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 .
Remarks
Claims 1-2, 4-7, 9 and 11-24 are pending.
Claim Objections
Claim 14 is objected to because of the following informalities:
As per claim 14, line 4: “selecting one of pieces” should be “selecting one of the pieces” (emphasis added).
Appropriate correction is required.
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 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites “An information processing apparatus comprising: a storage device; one or more memories storing instructions; and one or more processors configured to execute the instructions to: acquire generated data generated by using generative artificial intelligence (AI); acquire generation condition information that is information indicating a generation condition when the generated data is generated, wherein the generation condition information includes a prompt and model identification information; and store, in the storage device, the generated data and the generation condition information in association with each other; select, from the generated data held in the storage device, as generated data recommended for deletion, generated data in which a coincidence degree between the prompt and the model identification information is equal to or less than a threshold; and delete the selected generated data from the storage device while retaining a link to the generation condition information”.
The limitations of “data in which a coincidence degree between the prompt and the model identification information is equal to or less than a threshold; and delete the selected generated data from
This judicial exception is not integrated into a practical application. In particular, the claim recites an additional element – using “an information processing apparatus comprising: a storage device; one or more memories storing instructions; and one or more processors” to perform the claimed steps. The “an information processing apparatus comprising: a storage device; one or more memories storing instructions; and one or more processors” in these steps is recited at a high-level of generality (i.e., as “an information processing apparatus comprising: a storage device; one or more memories storing instructions; and one or more processors” performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using a generic computer component. The claim also recites the additional element of “using generative artificial intelligence (AI)” that is mere instructions to apply an exception. A recitation of the words "apply it" (or an equivalent) are mere instructions to implement an abstract idea or other exception on a computer. (See MPEP 2106.05(f)). The claim also discloses the additional element of “store, in
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, the additional elements of using “an information processing apparatus comprising: a storage device; one or more memories storing instructions; and one or more processors” to perform the claimed steps amounts to no more than mere instructions to apply the exception using a generic computer component. The claim also recites the additional element of “using generative artificial intelligence (AI)” that is mere instructions to apply an exception. A recitation of the words "apply it" (or an equivalent) are mere instructions to implement an abstract idea or other exception on a computer. (See MPEP 2106.05(f)). The claim also discloses the additional element of “store, in
Claim 2 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “information is well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. see MPEP 2106.05(d)(II)(iv). Accordingly, any additional elements 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. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2A, Prong Two. See also MPEP 2106.04(II)(A)(2), MPEP 2106.04(d). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim also discloses the additional element of “stores the generation condition information”, and the courts have recognized that storing information is well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. see MPEP 2106.05(d)(II)(iv). These additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 4 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2A, Prong One. See also MPEP 2106.04(II)(A)(1), 2106.04(a)(2). This judicial exception is not integrated into a practical application. Accordingly, any additional elements 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. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2A, Prong Two. See also MPEP 2106.04(II)(A)(2), MPEP 2106.04(d). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. These additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 5 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “The information processing apparatus according to claim 4, wherein the noise initial value is an initial value of a random number parameter given to the generative Al”. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2A, Prong One. See also MPEP 2106.04(II)(A)(1), 2106.04(a)(2). This judicial exception is not integrated into a practical application. Accordingly, any additional elements 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. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2A, Prong Two. See also MPEP 2106.04(II)(A)(2), MPEP 2106.04(d). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. These additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 6 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2A, Prong One. See also MPEP 2106.04(II)(A)(1), 2106.04(a)(2). This judicial exception is not integrated into a practical application. The claim also discloses the additional element of “transmit the generation condition information”, and the courts have recognized that receiving or transmitting data over a network, e.g., using the Internet to gather data, as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See MPEP 2106.05(d)(II)(i). The claim also recites the additional element of “using the generative Al” that is mere instructions to apply an exception. A recitation of the words "apply it" (or an equivalent) are mere instructions to implement an abstract idea or other exception on a computer. (See MPEP 2106.05(f)). Accordingly, any additional elements 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. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2A, Prong Two. See also MPEP 2106.04(II)(A)(2), MPEP 2106.04(d). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim also discloses the additional element of “transmit the generation condition information”, and the courts have recognized that receiving or transmitting data over a network, e.g., using the Internet to gather data, as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. See MPEP 2106.05(d)(II)(i). The claim also recites the additional element of “using the generative Al” that is mere instructions to apply an exception. A recitation of the words "apply it" (or an equivalent) are mere instructions to implement an abstract idea or other exception on a computer. (See MPEP 2106.05(f)). These additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 7 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2A, Prong Two. See also MPEP 2106.04(II)(A)(2), MPEP 2106.04(d). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. These additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 9 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “MPEP 2106.04(II)(A)(2), MPEP 2106.04(d). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. These additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 11 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “additional elements that are sufficient to amount to significantly more than the judicial exception. These additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 12 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 13 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 14 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “
Claim 15 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “
Claim 16 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “
Claim 17 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “
Claim 18 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “
Claim 19 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “child relationship of a generated data group generated in multi-stage based on the generation condition information”. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2A, Prong One. See also MPEP 2106.04(II)(A)(1), 2106.04(a)(2). This judicial exception is not integrated into a practical application. Accordingly, any additional elements 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. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2A, Prong Two. See also MPEP 2106.04(II)(A)(2), MPEP 2106.04(d). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. These additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 20 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claim recites an abstract idea. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2A, Prong One. See also MPEP 2106.04(II)(A)(1), 2106.04(a)(2). This judicial exception is not integrated into a practical application. The claim also recites the additional elements of “display the generation history map” that are the insignificant extra-solution activity of data gathering and/or output, and can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim (see MPEP 2106.05(g)). Accordingly, any additional elements 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. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2A, Prong Two. See also MPEP 2106.04(II)(A)(2), MPEP 2106.04(d). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. The claim also recites the additional elements of “display the generation history map” that are the insignificant extra-solution activity of data gathering and/or output, and can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim (see MPEP 2106.05(g)). These additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 21 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “solution activity of data gathering and/or output, and can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim (see MPEP 2106.05(g)). These additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 22 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. In addition to any abstract ideas and additional elements in the parent claim(s), the claim recites “claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 23 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites “A method of controlling an information processing apparatus, the method comprising: acquiring generated data generated using generative artificial intelligence (AI); acquiring generation condition information that is information indicating a generation condition when the generated data is generated, wherein the generation condition information includes a prompt and model identification information; storing, in a storage device, the generated data and the generation condition information in association with each other; selecting, from the generated data held in the storage device, as generated data recommended for deletion, generated data in which a coincidence degree between the prompt and the model identification information is equal to or less than a threshold deleting the selected generated data from the storage device while retaining a link to the generation condition information”.
The limitations of “A method of controlling
This judicial exception is not integrated into a practical application. In particular, the claim recites an additional element – using “an information processing apparatus” and “a storage device” to perform the claimed steps. The “information processing apparatus” and “storage device” in these steps is recited at a high-level of generality (i.e., as “an information processing apparatus” and “a storage device” performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using a generic computer component. The claim also recites the additional element of “using generative artificial intelligence (AI)” that is mere instructions to apply an exception. A recitation of the words "apply it" (or an equivalent) are mere instructions to implement an abstract idea or other exception on a computer. (See MPEP 2106.05(f)). The claim also discloses the additional element of “storing, in
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, the additional elements of using “an information processing apparatus” and “a storage device” to perform the claimed steps amounts to no more than mere instructions to apply the exception using a generic computer component. The claim also recites the additional element of “using generative artificial intelligence (AI)” that is mere instructions to apply an exception. A recitation of the words "apply it" (or an equivalent) are mere instructions to implement an abstract idea or other exception on a computer. (See MPEP 2106.05(f)). The claim also discloses the additional element of “storing, in generality) or as insignificant extra-solution activity. see MPEP 2106.05(d)(II)(iv). These additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Claim 24 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim recites “A non-transitory computer-readable storage medium storing a program for causing a computer to execute a method of controlling an information processing apparatus, the method including: acquiring generated data generated using generative artificial intelligence (AI); acquiring generation condition information that is information indicating a generation condition when the generated data is generated, wherein the generation condition information includes a prompt and model identification information; storing, in a storage device, the generated data and the generation condition information in association with each other; selecting, from the generated data held in the storage device, as generated data recommended for deletion, generated data in which a coincidence degree between the prompt and the model identification information is equal to or less than a threshold deleting the selected generated data from the storage device while retaining a link to the generation condition information”.
The limitations of “information indicating a generation condition when the generated data is generated, wherein the generation condition information includes a prompt and model identification information;
This judicial exception is not integrated into a practical application. In particular, the claim recites an additional element – using “a non-transitory computer-readable storage medium”, “a computer”, “an information processing apparatus” and “a storage device” to perform the claimed steps. The “non-transitory computer-readable storage medium”, “computer”, “information processing apparatus” and “storage device” in these steps is recited at a high-level of generality (i.e., as “a non-transitory computer-readable storage medium”, “a computer”, “an information processing apparatus” and “a storage device” performing generic computer functions) such that it amounts no more than mere instructions to apply the exception using a generic computer component. The claim also recites the additional element of “using generative artificial intelligence (AI)” that is mere instructions to apply an exception. A recitation of the words "apply it" (or an equivalent) are mere instructions to implement an abstract idea or other exception on a computer. (See MPEP 2106.05(f)). The claim also discloses the additional element of “storing, in
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, the additional elements of using “a non-transitory computer-readable storage medium”, “a computer”, “an information processing apparatus” and “a storage device” to perform the claimed steps amounts to no more than mere instructions to apply the exception using a generic computer component. These additional elements cannot provide an inventive concept. The claim is not patent eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
Allowable Subject Matter
Claims 1-2, 4-7, 9 and 11-24 are allowable over the prior art but have outstanding 35 USC 101 rejections that must be resolved.
Response to Arguments
Applicant's arguments filed 8/26/2026 with respect to the 35 USC 101 rejections have been fully considered but they are not persuasive.
Applicant argues that the “amended independent claims 1, 23, and 24 do not recite an abstract idea and are patent-eligible at Prong One of Step 2A” because the “recited operations are not independent mental evaluations, but instead form a concrete and interconnected computer storage-management workflow” and further that:
“Specifically, generated data generated using generative AI is associated in the storage device with generation condition information that includes a prompt and model identification information. That generation condition information is used to determine a coincidence degree between the prompt and the model identification information and to select particular generated data as recommended for deletion when the coincidence degree is equal to or less than a threshold. The resulting selection is then used to control which generated data is deleted from the storage device, while a link to the generation condition information associated with the deleted generated data is retained. Thus, the generation condition information is used to control selection of stored generated data, the selection controls deletion from the storage device, and the deletion is performed in a manner that preserves the link to the generation condition information. Each claimed operation is therefore functionally linked to subsequent computer processing and contributes to the management of the storage device.”
(see applicant arguments, pages 9-10).
However, considering the claim as a whole relies on incorporating additional elements identified in the rejections into the portions of the claim that were determined to be the judicial exceptions. For example, the storage device and use of generative AI are mere instructions to apply an exception and implement an abstract idea or other exception on a computer. See (See MPEP 2106.05(f)). In addition, the “store” step was identified in the rejections of record as well-understood, routine, conventional activity claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity. see MPEP 2106.05(d)(II)(iv). Such well-known or generic use of computer components or known technologies are not identified as abstract ideas in the rejections of record. The remaining steps are what are identified as a judicial exception, where the “select” and “delete” steps related to the “generated data” could be performed in the human mind and are therefore properly interpreted in the claim language as abstract steps under Step 2A, Prong One. Therefore, these arguments are not convincing.
Applicant argues “that each of amended independent claims 1, 23, and 24 is patent-eligible under Prong Two of Step 2A because each integrates any such abstract idea into a practical application” because “that the claims provide a technical solution to a technical problem” citing various court decisions (see applicant arguments, pages 11-12). However, to overcome a 35 USC 101 rejection using Step 2A, Prong Two, requires evaluating identified additional elements individually and in combination to determine whether they integrate the judicial exception into a practical application, using one or more of the considerations in MPEP §§ 2106.04(d), 2106.05(a)-(c), (e)-(h). The applicant appears to have only partially addressed these requirements by arguing that there is an improvement to the functioning of a computer under MPEP § 2106.05(a). But these arguments do not address any of the additional elements or how they integrate the judicial exception into a practical application as required. Therefore, these arguments are not convincing.
Further with respect to Step 2A, Prong Two, applicant argues that the “recited operations are related to one another and function together as a specific technical storage-management technique for generative-AI-generated data” and that:
“More specifically, the apparatus stores generated data in association with generation condition information and utilizes the associated generation condition information to determine which generated data should be selected for deletion. The generation condition information includes a prompt and model identification information, and the apparatus evaluates a coincidence degree between the prompt and the model identification information against a threshold. When the coincidence degree is equal to or less than the threshold, the corresponding generated data is selected as generated data recommended for deletion. The selected generated data is then deleted from the storage device while a link to the associated generation condition information is retained. As disclosed in the Specification, the deletion data selection unit determines the quality of generated data based on the prompt and model identification information and selects generated data for deletion when the coincidence degree between the prompt and the model identification information is equal to or less than a threshold. The Specification further discloses deleting the selected generated image data while retaining the link to the generation condition information, thereby permitting the generated data to be regenerated later based on the retained generation condition information. (See, e.g., Spec. [0066], [0069]-[0071], and [0073].)”
(applicant arguments, page 12)
However, the applicant has still not evaluated the additional elements individually and in combination to determine whether they integrate the judicial exception into a practical application as required under Step 2A, Prong Two. The argument that “the apparatus evaluates a coincidence degree between the prompt and the model identification information against a threshold” but any use of an apparatus for evaluation is mere use of generic computer components and does not show an integration. Further, the storage is well-known and use of a storage device for such storage is also mere use of a generic computer component. It is noted that the applicant does identify an alleged improvement of “permitting the generated data to be regenerated later based on the retained generation condition information” identified in the specification. However, MPEP § 2106.05(a) requires that the specification include a technical explanation of an asserted improvement and that the claim reflects the particular way of achieving that improvement. Since there is nothing related to permitting regeneration later, as argued by the applicant, the claim does not reflect a particular way of achieving the improvement as required. Therefore, these arguments are not convincing.
Further with respect to Step 2A, Prong Two, applicant argues that:
“By utilizing generation condition information including a prompt and model identification information to selectively identify generated data for deletion, deleting the selected generated data from the storage device, and retaining a link to the associated generation condition information, the claimed invention reduces storage usage while preserving information that enables continued reference to the generation conditions and subsequent regeneration of the deleted generated data. (See, e.g., Spec. 1 [0061]-[0062] and [0072]-[0074].)”
(see applicant arguments, pages 12-13).
As answered previously, MPEP § 2106.05(a) requires that the specification include a technical explanation of an asserted improvement and that the claim reflects the particular way of achieving that improvement. Since there is nothing in the claim related to subsequent regeneration the claim does not reflect a particular way of achieving the improvement as required. Therefore, this argument is not convincing.
With respect to Step 2B applicant argues that:
“Moreover, the claims recite a specific ordered combination in which generation condition information including a prompt and model identification information is associated with generated data held in a storage device, a coincidence degree between the prompt and model identification information is evaluated against a threshold to select particular generated data recommended for deletion, the selected generated data is deleted from the storage device, and a link to the associated generation condition information is retained. Considered as a whole, this claimed combination amounts to significantly more than any alleged abstract idea. This ordered combination is not merely insignificant extra- solution activity. Rather, the threshold-based selection, deletion of the selected generated data from the storage device, and retention of the link to the associated generation condition information define the particular manner in which the claimed apparatus manages storage resources for generative-AI-generated data. Thus, when considered individually and as an ordered combination, the recited limitations amount to significantly more than any alleged abstract idea.”
(see applicant arguments, pages 13-14).
However, Step 2B requires re-evaluating any additional element or combination of elements that was considered to be insignificant extra-solution activity, and if such reevaluation finds that the element is unconventional or otherwise more than well-understood, routine conventional activity (WURC), this finding may indicate that the additional element is significantly more than the abstract idea. See MPEP §2106.05. Since the applicant has not undertaken a re-evaluation, their arguments are not convincing.
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 JAY A MORRISON whose telephone number is (571)272-7112. The examiner can normally be reached on Monday - Friday, 8:00 am - 4:00 pm ET.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Trujillo K James, can be reached at telephone number (571)272-3677. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Jay A Morrison/
Primary Examiner, Art Unit 2151
