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 1-5, 9-10, and 12-16 are rejected on the ground of nonstatutory double patenting as being unpatentable over claim1-2, 5-7, 12, 15, and 17-18 of U.S. Patent No. 12189697 in view of Socher U.S. Pub 20250165783
Application: 19012830
Patent: 12189697
Claim 1
A computing system comprising:
a processor; and
memory storing instructions that, when executed by the processor, cause the processor to perform acts comprising:
providing an input set forth by a user of a client computing device to a generative model;
obtaining, from the generative model, a first output, wherein the first output is generated by the generative model based upon the input;
providing the first output to a search engine;
obtaining, from the search engine, content identified by the search engine, where the search engine identifies the content based upon the first output;
providing, to the generative model, the content identified by the search engine;
obtaining, from the generative model, a second output, wherein the second output is generated by the generative model based upon the content identified by the search engine and the input; and
causing the second output to be presented at the client computing device.
Claim 1
A computing system comprising:
a processor; and
memory storing instructions that, when executed by the processor, cause the processor to perform acts comprising:
causing input set forth by a user of a client computing device to be provided to a generative model;
obtaining, from the generative model, a query based upon the input set forth by the user;
providing the query to a search engine;
obtaining, from the search engine, content identified by the search engine, where the search engine identified the content based upon the query;
providing, to the generative model, the content identified by the search engine, where the generative model generates an output based upon the content identified by the search engine;
obtaining, from the generative model, the output;
transmitting the output to the client computing device for presentment to the user;
subsequent to transmitting the output to the client computing device, causing second input set forth by the user of the client computing device to be provided to the generative model, where the generative model generates a second query based upon the input, the query, and the second input;
obtaining, from the generative model, the second query;
providing the second query to the search engine;
obtaining, from the search engine, second content identified by the search engine, where the search engine identified the second content based upon the second query;
providing, to the generative model, the second content identified by the search engine, where the generative model generates a second output based upon the content identified by the search engine and the second content identified by the search engine;
obtaining, from the generative model, the second output; and
transmitting the second output to the client computing device for presentment to the user.
However, patent ‘697 does not disclose causing a citation to a source of the content identified by the search engine to be presented at the client computing device.
Socher discloses causing a citation to a source of the content identified by the search engine to be presented at the client computing device ([0034], line 6-7, “… return as a NL output 125 for display at the user device 120… [0045], “… the NL output 125 may comprise references to the data sources 103a-n at relevant portions that are based on the corresponding search results 113a-n, respectively...”). It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention was made to include citations to the search results as disclosed by Socher into ‘697 because “… In this way, instead of having to visit and review many webpages, a user may receive a concise answer to a query with citations supporting and confirming the output, thus reducing time to find answers while providing certainty in correctness…” [0023]
Claim 2
The computing system of claim 1, wherein the first output comprises a textual response to the input set forth by the user of the client computing device.
Claim 2
The computing system of claim 1, where the prompt further includes the query generated by the generative model.
Claim 3
The computing system of claim 1, wherein the first output comprises an image generated by the generative model based upon the first input.
Claim 5
The computing system of claim 1, where the output comprises an image generated by the generative model based upon the prompt.
Claim 4
The computing system of claim 1, wherein the content identified by the search engine comprises at least an instant answer identified by the search engine based upon the first output.
Claim 6
The computing system of claim 1, where the content identified by the search engine based upon the query is an instant answer identified by the search engine based upon the query.
Claim 5
The computing system of claim 1, wherein the content identified by the search engine comprises at least a portion of a webpage identified by the search engine as being relevant the input set forth by the user of the client computing device.
Claim 7
The computing system of claim 1, where the content identified by the search engine based upon the query comprises a portion of a webpage identified by the search engine as being relevant to the query.
Claim 9
The computing system of claim 1, wherein the generative model is a transformer-based model.
Claim 12
The computing system of claim 1, where the generative model is a transformer-based model.
Claim 10
A computer-implemented method, the method comprising:
providing an input set forth by a user of a client computing device to a generative model;
obtaining, from the generative model, a first output, wherein the first output is generated by the generative model based upon the input;
providing the first output to a search engine;
obtaining, from the search engine, content identified by the search engine, where the search engine identifies the content based upon the first output;
providing, to the generative model, the content identified by the search engine;
obtaining, from the generative model, a second output, wherein the second output is generated by the generative model based upon the content identified by the search engine and the input; and
causing the second output and a citation to a source of the content identified by the search engine to be presented at the client computing device.
Claim 17
A method performed by a processor of a computing system that executes a generative model, the method comprising:
receiving, from a client computing device that is in network communication with the computing system, textual input set forth to the client computing device by a user of the client computing device;
generating a query based upon the textual input;
providing the query to a search engine that is in communication with the generative model;
receiving a portion of a webpage identified by the search engine as being relevant to the query generated by the generative model;
generating output based upon a prompt, where the prompt includes the portion of the webpage and the textual input received from the client computing device; and
transmitting the output to the client computing device for presentment to the user; wherein the output includes a citation to the webpage.
subsequent to transmitting the output to the client computing device, receiving a second input set forth by the user of the client computing device; generating a second query based upon the textual input, the query, and the second input; providing the second query to the search engine; obtaining, from the search engine, content identified by the search engine, where the search engine identified the content based upon the second query; generating a second output based upon the portion of the webpage identified by the search engine and the content identified by the search engine; and transmitting the second output to the client computing device for presentment to the user.
Claim 12
The method of claim 10, wherein the first output comprises an image generated by the generative model based upon the first input.
Claim 18
The method of claim 13, where the output includes an image generated by the generative model.
Claim 13
The method of claim 10, wherein the content identified by the search engine comprises at least an instant answer identified by the search engine based upon the first output.
Claim 15
The method of claim 13, further comprising receiving an instant answer identified by the search engine as being relevant to the query, where the prompt includes the instant answer.
MPEP 2151
AIA 35 U.S.C. 102(d) defines “effectively filed” for the purpose of determining whether a particular U.S. patent document is prior art under AIA 35 U.S.C. 102(a)(2) to a claimed invention. A U.S. patent document is considered to have been effectively filed for purposes of its prior art effect under 35 U.S.C. 102(a)(2) with respect to any subject matter it describes on the earlier of: (1) The actual filing date of the patent or the application for patent; or (2) if the patent or application for patent is entitled to claim the benefit of, or priority to, the filing date of an earlier U.S. provisional, U.S. nonprovisional, international (PCT), or foreign patent application, the filing date of the earliest such application that describes the subject matter of the claimed invention. Thus, a U.S. patent document is effective as prior art as of the filing date of the earliest application to which benefit or priority is claimed and which describes the subject matter relied upon, regardless of whether the earliest such application is a U.S. provisional or nonprovisional application, an international (PCT) application, or a foreign patent application.
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 (i.e., changing from AIA to pre-AIA ) 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)(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.
Claim(s) 1, 2, 4, 5, 10, 11, 13, 14, and 19 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Socher (U.S. Pub 20250165783)
Claim 1
Socher discloses a computing system comprising (fig. 2):
a processor (fig. 2, processor 210); and
memory storing instructions that, when executed by the processor, cause the processor to perform acts comprising (fig. 2, memory 220, processor 210):
providing an input (input 126) set forth by a user of a client computing device to a generative model ([0026], line 4-5, “… A user 130 interacts with user device 120, e.g., through providing natural language (NL) input 126…”);
63/476917: [00016], “… user enters a search query of "Charlene Liu,"…” [00017], “… a text generation tool… automatically generate a text based on user customization. For example, the text generation tool may include a generative model…” [00017], “… The web-based platform interface allows a user to provide a customized user inputs relating to generating a text, such as the type of text, intended audience, tone, content, and/or the like…”
obtaining, from the generative model, a first output (search query), wherein the first output is generated by the generative model based upon the input ([0028], line 1-6, “… upon receiving input 122… the text generation server 110 may adopt at least NLP model 115 to generate a search query… [0033], line 2-3, “… then convert the search query into customized search queries 111a-n…”) <examiner note: text generation server receives user input and generates a search query (i.e., first output) => search queries 111a-n based on the user input>);
63/476917: [00016], “… user enters a search query of "Charlene Liu,"…” [00017], “… a text generation tool… automatically generate a text based on user customization. For example, the text generation tool may include a generative model…”
providing the first output to a search engine (fig. 1a, query/queries 111a-n are forwarded to data sources 103 a-n to retrieve query results 113 a-n. The data source(a) are considered as search engine(s));
63/476917: [00018], “… if the user intends to write an article around the topic of "Abraham Lincoln," the generative model may send a search query of "Abraham Lincoln" to the search engine…”
obtaining, from the search engine, content identified by the search engine, where the search engine identifies the content based upon the first output ([0033], line 4-7, “… The customized search queries 111a-n are sent to respective data sources 103a-n through respective APIs 112a-n. In response, the data sources 103a-n may return query results 113a-n…”);
63/476917: [00018], “… the generative model may send a search query of "Abraham Lincoln" to the search engine, which may in turn provide search results related to the query…”
providing, to the generative model, the content identified by the search engine (fig. 1a, the query results 113a-n are returned to the text generation server 110);
63/476917: [0018], “…Internet search results that are returned from user selected search sources… may be used by the generative model…”
obtaining, from the generative model, a second output (NL output 125), wherein the second output is generated by the generative model based upon the content identified by the search engine and the input ([0034], line 2-7, “… the text generation server 110… extract information from the search results, generate text based on the search results… generate a natural language response, and return as a NL output 125 for display at the user device 120…” [0119], “… At step 812… generates a response to the user query. The NL model utilizes the search results and corresponding information, the tokens incorporating the user query, user context, and other context, and other relevant information to generate a text-based response that corresponds to the desired output...” <examiner note: the second output is based on search results and user input/query>); and
63/476917: [00018], “… the generative model may utilize search results from the search engine… as part of the input to generate the text…” [0023], “… the input user query and the generated search results may be input to the generative language model to provide a summary of the search results to the user…”
causing the second output and a citation to a source of the content identified by the search engine to be presented at the client computing device ([0034], line 6-7, “… return as a NL output 125 for display at the user device 120… [0045], “… the NL output 125 may comprise references to the data sources 103a-n at relevant portions that are based on the corresponding search results 113a-n, respectively...”)
63/476917: [00025], “… For example, as shown in page 1 of Appendix IV, a summary describing "Sony WH- 1000XM5" may be presented as "Sony WH-1000XM5" may be returned in the search results from multiple data sources as relevant to the search term "best headphones." In some embodiments, the search assistance tool can further provide citations within the search summary to specific results from the search to allow quick access to the user to view results…”
Claim 2
Claim 1 is included, Socher further discloses wherein the first output comprises a textual response to the input set forth by the user of the client computing device ([0034], line 2-7, “… the text generation server 110… extract information from the search results, generate text based on the search results… generate a natural language response, and return as a NL output 125 for display at the user device 120).
63/476917: [00016], “… user enters a search query of "Charlene Liu,"…” [00017], “… a text generation tool… automatically generate a text based on user customization. For example, the text generation tool may include a generative model…”
Claim 4
Claim 1 is included, Socher discloses wherein the content identified by the search engine comprises at least an instant answer identified by the search engine based upon the first output ([0038], line 3-6, “… For instance, input 122 may comprise two images and a text question “which photo is taken at the BTS 2023 tour at Barclay Center, New Yor City?” … [0040], line 2-5, “… the text generation server 110 to parse image and/or video content from at least one search result 113b, and generate a summary of the image and/or video content. Such summarized multimedia content may be used to generate the NL output 125…”)
63/476917: [00016], “… user enters a search query of…” [00017], “… a text generation tool… automatically generate a text based on user customization. For example, the text generation tool may include a generative model…” [00024], “…if a user searches for "best headphones," the search engine may generate a list of search results relating to "best headphones."… Search results within each data source may be presented to the user within a respective horizontal panel…”
Claim 5
Claim 1 is included, Socher discloses wherein the content identified by the search engine comprises at least a portion of a webpage identified by the search engine as being relevant the input set forth by the user of the client computing device ([0035], line 1-2, “… For example, at least one NLP model 115 may be used to parse the web content following the links provided in search results 113a-n…”)
63/476917: [00018], “… the generative model may utilize search results from the search engine described in Appendix I to collect Internet search results as part of the input to generate the text…” [00024], “… if a user searches for "best headphones," the search engine may generate a list of search results relating to "best headphones." In one implementation, data sources that are most relevant for the search query "best headphones," e.g., shopping sites such as Looria, electronics rating site such as PCMag, etc. may be selected for conducting the search. Search results within each data source may be presented to the user within a respective horizontal panel…”
Claims 10, 11, 13, 14, and 19 are similar to claim 1,2,4, and 5. The claims are rejected based on the similar reasons
Claim Rejections - 35 USC § 103
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 (i.e., changing from AIA to pre-AIA ) 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 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.
Claim(s) 3 and 12 are rejected under 35 U.S.C. 103 as being unpatentable over Socher (U.S. Pub 20250165783), as applied to claims 1 and 10 respectively, and further in view of Yada (U.S. Pub 2020/0356591 A1)
Claim 3
Claim 1 is included, however, Socher does not explicitly disclose wherein the first output comprises an image generated by the generative model based upon the first input.
Yada discloses wherein the first output comprises an image generated by the generative model based upon the first input ([0036], “… A user may provide the input images…” [0040], “… receive one or more text-based information items from the user…” [0041], “… An image generator component 108 produces a generated image IG based on the information items fed to it…. the image generator component 108 uses a machine-trained decoder neural network to generate the image IG. That decoder neural network operates based on a generative model…”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate an image-based search that allows a user to craft a custom query image that expresses the user's search intent, rather than accept an input query image as a fixed given as disclosed by Yada into Socher because the technique generates the query image based on one or more user-supplied input images and/or one or more user-supplied information items that describe at least one desired characteristic of the query image. The technique then submits the query image to a search engine, and, in response, receives a set of candidate images that match the query image.
Claim(s) 6-9 and 15-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Socher (U.S. Pub 20250165783), as applied to claims 1, 10, and 19 respectively, and further in view of Jain (U.S. Pub 2024/0256582 A1)
Claim 6
Claim 1 is included, however, Socher does not explicitly disclose wherein the acts further comprise:
obtaining, from the client computing device, content extracted from an electronic page being presented by way of a computer-implemented application on the client computing device;
providing, to the generative model, the content extracted from the electronic page;
obtaining, from the generative model, a third output, wherein the third output is generated by the generative model based at least upon the content identified by the search engine and the content extracted from the electronic page; and
causing the third output and a citation to a source of at least one of the content identified by the search engine or the content extracted from the electronic page to be presented at the client computing device.
Jain discloses
obtaining, from the client computing device, content extracted from an electronic page being presented by way of a computer-implemented application on the client computing device (fig. 3F, “… FIG. 3F… as an end user of the mobile device 302 is editing a word processing document… a cursor location 342 or the locations of recent edits made to the word processing document…” [0076], “… a search query may be automatically implied or submitted based on text surrounding the cursor location 342…”);
providing, to the generative model, the content extracted from the electronic page ([0079], “… In step 406, a natural language phrase is generated based on the search query… The natural language phrase may be generated using a generative AI model…”);
obtaining, from the generative model, a third output, wherein the third output is generated by the generative model based at least upon the content identified by the search engine and the content extracted from the electronic page ([0079], “… step 408, a set of search results is identified using the natural language phrase…” [0034], “… The search results may be provided to the client device by a search engine or a search system…” [0079], “… the set of search results may be generated using a search and knowledge management system…” [0013], “… A search and knowledge management system may leverage generative AI techniques to automatically generate and display a response (e.g., an answer) to a search query…”); and
causing the third output and a citation to a source of at least one of the content identified by the search engine or the content extracted from the electronic page to be presented at the client computing device ([0017], “… a search and knowledge management system may provide a set of search results (e.g., a set of verified documents) to guide a machine learning model in generating a response (e.g., a natural language text response). The technical benefits of providing a set of search results (e.g., comprising reference documents that have been verified by document owners) with the prompt and/or requesting that the generated response include citations or references to the particular search results of the set of search results used for generating the response is that the integrity of the generated response may be improved…”)
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to incorporate the automatically generate and display summaries of search results as disclosed by Jain into Socher because a search and knowledge management system may leverage generative AI techniques to automatically generate and display a response (e.g., an answer) to a search query (e.g., submitted via a search bar) or in response to an implied search query based on end user activity within a persistent chat channel or within an electronic document (e.g., the end user activity may comprise detecting that an end user has modified a particular portion of the electronic document).
Claim 7
Claim 6 is included, Jain discloses wherein the computer-implemented application is a web browser ([0013], “… A search and knowledge management system may leverage generative AI techniques to automatically generate and display a response (e.g., an answer) to a search query (e.g., submitted via a search bar)…” [0068], “… FIG. 3A depicts one embodiment of a mobile device 302 providing a user interface… The user interface may be provided via a web-browser… The user interface may include a search bar…”)
Claim 8
Claim 6 is included, Jain discloses wherein the computer-implemented application is an email application ([0013], "... The search and knowledge management system may automatically generate textual summaries for electronic messages (e.g., email messages) that have not yet been read or viewed by the end user on a periodic basis or upon detection that the end user has opened a particular application..." [0074], "... FIG. 3E... a summary of emails received within a past threshold period of time (e.g., the past 12 hours) is displayed...")
Claim 9
Claim 1 is included, Jain discloses wherein the generative model is a transformer-based model ([0015] A GPT model may comprise a type of large language model (LLM) that uses deep learning to generate human-like text. A GPT model may be referred to as being “generative” because it can generate new content based on a given input prompt (e.g., a text prompt), “pre-trained” because it is trained on a large corpus of data (e.g., text data) before being fine-tuned for specific tasks, and a “transformer” because it utilizes a transformer-based neural network architecture to process the input prompt to generate the output content (or response). A transformer model may include an encoder and decoder. In some cases, the encoder and decoder may comprise one or more encoding and/or decoding layers. Each encoding and decoding layer may include a self-attention mechanism that relates tokens within a series of tokens to other tokens within the series. In one example, the self-attention mechanism may allow the transformer model to examine a word within a sentence and determine the relative importance of other words within the same sentence to the examined word…”)
Claim 15-18 and 20 are similar to claim 6-9. The claims are rejected based on the same reasons.
Claim Rejections - 35 USC § 101
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
Step 1, This part of the eligibility analysis evaluates whether the claim falls within any statutory category. See MPEP 2106.03. The claim recites a system that performs at least one step. Thus, the claim is to a machine, which is one of the statutory categories of invention. (Step 1: YES).
Step 2A, Prong One, This part of the eligibility analysis evaluates whether the claim recites a judicial exception. See MPEP 2106.04. The claim recites the following abstract ideas.
Step "providing an input set forth by a user of a client computing device to a generative model" (as drafted, this limitation is a process that, under the broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components (e.g., "client computing device," "generative model"). That is, nothing in the limitation precludes the step from practically being performed in the mind. This limitation, in the context of this claim, encompasses the user thinking of a question and deciding to input that question to the generative model. Thus, this limitation recites an abstract mental process under 2019 PEG because it can be performed in the human mind either through observation, evaluation and judgment).
Step "providing the first output to a search engine" (as drafted, this limitation is a process that, under the broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components (e.g., "search engine"). That is, nothing in the limitation precludes the step from practically being performed in the mind. This limitation, in the context of this claim, encompasses the user determining to take the output of the generative model as input to search engine. Thus, this limitation recites an abstract mental process under 2019 PEG because it can be performed in the human mind either through observation, evaluation and judgment).
Step "providing, to the generative model, the content identified by the search engine" (as drafted, this limitation is a process that, under the broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components (e.g., "generative model"). That is, nothing in the limitation precludes the step from practically being performed in the mind. This limitation, in the context of this claim, encompasses the user determining to take the output of the search engine as input of the generative model. Thus, this limitation recites an abstract mental process under 2019 PEG because it can be performed in the human mind either through observation, evaluation and judgment).
"Unless it is clear that a claim recites distinct exceptions, such as a law of nature and an abstract idea, care should be taken not to parse the claim into multiple exceptions, particularly in claims involving abstract ideas." MPEP 2106.04, subsection II.B. However, if possible, the examiner should consider the limitations together as a single abstract idea rather than as a plurality of separate abstract ideas to be analyzed individually. "For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A, Prong One to make the analysis clear on the record." MPEP 2106.04, subsection II.B. Here, the mentioned steps fall within the mental process grouping of abstract ideas and are considered together as a single abstract idea for further analysis. (Step 2A, Prong One: YES).
Step 2A, Prong Two, This part of the eligibility analysis evaluates whether the claim as a whole integrates the recited judicial exception into a practical application of the exception. See MPEP 2106.04(d).
The claim recites the additional elements/limitations:
"obtaining, from the generative model, a first output, wherein the first output is generated by the generative model based upon the input" → data gathering;
"obtaining, from the search engine, content identified by the search engine, where the search engine identifies the content based upon the first output" → data gathering;
"obtaining, from the generative model, a second output, wherein the second output is generated by the generative model based upon the content identified by the search engine and the input" → data gathering;
"causing the second output and a citation to a source of the content identified by the search engine to be presented at the client computing device" → data outputting;
"client computing device" → generic computing component;
"generative model" → generic computing component;
"search engine" → generic computing component;
"processor" → generic computing component;
"memory storing instructions" → generic computing component.
a) MPEP § 2106.05(a) "Improvements to the Functioning of a Computer or to Any Other Technology or Technical Field."
The recited "client computing device”, "generative model”, "search engine”, "processor”, and "memory storing instructions", and limitations such as data gathering and data outputting do not improve the functioning of a computer or any other technology. None of these tools is made faster, more accurate, or more efficient. Any productivity benefit of collaborating a generative model with a search engine (RAG) is a benefit of the abstract idea performed faster than a human, not a computer improvement.
b) MPEP § 2106.05(b) Particular Machine. The judicial exception does not apply to any particular machine.
The claim is silent regarding specific limitations directed to an improved computer system, processor, memory, network, database, or Internet, nor do applicant direct examiner’s attention to such specific limitations. "[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 573 U.S. at 223; see also Bascom Glob. Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1348 (Fed. Cir. 2016) ("An abstract idea on 'an Internet computer network' or on a generic computer is still an abstract idea."). Applying this reasoning here, the claim is not directed to a particular machine, but rather merely implement an abstract idea using "client computing device”, "generative model”, "search engine”, "processor”, and "memory storing instructions". Thus, the claims fail to satisfy the "tied to a particular machine" prong of the Bilski machine-or-transformation test.
c) MPEP § 2106.05(c) Particular Transformation.
The claim inputting user inputting data into generative model, taking output of generative model to input into search engine, then feeding back the output of search engine back to generative model to generate response [Wingdings font/0xF3] RAG. Receiving an input, generating an output, and sending it to another tool is data manipulation. No physical article is transformed. The steps are not a "transformation or reduction of an article into a different state or thing constituting patent-eligible subject matter[.]" See In re Bilski, 545 F.3d 943, 962 (Fed. Cir. 2008) (en bane), aff'd sub nom, Bilski v. Kappas, 561 U.S. 593 (2010); see also CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1375 (Fed. Cir. 2011) ("The mere manipulation or reorganization of data ... does not satisfy the transformation prong."). Applying this guidance here, the claims fail to satisfy the transformation prong of the Bilski machine-or-transformation test.
d) MPEP § 2106.05(e) Other Meaningful Limitations.
This section of the MPEP guides: Diamond v. Diehr provides an example of a claim that recited meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment. 450 U.S. 175, ... (1981). In Diehr, the claim was directed to the use of the Arrhenius equation ( an abstract idea or law of nature) in an automated process for operating a rubber-molding press. 450 U.S. at 177-78 .... The Court evaluated additional elements such as the steps of installing rubber in a press, closing the mold, constantly measuring the temperature in the mold, and automatically opening the press at the proper time, and found them to be meaningful because they sufficiently limited the use of the mathematical equation to the practical application of molding rubber products. 450 U.S. at 184... In contrast, the claims in Alice Corp. v. CLS Bank International did not meaningfully limit the abstract idea of mitigating settlement risk. 573 U.S._ .... In particular, the Court concluded that the additional elements such as the data processing system and communications controllers recited in the system claims did not meaningfully limit the abstract idea because they merely linked the use of the abstract idea to a particular technological environment (i.e., "implementation via computers") or were well-understood, routine, conventional activity. MPEP § 2106.05(e). The recited "client computing device," "generative model," "search engine," "processor," and "memory storing instructions" do not impose any meaningful limit on practicing the abstract idea. The limitations are not meaningful limitations.
e) MPEP § 2106.05(g) Insignificant Extra-Solution Activity.
The limitation "obtaining, from the generative model, a first output" is pre-solution data gathering. The limitation "obtaining, from the search engine, content identified by the search engine" is pre-solution data gathering. The limitation "obtaining, from the generative model, a second output" is pre-solution data gathering. The limitation "causing the second output and a citation to a source of the content identified by the search engine to be presented at the client computing device" is post-solution activity.
6) MPEP § 2106.05(h) Field of Use and Technological Environment.
[T]he Supreme Court has stated that, even if a claim does not wholly pre-empt an abstract idea, it still will not be limited meaningfully if it contains only insignificant or token pre- or post-solution activity-such as identifying a relevant audience, a category of use, field of use, or technological environment. Ultramercial, Inc. v. Hulu, LLC, 722 F.3d 1335, 1346 (Fed. Cir. 2013). The recited limitations "client computing device”, "generative model”, "search engine”, "processor”, and "memory storing instructions"
are simply a field of use that attempts to limit the abstract idea to a particular technological environment.
Accordingly, the additional limitations do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The limitations "obtaining, from the generative model, a first output" → data receiving, "obtaining, from the search engine, content identified by the search engine" → data receiving, "obtaining, from the generative model, a second output" → data receiving, and "causing the second output and a citation to a source of the content identified by the search engine to be presented at the client computing device" → data outputting do not recite any non-generic arrangement for receiving or outputting data. The recited "client computing device," "generative model," "search engine," "processor," and "memory storing instructions" are generic computer components. Taking these limitations as an ordered combination adds nothing that is not already present when the elements are taken individually. The data receiving steps just hand data to the next tool. The data outputting step just shows the result. Therefore, the claim does not amount to significantly more than the recited abstract idea. The claim is not patent eligible.
Claim 2 recites "wherein the first output comprises a textual response to the input set forth by the user of the client computing device." The claim merely describes a field of use rather than a specific technical solution to a technical problem. The format of the first output as text is a field-of-use limitation. The claim does not amount to significantly more than the abstract idea.
Claim 3 recites "wherein the first output comprises an image generated by the generative model based upon the first input." The claim merely describes a field of use rather than a specific technical solution to a technical problem. The limitation only wants to output to an image. The claim does not amount to significantly more than the abstract idea.
Claim 4 recites "wherein the content identified by the search engine comprises at least an instant answer identified by the search engine based upon the first output." The claim merely describes a field of use rather than a specific technical solution to a technical problem. The claim does not amount to significantly more than the abstract idea.
Claim 5 recites "wherein the content identified by the search engine comprises at least a portion of a webpage identified by the search engine as being relevant the input set forth by the user of the client computing device." The limitation only narrows the kind of search result returned to part of a webpage. The claim does not amount to significantly more than the abstract idea.
Claim 6 recites "providing, to the generative model, the content extracted from the electronic page" (as drafted, this limitation is a process that, under the broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components (e.g., "generative model"). That is, nothing in the limitation precludes the step from practically being performed in the mind. This limitation, in the context of this claim, encompasses the user reading something off the page they are looking at and conveying that information. Thus, this limitation recites an abstract mental process under 2019 PEG because it can be performed in the human mind through observation, evaluation and judgment).
The claim further recites "obtaining, from the client computing device, content extracted from an electronic page," "obtaining, from the generative model, a third output," and "causing the third output and a citation to a source of at least one of the content identified by the search engine or the content extracted from the electronic page to be presented at the client computing device." These limitations are pre-solution and post-solution activity. They only set up additional input and display the output of the abstract idea. The claim does not amount to significantly more than the abstract idea.
Claim 7 recites "wherein the computer-implemented application is a web browser." The claim merely describes a field of use rather than a specific technical solution to a technical problem. Here, the limitation only narrows the type of application [Wingdings font/0xF3] a web browser. The claim does not amount to significantly more than the abstract idea.
Claim 8 recites "wherein the computer-implemented application is an email application." The claim merely describes a field of use rather than a specific technical solution to a technical problem. Here, the limitation only narrows the type of application [Wingdings font/0xF3] email. The claim does not amount to significantly more than the abstract idea.
Claim 9 recites "wherein the generative model is a transformer-based model." The limitation only narrows the type of generative model to a transformer-based model. The claim does not amount to significantly more than the abstract idea.
Claim 10-20 are similar to claims 1-9. The claims are rejected based on the same reasons
Response to Arguments
Section III – Rejections under 35 U.S.C 102 – pg 7-8
Applicant’s argument has been considered. Please see the rejection above.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAU HAI HOANG whose telephone number is (571)270-5894. The examiner can normally be reached 1st biwk: Mon-Thurs 7:00 AM-5:00 PM; 2nd biwk: Mon-Thurs: 7:00 am-5:00pm, Fri: 7:00 am - 4:00pm.
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, Boris Gorney can be reached at 571-270-5626. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
HAU HAI. HOANG
Primary Examiner
Art Unit 2154
/HAU H HOANG/ Primary Examiner, Art Unit 2154
Prosecution Insights