DETAILED ACTION
Notice of 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 .
Election/Restrictions
Applicant’s election without traverse of Invention I (claims 1-3, 16-18, and 20) in the reply filed on 2026-08-05 is acknowledged.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 2025-02-17 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statement is being considered by the examiner.
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 1-3, 16-18, and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea (35 U.S.C. 101 Judicial Exception) without significantly more. The claims recite scoring and reporting a likelihood of a data compromising event occurring due to deployment of a generative artificial intelligence, which is both an undefined form of mathematical relationships grouped as a mathematical concept and a form of observation, evaluation, judgment, and/or opinion which is a concept performed in the human mind and thus grouped as Mental processes. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered separately and in combination, do not add significantly more to the abstract idea, as they are well-understood, routine, conventional computer functions as recognized by the courts.
Based upon consideration of all the relevant factors with respect to the claimed invention as a whole, the claims are determined to be directed to an abstract idea without significantly more. The rationale for this determination is explained infra:
The following are Principles of Law:
A patent may be obtained for “any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof”; 35 U.S.C. § 101. The Supreme Court has consistently held that this provision contains an important implicit exception: laws of nature, natural phenomena, and abstract ideas are not patentable; See Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014); Gottschalk v. Benson, 409 U.S. 63, 67 (1972) (“Phenomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work.”). Notwithstanding that a law of nature or an abstract idea, by itself, is not patentable, an application of these concepts may be deserving of patent protection; See Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289, 1293–94 (2012). In Mayo, the Court stated that “to transform an unpatentable law of nature into a patent-eligible application of such a law, one must do more than simply state the law of nature while adding the words ‘apply it.’” Mayo, 132 S. Ct. at 1294 (citation omitted).
In Alice, the Court reaffirmed the framework set forth previously in Mayo “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of these concepts.” Alice, 134 S. Ct. at 2355. The test for determining subject matter eligibility requires a first step of determining whether the claims are directed to a process, machine, manufacture, or composition of matter. If the claims are directed to one of the four patent-eligible subject matter categories, then the Examiner must perform a two-part analysis to determine whether a claim that is directed to a judicial exception recites additional elements that amount to significantly more than the exception. The first part of the second step in the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are directed to a patent-ineligible concept, then the second part of the second step in the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 132 S. Ct. at 1298, 1297). In other words, the second step in the analysis is to “search for an ‘inventive concept’‒ i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent on the [ineligible concept] itself.’” Id. (brackets in original) (quoting Mayo, 132 S. Ct. at 1294). The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
In the “2019 Revised Patent Subject Matter Eligibility Guidance” (2019 PEG), the USPTO has prepared revised guidance for use by USPTO personnel in evaluating subject matter eligibility based upon rulings by the courts.
The Examiner is bound by and applies the framework as set forth by the Court in Mayo and reaffirmed by the Court in Alice and follows the 2019 PEG for determining whether the claims are directed to patent-eligible subject matter.
Step 1: Are the claims at issue directed to a process, machine, manufacture, or composition of matter?
The Examiner finds that the claims are directed to one of the four statutory categories.
Step 2A – Prong One: Does the claim recite an abstract idea, law of nature, or natural phenomenon?
The Examiner finds that the claims are directed to the abstract idea of scoring and reporting a likelihood of a data compromising event occurring due to deployment of a generative artificial intelligence, which is both an undefined form of mathematical relationships grouped as a mathematical concept and a form of observation, evaluation, judgment, and/or opinion which is a concept performed in the human mind and thus grouped as Mental processes.
Step 2A – Prong Two: Does the claim recite additional elements that integrate the Judicial Exception into a practical application?
The abstract idea is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
In determining whether the abstract idea was integrated into a practical application, the Examiner has considered whether there were any limitations indicative of integration into a practical application, such as:
(1) Improvements to the functioning of a computer, or to any other technology or technical field; See MPEP § 2106.05(a)
(2) Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition; See Vanda Memo (Recent Subject Matter Eligibility Decision: Vanda Pharmaceuticals Inc. v. West-Ward Pharmaceuticals)
(3) Applying the judicial exception with, or by use of, a particular machine; See MPEP § 2106.05(b)
(4) Effecting a transformation or reduction of a particular article to a different state or thing; See MPEP § 2106.05(c)
(5) 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
The Examiner notes that clam features of: scoring and reporting a likelihood of a data compromising event occurring due to deployment of a generative artificial intelligence do not improve the functioning of a computer or technical field, do not effect a particular treatment or prophylaxis for a disease or medical condition, do not apply or use a particular machine, do not effect a transformation or reduction of a particular article to a different state or thing, and do not apply or use 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.
Instead of a practical application, the claim features of scoring and reporting a likelihood of a data compromising event occurring due to deployment of a generative artificial intelligence merely use a general-purpose computer as a tool to perform the abstract idea (See MPEP § 2106.05(f)) and merely generally link the use of the abstract idea to a field of use (See MPEP § 2106.05(h)). Thus, the Examiner finds that the claimed invention does not recite additional elements that integrate the Judicial Exception into a practical application.
Step 2B: Is there something else in the claims that ensures that they are directed to significantly more than a patent-ineligible concept?
The claims, as a whole, require nothing significantly more than generic computer implementation or can be performed entirely by a human. The additional element(s) or combination of element(s) in the claims other than the abstract idea per se amount to no more than recitation of generic computer structure (e.g. computing device, processor, and memory) that serves to perform generic computer functions (e.g. prompt a user for input, outputting a score, and outputting a report comparing to others) that are well-understood, routine, and conventional activities previously known to the pertinent industry. The claimed input, plurality of components, proposed generative artificial intelligence (GEN Al) solution, template, use score, overall value, likelihood of a data compromising event, and priority report are all numbers, data structures, or datum. Each of these elements are individually dispositive of patent eligibility because of the following legal holdings:
“Data in its ethereal, non-physical form is simply information that does not fall under any of the categories of eligible subject matter under section 101.” Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350 (Fed. Cir. 2014).
The Supreme Court has also explained that “[a]bstract software code is an idea without physical embodiment,” i.e., an abstraction. Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 449 (2007).
A claim that recites no more than software, logic, or a data structure (i.e., an abstract idea) – with no structural tie or functional interrelationship to an article of manufacture, machine, process or composition of matter does not fall within any statutory category and is not patentable subject matter; data structures in ethereal, non-physical form are non-statutory subject matter. In re Warmerdam, 33 F.3d 1354, 1361 (Fed. Cir. 1994); see Nuijten, 500 F.3d at 1357.
Furthermore, the claimed invention does not have a specific asserted improvement in computer capabilities, nor is it a specific implementation of a solution to a problem in the software arts; See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). Rather, the claims are merely directed towards scoring and reporting a likelihood of a data compromising event occurring due to deployment of a generative artificial intelligence, which is similar to ideas that the courts have found to be abstract, as noted supra, and the claims are without a “practical application” or anything “significantly more”.
Considering each of the claim elements in turn, the function performed by the computer system at each step of the process does no more than require a generic computer to perform a well-understood, routine, and conventional activity at a high level of generality. For example, prompting a user for input, outputting a score, and outputting a report are merely receiving or transmitting data over a network, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network). Further, “outputting a score” is, at best, merely a suggestion of performing some nondescript calculations, which has been found by the courts to be a well-understood, routine, conventional activity in computers; See e.g. Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”). Further note that the abstract idea of scoring and reporting a likelihood of a data compromising event occurring due to deployment of a generative artificial intelligence to which the claimed invention is directed has a prior art basis outside of a computing environment, e.g. data breach insurance brokers pricing models.
The prohibition against patenting an abstract idea “cannot be circumvented by attempting to limit the use of the formula to a particular technological environment or adding insignificant post-solution activity.” Bilski v. Kappos, 561 U.S. 593, 610–11 (2010) (citation and internal quotation marks omitted). The Court in Alice noted that “[s]imply appending conventional steps, specified at a high level of generality,” was not “enough” [in Mayo] to supply an “‘inventive concept.’” Alice, 134 S. Ct. at 2357 (quoting Mayo, 132 S. Ct. at 1300, 1297, 1294).
Viewed as a whole, the claims simply recite the steps of using generic computer components. The claims do not purport, for example, to improve the functioning of the computer system itself. Nor does it effect an improvement in any other technology or technical field. Instead, the claims amount to nothing significantly more than an instruction to implement the abstract idea using generic computer components. This is insufficient to transform an abstract idea into a patent-eligible invention.
The dependent claims likewise incorporate the deficiencies of a claim upon which they ultimately depend and are also directed to non-patent-eligible subject matter.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
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.
Claims 1-3, 16-18, and 20 are rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claims contain subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention. In particular, claim 1 recites the limitation “electronically evaluate the proposed GEN Al solution by outputting a use score, wherein the use score represents an overall value of deploying the GEN Al solution including a likelihood of a data compromising event occurring as a result of the deployment”, and the specification does not describe the claimed feature in sufficient detail that one skilled in the art can reasonably conclude that the inventor had possession of the claimed invention at the time of filing.
It is first noted that original claims lack adequate written description when the claims are generically drafted but the written description fails to support the scope of the genus claimed; See MPEP § 2161.01(I). That is, “generic claim language in the original disclosure does not satisfy the written description requirement if it fails to support the scope of the genus claimed” and “the specification must demonstrate that the applicant [inventor] has made a generic invention that achieves the claimed result and do so by showing that the applicant [inventor] has invented species sufficient to support a claim to the functionally-defined genus”. In this instance, the claims generally recite evaluating a GEN AI solution and outputting a score. The specification does provide antecedent basis for this general concept and describes a process of combining fixed values based on fixed options (e.g. a specific sub-score for questions and answers such as the type of data the model will use with different sub-score values corresponding to different choices such as in [0031]-[0032]); however, the specification does not provide a suitable level of embodiments or species for how to achieve this claim function for any generic application of evaluating a solution and outputting a score, such as claimed. Thus, the specification does not provide the necessary written description support for the full breadth of the asserted claims as required by the written description requirement.
Claims 16 and 20 are rejected under a similar rationale. The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
Claims 1-3, 16-18, and 20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. Specifically, Claim 1 recites the limitation “electronically evaluate the proposed GEN Al solution by outputting a use score”, and it is unclear what the scope of the claim requires. That is, the claim appears to redefine “electronically evaluate” to be simply the act of outputting a score without requiring any form of evaluation, and thus is unclear whether there is actually an evaluation occurring. Claims 16 and 20 are rejected under a similar rationale. The dependent claims included in the statement of rejection but not specifically addressed in the body of the rejection have inherited the deficiencies of their parent claim and have not resolved the deficiencies. Therefore, they are rejected based on the same rationale as applied to their parent claims above.
Claim Rejections - 35 USC § 103
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 of this title, 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.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 1-3, 16-18, and 20 are rejected under 35 U.S.C. 103 as being unpatentable over Toledano et al. (US Patent No. 10318740-B2, hereinafter “Toledano”) in view of Goldsteen et al. (US Pre-Grant Publication No. 20240362337-A1, hereinafter “Goldsteen”).
With respect to independent claim 1, Toledano discloses a computing device for objectively evaluating and prioritizing GEN Al uses cases, the computing device comprising:
at least one memory {col. 4, ll. 29-52: “a memory resource”}.
at least one processor in communication with the at least one memory {col. 4, ll. 29-52: “processors capable of executing instructions stored by a memory resource”}, wherein the at least one processor is programmed to:
prompt a user to input a plurality of components of a proposed [software] solution by causing to be displayed on a user computing device a template requesting the plurality of components {col. 9, ll. 22-57: “inputs”, wherein “a score input includes a description of a security risk element for the application 344. A score input can be received as a response to an output (e.g., a question addressing a segment of a comprehensive security coverage framework)”}.
in response to receiving the plurality of components, electronically evaluate the proposed [software] solution by outputting a use score {col. 10, l. 58 – col. 11, l. 64: “Each description of the set of the descriptions can be scored by the score calculator 350”; note that the limitation is a contingent limitation that has an optional precedent (i.e., “in response to” a non-required precedent), and the broadest reasonable interpretation does not require the limitation (at least for process claim 16); See MPEP § 2111.04(II)}, wherein the use score represents an overall value of deploying the [software] solution including a likelihood of a data compromising event occurring as a result of the deployment {col. 10, l. 29 – col. 11, l. 64: “confidentiality impact can include where the confidentiality impact of a potential exploitation of a security vulnerability of the application 344”}.
output a priority report including a comparison of the use score for the current proposed [software] solution to other [software] solutions being considered {col. 30, ll. 8-53: “comparing the risk characterization for the software application to a historical risk characterization” including “from a separate software application in a multi-software application environment”}.
Although Toledano teaches evaluating the risk of a software product, Toledano does not explicitly disclose that the software product being evaluated is a “generative artificial intelligence (GEN Al) solution”; however, Goldsteen discloses:
at least one processor in communication with the at least one memory, wherein the at least one processor is programmed to:
… electronically evaluate the proposed GEN Al solution by outputting a use score {para. 0029: “AI model risk assessment system 102 can facilitate calculation of a customized risk assessment score representing the result of a risk assessment for an AI model based on a risk profile generated based on risk assessment requirements and measurements of the artificial intelligence model associated with various metrics of the risk profile”}.
Toledano and Goldsteen are analogous art because they are from the same field of endeavor or problem-solving area of risk assessment of software products. Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art, having the teachings of Toledano and Goldsteen before him or her, to modify/develop the application under risk characterization of Toledano’s system to include generative artificial intelligence solutions. The suggestion and/or motivation for doing so would have been because it is merely combining prior art elements according to known methods to yield predictable results, e.g., enables risk assessment of a popular software solution. Therefore, it would have been obvious to combine the application under risk characterization in Toledano’s system with generative artificial intelligence solutions to obtain the invention as specified in the instant claim(s). The Examiner notes that this motivation applies to all dependent and/or otherwise subsequently addressed claims.
With respect to dependent claim 2, Toledano discloses wherein the template displayed on the user computing device prompts the user to provide details of the GEN Al solution including use case details {col. 10, ll. 29-57: “the question can include a prompt to characterize the type of data being processed, stored, and/or utilized by the application 344 and/or the negative potential of exploitation of a vulnerability exposing that data to unpermitted entities”}.
With respect to dependent claim 3, Toledano discloses wherein the at least one processor is further programmed to use language processing tools to analyze the details inputted for the GEN Al solution when outputting the use score {col. 3, ll. 1-22: “response can include a selection of a description from a number of predetermined descriptions that each describe an answer to the question posed to a user device and/or included as part of an assessment of a software application”}.
With respect to claims 16-18, a corresponding reasoning as given earlier in this section with respect to claims 1-3 applies, mutatis mutandis, to the subject matter of claims 16-18; therefore, claims 16-18 are rejected, for similar reasons, under the grounds as set forth for claims 1-3.
With respect to claim 20, a corresponding reasoning as given earlier in this section with respect to claim 1 applies, mutatis mutandis, to the subject matter of claim 20; therefore, claim 20 is rejected, for similar reasons, under the grounds as set forth for claim 1.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure.
The reference Chan et al. (US Pre-Grant Publication No. 20230289604-A1) discloses generating risk assessment metrics of a candidate ML model.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Kevin Bechtel whose telephone number is 571-270-5436. The examiner can normally be reached Monday - Friday, 09:00 - 17:00 ET.
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/Kevin Bechtel/
Primary Examiner, Art Unit 2491
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