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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 01/27/2026, 02/25/2026, 03/26/2026 and 04/15/2026 are is in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Terminal Disclaimer
The terminal disclaimer filed on 04/15/2026 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of Patent No. 12,493,775 and Patent No. 12,585,922 (formerly Application No. 19/194,225) has been reviewed and is accepted. The terminal disclaimer has been recorded.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 11 and 20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The amended claim limitations “detecting a change in user focus away from the content editor on the device,” and “a change to a different region event detecting a change to a different region within the content editor” are not supported by the applicant’s original disclosure. Therefore the claims are rejected for failing to comply with the written description requirement. Applicant is reminded to utilize language consistent with the applicant’s original disclosure to avoid the appearance/addition of new matter in the claims.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 11 and 20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claims 11 and 20 recite “an edit significance event,” and it is unclear from the claim language what this element entails. Therefore, the claims are rejected as being indefinite for failing to clearly and distinctly disclose what an edit significance event entails.
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.
Claim(s) 1-7 and 16-18 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higgins et al. (US PGPub 2025/0061137; hereinafter Higgins) in view of Kuhn et al. (US PGPub 2024/0193204; hereinafter Kuhn) and further in view of Aman (US PGPub 2024/0371510).
Regarding claim 1, Higgins discloses a method comprising:
obtaining initial content that was generated during a content editing session ([0038], [0103], [0118] obtaining one or more files via an application for editing files);
generating a prompt based on the initial content ([0038], [0042] providing/generating a prompt/query based on the one or more files; [0100] a user can generate the prompt).
selecting at least one generator from among a set of generators based, at least in part, on a content type of the initial content ([0038], [0089] generative framework represents one or a set of generative AI models that can be selected for generating new content based on the type of one or more input files/content);
for each selected generator:
using the prompt to produce new content ([0038], [0067], [0089] new content is generated based on the file(s)/content and prompt/query).
Higgins fails to disclose:
comparing the new content to the initial content; and
making a respective determination whether the new content and the initial content are similar based on whether a similarity threshold is satisfied;
using the respective determination for each selected generator, ensuring that an authorship token is associated with the initial content,
wherein the authorship token includes a form indicating that an associated content region has human rather than an artificial authorship or artificial rather than human authorship.
However, Kuhn discloses:
comparing the new content to the initial content ([0042], [0045] new content/output is compared to the input/original content); and
making a respective determination whether the new content and the initial content are similar based on whether a similarity threshold is satisfied ([0042], [0047] the initial input/content is compared to the new/output content to determine similarity based on a threshold being met for author attribution);
using the respective determination for each selected generator, ensuring that an authorship token is associated with the initial content ([0042], [0045], [0047] author attribution for the initial content is provided based on the determining of similarity based on the generative AI derived/generated content).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Higgins and Kuhn before him/her, to modify the teachings of Higgins with the teachings of Kuhn. The motivation for doing so would combine the new content generation of Higgins with the new content generation of Kuhn to determine the proportion of content items used by a generative artificial intelligence to generate derivative/new content, thereby enabling attribution (and compensation) to content creators that created the content items used to generate the derivative/new content as disclosed by Kuhn [0002].
The combination of Higgins and Kuhn fails to disclose, however, Aman discloses wherein the authorship token includes a form indicating that an associated content region has human rather than an artificial authorship or artificial rather than human authorship ([0043], [0277], [0278] human generated content is labeled organic/proof-of-organic while artificially generated content is labeled synthetic).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Higgins, Kuhn, and Aman before him/her, to modify the teachings of Kuhn with the teachings of Aman. The motivation for doing so would combine the author attribution of Kuhn with the content-authorship of Aman to provide a unique solution for assuring that any work products created during an authenticated session of operation of a computing system, such as a digital document comprising virtually any type of digital content, can be labeled as “organic” because their composer is the authenticated asset (computer) operator as disclosed by Aman [0019], [0023].
Regarding claim 2, the combination of Higgins, Kuhn, and Aman discloses the method of claim 1, wherein the at least one generator is selected based on a likelihood that the at least one generator was used to generate the initial content (Higgins: [0067]).
Regarding claim 3, the combination of Higgins, Kuhn, and Aman discloses the method of claim 2, wherein the likelihood that the at least one generator was used to generate the initial content is based on at least one of: an availability of the at least one generator at a time of generation of the initial content ;or an amount of resources used by the at least one generator to generate the initial content (Higgins: [0059], [0106]).
Regarding claim 4, the combination of Higgins, Kuhn, and Aman discloses the method of claim 1, wherein selecting the at least one generator is performed via an artificial intelligence model (Higgins: [0038]).
Regarding claim 5, the combination of Higgins, Kuhn, and Aman discloses the method of claim 4, wherein the initial content includes a plurality of types of content including at least a first content type and a second content type, and wherein selecting at least one generator includes selecting, via the artificial intelligence model, at least a first generator that generates content of the first content type and a second generator that generates content of the second content type (Higgins: [0089], [0093]).
Regarding claim 6, the combination of Higgins, Kuhn, and Aman discloses the method of claim 1, wherein the at least one generator includes a plurality of generators, and wherein the method further includes: determining that the new content produced by the prompt for each of the plurality of generators satisfies the similarity threshold; and ensuring that the authorship token takes a form indicating that the associated content region has default authorship selected from among human or artificial authorship (Higgins: [0038], [0089]; Kuhn: [0042], [0057]; Aman: [0043], [0277], [0278]).
Regarding claim 7, the combination of Higgins, Kuhn, and Aman discloses the method of claim 1, wherein the at least one generator includes a plurality of generators, and wherein the method further includes: determining that the new content produced by the prompt for one of the plurality of generators satisfies the similarity threshold; and ensuring that the authorship token takes a form indicating that the associated content region has artificial rather than human authorship (Higgins: [0038], [0089]; Kuhn: [0042], [0057]; Aman: [0043], [0277], [0278]).
Regarding claim 16, Higgins discloses a non-transitory computer-readable storage medium storing instructions that, when executed by one or more processors, cause the one or more processors to perform operations comprising: one or more processors communicatively coupled to a memory subsystem storing instructions which, when executed, cause the one or more processors to perform ([0008]):
obtaining initial content that was generated during a content editing session ([0038], [0103], [0118]);
generating a prompt based on the initial content ([0038], [0042], [0100]);
selecting at least one generator via an artificial intelligence model from among a set of generators based, at least in part, on a content type of the initial content determined by the artificial intelligence model ([0038], [0089]);
for each selected generator:
using the prompt to produce new content ([0038], [0067], [0089]).
Higgins fails to disclose:
comparing the new content to the initial content; and
making a respective determination whether the new content and the initial content are similar based on whether a similarity threshold is satisfied;
using the respective determination for each selected generator, ensuring that an authorship token is associated with the initial content,
wherein the authorship token includes a form indicating that an associated content region has human rather than an artificial authorship or artificial rather than human authorship.
However, Kuhn discloses:
comparing the new content to the initial content ([0042], [0045]); and
making a respective determination whether the new content and the initial content are similar based on whether a similarity threshold is satisfied ([0042], [0047]);
using the respective determination for each selected generator, ensuring that an authorship token is associated with the initial content ([0042], [0045], [0047]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Higgins and Kuhn before him/her, to modify the teachings of Higgins with the teachings of Kuhn. The motivation for doing so would combine the new content generation of Higgins with the new content generation of Kuhn to determine the proportion of content items used by a generative artificial intelligence to generate derivative/new content, thereby enabling attribution (and compensation) to content creators that created the content items used to generate the derivative/new content as disclosed by Kuhn [0002].
The combination of Higgins and Kuhn fails to disclose, however, Aman discloses wherein the authorship token includes a form indicating that an associated content region has human rather than an artificial authorship or artificial rather than human authorship ([0043], [0277], [0278]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Higgins, Kuhn, and Aman before him/her, to modify the teachings of Kuhn with the teachings of Aman. The motivation for doing so would combine the author attribution of Kuhn with the content-authorship of Aman to provide a unique solution for assuring that any work products created during an authenticated session of operation of a computing system, such as a digital document comprising virtually any type of digital content, can be labeled as “organic” because their composer is the authenticated asset (computer) operator as disclosed by Aman [0019], [0023].
Regarding claim 17, the combination of Higgins, Kuhn, and Aman discloses the non-transitory computer-readable storage medium of claim 14, wherein the at least one generator is selected based on a likelihood that the at least one generator was used to generate the initial content, and wherein the likelihood that the at least one generator was used to generate the initial content is based on at least one of: an availability of the at least one generator at a time of generation of the initial content; or an amount of resources used by the at least one generator to generate the initial content (Higgins: [0059], [0067], [0106]).
Regarding claim 18, the combination of Higgins, Kuhn, and Aman discloses the non-transitory computer-readable storage medium of claim 14, wherein the instructions, when executed, cause the one or more processors to perform: determining a distance between at least a portion of the initial content and the new content, wherein the distance is determined based on edit distance or distance in embedding space (Kuhn: [0037], [0042], [0059]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Higgins, Kuhn, and Aman before him/her, to modify the teachings of Higgins with the teachings of Kuhn. The motivation for doing so would combine the new content generation of Higgins with the new content generation of Kuhn to determine the proportion of content items used by a generative artificial intelligence to generate derivative/new content, thereby enabling attribution (and compensation) to content creators that created the content items used to generate the derivative/new content as disclosed by Kuhn [0002].
Claim(s) 8-12, 19 and 20 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higgins et al. (US PGPub 2025/0061137; hereinafter Higgins) in view of Kuhn et al. (US PGPub 2024/0193204; hereinafter Kuhn) in view of Aman (US PGPub 2024/0371510) and further in view of Angelo et al. (US PGPub 2020/0099513; hereinafter Angelo).
Regarding claim 8, the combination of Higgins, Kuhn, and Aman discloses the method of claim 1, further comprising:
obtaining event tracking capability regarding a device (Aman: [0043], [0182]);
while a user is editing second content using a content editor running at least in part on the device (Aman: [0267], [0290], [0442]):
tracking events associated with the device (Aman: [0249], [0277]);
detecting an occurrence of a snapshot event (Aman: [0249]);
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Higgins, Kuhn, and Aman before him/her, to modify the teachings of Kuhn with the teachings of Aman. The motivation for doing so would combine the author attribution of Kuhn with the content-authorship of Aman to provide a unique solution for assuring that any work products created during an authenticated session of operation of a computing system, such as a digital document comprising virtually any type of digital content, can be labeled as “organic” because their composer is the authenticated asset (computer) operator as disclosed by Aman [0019], [0023].
The combination of Higgins, Kuhn, and Aman fails to disclose, however, Angelo discloses responsive to detecting the occurrence of the snapshot event, adding data to an audit trail associated with the second content, the data being descriptive of the events ([0019]-[0025]); and using one or both of the events and the audit trail to ensure that an authorship token is associated with the second content ([0013], [0033]-[0035]).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Higgins, Kuhn, Aman and Angelo before him/her, to modify the teachings of Aman with the teachings of Angelo. The motivation for doing so would combine the activity tracking of Aman with the transaction tracking of Angelo to provide blockchain-based program change tracking techniques to allow any entity that wishes to use or otherwise consume a program to ensure that the program components of the program are authentic, are from a trusted source, and/or have not been tampered with (i.e., illicitly modified) as disclosed by Angelo [0015].
Regarding claim 9, the combination of Higgins, Kuhn, Aman and Angelo discloses the method of claim 8, wherein the second content was generated alongside the initial content at the device during the content editing session (Aman: [0442]).
Regarding claim 10, the combination of Higgins, Kuhn, Aman and Angelo discloses the method of claim 8, wherein the audit trail is configured to resist tampering by being stored as part of a blockchain data structure or a Merkle tree data structure (Angelo: [0025]).
Regarding claim 11, the combination of Higgins, Kuhn, Aman and Angelo discloses the method of claim 8, wherein the snapshot event comprises at least one of: a save event, an upload event, a change in focus event detecting a change in user focus away from the content editor on the device, a change to a different region event detecting a change to a different region within the content editor, an edit significance event, a code execution event, or a code compilation event (Aman: [0049], [0358]; Angelo: [0023]).
Regarding claim 12, the combination of Higgins, Kuhn, Aman and Angelo discloses the method of claim 8, wherein tracking the events includes using one or more application programming interfaces of an operating system of the device or the content editor to perform tracking (Aman: [0431], [0432]; Angelo [0019]).
Claims 19 and 20 contain corresponding limitations as claims 5 and 11 and are therefore rejected for the same rationale.
Claim(s) 13 is/are rejected under 35 U.S.C. 103 as being unpatentable over Higgins et al. (US PGPub 2025/0061137; hereinafter Higgins) in view of Kuhn et al. (US PGPub 2024/0193204; hereinafter Kuhn) in view of Aman (US PGPub 2024/0371510) and further in view of Jain et al. (US Patent No. 12,111,747; hereinafter Jain).
Regarding claim 13, the combination of Higgins, Kuhn, and Aman discloses the method of claim 1, but fails to disclose, however, Jain discloses wherein selecting the at least one generator from among the set of generators includes excluding at least one generator from the set of generators from the selected at least one generator based on a determination that the excluded at least one generator would have consumed more than a threshold amount of compute resources (Col. 5, Lines 32-54; Col. 6, Lines 6-29: determines whether a selected model satisfies a threshold for a performance metric based on a cost for generating the output of the model; the performance metric can track the CPU usage associated with the model/platform).
Therefore, it would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which said subject matter pertains, having the teachings of Higgins, Kuhn, Aman and Jain before him/her, to modify the teachings of Higgins with the teachings of Jain. The motivation for doing so would combine the model selection of Higgins with the model selection of Jain for dynamically selecting models for processing user prompts in a resource-sensitive manner based on one or more performance metrics that can be impacted by processing an input as disclosed by Jain Col. 5, Lines 32-54.
Allowable Subject Matter
Claims 14 and 15 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Support for Amendments and Newly Added Claims
Applicants are respectfully requested, in the event of an amendment to claims or submission of new claims, that such claims and their limitations be directly mapped to the specification, which provides support for the subject matter. This will assist in expediting compact prosecution and reducing potential 35 USC § 112(a) or 35 USC § 112, 1st paragraph issues that can arise when claims are amended. MPEP 714.02 recites: “Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06. An amendment which does not comply with the provisions of 37 CFR 1.121(b), (c), (d), and (h) may be held not fully responsive. See MPEP § 714.” Amendments not pointing to specific support in the disclosure may be deemed as not complying with provisions of 37 C.F.R. 1.121(b), (c), (d), and (h) and therefore held not fully responsive. Generic statements such as “Applicants believe no new matter has been introduced” may be deemed insufficient. The examiner thanks the Applicant in advance for providing support for any amendments or newly added claims.
Examiner cites particular columns and line numbers or paragraphs in the references as applied to claims above for the convenience of the applicant. Although the specified citations are representative of the teachings in the art and are applied to the specific limitations within the individual claim, other passages and figures may be applied as well. It is respectfully requested that, in preparing responses, the applicant fully consider the references in entirety as potentially teaching all or part of the claimed invention, as well as the context of the passage as taught by the prior art or disclosed by the examiner.
Response to Arguments
Applicant's arguments filed 04/15/2026 have been fully considered but they are not persuasive. The examiner presents a new grounds of rejection based upon the applicant's amendments to the claims. Rejections and/or objections not reiterated from previous office actions are hereby withdrawn. The preceding rejections and/or objections are either reiterated or newly applied. They constitute the complete set presently being applied to the instant application.
On pages 9-12, the applicant argues that:
Regarding the 103 rejection of claims 1-7 and 16-18, that “Higgens does not teach each of the features as alleged in the Office Action, including at least (1) generating a prompt based on the initial content, and (2) compare the new content to initial content to determine a similarity threshold. First, Higgens does not generate a prompt based on the initial content. Higgens relates to a system that may allow a user to identify one or more files and provide a prompt that guides generation of new content based on the selected files, using generative AI systems. See Higgens, [0038]. As clarified in the cited sections of Higgens including [0038] and [0042], the prompt in that reference is a user-provided query to summarize or outline selected content. Higgens does not disclose that the query is generated based on the content. Second, Higgens does not compare the new content to initial content to determine a similarity threshold for any reason, let alone to determine authorship. The Office Action admits as much at p. 12. Kuhn and Aman do not overcome the deficiencies of Higgens…While Kuhn does enable comparison of input to output content, it does not use a prompt generated based on initial content, but instead relies on user interaction to define a desired relative set of styles/influences in the output 118. Additionally, the comparison in Kuhn between input and output is to determine attribution of various styles, and is not directed to determinations of authorship. This is reflected in [0043] in which a scenario is described in which a user may draw from a pool of items made by different creators, and may define a prompt to select the extent to which those creators' works should influence the output of the generative AI. In the relevant portions of Kuhn described in the Office Action, the generative AI 114 is the creator of the output 118, so there is not even a question about authorship to be assessed. Aman does not overcome the deficiencies of Higgens and Kuhn…Aman does not generate a prompt based on initial content, so does not address that deficiency of Higgens and Kuhn…Furthermore, Applicant respectfully asserts that a person of skill in the art would have no reason to combine Kuhn with Aman to arrive at the current claims. As noted above, Kuhn describes a system for adjusting influence of source materials of various creators, but the output is always from a genAI system - an artificial source. A person of skill in the art would not add the authorship determinations of Aman to Kuhn, since use of Aman to determine authorship of the output in Kuhn would always wind up with the same result - a determination that the AI generated the content…Accordingly, Applicant respectfully asserts that the combination of Higgens, Kuhn, and Aman does not teach or suggest each of the limitations of claims 1 or 16, or therefore any of claims 1-7 and 16-18.”
The examiner respectfully disagrees because:
Higgins discloses generating a prompt based on the initial content in at least [0038] the system may provide a prompt that guides the generation of new content based on the selected text documents/files; [0042] a query is an input to which a generative model is meant to respond; the query for the generative model may include instructions such as, “provide a summary of [content]” or, “generate an outline that will allow a user to skim the main points from [content],” where [content] can represent raw text or images from a file or the location of a file. Additionally, Higgins discloses in [0100] The prompt input area 710 is configured to receive a prompt from the user. The prompt describes instructions for the generative model for using the content of the selected files to generate the output. The generative framework user interface 700 also includes prompt formatting requirements 715. The prompt formatting requirements 715 are instructions that guide the user in generating the prompt provided in prompt input area. As such, a user being guided to generate a prompt based upon selected files (e.g., such as initial content) teaches generating a prompt based on the initial content as disclosed by Higgins.
In response to applicant's argument that the Kuhn reference fails to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., that Kuhn does not use a prompt generated based on initial content, that the comparison in Kuhn between input and output is to determine attribution of various styles, and is not directed to determinations of authorship, and that the relevant portions of Kuhn described in the Office Action, the generative AI 114 is the creator of the output 118, so there is not even a question about authorship to be assessed) are not recited in the rejected claim(s). Kuhn is utilized to teach comparing the new content to the initial content, making a respective determination whether the new content and the initial content are similar based on whether a similarity threshold is satisfied, and using the respective determination for each selected generator, ensuring that an authorship token is associated with the initial content. These limitations do not disclose use a prompt generated based on initial content, determinations of authorship, or about authorship to be assessed. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
Regarding the combination of Kuhn and Aman, Aman is utilized to teach wherein the authorship token includes a form indicating that an associated content region has human rather than an artificial authorship or artificial rather than human authorship. Kuhn denotes whether content/portions of content were created by an entity via attributions which attribute content/portions of content to a specific entity, but does not explicitly disclose an authorship token. Aman is then utilized to show when content has been attributed/ascribed/assigned to an entity it has a label to denote whether it is human or machine generated (e.g., some type of representation to specifically denote an author akin to an authorship token (the applicant’s specification [0052] discloses that an authorship token can be a special comment or data entry such as the label of Aman)). Thus, Aman is only utilized to show that a authorship label (akin to an authorship token) can be added to show what type of entity created particular content. Additionally, Aman is not utilized to teach generate a prompt based on initial content. As such, the combination of Higgins, Kuhn and Aman reasonably discloses the claimed invention of claims 1-7 and 16-18.
On page 12, the applicant argues that:
Regarding the 103 rejection of claims 8-12 and 19-20, that “the combination of Higgens, Kuhn, Aman, and Angelo does not render obvious any of these claims at least because Angelo does not overcome the deficiencies of the other references cited as to claims 1 and 16, nor is it alleged to do so in the Office Action. Angelo describes blockchain-based tracking of program changes, and does not relate to assessment of human or artificial authorship at all.”
The examiner respectfully disagrees because:
In response to applicant's argument that the Kuhn reference fails to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., assessment of human or artificial authorship at all) are not recited in the rejected claim(s). Angelo is utilized to teach responsive to detecting the occurrence of the snapshot event, adding data to an audit trail associated with the second content, the data being descriptive of the events; and using one or both of the events and the audit trail to ensure that an authorship token is associated with the second content. These limitations do not disclose assessing human or artificial authorship, only that an authorship token is associated with the second content. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As such, the combination of Higgens, Kuhn, Aman, and Angelo reasonably discloses the claimed invention of claims 8-12 and 19-20.
On page 13, the applicant argues that:
Regarding the 103 rejection of claim 13, that “Claim 13 was rejected under 35 U.S.C. 103 as being unpatentable over Higgens in view of Kuhn, in view of Aman, and further in view of Jain…Claim 13 is not rendered obvious by the combination of Higgens, Kuhn, Aman, and Jain, at least because Jain does not overcome the deficiencies of the other references cited as to claim 1, nor is it alleged to do so in the Office Action. Jain is cited to describe selection of a model based on a performance metric and computational resource usage; however, that reference does not relate to assessment of human or artificial authorship, and as such would not suggest the features of claim 1.”
The examiner respectfully disagrees because:
In response to applicant's argument that the Jain reference fails to show certain features of the invention, it is noted that the features upon which applicant relies (i.e., assessment of human or artificial authorship at all) are not recited in the rejected claim(s). Jain is utilized to teach wherein selecting the at least one generator from among the set of generators includes excluding at least one generator from the set of generators from the selected at least one generator based on a determination that the excluded at least one generator would have consumed more than a threshold amount of compute resources. Jain is not utilized to teach assessing human or artificial authorship. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). As such, the combination of Higgens, Kuhn, Aman, and Jain reasonably discloses the claimed invention of claim 13.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DIEDRA M MCQUITERY whose telephone number is (571)272-9607. The examiner can normally be reached Monday - Thursday, 8 am - 6 pm (C.S.T.).
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/Diedra McQuitery/Primary Examiner, Art Unit 2166
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