DETAILED ACTION
This office action is in response to the application filed on 2/10/2025. Claim(s) 1-20 is/are pending and are examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Priority/Benefit
Applicant’s priority claim is hereby acknowledged of CON of 18/739,111 06/10/2024 PAT 12223063, 18/739,111 is a CIP of 18/607,141 03/15/2024 PAT 12608486, 18/607,141 is a CIP of 18/399,422 12/28/2023 PAT 12367292, 18/399,422 is a CON of 18/327,040 05/31/2023 PAT 11874934, 18/327,040 is a CIP of 18/114,194 02/24/2023 PAT 11763006, 18/114,194 is a CIP of 18/098,895 01/19/2023 PAT 11748491, which papers have been placed of record in the file.
A later-filed application must be an application for a patent for an invention which is also disclosed in the prior application (the parent or original non-provisional application or provisional application). The disclosure of the invention in the parent application and in the later-filed application must be sufficient to comply with the requirements of 35 U.S.C. 112(a) or the first paragraph of pre-AIA 35 U.S.C. 112, except for the best mode requirement. See Transco Products, Inc. v. Performance Contracting, Inc., 38 F.3d 551, 32 USPQ2d 1077 (Fed. Cir. 1994).
The disclosure of the prior-filed application, Application No. 18/607,141 filed 03/15/2024, fails to provide adequate support or enablement in the manner provided by 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph for one or more claims of this application.
Claims 1-20 contain subject matter which is not supported in the above application and therefore, for the purposes of examination, these claims, each viewed as a whole, will not receive the priority claimed therein. Therefore claims 1-20 receive the claimed priority date of 6/10/2024.
Information Disclosure Statement PTO-1449
The Information Disclosure Statement(s) submitted by applicant on 2/10/2025 and 2/19/2026 has/have been considered. The submission is in compliance with the provisions of 37 CFR § 1.97. Form PTO-1449 signed and attached hereto.
Examiner’s Note – Patentably Distinct Subject Matter
The instant application contains an extensive patent family which, except where rejected under double patenting below, contains similar, yet patentably distinct subject matter.
Similarly, application 18/637,362 now US Patent 12,111,754 and its family members contain similar, yet patentably distinct subject matter.
Examiner’s Note – Allowable Subject Matter
The instant claims overcome the prior art and would otherwise be allowable if made to overcome the rejection under 35 USC 101 and the double patenting rejection below.
The closest prior art is Szczepanik (US 2022/0198304 A1). Szczepanik ¶ 89-90 teaches implementation with a processor, memory and computer readable medium. Szczepanik, ¶ 54 teaches using a trained AI model processing result. Szczepanik, ¶ 37-39 teaches evaluating an AI modeling using a test prompt. Szczepanik, ¶ 38 teaches outputting the results of the evaluation. Szczepanik does not teach “assigning a set of grades to the Al model indicating the degrees of satisfaction of the Al model with the one or more guidelines associated with the set of assessment domains; and using the set of grades, automatically generating a set of actions to adjust one or more parameters of the Al model to increase the degrees of satisfaction of the Al model with the one or more guidelines associated with the set of assessment domains”.
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 claims at issue 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); and 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 a nonstatutory double patenting ground provided the reference application or patent either is shown to be commonly owned with this application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO internet Web site contains terminal disclaimer forms which may be used. Please visit http://www.uspto.gov/forms/. The filing date of the application will determine what form 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:
http://www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claim(s) 1-20 is/are rejected on the grounds of nonstatutory double patenting as being unpatentable over claims 1-20 of U.S. Patent No. 12,223,063. Although the claims at issue are not identical in form, they are not patentably distinct from each other. In the instant claims, the patented claims anticipated the respective instant claims.
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.
Claim(s) 1-20 is/are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter 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 analysis is guided by the Supreme Court's two-step framework, described in Mayo and Alice (Alice Corp. Pty Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347, 2354 (2014) and Mayo Collaborative Servs. V. Prometheus Labs., Inc., 132 S. Ct. 1289, 1296-97 (2012)).Step 1: Is/Are the claim(s) directed to a process, machine, manufacture, or composition of matter?Answer: Yes.Step 2A Prong 1: Is/Are the claim(s) directed to a law of nature, a natural phenomenon, or an abstract idea, i.e., judicially recognized exceptions (both individually and as an ordered combination)?
Answer: Yes, the claims is directed to the mental processes and mathematical concepts of “evaluating the Al model against one or more sets of assessments by transmitting a particular assessment into one or more nodes of an input layer of the Al model; using the evaluation, assigning a set of grades to the Al model indicating the degrees of satisfaction of the Al model with the one or more guidelines associated with the set of assessment domains; and using the set of grades, automatically generating a set of actions to adjust one or more parameters of the Al model to increase the degrees of satisfaction of the Al model with the one or more guidelines associated with the set of assessment domains” beyond the scope of § 101. A similar analysis applies to claims 8 and 15. Dependent claims 2-7, 9-12, 14, and 16-19 expand on the identified abstract idea.
Step 2A Prong 2: Is/Are the claim(s) implemented into a practical application?
Answer: No, the limitations of the claim as drafted, is a process that, under its broadest reasonable interpretation, covers implementation of the mathematical concepts and mental processes. The claims include the recitation of generic computer components (e.g., “processor”, “non-transitory computer readable medium”) as well as the extra-solution activity of inputting and outputting information. This judicial exception is not integrated into a practical application. The claims do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Therefore, the claim is directed to an abstract idea.Step 2B: Does/Do the claim(s) recite additional elements that when analyzed individually and in ordered combinations amount to significantly more than the judicial exception(s)?
Answer: No, the claim(s) (both individually and as an ordered combinations) does/do not transform the nature of the claim(s) into a patent-eligible application of the abstract idea (i.e., significantly more than the abstract idea implemented using generic computer components). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application. Therefore, claims are not patent eligible.
Conclusion
In the case of amending the claimed invention, Applicant is respectfully requested to indicate the portion(s) of the specification which dictate(s) the structure relied on for proper interpretation and also to verify and ascertain the metes and bounds of the claimed invention.
The prior art made of record and not relied upon is considered pertinent to applicant’s disclosure: See PTO-892.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Stephen T Gundry whose telephone number is (571) 270-0507. The examiner can normally be reached Monday-Friday 9AM-5PM (EST).
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/STEPHEN T GUNDRY/Primary Examiner, Art Unit 2435
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