DETAILED ACTION
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 .
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Regarding the prior art rejections, Applicant argues that for claim 1, “Applicant’s claim recites that a vector is returned using similarity based on ‘the inverse embedding model’.” The examiner respectfully disagrees.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., returning a vector) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Claim 1 recites “identifying at least one vector of the plurality of vectors based at least in part on a similarity to at least one query vector generated from a query predicate according to the embedding model”. Returning a vector as an output of some step would require impermissibly importing the specification into the claims in their current form. The same rationale applies to the arguments regarding independent claims 8 & 15.
Regarding the § 101 rejection, the examiner observes that Applicant’s Remarks at page 9 state “However, in view of the amendments above, further indications of the integration of Applicant’s features into a practical application has been demonstrated.” (Emphasis added). No claim amendments were submitted by Applicant in the 07/30/2026 Response. Nevertheless, the Response appears to be a bona fide reply to the Office action mailed 04/29/2026 based on the prior art arguments and is acted on in the interest of compact prosecution.
Applicant’s claims have been analyzed under the subject matter eligibility framework and Applicant’s alleged improvements are not realized in the claims as currently recited.
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 the judicial exception of an abstract idea without significantly more.
Step 1
The claims recite a method, non-transitory computer-accessible storage media, and system (claims 1, 8 & 15). These claims fall within at least one of the four categories of patentable subject matter.
Step 2A Prong One
Independent claim 1 recites “identifying at least one vector of the plurality of vectors based at least in part on a similarity to at least one query vector generated from a query predicate according to the embedding model, wherein the similarity is determined according to a similarity function based at least in part on the inverse embedding model”.
These steps perform analysis on information which has been received, which are acts of evaluating information that can be practically performed in the human mind. Thus, these steps are an abstract idea in the “mental process” grouping.
Claims 3-6, 10-13 & 16-19 recite limitations that are further extensions of the identified grouping. Claims 8 & 15 recite limitations which correspond to claim 1.
Step 2A Prong Two
This judicial exception is not integrated into a practical application because the combination of additional elements includes only generic computer elements which do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer.
These additional elements include: vector store, non-transitory computer-accessible storage media, processor, and memory.
Independent claim 1 recites “training an inverse embedding model according to a plurality of vectors generated according to an embedding model and respective input data, the plurality of vectors individually comprising one or more dimensions”.
The claim recites limitations which amount to insignificant extra-solution activity of data gathering, such as receiving input, transmitting output, and updating/modifying data.
Claims 2, 7, 9, 14 & 20 recite limitations that are further extensions of the identified insignificant extra-solution activity. Claims 8 & 15 recite limitations which correspond to claim 1.
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the recitations of generic computer components performing generic computer functions at a high level of generality do not meaningfully limit the claim. Further, the insignificant extra-solution activities of data gathering and presentation do not meaningfully limit the claim.
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 1-4, 8-11 & 15-17 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by “Text Embeddings Reveal (Almost) As Much As Text” by Morris et al. (published in 2023, hereinafter “Morris”).
Morris teaches:
1. A computer-implemented method, comprising:
training an inverse embedding model according to a plurality of vectors generated according to an embedding model and respective input data, the plurality of vectors individually comprising one or more dimensions [Morris, page 12449, § 2, “Overview: Embedding Inversion”, and § 3.1, “Base Model: Learning to Invert ϕ”]; and
identifying at least one vector of the plurality of vectors based at least in part on a similarity to at least one query vector generated from a query predicate according to the embedding model, wherein the similarity is determined according to a similarity function based at least in part on the inverse embedding model [Morris, page 12450, § 3.2, “Controlling Generation for Inversion”].
2. The computer-implemented method of claim 1, further comprising storing the plurality of vectors at a vector store, wherein the query predicate is part of a search performed at the vector store [Morris, pages 12450-12451, § 4, “Experimental Setup”].
3. The computer-implemented method of claim 1, wherein the embedding model comprises a plurality of weights determined according to training data to generate one or more output vectors according to one or more categorical input data, and wherein the inverse embedding model comprises another plurality of weights determined according to the plurality of vectors and the training data to generate one or more categorical output data according to one or more input vectors [Morris, page 12449, § 2, “Overview: Embedding Inversion”, and § 3.1, “Base Model: Learning to Invert ϕ”].
4. The computer-implemented method of claim 1, wherein the input data is textual data, and wherein the embedding model is a large language model [Morris, page 12448, § 1, “Introduction”, first paragraph].
Claims 8-11 recite limitations that correspond to those recited in claims 1-4, respectively, and are rejected for the same reasons discussed above.
Claims 15-17 recite limitations that correspond to those recited in claims 1, 3 & 4, respectively, and are rejected for the same reasons discussed above.
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.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
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.
Claims 5-7, 12-14 & 18-20 are rejected under 35 U.S.C. 103 as being unpatentable over:
(i) “Text Embeddings Reveal (Almost) As Much As Text” by Morris et al. (published in 2023, hereinafter “Morris”) in view of
(ii) “Fast Laplace Approximation for Sparse Bayesian Spike and Slab Models” by Naqvi et al. (published in 2016, hereinafter “Naqvi”).
Morris does not explicitly teach, but Naqvi teaches:
5. The computer-implemented method of claim 1, wherein the similarity function comprises a Bayesian model of a probability that the at least one query vector matches the at least one vector of the plurality of vectors [Naqvi, page 1867, § 1, “Introduction”].
Morris and Naqvi are analogous art because they are in the same field of endeavor, feature modeling. It would have been obvious to one of ordinary skill in the art before the effective filing date of the invention to combine Morris and the probability modeling techniques of Naqvi to improve feature modeling for machine learning applications of data.
The combination of Morris and Naqvi teaches:
6. The computer-implemented method of claim 1, wherein the similarity function comprises an inverse Hessian matrix [Naqvi, page 1869, § 3.2, “Marginal Posterior of Weights”].
7. The computer-implemented method of claim 6, further comprising:
precomputing the inverse Hessian matrix according to the plurality of vectors [Naqvi, page 1869, § 3.2, “Marginal Posterior of Weights”]; and
storing the precomputed inverse Hessian matrix and the plurality of vectors at a vector store [Naqvi, page 1869, § 3.2, “Marginal Posterior of Weights”].
Claims 12-14 recite limitations that correspond to those recited in claims 5-7, respectively, and are rejected for the same reasons discussed above.
Claims 18-20 recite limitations that correspond to those recited in claims 5-7, respectively, and are rejected for the same reasons discussed above.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Scott A. Waldron whose telephone number is (571)272-5898. The examiner can normally be reached Monday - Friday 9:00 am - 5:00 pm.
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, Ajay Bhatia can be reached at (571) 272-3906. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Scott A. Waldron/Primary Examiner, Art Unit 2156