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 1-24 are pending.
Claim Objections
Claim 1 is objected to because of the following informalities:
As per claim 1, line 3: “AI” should be “artificial intelligence (AI)”.
Appropriate correction is required.
Claim Interpretation
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: “an acquisition unit configured to acquire generated data”, “an information acquisition unit configured to acquire generation condition information”, “a storage unit configured to store the generated data” in claim 1; “a determination unit configured to determine” in claim 6; “a selection unit configured to select generated data” in claim 8; “a map generation unit configured to generate a generation history map” in claim 19; “a display unit configured to display” in claims 20 and 21.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
If applicant does not intend to have this/these limitation(s) interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, applicant may: (1) amend the claim limitation(s) to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph (e.g., by reciting sufficient structure to perform the claimed function); or (2) present a sufficient showing that the claim limitation(s) recite(s) sufficient structure to perform the claimed function so as to avoid it/them being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph.
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.
Claim 2 is 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 2 is directed to storing “the generation condition information in an identical data file to a data file that stores the generated data” (emphasis added) however one of skill in the art would know that an identical data file would be a file with identical contents, which is not possible since the “generation condition information” would necessarily be different from the “generated data” described in the claim. The specification contains the same language as the claim in paragraph [0044]. Therefore, it is not clear how this claim language would be possible and therefore the claim is rejected as being indefinite.
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: an acquisition unit configured to acquire generated data generated by using generative Al; an information acquisition unit configured to acquire generation condition information that is information indicating a generation condition when the generated data is generated; and a storage unit configured to store the generated data and the generation condition information in association with each other”.
The limitations of “An information processing apparatus comprising: an acquisition unit configured to acquire generated data generated by
This judicial exception is not integrated into a practical application. In particular, the claim recites an additional element – using “an information processing apparatus” to perform the claimed steps. The “information processing apparatus” in these steps is recited at a high-level of generality (i.e., as “an information processing apparatus” 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 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)). The claim also discloses the additional element of “store the generated data and 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). Accordingly, these 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. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using “an information processing apparatus” 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 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)). The claim also discloses the additional element of “store the generated data and 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 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 “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 3 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 “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 discloses the additional element of “stores the generated data”, 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). 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 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 “a sampling method, a sampling step, and model identification 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 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 “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 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 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 8 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 “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 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 “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 10 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 “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 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 “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 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 “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 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 “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 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 “eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
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 “eligible. See 2019 Revised Patent Subject Matter Eligibility Guidance, Step 2B. See also MPEP 2106.05.
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 “
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 “to
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 “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 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 “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 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 Al; acquiring generation condition information that is information indicating a generation condition when the generated data is generated; and storing the generated data and the generation condition information in association with each other”.
The limitations of “A method of controlling 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. In particular, the claim recites an additional element – using “an information processing apparatus” to perform the claimed steps. The “information processing apparatus” in these steps is recited at a high-level of generality (i.e., as “an information processing apparatus” 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 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)). The claim also discloses the additional element of “storing the generated data and 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). Accordingly, these 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. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of using “an information processing apparatus” 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 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)). The claim also discloses the additional element of “storing the generated data and 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 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 Al; acquiring generation condition information that is information indicating a generation condition when the generated data is generated; and storing the generated data and the generation condition information in association with each other”.
The limitations of “
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” and “an information processing apparatus” to perform the claimed steps. The “non-transitory computer-readable storage medium” and “information processing apparatus” in these steps is recited at a high-level of generality (i.e., as “a non-transitory computer-readable storage medium” and “an information processing apparatus” 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 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)). The claim also discloses the additional element of “storing the generated data and 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). Accordingly, these 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. 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” and “an information processing apparatus” 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 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)). The claim also discloses the additional element of “storing the generated data and 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 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)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 21-24 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330).
As per claim 1, RISCUTIA teaches
An information processing apparatus comprising: (see abstract and background)
an acquisition unit configured to acquire generated data generated by using generative Al; (response to prompt generated by generative AI model, paragraphs [0036]-[0038])
an information acquisition unit configured to acquire generation condition information that is information indicating a generation condition when the generated data is generated; (prompts input by user, paragraphs [0036]-[0037], where prompts reads on generation condition information)
and a storage unit configured to store the generated data and the generation condition information in association with each other. (prompt and response saved in AI notebook, where notebook stores prompts and responses as clear pairings, paragraph [0039])
As per claim 21, RISCUTIA teaches
a display unit configured to display the generated data and the generation condition information. (user can revisit past interactions including specific prompts and generated outputs/responses, paragraph [0039], where user revisiting reads on displaying)
As per claim 22, RISCUTIA teaches
the generated data includes a text, an image, a moving image, an audio, or a 3D model generated by the generative Al. (paragraph [0037] & table 1)
As per claim 23,
This claim is rejected on grounds corresponding to the reasons given above for rejected claim 1 and is similarly rejected.
As per claim 24,
This claim is rejected on grounds corresponding to the reasons given above for rejected claim 1 and is similarly rejected.
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.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claims 8 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330) in view of Jablonski et al. (‘Jablonski’ hereinafter) (Patent Number 12626255).
As per claim 8,
RISCUTIA does not explicitly indicate “a selection unit configured to select generated data recommended for deletion from the generated data held in the storage unit; and a deletion unit configured to delete the generated data selected by the selection unit while retaining a link to the generation condition information”.
However, Jablonski discloses “a selection unit configured to select generated data recommended for deletion from the generated data held in the storage unit; and a deletion unit configured to delete the generated data selected by the selection unit while retaining a link to the generation condition information” (column 16, lines 40-60).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA and Jablonski because using the steps claimed would have given those skilled in the art the tools to improve the invention by saving resources by not saving undesirable information. This gives the user the advantage of more efficient use of expensive resources.
As per claim 18,
RISCUTIA does not explicitly indicate “the selection unit does not select, as the generated data recommended for deletion, generated data that is source data of a predetermined number or more of generated data”.
However, Jablonski discloses “the selection unit does not select, as the generated data recommended for deletion, generated data that is source data of a predetermined number or more of generated data” (column 16, lines 40-60).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA and Jablonski because using the steps claimed would have given those skilled in the art the tools to improve the invention by saving resources by not saving undesirable information. This gives the user the advantage of more efficient use of expensive resources.
Claims 2-3 are rejected under 35 U.S.C. 103 as being unpatentable over RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330) in view of Jindra et al. (‘Jindra’ hereinafter) (Publication Number 20190392007).
As per claim 2,
RISCUTIA does not explicitly indicate “the storage unit stores the generation condition information in an identical data file to a data file that stores the generated data”.
However, Jindra discloses “the storage unit stores the generation condition information in an identical data file to a data file that stores the generated data” (paragraph [0038], where databases would be the same file type).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA and Jindra because using the steps claimed would have given those skilled in the art the tools to improve the invention by optimizing the search process for future searches (see Jindra, paragraph [0038]). This gives the user the advantage of more efficient use of expensive resources.
As per claim 3,
RISCUTIA does not explicitly indicate “the storage unit links the generated data and the generation condition information on another apparatus, and stores the generated data and the generation condition information in different databases from each other”.
However, Jindra discloses “the storage unit links the generated data and the generation condition information on another apparatus, and stores the generated data and the generation condition information in different databases from each other” (save criteria and results in a database where the results can be in a separate database, paragraphs [0037]-[0038]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA and Jindra because using the steps claimed would have given those skilled in the art the tools to improve the invention by optimizing the search process for future searches (see Jindra, paragraph [0038]). This gives the user the advantage of more efficient use of expensive resources.
Claims 4-5 are rejected under 35 U.S.C. 103 as being unpatentable over RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330) in view of Basu et al. (‘Basu’ hereinafter) (Publication Number 20250131528).
As per claim 4,
RISCUTIA does not explicitly indicate “the generation condition information includes at least one of a prompt, a negative prompt, a noise initial value, a CFG scale, a sampling method, a sampling step, and model identification information”.
However, Basu discloses “the generation condition information includes at least one of a prompt, a negative prompt, a noise initial value, a CFG scale, a sampling method, a sampling step, and model identification information” (paragraph [0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA and Basu because using the steps claimed would have given those skilled in the art the tools to improve the invention by improving the overall quality of the image at desire resolutions (see Basu, paragraphs [0092]-[0094]). This gives the user the advantage of better generated results.
As per claim 5,
RISCUTIA does not explicitly indicate “the noise initial value is an initial value of a random number parameter given to the generative Al”.
However, Basu discloses “the noise initial value is an initial value of a random number parameter given to the generative Al” (paragraph [0024]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA and Basu because using the steps claimed would have given those skilled in the art the tools to improve the invention by improving the overall quality of the image at desire resolutions (see Basu, paragraphs [0092]-[0094]). This gives the user the advantage of better generated results.
Claim 6 is rejected under 35 U.S.C. 103 as being unpatentable over RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330) in view of Cooper (Publication Number 20260048329).
As per claim 6,
RISCUTIA does not explicitly indicate “a determination unit configured to determine whether or not the generated data needs to be acquired again; and a transmission unit configured to transmit the generation condition information to a generation apparatus configured to perform generation using the generative Al in a case where the determination unit determines that the generated data needs to be acquired again”.
However, Cooper discloses “a determination unit configured to determine whether or not the generated data needs to be acquired again; and a transmission unit configured to transmit the generation condition information to a generation apparatus configured to perform generation using the generative Al in a case where the determination unit determines that the generated data needs to be acquired again” (prompting the AI to regenerate the content until it meets the required standards, paragraph [0020]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA and Cooper because using the steps claimed would have given those skilled in the art the tools to improve the invention by providing more robust error-handling mechanisms to manage diverse inputs to fix potential problems in the use of generative AI (see Cooper, paragraph [0005]) . This gives the user the advantage of being assured that they are not relying on results that are erroneous for making critical decisions.
Claim 7 is rejected under 35 U.S.C. 103 as being unpatentable over RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330) in view of PARK (Publication Number 20230084562).
As per claim 7,
RISCUTIA does not explicitly indicate “the information acquisition unit further acquires model identification information of a model used by the generation apparatus from the generation apparatus, and the determination unit compares model identification information included in generation condition information of the generated data held by the storage unit with model identification information acquired from the generation apparatus, and determines that the generated data needs to be acquired again in a case where a model of the generation apparatus is updated”.
However, PARK discloses “the information acquisition unit further acquires model identification information of a model used by the generation apparatus from the generation apparatus, and the determination unit compares model identification information included in generation condition information of the generated data held by the storage unit with model identification information acquired from the generation apparatus, and determines that the generated data needs to be acquired again in a case where a model of the generation apparatus is updated” (paragraph [0152]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA and PARK because using the steps claimed would have given those skilled in the art the tools to improve the invention by finding problems in a current generative AI model or model data to insure that corrections can be made to that model (see PARK, paragraphs [0002]-[0005]). This gives the user the advantage of being assured that they are not relying on results that are erroneous for making critical decisions.
Claim 9 is rejected under 35 U.S.C. 103 as being unpatentable over RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330) in view of Jablonski et al. (‘Jablonski’ hereinafter) (Patent Number 12626255) and further in view of Khan et al. (‘Khan’ hereinafter) (Publication Number 20250238654).
As per claim 9,
Neither RISCUTIA nor Jablonski explicitly indicate “the selection unit selects generated data whose use frequency is equal to or less than a threshold as the generated data recommended for deletion”.
However, Khan discloses “the selection unit selects generated data whose use frequency is equal to or less than a threshold as the generated data recommended for deletion” (paragraph [0027]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA, Jablonski and Khan because using the steps claimed would have given those skilled in the art the tools to improve the invention by saving resources by not saving undesirable information. This gives the user the advantage of more efficient use of expensive resources.
Claims 11 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330) in view of Jablonski et al. (‘Jablonski’ hereinafter) (Patent Number 12626255) and further in view of YOO (Publication Number 20260120127).
As per claim 11,
Neither RISCUTIA nor Jablonski explicitly indicate “the generation condition information includes a prompt, and the selection unit checks spelling and grammar of the prompt to detect a degree of quality of generated data, and select generated data of which the degree of quality is equal to or less than a threshold as the generated data recommended for deletion”.
However, YOO discloses “the generation condition information includes a prompt, and the selection unit checks spelling and grammar of the prompt to detect a degree of quality of generated data, and select generated data of which the degree of quality is equal to or less than a threshold as the generated data recommended for deletion” (paragraph [0114]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA, Jablonski and YOO because using the steps claimed would have given those skilled in the art the tools to improve the invention by saving resources by not saving undesirable information. This gives the user the advantage of more efficient use of expensive resources.
As per claim 13,
Neither RISCUTIA nor Jablonski explicitly indicate “the generation condition information includes a prompt, and the selection unit checks a coincidence degree between the prompt and an object detection result of the generated data, and selects, as the generated data recommended for deletion, generated data not generated according to an instruction of the prompt”.
However, YOO discloses “the generation condition information includes a prompt, and the selection unit checks a coincidence degree between the prompt and an object detection result of the generated data, and selects, as the generated data recommended for deletion, generated data not generated according to an instruction of the prompt” (paragraph [0114]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA, Jablonski and YOO because using the steps claimed would have given those skilled in the art the tools to improve the invention by saving resources by not saving undesirable information. This gives the user the advantage of more efficient use of expensive resources.
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330) in view of Jablonski et al. (‘Jablonski’ hereinafter) (Patent Number 12626255) and further in view of KUMAR et al. (‘KUMAR’ hereinafter) (Publication Number 20260004140).
As per claim 12,
Neither RISCUTIA nor Jablonski explicitly indicate “the selection unit selects, as the generated data recommended for deletion, generated data in which a hallucination, which is a phenomenon in which the generative Al generates information not based on a fact, exists”.
However, KUMAR discloses “the selection unit selects, as the generated data recommended for deletion, generated data in which a hallucination, which is a phenomenon in which the generative Al generates information not based on a fact, exists” (paragraph [0064]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA, Jablonski and KUMAR because using the steps claimed would have given those skilled in the art the tools to improve the invention by saving resources by not saving undesirable information. This gives the user the advantage of more efficient use of expensive resources.
Claims 14-15 are rejected under 35 U.S.C. 103 as being unpatentable over RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330) in view of Jablonski et al. (‘Jablonski’ hereinafter) (Patent Number 12626255) and further in view of Gong et al. (‘Gong’ hereinafter) (Publication Number 20250315986).
As per claim 14,
Neither RISCUTIA nor Jablonski explicitly indicate “the selection unit calculates similarity between generated data, and selects, as the generated data recommended for deletion, one of generated data similar to each other”.
However, Gong discloses “the selection unit calculates similarity between generated data, and selects, as the generated data recommended for deletion, one of generated data similar to each other” (paragraph [0109]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA, Jablonski and Gong because using the steps claimed would have given those skilled in the art the tools to improve the invention by saving resources by not saving undesirable information. This gives the user the advantage of more efficient use of expensive resources.
As per claim 15,
Neither RISCUTIA nor Jablonski explicitly indicate “in a case where generated data is an image corresponding to an intermediate portion when Image- to-Image is repeated a plurality of times, the selection unit selects the generated data as the generated data recommended for deletion”.
However, Gong discloses “in a case where generated data is an image corresponding to an intermediate portion when Image- to-Image is repeated a plurality of times, the selection unit selects the generated data as the generated data recommended for deletion” (paragraph [0109]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA, Jablonski and Gong because using the steps claimed would have given those skilled in the art the tools to improve the invention by saving resources by not saving undesirable information. This gives the user the advantage of more efficient use of expensive resources.
Claim 16 is rejected under 35 U.S.C. 103 as being unpatentable over RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330) in view of Jablonski et al. (‘Jablonski’ hereinafter) (Patent Number 12626255) and further in view of JANG et al. (‘JANG’ hereinafter) (Publication Number 20230075590).
As per claim 16,
Neither RISCUTIA nor Jablonski explicitly indicate “the generation condition information includes model identification information, and the selection unit selects, as the generated data recommended for deletion, generated data generated with a model of an old version”.
However, JANG discloses “the generation condition information includes model identification information, and the selection unit selects, as the generated data recommended for deletion, generated data generated with a model of an old version” (paragraph [0109]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA, Jablonski and JANG because using the steps claimed would have given those skilled in the art the tools to improve the invention by saving resources by not saving undesirable information. This gives the user the advantage of more efficient use of expensive resources.
Claim 17 is rejected under 35 U.S.C. 103 as being unpatentable over RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330) in view of Jablonski et al. (‘Jablonski’ hereinafter) (Patent Number 12626255) and further in view of Federighi et al. (‘Federighi’ hereinafter) (Publication Number 20250258686).
As per claim 17,
Neither RISCUTIA nor Jablonski explicitly indicate “the selection unit does not select, as the generated data recommended for deletion, generated data whose time required for generation is equal to or more than a threshold”.
However, Federighi discloses “the selection unit does not select, as the generated data recommended for deletion, generated data whose time required for generation is equal to or more than a threshold” (paragraph [0765]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA, Jablonski and Federighi because using the steps claimed would have given those skilled in the art the tools to improve the invention by saving resources by not saving undesirable information. This gives the user the advantage of more efficient use of expensive resources.
Claims 19-20 are rejected under 35 U.S.C. 103 as being unpatentable over RISCUTIA et al. (‘RISCUTIA’ hereinafter) (Publication Number 20250384330) in view of Savle et al. (‘Savle’ hereinafter) (Publication Number 20250068681).
As per claim 19,
RISCUTIA does not explicitly indicate “a map generation unit configured to generate a generation history map representing a parent-child relationship of a generated data group generated in multi-stage based on the generation condition information”.
However, Savle discloses “a map generation unit configured to generate a generation history map representing a parent-child relationship of a generated data group generated in multi-stage based on the generation condition information” (paragraph [0089],[0093],[0096]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA and Savle because using the steps claimed would have given those skilled in the art the tools to improve the invention by reducing information gaps and improving retrieval options and accuracy of query resolutions for search queries (see Savle, paragraph [0092]). This gives the user the advantage of more efficient use of time when performing searches.
As per claim 20,
RISCUTIA does not explicitly indicate “a display unit configured to display the generation history map”.
However, Savle discloses “a display unit configured to display the generation history map” (paragraph [0089],[0093],[0096]).
It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to combine RISCUTIA and Savle because using the steps claimed would have given those skilled in the art the tools to improve the invention by reducing information gaps and improving retrieval options and accuracy of query resolutions for search queries (see Savle, paragraph [0092]). This gives the user the advantage of more efficient use of time when performing searches.
Allowable Subject Matter
Claim 10 is objected to as being dependent upon a rejected base claim, but would be allowable over the prior art if rewritten in independent form including all of the limitations of the base claim and any intervening claims. It is noted that there are outstanding 35 USC 101 rejections that must be resolved.
Conclusion
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
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