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 .
Status of Claims
In the amendment filed 08/18/2026 the following occurred: Claims 36-39, 43, and 46 were amended; and Claims 51-53 were added as new. Claims 36-46 and 51-53 are presented for examination.
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 36-46 and 51-53 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.
Step 1
Claims 36-46 and 51-53 are drawn to a system and a method, which is/are statutory categories of invention (Step 1: YES).
Step 2A Prong One
Independent claim 36 recites b) responsive to determining that the endorsement inputs associated with a nominated source material satisfy a predefined quorum, transform the nominated source material into a machine-readable training record by standardizing and tokenizing content of the nominated source material into a structured, machine-readable format, the machine-readable training record comprising attribution metadata linking the machine-readable training record to the nominated source material and to citations of the nominated source material; c) verify that the attribution metadata and citations of the machine-readable training record are tracked in a changelog, e) receive one or more healthspan queries; f) process said one or more healthspan queries to generate one or more answers, each answer comprising one or more machine-verifiable citations, generated from the attribution metadata, to one or more of the verified machine-readable training records; and g) display said one or more answers and said one or more citations to a user.
Independent claim 46 recites responsive to determining that the endorsement inputs associated with a nominated source material satisfy a predefined quorum, transforming the nominated source material into a machine-readable training record by standardizing and tokenizing content of the nominated source material into a structured, machine-readable format, the machine-readable training record comprising attribution metadata linking the machine-readable training record to the nominated source material and to citations of the nominated source material; verifying that the attribution metadata and citations of the machine-readable training record are tracked in a changelog; receiving one or more healthspan queries; processing said one or more healthspan queries to generate one or more answers, each answer comprising one or more machine-verifiable citations, generated from the attribution metadata, to one or more of the verified machine-readable training records; and displaying said one or more answers and said one or more citations to a user.
The respective dependent claims 37-45 and 51-53, but for the inclusion of the additional elements specifically addressed below, provide recitations further limiting the invention of the independent claim(s).
Said above recited limitations, as drafted, under their broadest reasonable interpretation, cover certain methods of organizing human activity, as reflected in the specification, which states the invention is to “generate actionable interventions…to increase healthspan” (see: specification page 1, lines 5-6) for to “facilitate the generation of more accurate, trustworthy, actionable, and sustainable decision support guidance” (see: specification page 1, lines 27-28). If a claim limitation, under its broadest reasonable interpretation, covers managing personal behavior or relationships or interactions between people, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. The present claims cover certain methods of organizing human activity because they address a problem where, “[w]hile many factors associated with healthspan have been carefully studied, such as diet, smoking avoidance, sleep quality, and social connections, there are innumerable individual factors that contribute in complex and interactive ways to well-being and lifespan”, where there is a need “to better understand, prioritize, manage, and take action on the factors that contribute to and achieve both longevity and healthspan” (see: specification page 1, lines 17-22). The specification states that “Artificial intelligence (AI) and machine learning (ML) offer the promise of faster results and the recognition of previously unappreciated complex correlations between variables” but “are limited by the quality of information used to train them” where “gaps or inaccuracies in their training data may notoriously "hallucinate," or fail to produce output at all” (see: specification page 7, line 29, through page 9, line 6). To address these deficiencies, the invention provides “one or more levels of expert curation to manage information content used in AI system training” such as “to allow only authenticated and verified users ("curators") to select, upload, ingest, edit, and update content…into a database or knowledge base accessible by a generative AI inference system…, an AI language model training database, or the like” (see: specification page 7, lines 14-24). Accordingly, the claims recite an abstract idea(s) (Step 2A Prong One: YES).
Step 2A Prong Two
This judicial exception is not integrated into a practical application. The claims are abstract but for the inclusion of the additional elements including an “the system comprising a computer processor and memory storing instructions that, when executed by the computer processor, cause the system to:…by an automated quality control subsystem…by the automated quality control subsystem…d) train an artificial intelligence (AI) component using the verified machine-readable training records of the curated training database;…with the trained AI component…” (claim 36), “wherein the curated training database comprises…” (claim 37), “wherein the curated training database comprises…” (claim 38), “wherein the curated training database comprises…” (claim 39), “by the computer system…by an automated quality control subsystem of the computer system…by the automated quality control subsystem…training, by the computer system, an artificial intelligence (AI) component using the verified machine-readable training records of the curated training database;…by the computer system…by the computer system…with the trained AI component…by the computer system…” (claim 46), “in the curated training database…retrain or refine the AI component using the curated training database as updated” (claim 52), and “wherein the trained AI component is configured to…the curated training database” (claim 53) which are additional elements that are recited at a high level of generality (e.g., the “the system comprising a computer processor and memory” is configured through no more than a statement than that said memory is for “storing” instructions that are “executed” by said processor; the “automated quality control subsystem” is configured through no more than a statement than that functions are performed “by” said subsystem; the “artificial intelligence (AI) component” is implemented through no more than a statement than that functions are performed as “configured to” or “with” said AI component, which is trained “using” desired training records, including to retain and refine said AI component; the “curated training database” is configured through no more than a statement than that it is to “store” records such that it “comprises” said records; the “computer system” is configured through no more than a statement than that functions are performed “by” said computer system; the “automated quality control subsystem” is configured through no more than a statement that that it is “of” the computer system and its functions are performed “by” said subsystem) such that they amount to no more than mere instruction to apply the exception using generic computer elements. See: MPEP 2106.05(f).
The claims recite the additional elements of “a) receive, through an access-controlled curation interface, (i) nominated source materials and (ii) endorsement inputs, wherein each endorsement input is received from a distinct authenticated curator account and is associated with one of the nominated source materials;…and store the verified machine-readable training record in a curated training database, the curated training database comprising verified machine-readable training records for three or more topics selected from atherosclerosis, cancer, neurodegenerative diseases, infectious disease, metabolic syndrome, sarcopenia/orthopedic, violence, lower respiratory disease, despair, maternal morbidity and mortality, menopause, testosterone imbalances, kidney disease, liver disease, accidents and injuries, and geographic place factors;” (claim 36), “the access-controlled curation interface…” (claim 43), and “receiving, by a computer system through an access-controlled curation interface, (i) nominated source materials and (ii) endorsement inputs, wherein each endorsement input is received from a distinct authenticated curator account and is associated with one of the nominated source materials;…and storing the verified machine-readable training record in a curated training database, the curated training database comprising verified machine-readable training records for three or more topics selected from atherosclerosis, cancer, neurodegenerative diseases, infectious disease, metabolic syndrome, sarcopenia/orthopedic, violence, lower respiratory disease, despair, maternal morbidity and mortality, menopause, testosterone imbalances, kidney disease, liver disease, accidents and injuries, and geographic place factors” (claim 46), which are nominal or tangential addition to the abstract idea(s) and amount to extra-solution activity concerning mere data gathering and storage. The addition of an insignificant extra-solution activity limitation does not impose meaningful limits on the claim such that it is not nominally or tangentially related to the invention. In the claimed context, these claimed additional elements are incidental to the performance of the recited abstract idea(s) as outlined in the recitations above. See: MPEP 2106.05(g).
The combination of these additional elements is no more than mere instructions to apply the exception using generic computer elements and limitations directed toward extra-solution activity. Accordingly, even in combination, these additional elements do not integrate the abstract idea(s) into a practical application because they do not impose any meaningful limits on practicing the abstract idea(s). Accordingly, the claims are directed to an abstract idea(s) (Step 2A Prong Two: NO).
Step 2B
The claims do 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(s) into a practical application, using the additional elements to perform the abstract idea(s) amounts to no more than mere instructions to apply the exception using generic elements. Mere instructions to apply an exception using generic elements cannot provide an inventive concept. See MPEP 2106.05(f).
The claimed additional elements directed toward extra-solution activity, identified above, are not sufficient to amount to significantly more than the judicial exception because they are representative of concepts identified by the courts to be extra-solution activity and/or to perform well-understood, routine, and conventional activities previously known to the industry. The claims include limitations to receiving nominated source materials and endorsement inputs through an access-controlled curation interface, which are representative of concepts to electronic recordkeeping (Alice Corp. Pty. Ltd. v. CLS Bank Int'l; Ultramercial), restricting public access (Ultramercial), and receiving or transmitting data over a network such as by using the Internet to gather data or sending messages over a network (Symantec; TLI Communications LLC v. AV Auto. LLC; OIP Techs., Inc., v. Amazon.com, Inc.; buySAFE, Inc. v. Google, Inc.). The claims further include limitations to storing the verified machine-readable training record in a curated training database, which are representative of concepts to storing and retrieving information in memory (Versata Dev. Group, Inc. v. SAP Am., Inc.) and/or electronic recordkeeping (Alice Corp. Pty. Ltd. v. CLS Bank Int'l; Ultramercial). See: MPEP 2106.05(d)(II) and MPEP 2106.05(g).
The claimed additional elements directed to pre-solution activity, identified above, each amount to extra-solution activity and/or do not provide anything other than well‐understood, routine, and conventional functions when claimed in a merely generic manner (as they are presently). Viewing the limitations as an ordered combination, the claims simply instruct the additional elements to implement the concept described above in the identification of abstract idea(s) with routine, conventional activity specified at a high level of generality in a particular technological environment. Hence, the claims as a whole, considering the additional elements individually and as an ordered combination, do not amount to significantly more than the abstract idea(s) (Step 2B: NO).
Dependent claim(s) 37-45 and 51-53, when analyzed as a whole, considering the additional elements individually and/or as an ordered combination, are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea(s) without significantly more. These claims fail to remedy the deficiencies of their parent claims above and are therefore rejected for at least the same rationale as applied to their parent claims above and incorporated herein.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 36-46 and 51-53 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor, or for pre-AIA the applicant regards as the invention.
As per claim 36, the claimed “artificial intelligence (AI) component” is understood to not invoke 35 U.S.C. 112(f), but includes the nonce term “component” such that the limitation fails to provide sufficient structure, material, or acts within the claim itself to entirely perform the recited function. It is argued that “as amended, claim 36 recites the AI component together with sufficient structure and operational detail, a computer processor and memory storing instructions, a curated training database of verified machine-readable training records, and the specific acts of training the AI component on those records and generating citation-bearing answers therefrom, such that the claim connotes definite structure to a person of ordinary skill and does not recite a purely functional "nothing more than" limitation.” But this renders it further unclear as to what constitutes the “artificial intelligence (AI) component” as elements such as the “computer processor and memory storing instructions, a curated training database of verified machine-readable training records” are separately claimed from the AI component. Further, it is self-referentially argued that the AI component is “the specific acts of training the AI component on those records and generating citation-bearing answers therefrom”, which is a logical tautology that fails to particularly point out the AI component. Claim 46 is rejected for similar reasons.
The remaining claims depend from and incorporate the rejected base claims addressed above and are rejected for similar reasons.
Response to Arguments
Applicant’s arguments from the response filed on 08/18/2026 have been fully considered and will be addressed below in the order in which they appeared.
In the remarks, Applicant argues in substance that (1) the 35 U.S.C. 101 rejection should be withdrawn in view of the amendments because “Applicant respectfully submits that the Office Action arrived at its abstract idea characterization only by describing the invention at an impermissibly high level of abstraction. The Office Action derived the alleged abstract idea from the specification's statement of the invention's purpose, to "generate actionable interventions" and "increase healthspan", rather than from what the claims actually recite. A claim's eligibility must be assessed against "the language of the [claim] itself," not against a distillation of the field or objective the invention serves; describing a claim at a high level of generality untethered from its actual limitations "all but ensures that the exceptions to § 101 swallow the rule." See Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1337 (Fed. Cir. 2016); TecSec, Inc. v. Adobe Inc., 978 F.3d 1278, 1293 (Fed. Cir. 2020); MPEP § 2106.04(a) (Step 2A analysis is anchored to the specific claim limitations, not the invention's general purpose). The purpose of an invention is not its claim. Every patentable advance has a real-world objective, and identifying that objective does not establish that the claim is directed to it. Measured against its actual limitations rather than its purpose, amended claim 36 recites no management of personal behavior and no interpersonal interaction. It recites a specific, computer-implemented workflow: receiving nominated source materials and per-account endorsement inputs through an access-controlled curation interface; conditioning ingestion on satisfaction of a predefined quorum; transforming endorsed source material into a standardized, tokenized, machine-readable training record bearing attribution metadata; verifying that metadata and citations against a changelog; storing verified records in a curated training database; training an AI component on those records; and generating answers that each carry machine-verifiable citations derived from the attribution metadata. These are operations on machine-maintained data structures within a computer system, not steps that a person performs, and not the organization of human activity. Claims of this character, directed to a particular technique for building and operating a computerized system, are not abstract. See Enfish, 822 F.3d at 1335-36; McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016) (claims reciting a specific technological process for producing a result are not directed to an abstract idea merely because they can be described at a high level).”
The Examiner respectfully disagrees. Applicant’s arguments are not persuasive.
The rejection is structured such that the recitations of what is considered abstract (the abstract limitations without the additional elements) are specifically indicated in detail and is then followed by an exploration of how and why the recited limitations are considered abstract. To identify the limitations as evidence of their own abstractness would be improper circular reasoning and the invention must be understood in view of the specification as commonly instructed by the courts (the claim language itself as indicated in the recitations against the specification). Specification page 1, lines 5-6, is cited as evidence because it explicitly indicates the “FIELD” of the invention and states the invention is to “generate actionable interventions…to increase healthspan.” And specification page 1, lines 27-28, is cited as evidence because it explicitly indicates the invention “SUMMARY” and indicates the invention is for to “facilitate the generation of more accurate, trustworthy, actionable, and sustainable decision support guidance.” The rejection goes on to indicate exactly which of the enumerated sub-groupings the claims represent (managing personal behavior or relationships or interactions between people) and provides evidence from the specification as to how the recited limitations represent said enumerated sub-grouping by investigating the problem with which the inventors were concerned and the stated manner in which the invention addresses said problem. Several argued elements, such as the “computer” and “AI component”, are not indicated as being abstract and are instead addressed in the rejection as an additional element.
Enfish warned against describing a claim at a high level of abstraction untethered from the language of the claim. The argument characterizes this as an “an impermissibly high level of abstraction” but this argument cannot be applied to the present rejection or the conclusions in the Enfish decision. Identification of abstract are directly reflective of the claim language. A review of the specification shows that they reflect what Applicant considers the invention. The arguments appear to indicate that since the entire claim was not quoted as representing the abstract idea, the identification of the abstract idea has been overly generalized. A quick review of the Alice and Enfish, or any other decisions regarding this topic, will show this not to be the case. Such a rejection would most likely be improper because the claims include additional elements in addition to the abstract idea – this is explicitly acknowledged and addressed in the rejection analysis.
As per Enfish, it is unclear from the arguments what the additional elements in the claims are believed to either show the claimed idea is not abstract or somehow amounts to significantly more. The claims of Enfish were directed to a specific improvement to computer functionality by describing a specific type of data structure designed to improve the way a computer stores and retrieves data in memory, where the specific data structure in question was a self-referential table that functions differently than convention data structures by storing all entity types in a single table defining the table's columns by rows in that same table. The present claims are directed to “responding to healthspan queries” (preamble of claim 36) and do not recite comparable features to that of Enfish.
As per McRO, the basis for the McRO court's decision was that the claims were directed to an improvement in computer-related technology (allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters" that previously could only be produced by human animators) and thus did not recite a concept similar to identified abstract idea. There is no such application of responding to healthspan queries claimed here to compare with animated lip synchronization claimed in McRO.
In the remarks, Applicant argues in substance that (2) the 35 U.S.C. 101 rejection should be withdrawn in view of the amendments because, “[e]ven if any recited concept were deemed a judicial exception, the amended claims integrate it into a practical application by reciting a technical improvement to the functioning of AI systems themselves. The specification frames the problem in expressly technical terms: AI and machinelearning systems "are limited by the quality of information used to train them," such that "gaps or inaccuracies in their training data" cause the systems to "hallucinate, or fail to produce output at all." The claimed pipeline is the technical solution to that technical problem. The quorum-gated ingestion, the automated transformation into attribution-bearing training records, the changelog verification, and the generation of machine-verifiable citations for each answer are not generic recitations. They constrain what enters the training corpus and make each answer traceable to a verified source. That is an improvement to the reliability and verifiability of the computer-implemented AI system: a paradigmatic Prong Two consideration under MPEP § 2106.04(d)(l) and§ 2106.05(a). See Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299 (Fed. Cir. 2018); Uniloc USA, Inc. v. LG Elecs. USA, Inc., 957 F.3d 1303 (Fed. Cir. 2020). The claims are also confined to a particular technological implementation rather than the broad idea of "curating information." They require an access-controlled curation interface, distinct authenticated curator accounts, a specific quorum-conditioned transformation performed by an automated quality-control subsystem, and citation generation from record-level attribution metadata. These meaningful limitations foreclose the concern that the claims preempt the field…Applicant further submits that the amended claims define a specific technological workflow and new, machine-maintained data structures, not human review or the organization of information. The claim does not recite people reading, discussing, and approving documents. It recites a machine receiving structured endorsement inputs bound to authenticated accounts, a machine evaluating those inputs against a predefined quorum condition, an automated quality control subsystem transforming source material into a standardized, tokenized, machine-readable training record, and the machine binding attribution metadata to that record and verifying it against a changelog. The "machine-readable training record," the "curated training database" of verified records, the "attribution metadata" linking each record to its source and citations, and the "changelog" are data structures created and maintained by the computer, and the recited operations are performed on them by the computer. Steps of this kind, tokenizing content into a structured machine-readable format and generating machine-verifiable citations from record-level metadata, cannot be performed in the human mind or with pen and paper, which confirms the claims are not directed to a mental process or a method of organizing human activity…That the workflow may be informed by, or substitute for, prior expert review does not render it abstract. McRO makes clear that automating a result through a specific technological process, rather than by claiming the result itself, is eligible. 837 F.3d at 1314.”
The Examiner respectfully disagrees. Applicant’s arguments are not persuasive.
That “claimed pipeline is the technical solution to [the] technical problem” of AI and machine-learning systems being “limited by the quality of information used to train them” may contribute to solving a problem, but the problem is not a technological problem that provides a practical application as argued. The claims are broadly to a workflow, and though there may be practical application and associated additional elements present in the specification that address a particular technological problem encountered when implementing said workflow, such has not yet been claimed. That, as argued, the claims contribute to addressing “gaps or inaccuracies in their training data” is an abstract solution to this to this abstract problem at the high level currently claimed.
The functions argued, such as “access-controlled”, “distinct authenticated curator accounts”, “a specific quorum-conditioned transformation”, and “citation generation from record-level attribution metadata” are representative of the abstract idea. The claims here are not directed to a specific improvement to computer functionality that amount to a practical application. Rather, they are directed to the use of conventional or generic technology in a well-known environment, without any claim that the invention reflects an inventive solution to a technical problem presented by combining the two. In the present case, the claims fail to recite any elements that individually or as an ordered combination transform the identified abstract idea(s) in the rejection into a patent-eligible application of that idea.
It is inconsequential as to whether humans are present in the claims – Step 1 of the analysis makes clear that the inventions are not to “people reading, discussing, and approving documents”, as argued. But this does not preclude abstract limitations from being present in the claims and the claims being directed toward certain methods of organizing human activity. For example, in the Office provided July 2018 Eligibility Quick Reference Sheet Identifying Abstract Ideas (and in an Office memo), the BASCOM decision – which is not drawn to a human and does not require a human – is listed as having limitations under “Certain Methods of Organizing Human Activity”. Please also see MPEP 2106.04(a)(2) Part (II) for more clarity on this issue. See also the claims of Alice v CLS Bank itself. Further, computer implementation and data intensiveness does not preclude a process from being abstract. The Electric Power Group (EPG) decision, for example, involved detecting events on an interconnected electric power grid in real time over a wide area and automatically analyzing the events on the interconnected electric power grid was found abstract for collecting information, analyzing it, and displaying certain results of the collection and analysis. The claims in EPG were found to be abstract nonetheless.
As per McRO, as discussed above, McRO did include abstract limitations, but also provided a practical application of such in the form of an improvement in computers produce "accurate and realistic lip synchronization and facial expressions in animated characters", but there is no such application of responding to healthspan queries claimed here to compare with animated lip synchronization claimed in McRO.
In the remarks, Applicant argues in substance that (3) the 35 U.S.C. 101 rejection should be withdrawn in view of the amendments because, “[t]he Office Action's Step 2B analysis treated the limitations as generic computer components applying an idea. It did not evaluate them as an ordered combination, as Bascom requires. See BASCOM Global Internet Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341, 1349-50 (Fed. Cir. 2016) (an inventive concept can reside in the non-conventional and non-generic arrangement of known components, even where the components are individually known). Considered as an ordered combination, the claimed sequence is itself the technological solution. The stages build on one another in a specific order, and the order is what produces trustworthy, traceable AI output:…This closed-loop architecture, admission control, then validation, then metadata-bound transformation, then integrity verification, then corpus construction, then training, then provenance-linked output, is a specific, non-conventional arrangement directed to the technical problem of unreliable, unverifiable AI training data. It is not the routine or conventional use of a computer to perform an idea. It is a technological improvement in how a computer-implemented AI system assembles its training corpus and substantiates its outputs. See BASCOM, 827 F.3d at 1350; DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258-59 (Fed. Cir. 2014). No single limitation, and certainly not their specific arrangement, is shown by the Office Action to be well-understood, routine, or conventional. The Office Action provided no factual findings under Berkheimerv. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), to support a conclusion of conventionality, as MPEP § 2106.05(d) requires. A conclusory assertion that the elements are generic is insufficient. Withdrawal of the § 101 rejection is respectfully requested...”
The Examiner respectfully disagrees. Applicant’s arguments are not persuasive.
Step 2B was and is performed as part of the analysis above. In BASCOM, the inventive concept was found in the non-conventional and non-generic arrangement of the additional elements, i.e., the installation of a filtering tool at a specific location, remote from the end-users, with customizable filtering features specific to each end user. Many of the functions argued are representative of the abstract idea, but considering together with the additional elements as an ordered combination does not elevate the technology of the invention beyond the generic. For example, the “the system comprising a computer processor and memory” is configured through no more than a statement than that said memory is for “storing” instructions that are “executed” by said processor, which in ordered combination with the abstract functions of the instructions the processor is instructed to perform amounts to no more than mere instruction to apply the exception using generic computer elements. Further, the “artificial intelligence (AI) component” is implemented through no more than a statement than that functions are performed as “configured to” or “with” said AI component, which is trained “using” desired training records, including to retain and refine said AI component. The current claims were considered as a whole and no such arrangement was found to be similarly non-generic as per BASCOM. As shown in the rejection above, when applying the Supreme Court’s two-part framework as set forth in Alice Corp., the claims are drawn to an abstract idea without significantly more.
As per further arguments concerning establishing what is well-understood, routine, and conventional as per the Berkheimer memo, such establishment is only required in instances in which there is claimed extra-solution activity, which there were previously no elements of extra-solution activity currently claimed, though there is now. The generic claiming of additional elements not involving extra-solution activity represents no more than mere instructions to apply the exception using generic computer elements. For example, “the system comprising a computer processor and memory” is configured through no more than a statement than that said memory is for “storing” instructions that are “executed” by said processor, and as such amounts to no more than mere instruction to apply the exception to the data using generic computer elements per MPEP 2106.05(f). No fact finding per Berkheimer is required for this analysis. Now, per extra-solution activity and Berkheimer, facts are required to demonstrate that such limitations are well-understood, routine, and conventional, and Berkheimer provides that such evidence may be a “citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).” Corresponding analysis and citations have been provided in the rejection above.
In the remarks, Applicant argues in substance that (4) the 35 U.S.C. 112(f) interpretation should be withdrawn because “Applicant respectfully submits that the present claims do not invoke § 112(±). The claim terms do not use the word "means" (or "step for"), so the rebuttable presumption against § 112(±) applies. Moreover, as amended, claim 36 recites the AI component together with sufficient structure and operational detail, a computer processor and memory storing instructions, a curated training database of verified machine-readable training records, and the specific acts of training the AI component on those records and generating citation-bearing answers therefrom, such that the claim connotes definite structure to a person of ordinary skill and does not recite a purely functional "nothing more than" limitation…”
The interpretation is withdrawn, but the arguments and substantial amendments have necessitated a 35 U.S.C. 112(b) rejection – see above.
In the remarks, Applicant argues in substance that (5) the 35 U.S.C. 103 rejections should be withdrawn in view of the amendments because “C. The cited art does not teach transformation into attribution-bearing, changelog-verified training records. Claim 36 further requires transforming the endorsed source material, by an automated quality-control subsystem, into a standardized, tokenized, machine-readable training record comprising attribution metadata that links the record to the source material and to its citations, and verifying that the attribution metadata and citations are tracked in a changelog before the record is stored. Neither Ban nor Cellerino is shown to transform endorsed source materials into attribution bearing training records, and neither verifies such metadata against a changelog. Ban's population tables and Cellerino's biological reference datasets are not document-level training records carrying per-record source attribution.”
Many of the arguments with regard to the prior art are not fully convincing; however, the rejections are withdrawn in view of the amendments for at least the reasons argued here.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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.
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/ROBERT A SOREY/ Primary Examiner, Art Unit 3682
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