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
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 1-20 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.
Regarding claim 1, the moral-index list does not have ascertainable metes and bounds. The claim requires that “the plurality of moral indices includes two or more of” a list, and then closes that list with “a degree of harm/care a degree of cheating/fairness or a degree of subversion/authority.” The missing punctuation between “harm/care” and “a degree of cheating/fairness,” together with the terminal “or,” makes it unclear whether the list is closed, whether “or” replaces “two or more of,” and whether immorality/morality is required, optional, or an alternative to the later indices. For examination, the list is treated as requiring any two or more of immorality/morality, betrayal/loyalty, degradation/sanctity, harm/care, cheating/fairness, and subversion/authority. Claims 2-10 inherit this indefiniteness. Claim 11 recites the same list, and claims 12-20 inherit it.
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. The claims are directed to the abstract idea of mental processes and/ or certain methods of organizing human activity. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception as discussed below.
Step 1 of the 2019 Revised Patent Subject Matter
More specifically, regarding Step 1, of the 2019 Revised Patent Subject Matter Eligibility Guidance, the claims are directed to a machine, process, and/or an article of manufacturer, which are statutory categories of invention.
Step 2a – Prong 1 of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims are analyzed to determine whether it is directed to a judicial exception.
Claim 1 recites facilitating development of a training dataset, providing access to auto machine learning tools to develop a model, providing access to analysis tools that generate predicted moral score data for that model, and providing access to a version control repository for versions of the dataset and the model. The moral score is generated from reviewed media content scored on moral indices such as immorality/morality, betrayal/loyalty, degradation/sanctity, harm/care, cheating/fairness, and subversion/authority. These limitations, under their broadest reasonable interpretation, cover a mental process of judging media against moral criteria and a method of organizing the human activity of collaborative model review, dataset curation, and ethical approval. The same abstract idea is recited in claim 11. A person can review media, assign scores on paired moral scales, compare a model output with those scores, and keep successive versions of a dataset and a model with pen and paper or in ordinary discussion.
Step 2a – Prong 2 of the 2019 Revised Patent Subject Matter Eligibility Guidance
The second prong of step 2a is the consideration if the claim limitations are directed to a practical application.
Limitations that are indicative of integration into a practical application:
-Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
-Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition - see Vanda Memo
-Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
-Effecting a transformation or reduction of a particular article to a different state or thing – see MPEP 2106.05(c)
-Applying or using 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 claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
Limitations that are not indicative of integration into a practical application:
-Adding the words "apply it" (or an equivalent) with the judicial exception, or 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)
-Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)
-Generally linking the use of the judicial exception to a particular technological environment or field of use - see MPEP 2106.05(h)
The additional elements do not integrate the abstract idea into a practical application. The network interface, platform access subsystem, memory, and processor are generic computer components used as a tool to host the abstract review process. “Secure access” to client devices is a conventional field of use of a networked computer. “Providing access” to auto machine learning tools, analysis tools, and a version control repository adds the abstract idea to a general-purpose platform. It does not recite how the moral model changes the training loop, the model architecture under development, or the operation of the repository. The requirement of at least one-hundred thousand training sets limits the data volume. It does not recite a technical training mechanism. The specification asserts that scoring content faster than a human is an improvement, but that assertion describes automation of the abstract judgment. It does not identify an improvement to the computer or to another technology. MPEP 2106.05(a). Dependent claims 2-10 and 12-20 add bias prediction, plural scores, opposite-end scales, a neural-network mesh, a forum, and a graphical scoring interface. These features further describe the abstract evaluation or add generic interface and collaboration elements. They do not impose a meaningful limit on the idea.
Step 2b of the 2019 Revised Patent Subject Matter Eligibility Guidance
Next, the claims as a whole are analyzed to determine whether any element, or combination of elements, is sufficient to ensure that the claim amounts to significantly more than the exception.
The claim elements, considered individually and as an ordered combination, do not amount to significantly more than the abstract idea. A processor, memory, network interface, secure login, repository, and graphical user interface are well understood, routine, and conventional computer functions. Training a model on a large labeled quantity and storing versions of data and models are likewise conventional. The ordered combination is a hosted toolkit in which a developer builds a dataset, calls external tools, receives a moral score, and stores versions. That arrangement does not provide an inventive concept.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
Claims 1-20 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-20 of Donovan (US 12,172,085 B2). Although the claims at issue are not identical, they are not patentably distinct.
Claim 1 recites an ethical AI development platform comprising a network interface, a platform access subsystem configured to provide secure access to a plurality of client devices via the network interface, a non-transitory computer readable memory, and at least one processor that facilitates development of a training dataset associated with at least one client device, provides access to a plurality of auto machine learning tools, provides access to machine learning analysis tools including an AI moral insight model trained on at least one-hundred thousand sets of reviewed media content and moral score data, and provides access to a version control repository for versions of the training dataset and the model. Donovan claim 1 requires the moral indices to include immorality/morality, betrayal/loyalty, degradation/sanctity, harm/care, cheating/fairness, and subversion/authority. That requirement meets “two or more of” those indices. Claim 1 also recites a subscription and billing subsystem and a privacy management subsystem. Those added elements do not make the pending claim patentably distinct. A claim to the platform without those two subsystems is anticipated by the patented claim, which contains every limitation of pending claim 1.
Claims 2-10 recite the bias tool, plural scores, opposite-end scales, the neural-network mesh, the mesh outputs, the predicted index values, the learning and collaboration subsystem, the scoring graphical user interface, and selection of the moral score through that interface. Pending claims 2-10 recite the same added limitations. Claims 11-20 are the method counterparts and correspond to pending claims 11-20 in the same way.
The present application and Donovan are commonly owned. A terminal disclaimer may be used to overcome this rejection.
Relevant Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Please see attached USPTO form PTO-892.
Filing of New or Amended Claims
The examiner has the initial burden of presenting evidence or reasoning to explain why persons skilled in the art would not recognize in the original disclosure a description of the invention defined by the claims. See Wertheim, 541 F.2d at 263, 191 USPQ at 97 (“[T]he PTO has the initial burden of presenting evidence or reasons why persons skilled in the art would not recognize in the disclosure a description of the invention defined by the claims.”). However, when filing an amendment an applicant should show support in the original disclosure for new or amended claims. See MPEP § 714.02 and § 2163.06 (“Applicant should specifically point out the support for any amendments made to the disclosure.”). Please see MPEP 2163 (II) 3. (b)
Correspondence
Any inquiry concerning this communication or earlier communications from the examiner should be directed to SENG H LIM whose telephone number is (571)270-3301. The examiner can normally be reached Monday-Friday (9-5).
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, Xuan Thai can be reached at (571) 272-7147. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Seng H Lim/Primary Examiner, Art Unit 3715
