application of the exception in Step 2A Prong Two. For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B. If there are no additional elements in the claim, then it cannot be eligible.
Eligibility Step 2B (Inventive concept / significantly more consideration; MPEP 2106.05).
MPEP §2106.05 describes step 2B test to determine whether a claim amounts to significantly more. The second part of the Alice/Mayo test is often referred to as a search for an inventive concept. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 217, 110 USPQ2d 1976, 1981 (2014). The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept (See MPEP §2106.05(I)(A)). It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2B. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception is not in itself an inventive concept and does not guarantee eligibility.
The Supreme Court has identified a number of considerations as relevant to the evaluation of whether the claimed additional elements amount to an inventive concept. By considering limitations recited in the instant claims, the claims do not improve the functions of a computer, or any other technology or technical field. The claims also do not apply the judicial exception with, or by use of, a particular machine. The claims also do not have effecting a transformation or reduction of a particular article to a different state or thing. The claims fail to include a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application. The recited “processor” / “memory” are well-understood, routine and conventional in the field. Therefore, that recited element does not amount to significantly more than an abstract idea.
Please notes simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984. The court also found “adding insignificant extra-solution activity to the judicial exception” or “generally linking the use of the judicial exception to a particular technological environment or field of use” is not enough to be qualify as “significantly more” considerations.
By reviewing limitations recited in the claims, none of the limitations meet the significantly more considerations. Therefore, claims are directed to unpatentable subject matter and are rejected under 35 U.S.C. 101 (MPEP §2106, flowchart, Step 2B, NO branch).
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale or otherwise available to the public before the effective filing date of the claimed invention.
(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, 9, and 17-20 are rejected under 35 U.S.C. §102 (a)(1) as being anticipated by Chuang et al. (“Learning to Compress Prompt in Natural Language Formats”, published in June 2024, referred to as Chuang).
Independent claims 1, 17 and 19 is related to reducing length of input token sequences (claimed “folding a token sequence”) for training a model. Independent claims 9, 18 and 20 are related to compressing token sequences for inference. In light of the disclosure, a claimed “folding an initial token sequence” means compressing an input sequence / reducing the length of an input sequence (Spec. [0024], [0050], [0052-0053], Fig. 2).
Chuang discloses prompting a large language model (LLM) to generate responses (Chuang, Section I, Fig. 1). In order to reduce computation cost, Chuang discloses compressing a long prompt (i.e., an initial token sequence) to create a short prompt (i.e., a claimed “a first token sequence”) by applying an algorithm to preserving semantic information with a short prompt (Chuang, Section 3.1.2, Fig. 2, Algorithm 1, the length of a long prompt is reduced to a capsulate prompt).
Regarding claims 1, 17 and 19, Chuang discloses a model training method (Chuang, Section 3, Fig. 1), comprising:
folding an initial token sequence for training the model based on a folding feature value for folding a token sequence to obtain at least a first token sequence subjected to the folding, wherein the initial token sequence represents a token sequence composed of T1 tokens, and the first token sequence has a sequence length less than that of the initial token sequence (Chuang, Section 3, reducing (i.e., folding) a long prompt to a short version by using Nano-Capsulator algorithm, reducing the original sequence length from n to a short version of length “m”, n>>m, preserving sematic information and meet length constraints (claimed “a folding feature”)); and
inputting at least the first token sequence into a preset model to train the preset model so as to obtain a target model (Chuang, Section 4.2, fine-tune LLM with compressed prompts).
Regarding claims 9, 18 and 20, Chuang disclosesa model reasoning method, comprising (Chuang, Section 3, Fig. 1), comprising:
obtaining an initial to-be-reasoned token sequence (Chuang, Fig. 1, Section 3, obtaining a long prompt, which contain a word sequence);
folding the initial to-be-reasoned token sequence based on a folding feature value for folding a token sequence to obtain at least a first target to-be-reasoned token sequence, wherein the initial to-be-reasoned token sequence represents a token sequence composed of T2 tokens, and the first target to-be-reasoned token sequence has a sequence length less than that of the initial to-be-reasoned token sequence (Chuang, Section 3, reducing (i.e., folding) a long prompt to a short version by using Nano-Capsulator, reducing original sequence length from n to a short version of length “m”, n>>m, preserving sematic information and meet length constraints); and
inputting at least the first target to-be-reasoned token sequence into a target model to obtain a target reasoning result, wherein the target reasoning result is a next token sequence of the target to-be-reasoned token sequence obtained from prediction (Chuang, Section 1, Fig. 1, generating a response using a short prompt).
Allowable Subject Matter
Claims 2-8 and 10-16 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims. Applicant also need to overcome a rejection under §101 set forth in this office action.
The following is a statement of reasons for the indication of allowable subject matter: claim 2 and claim 10 include specific and detailed limitations related to specific features of processing the initial token sequences and adjusting neural network parameters. When considering all limitations as a whole, prior art of record, either alone or in combination, does not teach or suggest all limitations recited in dependent claim 2 or claim 10. Therefore, prior art of record fails to anticipate or render obvious the claimed invention. Claims 3-8 further limit claim 2 and claims 11-16 further limit claim 10.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. The examiner discovered several relevant prior art references that are related to one or more concepts disclosed by the instant application. These references are included in the attached PTO-892 form for completeness of the record.
The examiner discovered several references related to reducing length of prompts / context information when inputting contexts / prompts into a large language model. These references are included in the attached PTO-892 form.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Jialong He, whose telephone number is (571) 270-5359. The examiner can normally be reached on Monday – Friday, 8:00AM – 4:30PM, EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner's supervisor, Pierre Desir can be reached on (571) 272-7799. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. Should you have questions on access to the Private PAIR system, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/JIALONG HE/Primary Examiner, Art Unit 2659
Prosecution Insights