Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 3/4/2026 has been entered.
DETAILED ACTION
The following Non-Final office action is in response to application 18/982,567 filed on 3/4/2026.
Status of Claims
Claims 1, 2, 4, 7, 8, and 10-23 are currently pending and have been rejected as follows.
Response to Amendments
Rejections under 35 USC 101 are maintained and updated below. Rejections under 35 USC 103 are withdrawn.
Response to Arguments
Applicant’s 35 USC 101 arguments and amendments have been fully considered but they are not persuasive to overcome the rejection.
Applicant submits on p. 7-15 that the claims are ineligible in view of the Desjardins decision and MPEP amendments. Examiner respectfully disagrees. Desjardins does not stand for the proposition that claims reciting AI, software agents, or prompt engineering are not abstract. In contrast, Desjardins upheld the Step 2A, Prong 1 abstract idea and found eligibility at Step 2A, Prong 2 because the claims, considered as a whole, reflected a specific improvement to machine learning technology itself, including protecting prior task knowledge while learning new tasks. Here, the claims recite a functional workflow in which software agents generate a concept, identify an audience, obtain themes, construct a prompt, and provide the prompt to generate AI to receive a modified product concept. The claims do not recite how the generative AI itself is improved in operation. Claim 11 merely adds the step of “manufacturing” the modified concept. The claims when considered as a whole, are directed to an abstract idea that do not integrate the abstract idea into a practical application and do not amount to significantly more.
Applicant argues on p. 9-10 that the claims do not recite a mental process at Step 2A, Prong 1 because all claims incorporate specific details regarding an automated software agent-based framework that together with a generative AI controlled by selective and agent-based AI prompt engineering, is used to automate creation and then optimization of a product concept for use in a manufacturing process. Examiner respectfully disagrees. The claimed concept, under the broadest reasonable interpretation of a person having ordinary skill in the art, is directed to mental processes. The core of the claim is generating an idea, identifying an audience, consulting attitudinal information, gathering themes, and revising the concept accordingly, but with the use of computers or AI as tools. Product concept generation is a judgement. Target audience identification is an evaluation. Theme extraction from attitudinal data is an observation and evaluation. Prompt construction and modified concept generation are judgements. Applicant is reminded that claims can recite a mental process even if they are claimed as being performed on a computer. See MPEP 2106.04(a)(2)(III)(C).
Applicant argues on p. 11-15 that the claims are eligible at Step 2A, Prong 2 because the disclosure provides sufficient details supporting an improvement to AI-supported design and manufacturing systems. Examiner respectfully disagrees. The claims do not recite a concrete technical mechanism that produces the alleged improvement. The claims recite result-based functional language to select subagents, generate a concept, identify an audience, obtain themes, construct a prompt, query generative AI, receive a modified concept, and manufacture a physical product according to the modified concept. The claimed agentic framework merely claims a first agent selecting and instantiating second agents for specialized tasks, which is generic supervisory hierarchy recited at a functional level. This is in contrast to the specific unconventional arrangement in BASCOM, which required a filtering tool installed at a specific location, remote from end users, with individualized customization, exploiting a particular network capability.
Response to Arguments
Applicant’s prior art arguments and amendments have been fully considered and they are persuasive.
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, 7, 8, and 10-23 are clearly drawn to at least one of the four categories of patent eligible subject matter recited in 35 U.S.C. 101 (method). Claims 1, 2, 4, 7, 8, and 10-23 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 integrating the abstract idea into a practical application or amounting to significantly more than the abstract idea.
Regarding Step 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance (‘2019 PEG”), Claims 1, 2, 4, 7, 8, and 10-23 are directed toward the statutory category of a process (reciting a “method”).
Regarding Step 2A, prong 1 of the 2019 PEG, Claims 1 and 11 are directed to an abstract idea by reciting configuring a set of software agents as an agentic Artificial Intelligence (AI) framework that autonomously searches for a solution to a product design and manufacturing problem, the set of software agents comprising a first software agent, and a subset of second software agents, each of the subset of second software agents configured to process information and complete a specialized task on its own; the first software agent configured to select and instantiate from the subset of second software agents at least: a second software agent that, as a first specialized task, generates a product concept; a second software agent that, as a second specialized task, identifies a target audience for the generated product concept; and a second software agent that, based at least on the target audience, exchanges data with an attitudinal data asset in relation to the generated product concept and, in response, as a third specialized task, receives one or more themes; the first software agent further configured to: incorporate the generated product concept and the one or more themes that are identified by the subset of second software agents selected and instantiated by the first software agent into a generative Artificial Intelligence (AI) prompt; and provide the generative Al prompt as an input to a generative Artificial Intelligence (AI) and receive a response, the response being a modified product concept for input to a manufacturing process (Example Claim 1).
The claims are considered abstract because these steps recite mental processes such as concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and certain methods of organizing human activity including marketing activities. Under the broadest reasonable interpretation, the claim recites generating a product concept, identifying a target audience, exchanging data with an attitudinal asset to obtain themes, incorporating the product concept and theme(s) into a prompt, and providing the prompt to a generative AI to obtain a modified product concept. Applicant’s disclosure does not recite a particular problem the claimed steps aim to solve, however, it is understood that the claimed steps aim to improve on the well-known sequence of steps to produce product designs (Applicant’s Specification, [0001]-[0013]). By this evidence, the claims recite a type of mental processes common to judicial exception to patent-eligibility. By preponderance, the claims recite an abstract idea (e.g., a “method(s)” for automating product design).
Regarding Step 2A, prong 2 of the 2019 PEG, the judicial exception is not integrated into a practical application because the claims (the judicial exception and the additional elements such as a set of software agents; a generative Artificial Intelligence (AI); and manufacturing the physical product according to a design as defined in the modified product concept) are not an improvement to a computer or a technology, the claims do not apply the judicial exception with a particular machine, the claims do not effect a transformation or reduction of a particular article to a different state or thing nor do the claims apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment such that the claims as a whole is more than a drafting effort designed to monopolize the exception (see MPEP §§ 2106.05(a-c, e)).
Dependent claims 2, 4, 7, 8, 10, and 12-23 do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the limitations recite mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea ‐ see MPEP 2106.05(f).
Regarding Step 2B of the 2019 PEG, the additional elements have been considered above in Step 2A Prong 2. The claim limitations do not amount to significantly more than the judicial exception because they are directed to limitations referenced in MPEP 2106.05I.A. that are not enough to qualify as significantly more when recited in a claim with an abstract idea because the limitations recite mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea ‐ see MPEP
2106.05(f).
Applicant's claims mimic conventional, routine, and generic computing by their similarity to other concepts already deemed routine, generic, and conventional [Berkheimer Memorandum, Page 4, item 2] by the following [MPEP § 2106.05(d) Part (II)]. The claims recite steps like: “Receiving or transmitting data over a network, e.g., using the Internet to gather data,” Symantec, “Performing repetitive calculations,” Flook, and “storing and retrieving information in memory,” Versata Dev. Group, Inc. v. SAP Am., Inc. (citations omitted), by performing steps of “configuring” software, “generates” a product concept, “identifies” a target audience, “exchanges” data, “incorporate” data into a prompt, and “provide” the prompt as input to a generative AI (Claim 1); and “manufacturing” a product in accordance with a modified design (claim 11).
By the above, the claimed computing “call[s] for performance of the claimed information collection, analysis, and display functions ‘on a set of generic computer components' and display devices” [Elec. Power Group, 830 F.3d at 1355] operating in a “normal, expected manner” [DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d at 1245, 1258 (Fed. Cir. 2014)].
Conclusively, Applicant's invention is patent-ineligible. When viewed both individually and as a whole, Claims 1, 2, 4, 7, 8, and 10-23 are directed toward an abstract idea without integration into a practical application and lacking an inventive concept.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. US 2025/0298945 A1; WO 2023133144 A1; Paliwal et al., Accelerating Time-to-Market: The Role of Generative AI in Product Development, 2024.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MOHAMED EL-BATHY whose telephone number is (571)270-5847. The examiner can normally be reached on M-F 8AM-4:30PM.
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, PATRICIA MUNSON can be reached on (571) 270-5396. 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.
/MOHAMED N EL-BATHY/Primary Examiner, Art Unit 3624