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 .
Drawings
The drawings are objected to under 37 CFR 1.83(a). The drawings must show every feature of the invention specified in the claims. Therefore, the “generalized rotation gates and generalized controlled rotation gates” must be shown or the feature(s) canceled from the claim(s). No new matter should be entered.
Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. The figure or figure number of an amended drawing should not be labeled as “amended.” If a drawing figure is to be canceled, the appropriate figure must be removed from the replacement sheet, and where necessary, the remaining figures must be renumbered and appropriate changes made to the brief description of the several views of the drawings for consistency. Additional replacement sheets may be necessary to show the renumbering of the remaining figures. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
Requirement for Information under 37 CFR 1.105
Applicant and the assignee of this application are required under 37 CFR 1.105 to provide the following information that the examiner has determined is reasonably necessary to the examination of this application.
MPEP 704.11(a) discloses “37 CFR 1.105(a)(1)(i)-(viii) list specific examples of information that may be reasonably required. Other examples, not meant to be exhaustive, of information that may be reasonably required for examination of an application include:… (P) Other factual information pertinent to patentability…(S) Interrogatories or Stipulations. (4) Of the meaning of claim limitations or terms used in the claims”
In response to this requirement, please provide answers to each of the following interrogatories eliciting factual information:
Does the claimed “quantum processor” encompass all processors?
More specifically, does the “quantum processor” encompass a topological quantum architecture (e.g., a topological quantum computing device using Majorana zero modes)?
Is the quantum program a quantum algorithm or does the quantum program use a quantum algorithm?
In the response filed 9/19/2022 to a requirement for information in the non-final rejection filed 5/25/22, the applicant’s representative responded “a quantum program is generally well known by persons of ordinary skill in the art to refer to a specific set of ordered operations for a quantum computer to perform.” What is an example of this “well known” quantum program that the current invention uses in figure 9? Can the applicant provide evidence that the “quantum program” used in the invention was well known at the time invention was filed?
Regarding claim 44, claim 44 discloses “program the quantum processor”. Is the quantum computer programmed by the classical computer or by a human? If the quantum computer is programmed by the classical computer, what is the algorithm for the classical computer that performs the programming of the quantum computer?
Regarding claim 48, claim 48 discloses “programming a quantum processor to classify”. What is the algorithm for the classical computer that performs the programming of the quantum computer?
The applicant is reminded that the reply to this requirement must be made with candor and good faith under 37 CFR 1.56. Where the applicant does not have or cannot readily obtain an item of required information, a statement that the item is unknown or cannot be readily obtained may be accepted as a complete reply to the requirement for that item.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 27-38 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
This judicial exception is not integrated into a practical application for the reasons described below.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Below Examiner will analysis the claims to determine whether they recite patent ineligible subject matter using the Alice/Mayo test as amended by the USPTO in the Federal Register in Vol. 84, No. 4 at pages 50-57. Examiner will use exemplary claim 1 as the initial basis for the analysis.
Step 1:
Based upon the preamble of the claims it appears that claim 10 is directed to a method. Therefore, the claim is directed to one of the four statutory categories.
Step 2A prong 1:
Step 2A prong 1 ask the question: does the claim recite a judicial exception? The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
a variational…defined by a series of generalized rotation gates and generalized controlled rotation gates for learning one or more variational parameters (This is a mathematical concept. The applicant’s representative points out in remarks filed 3/14/2024 “the variational circuit ‘ansatz’ of Equation 1” is mathematical. The generalized rotational gate is mathematical and the generalized control rotation is mathematical page 11 second full paragraph)
training the variational…using the plurality of training samples and incrementally adjusting the variational parameters to improve prediction of a set of test data (This is a mathematical concept. The applicant’s representative, in the response filed 3/14/2024, explains that “the specification includes a mathematically detailed description of training”.)
repeating the adjusting according to a schedule that visits each of the variational parameters at least once, whereby the utility function increases monotonically toward a local maximum; (This is a mathematical concept. The applicant is just repeating the adjusting above. The applicant’s representative, in the response filed 3/14/2024, explains that “the specification includes a mathematically detailed description of training”.)
configuring … (This is a mathematical concept, because the applicant is just using an algorithm (mathematical concept) to configure or implement the mathematical concept. This also could be a method of organizing human activity because the implementation is just following rules such as implementing the mathematical concept.)
Based upon the above analysis claim 27 recites a judicial exception.
Step 2A prong 2:
This prong was amended by the USPTO and modifies the Supreme Courts Alice/Mayo test. This prong ask the question: do the additional elements integrate the judicial exception (abstract idea) into a practical application. In order to determine this the office has provided the following considerations.
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The office has not indicated which of these considerations carries more weight than another consideration. Therefore, Examiner will examine each of these considerations in due part below. It should be noted that at this step in the analysis Examiner cannot take into account whether an element is well-understood, routine, or conventional.
Based upon the analysis of Prong 2A step 1 the following are additional elements.
Claim 27 does have and additional element, such as a classical computer qubits, quantum gates, quantum processor and a variational quantum circuit.
As stated, in order to determine if this additional element integrates the judicial exception into the a practical application Examiner will analyze the prong 2 considerations below.
MPEP 2106.05(a)
The limitation does not include an improvement to a computer or other technology because the limitation is receiving information and performing mathematical calculations on the information.
The Vanda Memo
The Vanda Memo does not apply to the current claims as the current claims are not a method of treating a medical condition.
MPEP 2106.05(b)
Under MPEP 2106.05(b), Examiner must determine whether the additional elements are particular or general in nature. One can determine this by looking at the particular details of the additional elements. However, generic components, like generic general purpose computers do not qualify as a particular machine.
The limitation above is not directed to a particular machine.
MPEP 2106.05(c)
MPEP 2106.05(c) does not apply to the current set of claims as there is no transformation as defined under this MPEP section taking place in the current claims. Applicant is not transforming one article type to another article type. For example, Applicant is not smelting ore or vulcanizing rubber. Applicant is just calculating.
MPEP 2106.05(f)
The claim does appear to have mere instructions to apply an exception such that one could state it is an “apply it” type of claim. The examiner submits the “applying the configured variational quantum circuit, … and measuring the quantum state…” is just merely including instructions to implement the abstract idea (MPEP 2106.04(d) I). Moreover, the examiner submits the “implementing the trained variational quantum circuit” is just implementing the abstract idea on a computer and the computer is just used as tool and does not integrate the abstract idea into a practical application MPEP 2106.05(f)(2). (Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) )
MPEP 2106.05(g)
Under MPEP 2106.05(g) it appears that the additional elements are calculating. This data gathering does not appear to impose a meaningful limit on the judicial exception, as they appear to be insignificant extra-solution activity.
MPEP 2106.05(e) vs. MPEP 2106.05(h)
These two MPEP sections are obverse and reverse of each other. One cannot have a claim generally linking the judicial exception to a particular technology and at the same time using the judicial exception in some other meaningful way beyond generally linking the judicial exception to a particular technology.
Based upon both of these MPEP sections it appears that the claims are generally linking the judicial exception to a particular technology. This is because it appears that the claims at issue appear to equate with Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 , 1351 (Fed. Cir. 2014) ("Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.")
Conclusion for Step 2A prong 2
Based upon the analysis above, it appears that the claims do not integrate the judicial exception into a practical application.
Step 2B
Step 2B as the question of whether the additional elements are well-understood, routine, or conventional. It is the same analysis before the USPTO amended the Supreme Courts Alice/Mayo framework. A shortened analysis is below.
In the search for inventive concept, the Berkheimer Memo describes “an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in the MPEP as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
In accordance with this guidance, the examiner refers to the following generically-recited elements with their associated functions (and associated factual finding(s)), which are considered to be routine, conventional, and well-understood:
Claim 27 discloses “receiving a plurality of training samples… and training data” (the examiner understands the training samples are data). MPEP 2106.05(d) II i discloses: “[r]eceiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information)”.
Claim 27 discloses an additional element of “classical computer”. However, the classical computers would not make the claim eligible. MPEP 2106.07 (a) II discloses “employing well-known computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not integrate the exception into a practical application or add significantly more, similar to how limiting the computer implemented abstract idea in Flook to petrochemical and oil-refining industries was insufficient.”The examiner understands this process would be performed on a computer but does not recite a computer in the body of the claim. Moreover, even if the computer is a part of the claim, the computer would not make the invention patent eligible. MPEP 2106.07 (a) II discloses “employing well-known computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not integrate the exception into a practical application or add significantly more, similar to how limiting the computer implemented abstract idea in Flook to petrochemical and oil-refining industries was insufficient.”
Claim 27 discloses an additional element of “variational quantum circuit”. WO 2019/126644 disclose a variational quantum circuit [0045] may be parameterized. The examiner submits this is evidence that they are routine, conventional, and well-understood.
Regarding claim 27, Bravyi et al. (US 2018/0053112) [0109], and Ahn (US 2011/0138344) [0038] disclose an additional element of physical qubits and quantum gates.
Claim 27 discloses an additional element of “quantum processor” the examiner notes the applicant noted that small scale quantum computers (ie quantum processors) were known at the time of the invention. (see appeal brief page 8).
Similar Cases
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 , 1351 (Fed. Cir. 2014) ("Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.")
Parker v. Flook, 437 U.S. 584 , 595 , 98 S. Ct. 2522 , 57 L. Ed. 2d 451 (1978) ("[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is non-statutory." (internal citation and quotation marks omitted));
Gottschalk v. Benson, 409 U.S. 63 , 72 , 93 S. Ct. 253 , 34 L. Ed. 2d 273 (1972) (finding claims patent ineligible because they "would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself")
Claims 39-43 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
This judicial exception is not integrated into a practical application for the reasons described below.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Below Examiner will analysis the claims to determine whether they recite patent ineligible subject matter using the Alice/Mayo test as amended by the USPTO in the Federal Register in Vol. 84, No. 4 at pages 50-57. Examiner will use exemplary claim 1 as the initial basis for the analysis.
Step 1:
Based upon the preamble of the claims it appears that claim 10 is directed to a method. Therefore, the claim is directed to one of the four statutory categories.
Step 2A prong 1:
Step 2A prong 1 ask the question: does the claim recite a judicial exception? The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
representing the variational quantum classifier as a product of unitary factors, each unitary factor comprising a generalized controlled rotation gate defined by a variational rotation angle, a Hermitian generator, and a projector that commutes with the Hermitian generator (This is a mathematical concept. The variational quantum classifier is a product. The generalized rotational gate is mathematical and the generalized control rotation is mathematical page 11 second full paragraph)
defining a utility function that aggregates, over a set of training samples, an agreement between an action of the variational quantum classifier on an encoded training sample and a target; for each variational rotation angle, and with other variational rotation angles held fixed, expressing the utility function as A + B cos(0) + C sin(O) and assigning the variational rotation angle a value 0* satisfying tan(O*) = C/B, thereby setting the variational rotation angle to its conditional maximum in closed form (This is a mathematical concept. The applicant’s representative, in the response filed 3/14/2024, explains that “the specification includes a mathematically detailed description of training”.)
iterating the assigning over the variational rotation angles according to a schedule that visits each variational rotation angle at least once until a convergence criterion is satisfied (This is a mathematical concept. The applicant’s representative, in the response filed 3/14/2024, explains that “the specification includes a mathematically detailed description of training”.)
executing … to assign a class label to an input sample… (This is a mathematical concept, because the applicant is just using an algorithm (mathematical concept) to implement the mathematical concept. This also could be a method of organizing human activity because the implementation is just following rules such as implementing the mathematical concept.)
Based upon the above analysis claim 39 recites a judicial exception.
Step 2A prong 2:
This prong was amended by the USPTO and modifies the Supreme Courts Alice/Mayo test. This prong ask the question: do the additional elements integrate the judicial exception (abstract idea) into a practical application. In order to determine this the office has provided the following considerations.
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The office has not indicated which of these considerations carries more weight than another consideration. Therefore, Examiner will examine each of these considerations in due part below. It should be noted that at this step in the analysis Examiner cannot take into account whether an element is well-understood, routine, or conventional.
Based upon the analysis of Prong 2A step 1 the following are additional elements.
Claim 38 does have an additional element, such as a quantum processor.
As stated, in order to determine if this additional element integrates the judicial exception into the a practical application Examiner will analyze the prong 2 considerations below.
MPEP 2106.05(a)
The limitation does not include an improvement to a computer or other technology because the limitation is receiving information and performing mathematical calculations on the information.
The Vanda Memo
The Vanda Memo does not apply to the current claims as the current claims are not a method of treating a medical condition.
MPEP 2106.05(b)
Under MPEP 2106.05(b), Examiner must determine whether the additional elements are particular or general in nature. One can determine this by looking at the particular details of the additional elements. However, generic components, like generic general purpose computers do not qualify as a particular machine.
The limitation above is not directed to a particular machine.
MPEP 2106.05(c)
MPEP 2106.05(c) does not apply to the current set of claims as there is no transformation as defined under this MPEP section taking place in the current claims. Applicant is not transforming one article type to another article type. For example, Applicant is not smelting ore or vulcanizing rubber. Applicant is just calculating.
MPEP 2106.05(f)
The claim does appear to have mere instructions to apply an exception such that one could state it is an “apply it” type of claim. The examiner submits the “executing the trained variational quantum classifier…” is just merely including instructions to implement the abstract idea (MPEP 2106.04(d) I). Moreover, the examiner submits the “implementing the trained variational quantum circuit” is just implementing the abstract idea on a computer and the computer is just used as tool and does not integrate the abstract idea into a practical application MPEP 2106.05(f)(2). (Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) )
MPEP 2106.05(g)
Under MPEP 2106.05(g) it appears that the additional elements are calculating. This data gathering does not appear to impose a meaningful limit on the judicial exception, as they appear to be insignificant extra-solution activity.
MPEP 2106.05(e) vs. MPEP 2106.05(h)
These two MPEP sections are obverse and reverse of each other. One cannot have a claim generally linking the judicial exception to a particular technology and at the same time using the judicial exception in some other meaningful way beyond generally linking the judicial exception to a particular technology.
Based upon both of these MPEP sections it appears that the claims are generally linking the judicial exception to a particular technology. This is because it appears that the claims at issue appear to equate with Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 , 1351 (Fed. Cir. 2014) ("Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.")
Conclusion for Step 2A prong 2
Based upon the analysis above, it appears that the claims do not integrate the judicial exception into a practical application.
Step 2B
Step 2B as the question of whether the additional elements are well-understood, routine, or conventional. It is the same analysis before the USPTO amended the Supreme Courts Alice/Mayo framework. A shortened analysis is below.
In the search for inventive concept, the Berkheimer Memo describes “an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in the MPEP as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
In accordance with this guidance, the examiner refers to the following generically-recited elements with their associated functions (and associated factual finding(s)), which are considered to be routine, conventional, and well-understood:
Claim 38 discloses an additional element of “quantum processor” the examiner notes the applicant noted that small scale quantum computers (ie quantum processors) were known at the time of the invention. (see appeal brief page 8).
Similar Cases
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 , 1351 (Fed. Cir. 2014) ("Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.")
Parker v. Flook, 437 U.S. 584 , 595 , 98 S. Ct. 2522 , 57 L. Ed. 2d 451 (1978) ("[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is non-statutory." (internal citation and quotation marks omitted));
Gottschalk v. Benson, 409 U.S. 63 , 72 , 93 S. Ct. 253 , 34 L. Ed. 2d 273 (1972) (finding claims patent ineligible because they "would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself")
Claims 44-47 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
This judicial exception is not integrated into a practical application for the reasons described below.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Below Examiner will analysis the claims to determine whether they recite patent ineligible subject matter using the Alice/Mayo test as amended by the USPTO in the Federal Register in Vol. 84, No. 4 at pages 50-57. Examiner will use exemplary claim 1 as the initial basis for the analysis.
Step 1:
Based upon the preamble of the claims it appears that claim 10 is directed to a method. Therefore, the claim is directed to one of the four statutory categories.
Step 2A prong 1:
Step 2A prong 1 ask the question: does the claim recite a judicial exception? The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
obtain a variational quantum circuit comprising generalized rotation gates and generalized controlled rotation gates, each generalized controlled rotation gate defined by a rotation angle, a Hermitian generator, and a projector that commutes with the Hermitian generator, the variational quantum circuit having a plurality of variational parameters; (This is a mathematical concept. The applicant’s representative points out in remarks filed 3/14/2024 “the variational circuit ‘ansatz’ of Equation 1” is mathematical. The generalized rotational gate is mathematical and the generalized control rotation is mathematical page 11 second full paragraph)
train the variational quantum circuit by parametric coordinate ascent in which, for each variational parameter in turn and with the remaining variational parameters held fixed, … computes in closed form a value of the variational parameter that maximizes a utility function evaluated over a plurality of training samples (This is a mathematical concept. The applicant’s representative, in the response filed 3/14/2024, explains that “the specification includes a mathematically detailed description of training”.)
program … to realize the trained variational quantum circuit … and cause … to apply the trained variational quantum circuit to a quantum state encoding an input sample and to measure the physical qubits to produce a class label for the input sample. (This is a mathematical concept, because the applicant is just using an algorithm (mathematical concept i.e. using an algorithm) to program to obtain the “the variational circuit ‘ansatz’ of Equation 1”. This also could be a method of organizing human activity because the implementation is just following rules such as implementing the mathematical concept.)
Based upon the above analysis claim 44 recites a judicial exception.
Step 2A prong 2:
This prong was amended by the USPTO and modifies the Supreme Courts Alice/Mayo test. This prong ask the question: do the additional elements integrate the judicial exception (abstract idea) into a practical application. In order to determine this the office has provided the following considerations.
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The office has not indicated which of these considerations carries more weight than another consideration. Therefore, Examiner will examine each of these considerations in due part below. It should be noted that at this step in the analysis Examiner cannot take into account whether an element is well-understood, routine, or conventional.
Based upon the analysis of Prong 2A step 1 the following are additional elements.
Claim 44 does have and additional element, such as a classical computer, qubits, quantum processor and a variational quantum circuit.
As stated, in order to determine if this additional element integrates the judicial exception into the a practical application Examiner will analyze the prong 2 considerations below.
MPEP 2106.05(a)
The limitation does not include an improvement to a computer or other technology because the limitation is receiving information and performing mathematical calculations on the information.
The Vanda Memo
The Vanda Memo does not apply to the current claims as the current claims are not a method of treating a medical condition.
MPEP 2106.05(b)
Under MPEP 2106.05(b), Examiner must determine whether the additional elements are particular or general in nature. One can determine this by looking at the particular details of the additional elements. However, generic components, like generic general purpose computers do not qualify as a particular machine.
The limitation above is not directed to a particular machine.
MPEP 2106.05(c)
MPEP 2106.05(c) does not apply to the current set of claims as there is no transformation as defined under this MPEP section taking place in the current claims. Applicant is not transforming one article type to another article type. For example, Applicant is not smelting ore or vulcanizing rubber. Applicant is just calculating.
MPEP 2106.05(f)
The claim does appear to have mere instructions to apply an exception such that one could state it is an “apply it” type of claim. The examiner submits the “cause the quantum processor to apply the…” is just merely including instructions to implement the abstract idea (MPEP 2106.04(d) I). Moreover, the examiner submits the “implementing the trained variational quantum circuit” is just implementing the abstract idea on a computer and the computer is just used as tool and does not integrate the abstract idea into a practical application MPEP 2106.05(f)(2). (Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) )
MPEP 2106.05(g)
Under MPEP 2106.05(g) it appears that the additional elements are calculating. This data gathering does not appear to impose a meaningful limit on the judicial exception, as they appear to be insignificant extra-solution activity.
MPEP 2106.05(e) vs. MPEP 2106.05(h)
These two MPEP sections are obverse and reverse of each other. One cannot have a claim generally linking the judicial exception to a particular technology and at the same time using the judicial exception in some other meaningful way beyond generally linking the judicial exception to a particular technology.
Based upon both of these MPEP sections it appears that the claims are generally linking the judicial exception to a particular technology. This is because it appears that the claims at issue appear to equate with Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 , 1351 (Fed. Cir. 2014) ("Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.")
Conclusion for Step 2A prong 2
Based upon the analysis above, it appears that the claims do not integrate the judicial exception into a practical application.
Step 2B
Step 2B as the question of whether the additional elements are well-understood, routine, or conventional. It is the same analysis before the USPTO amended the Supreme Courts Alice/Mayo framework. A shortened analysis is below.
In the search for inventive concept, the Berkheimer Memo describes “an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in the MPEP as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
In accordance with this guidance, the examiner refers to the following generically-recited elements with their associated functions (and associated factual finding(s)), which are considered to be routine, conventional, and well-understood:
Claim 44 discloses an additional element of “classical computer”. However, the classical computers would not make the claim eligible. MPEP 2106.07 (a) II discloses “employing well-known computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not integrate the exception into a practical application or add significantly more, similar to how limiting the computer implemented abstract idea in Flook to petrochemical and oil-refining industries was insufficient.”The examiner understands this process would be performed on a computer but does not recite a computer in the body of the claim. Moreover, even if the computer is a part of the claim, the computer would not make the invention patent eligible. MPEP 2106.07 (a) II discloses “employing well-known computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not integrate the exception into a practical application or add significantly more, similar to how limiting the computer implemented abstract idea in Flook to petrochemical and oil-refining industries was insufficient.”
Claim 44 discloses an additional element of “variational quantum circuit”. WO 2019/126644 disclose a variational quantum circuit [0045] may be parameterized. The examiner submits this is evidence that they are routine, conventional, and well-understood.
Regarding claim 44, Bravyi et al. (US 2018/0053112) [0109], and Ahn (US 2011/0138344) [0038] disclose an additional element of physical qubits and quantum gates.
Claim 44 discloses an additional element of “quantum processor” the examiner notes the applicant noted that small scale quantum computers (ie quantum processors) were known at the time of the invention. (see appeal brief page 8).
Similar Cases
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 , 1351 (Fed. Cir. 2014) ("Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.")
Parker v. Flook, 437 U.S. 584 , 595 , 98 S. Ct. 2522 , 57 L. Ed. 2d 451 (1978) ("[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is non-statutory." (internal citation and quotation marks omitted));
Gottschalk v. Benson, 409 U.S. 63 , 72 , 93 S. Ct. 253 , 34 L. Ed. 2d 273 (1972) (finding claims patent ineligible because they "would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself")
Claims 48-50 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more.
This judicial exception is not integrated into a practical application for the reasons described below.
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Below Examiner will analysis the claims to determine whether they recite patent ineligible subject matter using the Alice/Mayo test as amended by the USPTO in the Federal Register in Vol. 84, No. 4 at pages 50-57. Examiner will use exemplary claim 1 as the initial basis for the analysis.
Step 1:
Based upon the preamble of the claims it appears that claim 10 is directed to a method. Therefore, the claim is directed to one of the four statutory categories.
Step 2A prong 1:
Step 2A prong 1 ask the question: does the claim recite a judicial exception? The claim limitations in the abstract idea have been highlighted in bold above; the remaining limitations are “additional elements”.
a variational… comprising a composition of generalized rotation gates and generalized controlled rotation gates for learning one or more variational parameters each generalized controlled rotation gate defined by a rotation angle, a Hermitian generator, and a projector that commutes with the Hermitian generator, (This is a mathematical concept. The applicant’s representative points out in remarks filed 3/14/2024 “the variational circuit ‘ansatz’ of Equation 1” is mathematical. The generalized rotational gate is mathematical and the generalized control rotation is mathematical page 11 second full paragraph)
a plurality of labeled training samples; training the variational … by parametric coordinate ascent that adjusts the variational parameters one at a time, each adjustment setting a selected variational parameter, with remaining variational parameters held fixed, to a value that maximizes in closed form a utility function evaluated over the training samples (This is a mathematical concept. The applicant’s representative, in the response filed 3/14/2024, explains that “the specification includes a mathematically detailed description of training”.)
outputting a specification of the trained variational parameters for programming a … to classify an input sample according to a schedule that visits each of the variational parameters at least once, whereby the utility function increases monotonically toward a local maximum; (This is a mathematical concept. The applicant is just using an algorithm to programing using the parameters above.)
Based upon the above analysis claim 48 recites a judicial exception.
Step 2A prong 2:
This prong was amended by the USPTO and modifies the Supreme Courts Alice/Mayo test. This prong ask the question: do the additional elements integrate the judicial exception (abstract idea) into a practical application. In order to determine this the office has provided the following considerations.
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The office has not indicated which of these considerations carries more weight than another consideration. Therefore, Examiner will examine each of these considerations in due part below. It should be noted that at this step in the analysis Examiner cannot take into account whether an element is well-understood, routine, or conventional.
Based upon the analysis of Prong 2A step 1 the following are additional elements.
Claim 48 does have and additional element, such as a classical computer, quantum processor and a variational quantum circuit.
As stated, in order to determine if this additional element integrates the judicial exception into the a practical application Examiner will analyze the prong 2 considerations below.
MPEP 2106.05(a)
The limitation does not include an improvement to a computer or other technology because the limitation is receiving information and performing mathematical calculations on the information.
The Vanda Memo
The Vanda Memo does not apply to the current claims as the current claims are not a method of treating a medical condition.
MPEP 2106.05(b)
Under MPEP 2106.05(b), Examiner must determine whether the additional elements are particular or general in nature. One can determine this by looking at the particular details of the additional elements. However, generic components, like generic general purpose computers do not qualify as a particular machine.
The limitation above is not directed to a particular machine.
MPEP 2106.05(c)
MPEP 2106.05(c) does not apply to the current set of claims as there is no transformation as defined under this MPEP section taking place in the current claims. Applicant is not transforming one article type to another article type. For example, Applicant is not smelting ore or vulcanizing rubber. Applicant is just calculating.
MPEP 2106.05(f)
The claim does appear to have mere instructions to apply an exception such that one could state it is an “apply it” type of claim. The examiner submits the “outputting” is just merely including instructions to implement the abstract idea (MPEP 2106.04(d) I). Moreover, the examiner submits the “implementing the trained variational quantum circuit” is just implementing the abstract idea on a computer and the computer is just used as tool and does not integrate the abstract idea into a practical application MPEP 2106.05(f)(2). (Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) )
MPEP 2106.05(g)
Under MPEP 2106.05(g) it appears that the additional elements are calculating. This data gathering does not appear to impose a meaningful limit on the judicial exception, as they appear to be insignificant extra-solution activity.
MPEP 2106.05(e) vs. MPEP 2106.05(h)
These two MPEP sections are obverse and reverse of each other. One cannot have a claim generally linking the judicial exception to a particular technology and at the same time using the judicial exception in some other meaningful way beyond generally linking the judicial exception to a particular technology.
Based upon both of these MPEP sections it appears that the claims are generally linking the judicial exception to a particular technology. This is because it appears that the claims at issue appear to equate with Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 , 1351 (Fed. Cir. 2014) ("Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.")
Conclusion for Step 2A prong 2
Based upon the analysis above, it appears that the claims do not integrate the judicial exception into a practical application.
Step 2B
Step 2B as the question of whether the additional elements are well-understood, routine, or conventional. It is the same analysis before the USPTO amended the Supreme Courts Alice/Mayo framework. A shortened analysis is below.
In the search for inventive concept, the Berkheimer Memo describes “an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in the MPEP as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional element(s).
See Berkheimer Memo at 3-4.
In accordance with this guidance, the examiner refers to the following generically-recited elements with their associated functions (and associated factual finding(s)), which are considered to be routine, conventional, and well-understood:
Claim 48 discloses “receiving a plurality of training samples… and training data” (the examiner understands the training samples are data). MPEP 2106.05(d) II i discloses: “[r]eceiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information)”.
Claim 48 discloses an additional element of “classical computer”. However, the classical computers would not make the claim eligible. MPEP 2106.07 (a) II discloses “employing well-known computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not integrate the exception into a practical application or add significantly more, similar to how limiting the computer implemented abstract idea in Flook to petrochemical and oil-refining industries was insufficient.”The examiner understands this process would be performed on a computer but does not recite a computer in the body of the claim. Moreover, even if the computer is a part of the claim, the computer would not make the invention patent eligible. MPEP 2106.07 (a) II discloses “employing well-known computer functions to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not integrate the exception into a practical application or add significantly more, similar to how limiting the computer implemented abstract idea in Flook to petrochemical and oil-refining industries was insufficient.”
Claim 48 discloses an additional element of “variational quantum circuit”. WO 2019/126644 disclose a variational quantum circuit [0045] may be parameterized. The examiner submits this is evidence that they are routine, conventional, and well-understood.
Claim 48 discloses an additional element of “quantum processor” the examiner notes the applicant noted that small scale quantum computers (ie quantum processors) were known at the time of the invention. (see appeal brief page 8).
Similar Cases
Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344 , 1351 (Fed. Cir. 2014) ("Without additional limitations, a process that employs mathematical algorithms to manipulate existing information to generate additional information is not patent eligible.")
Parker v. Flook, 437 U.S. 584 , 595 , 98 S. Ct. 2522 , 57 L. Ed. 2d 451 (1978) ("[I]f a claim is directed essentially to a method of calculating, using a mathematical formula, even if the solution is for a specific purpose, the claimed method is non-statutory." (internal citation and quotation marks omitted));
Gottschalk v. Benson, 409 U.S. 63 , 72 , 93 S. Ct. 253 , 34 L. Ed. 2d 273 (1972) (finding claims patent ineligible because they "would wholly pre-empt the mathematical formula and in practical effect would be a patent on the algorithm itself")
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.
Written Description: Failure to disclose “generalized rotation gates” in original specification
Claims 27-50 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.
Claim 27 discloses “generalized rotation gates and generalized controlled rotation gates”.
Claim 39 discloses “generalized rotation gates”
Claim 44 discloses “generalized rotation gates and generalized controlled rotation gates”
Claim 48 discloses “generalized rotation gates and generalized controlled rotation gates”
The claimed “generalized rotation gates” were amended into claim 10 on 7/25/24.
The term “generalized rotation gates” is not in the original specification.
The support for the amendment made on 7/25/24 points to the specification page 11 second full paragraph. The paragraph discloses “In embodiments of the disclosed technology, simplified variational quantum circuits refer to a composition of generalized rotations …or generalized controlled rotation” but fails to disclose “generalized rotation gates and generalized controlled rotation gates”.
MPEP 2163 I B [R-01.2024] discloses “[n]ew or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).”
Written Description: Failure to show possession of “quantum processor” that uses “a topological quantum computing device using Majorana zero modes”
Claim 27 discloses “configuring a quantum processor to classify input data” and “configuring physical qubits and quantum gates of the quantum processor in accordance with the trained variational parameters”.
Claim 39 discloses “executing the trained variational quantum classifier on a quantum processor to assign a class label to input sample”
Claim 44 discloses “cause the quantum processor to apply the trained variational quantum circuit to a quantum state”.
Claim 48 discloses “programming a quantum processor to classify”.
The applicant’s specification page 9 lines 1-5 discloses “The quantum processing unit(s) can be one or more of, but are not limited to (a) a superconducting quantum computer; (b) an ion trap quantum computer; (c) a fault-tolerant architecture for quantum computing; and/or (d) a topological quantum architecture (e.g., a topological quantum computing device using Majorana zero modes).”
The quantum processor is clearly drawn to a genus. MPEP 2163 II 3 a ii) discloses "[T]he written description must lead a person of ordinary skill in the art to understand that the inventor possessed the entire scope of the claimed invention. Ariad, 598 F.3d at 1353–54 ('[T]he purpose of the written description requirement is to ensure that the scope of the right to exclude, as set forth in the claims, does not overreach the scope of the inventor's contribution to the field of art as described in the patent specification.' (internal quotation marks omitted)."). (underline bolding and itallics added)
The claimed “quantum processor” scope would encompass “a topological quantum computing device using Majorana zero modes”.
One article about the Majorana zero mode “Quantized Majorana conductance” (Nature, retracted March 8 2021) has been retracted. The retraction specifically discloses:
In this Letter, we reported electrical measurements and numerical simulations of hybrid superconducting–semiconducting nanowires in a magnetic field. We reported plateaus in the conductance at 2e2/h, which we interpreted as evidence for the presence of Majorana zero-modes. However, several inconsistencies were pointed out by Sergey Frolov and Vincent Mourik between the raw measurement data that was made available to them and the figures that were published in the paper. We therefore re-analysed all the existing raw data for our original measurements and rebuilt the original experimental set-up for a re-calibration of the conductance values. We established that the data in two of the figures (Fig. 2a and Extended Data Fig. 4b) had been unnecessarily corrected for charge jumps (corrections that were not mentioned explicitly in the paper), and that one of the figure axes was mislabelled (Fig. 4b). The new conductance calibration shifted the plateau values by 8 per cent, above 2e2/h, which affects all the figures1. When the data are replotted over the full parameter range, including ranges that were not made available earlier, points are outside the 2-sigma error bars. We can therefore no longer claim the observation of a quantized Majorana conductance, and wish to retract this Letter. (underline added)
This retraction is evidence that the applicant was not in possession of a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20.
The PTAB has recognized that quantum computing is “complex and immature”. Ex parte Javadiabhari, Appeal No. 2023-001818, Application No. 16/296,817, slip op. at 4–9 (P.T.A.B. June 13, 2024).
IEEE spectrum article “Major(ana) Backpedaling: Microsoft-Backed Quantum Computer Research Retracted” further explains “[i]n a 2018 study in Nature, Microsoft-backed scientists claimed they found strong evidence of these quasiparticles within a special kind of superconductor, a discovery they suggested could pave the way for a powerful kind of quantum computer. Now the researchers have officially retracted this work, citing ‘insufficient scientific rigor.’”. The article also notes “[d]irectly proving that Majorana zero modes actually exist, however, has proven extraordinarily difficult.” Both the retraction and the article are evidence that the applicant was not in possession of a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20.
A Nature article “Evidence of elusive Majorana particle dies — but computing hope lives on” discloses “[n]o one yet knows how to detect Majorana fermions directly” and “[i]t remains to be seen whether Majorana states exist”. The article is another piece of evidence that the applicant was not in possession of a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20.
NIST (National Institute for Science and Technology) has a website called “Quantum Computing Explained” (Quantum Computing Explained | NIST). “Quantum Computing Explained” describes Topological (qubits), in the “Qubit Contenders” section, as “[t]his hypothetical type of qubit, which has not yet been created in the lab, would encode quantum information by braiding “quasiparticles” that emerge from the collective behavior of individual particles such as electrons.“ “Quantum Computing Explained” also discloses “Topological qubits require temperatures near absolute zero and complicated structures often involving superconducting and semiconducting materials. They have proved challenging to build, and researchers are still seeking definitive evidence that they have managed to make one”(underline added). “Quantum Computing Explained” is another piece of evidence that the applicant was not in possession of a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20.
Enablement
Claims 27-50 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, because the specification, while being enabling for ion trap quantum computer, does not reasonably provide enablement for a topological quantum computing device using Majorana zero modes. The specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make the invention commensurate in scope with these claims.
The specification, while being enabling for certain disclosed embodiments, does not reasonably teach a person of ordinary skill in the art how to make and use the full scope of the claimed invention without undue experimentation. See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988).
Whether experimentation is undue is determined by balancing multiple factual considerations, including: (1) the quantity of experimentation necessary; (2) the amount of direction or guidance presented; (3) the presence or absence of working examples; (4) the nature of the invention; (5) the state of the prior art; (6) the relative skill of those in the art; (7) the predictability or unpredictability of the art; and (8) the breadth of the claims. Id.
A. Breadth of the Claims
The claims are broad in scope. The claimed “quantum processor” scope would encompass “any and all” quantum processors.
MPEP 2164.08 [R-01.2024] discloses “the first analytical step requires that the examiner determine exactly what subject matter is encompassed by the claims. See, e.g., AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244, 68 USPQ2d 1280, 1287 (Fed. Cir. 2003)” (underline and bolding added)
Claim 27 discloses “configuring a quantum processor to classify input data” and “configuring physical qubits and quantum gates of the quantum processor in accordance with the trained variational parameters”.
Claim 39 discloses “executing the trained variational quantum classifier on a quantum processor to assign a class label to input sample”.
Claim 44 discloses “cause the quantum processor to apply the trained variational quantum circuit to a quantum state”.
Claim 48 discloses “programming a quantum processor to classify”.
The applicant’s specification page 9 lines 1-5 discloses “The quantum processing unit(s) can be one or more of, but are not limited to… (d) a topological quantum architecture (e.g., a topological quantum computing device using Majorana zero modes).”
The claimed “quantum processor” scope would encompass “a topological quantum computing device using Majorana zero modes”. MPEP 2161.01 III discloses:
“[w]hen a claim is not limited to any particular structure for performing a recited function and does not invoke 35 U.S.C. 112(f), any claim language reciting the ability to perform a function per se would typically be construed broadly to cover any and all embodiments that perform the recited function. Because such a claim encompasses all devices or structures that perform the recited function, there is a concern regarding whether the applicant's disclosure sufficiently enables the full scope of protection sought by the claim. In re Swinehart, 439 F.2d 210, 213, 169 USPQ 226, 229 (CCPA 1971)”. (underline added)
In this case, since the claims disclose “quantum processors” and the specification discloses “quantum processing unit(s) can be one or more of … a topological quantum computing device using Majorana zero modes”, one of ordinary skill in the art would recognize the claimed “quantum processors” would clearly encompass a topological quantum computing device using Majorana zero modes.
MPEP 2111[R-10.2019] discloses “The Patent and Trademark Office (“PTO”) determines the scope of claims in patent applications not solely on the basis of the claim language, but upon giving claims their broadest reasonable construction ‘in light of the specification as it would be interpreted by one of ordinary skill in the art.’ In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364[, 70 USPQ2d 1827, 1830] (Fed. Cir. 2004).” Phillips v. AWH Corp., 415 F.3d 1303, 1316, 75 USPQ2d 1321, 1329 (Fed. Cir. 2005). Again, since the claims disclose “quantum processors” and the specification discloses “quantum processing unit(s) can be one or more of … a topological quantum computing device using Majorana zero modes”, the claimed “quantum processors” would clearly encompass a topological quantum computing device using Majorana zero modes.
MPEP 2161.01 III discloses:
[t]he Federal Circuit has repeatedly held that the specification must teach those skilled in the art how to make and use the full scope of the claimed invention without undue experimentation. See Trs. of Bos. Univ., 896 F.3d at 1364 (“‘The scope of enablement . . . is that which is disclosed in the specification’”) (quoting Nat’l Recovery Techs., Inc. v. Magnetic Separation Sys., Inc., 166 F.3d 1190, 1196, 49 USPQ2d 1671, 1676 (Fed. Cir. 1999))) (underline added)
In this case, since the claims disclose “quantum processors” and the specification discloses “quantum processing unit(s) can be one or more of … a topological quantum computing device using Majorana zero modes”, the claimed “quantum processors” would clearly encompass a topological quantum computing device using Majorana zero modes. The examiner submits the “quantum processors” is the genus and “… a topological quantum computing device using Majorana zero modes” is a species in that genus.
The claimed “quantum processor would encompass “any and all” quantum processors, including those disclosed in the specification. MPEP 2164.08 disclose In re Wright, 999 F.2d 1557, 1562, 27 USPQ2d 1510, 1513 (Fed. Cir. 1993) (The evidence did not show that a skilled artisan would have been able to carry out the steps required to practice the full scope of claims which encompass “any and all live, non-pathogenic vaccines, and processes for making such vaccines, which elicit immunoprotective activity in any animal toward any RNA virus.” (original emphasis)). Below the evidence shows one of ordinary skill could not make and use a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20.
One article about the Majorana zero mode “Quantized Majorana conductance” (Nature, retracted March 8 2021) has been retracted. The retraction specifically discloses:
In this Letter, we reported electrical measurements and numerical simulations of hybrid superconducting–semiconducting nanowires in a magnetic field. We reported plateaus in the conductance at 2e2/h, which we interpreted as evidence for the presence of Majorana zero-modes. However, several inconsistencies were pointed out by Sergey Frolov and Vincent Mourik between the raw measurement data that was made available to them and the figures that were published in the paper. We therefore re-analysed all the existing raw data for our original measurements and rebuilt the original experimental set-up for a re-calibration of the conductance values. We established that the data in two of the figures (Fig. 2a and Extended Data Fig. 4b) had been unnecessarily corrected for charge jumps (corrections that were not mentioned explicitly in the paper), and that one of the figure axes was mislabelled (Fig. 4b). The new conductance calibration shifted the plateau values by 8 per cent, above 2e2/h, which affects all the figures1. When the data are replotted over the full parameter range, including ranges that were not made available earlier, points are outside the 2-sigma error bars. We can therefore no longer claim the observation of a quantized Majorana conductance, and wish to retract this Letter. (underline added)
This retraction is evidence that one of ordinary skill could not make and use a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20.
IEEE spectrum article “Major(ana) Backpedaling: Microsoft-Backed Quantum Computer Research Retracted” further explains “[i]n a 2018 study in Nature, Microsoft-backed scientists claimed they found strong evidence of these quasiparticles within a special kind of superconductor, a discovery they suggested could pave the way for a powerful kind of quantum computer. Now the researchers have officially retracted this work, citing ‘insufficient scientific rigor.’”. The article also notes “[d]irectly proving that Majorana zero modes actually exist, however, has proven extraordinarily difficult.” Both the retraction and the article are evidence that one of ordinary skill could not make and use a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20.
A Nature article “Evidence of elusive Majorana particle dies — but computing hope lives on” discloses “[n]o one yet knows how to detect Majorana fermions directly” and “[i]t remains to be seen whether Majorana states exist”. The article is another piece of evidence that one of ordinary skill could not make and use a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20.
NIST (National Institute for Science and Technology) has a website called “Quantum Computing Explained” (Quantum Computing Explained | NIST). “Quantum Computing Explained” describes Topological (qubits), in the “Qubit Contenders” section, as “This hypothetical type of qubit, which has not yet been created in the lab, would encode quantum information by braiding ‘quasiparticles’ that emerge from the collective behavior of individual particles such as electrons. “The webpage is another piece of evidence that one of ordinary skill could not make and use a topological quantum computing device at the time the invention was filed on 2/13/20.
Two more articles about Majorana zero devices “Epitaxy of advanced nanowire quantum devices” (Nature, retracted April 19 2022), and “Chiral Majorana fermion modes in a quantum anomalous Hall insulator–superconductor structure” (Science, retracted November 18 2022) have both been retracted.
The PTAB has repeatedly held that enablement must be commensurate with claim scope. In Ex parte Nayfeh, the Board affirmed an enablement rejection where the claims broadly covered semiconductor vacancy qubit structures beyond the embodiments actually disclosed in the specification. Ex parte Nayfeh, Appeal No. 2023-000069, Application No. 16/513,387, slip op. at 8–15 (P.T.A.B. Mar. 7, 2023).
On rehearing, the Board expressly rejected the argument that enablement is satisfied merely because some embodiments are enabled, explaining that enablement requires teaching one skilled in the art how to make and use the full scope of the claimed invention. Ex parte Nayfeh, Appeal No. 2023-000069, Application No. 16/513,387, Decision on Request for Rehearing at 7–10 (P.T.A.B. June 13, 2023).
B. Quantity of Experimentation Necessary
The quantity of experimentation necessary to practice the full scope of the claims would be substantial.
The specification as filed fails to disclose how to use a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20.
“Furor over quantum computing claim heats up” (Science vol 387 issue 6741) by Zack Savitsky discloses “[t]o better define their search for the elusive Majoranas—whose discovery has been claimed and then debunked multiple times.” (underline added)
In Ex parte Javadiabhari, the Board affirmed a § 112(a) rejection where claims recited manipulation and compilation of quantum algorithms but the specification failed to disclose any specific quantum algorithm. Ex parte Javadiabhari, Appeal No. 2023-001818, Application No. 16/296,817, slip op. at 4–9 (P.T.A.B. June 13, 2024).
The Board specifically noted: “This diagram amounts to a black box where information regarding what happens during the method steps is not described.” Id. at 8.
Similarly, the present specification requires a skilled artisan to determine through substantial experimentation how the claimed quantum functionality is achieved using a topological quantum computing device using Majorana zero modes.
C. Amount of Guidance Presented
The specification provides insufficient guidance regarding how the claimed quantum operations are implemented.
“Simulating topological quantum gates in two-dimensional magnet-superconductor
hybrid structures” by Bedow et al. discloses “[t]he creation of topological quantum gates using Majorana zero modes—an outstanding problem in the field of topological quantum computing”(abstract). The article is another piece of evidence that one of ordinary skill could not make and use a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20. (The examiner submits the “outstanding problem” disclosed in the article means that one of ordinary skill could not make and use quantum gates in a topological quantum computing device using Majorana zero modes at the time the invention was filed).
“Furor over quantum computing claim heats up” (Science vol 387 issue 6741) by Zack Savitsky discloses “[t]o better define their search for the elusive Majoranas—whose discovery has been claimed and then debunked multiple times—Microsoft researchers devised a protocol in 2021 that tests whether a device can host the quasiparticles.” This is another piece of evidence that one of ordinary skill could not make and use a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20, since the protocol was devised in 2021. MPEP 2164.05(a)[R-07.2022] discloses “Specification Must Be Enabling as of the Filing Date”.
The PTAB addressed a similar issue in Ex parte Baughman, where the claims recited synchronization of deep-learning models “using quantum entanglement.” Ex parte Baughman, Appeal No. 2023-002850, slip op. at 3 (P.T.A.B. Jan. 23, 2024).
The Board found that the specification discussed quantum entanglement only conceptually and failed to explain how entanglement would perform the claimed synchronization function. Id. at 7–10.
Likewise, the present specification identifies a desired result but does not adequately explain how the claimed quantum phenomenon achieves that result.
D. Presence or Absence of Working Examples
The specification lacks working examples commensurate with the breadth of the claims.
The absence of working examples is particularly significant because the claims encompass a broad range of potential quantum-computing implementations.
The applicant has not provided any working examples of making and/or using a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20.
“Furor over quantum computing claim heats up” (Science vol 387 issue 6741) by Zack Savitsky discloses “[t]o better define their search for the elusive Majoranas—whose discovery has been claimed and then debunked multiple times—Microsoft researchers devised a protocol in 2021 that tests whether a device can host the quasiparticles.” This is another piece of evidence that one of ordinary skill could not make and use a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20, since the protocol was devised in 2021. MPEP 2164.05(a)[R-07.2022] discloses “Specification Must Be Enabling as of the Filing Date”.
E. Nature of the Invention
The claimed invention arises within the field of quantum computing.
Quantum computing is an emerging and technically complex discipline involving quantum-mechanical phenomena that lack direct classical computing analogues.
The PTAB has recognized that quantum computing is “complex and immature” and that a “massive gap exists between current quantum computing (QC) prototypes and the size and scale of QC algorithms.” Javadiabhari, slip op. at 5, 9.
NIST (National Institute for Science and Technology) has a website called “Quantum Computing Explained” (Quantum Computing Explained | NIST). “Quantum Computing Explained” describes Topological (qubits), in the “Qubit Contenders” section, as “This hypothetical type of qubit, which has not yet been created in the lab, would encode quantum information by braiding ‘quasiparticles’ that emerge from the collective behavior of individual particles such as electrons.“ “Quantum Computing Explained” also discloses “Topological qubits require temperatures near absolute zero and complicated structures often involving superconducting and semiconducting materials. They have proved challenging to build, and researchers are still seeking definitive evidence that they have managed to make one” (underline added). “Quantum Computing Explained” is another piece of evidence that one of ordinary skill could not make and use a topological quantum computing device at the time the invention was filed on 2/13/20.
IEEE spectrum article “Major(ana) Backpedaling: Microsoft-Backed Quantum Computer Research Retracted” further explains “[d]irectly proving that Majorana zero modes actually exist, however, has proven extraordinarily difficult.”
A Nature article “Evidence of elusive Majorana particle dies — but computing hope lives on” discloses “[n]o one yet knows how to detect Majorana fermions directly” and “[i]t remains to be seen whether Majorana states exist”.
“Quantum Computing’s reproducibility crisis: Majorana fermions” by Sergey Frolov discloses “Producing Majoranas in the laboratory is very hard.”
“Furor over quantum computing claim heats up” (Science vol 387 issue 6741) by Zack Savitsky discloses “[t]o better define their search for the elusive Majoranas—whose discovery has been claimed and then debunked multiple times—Microsoft researchers devised a protocol in 2021 that tests whether a device can host the quasiparticles.” This is another piece of evidence that one of ordinary skill could not make and use a topological quantum computing device using Majorana zero modes at the time the invention was filed on 2/13/20, since the protocol was devised in 2021. MPEP 2164.05(a)[R-07.2022] discloses “Specification Must Be Enabling as of the Filing Date”.
F. State of the Prior Art
The state of the art indicates that practical implementation of many claimed quantum-computing functionalities remains extremely challenging.
The PTAB has recognized that quantum computing is “complex and immature” and that a “massive gap exists between current quantum computing (QC) prototypes and the size and scale of QC algorithms.” Javadiabhari, slip op. at 5, 9.
IEEE spectrum article “Major(ana) Backpedaling: Microsoft-Backed Quantum Computer Research Retracted” further explains “[i]n a 2018 study in Nature, Microsoft-backed scientists claimed they found strong evidence of these quasiparticles within a special kind of superconductor, a discovery they suggested could pave the way for a powerful kind of quantum computer. Now the researchers have officially retracted this work, citing ‘insufficient scientific rigor.’”. The article also notes “[d]irectly proving that Majorana zero modes actually exist, however, has proven extraordinarily difficult.”
A Nature article “EVIDENCE OF ELUSIVE MAJORANA PARTICLE
DIES WITH RETRACTION” discloses “[n]o one yet knows how to detect Majorana fermions directly” (pg. 355) and “[i]t remains to be seen whether Majorana states exist” (pg. 355).
H. Predictability of the Art
The art is highly unpredictable.
The PTAB has recognized that quantum computing is “complex and immature” and that a “massive gap exists between current quantum computing (QC) prototypes and the size and scale of QC algorithms.” Javadiabhari, slip op. at 5, 9.
The scientific literature demonstrates continuing uncertainty regarding the implementation and scalability of many quantum-computing technologies.
For example, a highly publicized report of “quantized Majorana conductance” viewed as a potential step toward topological quantum computing was later retracted after the authors concluded that they could no longer support the reported observation. Hao Zhang et al., Retracted Article: Quantized Majorana Conductance, 556 Nature 74 (2018), retracted by Hao Zhang et al., Author Correction: Retraction Note: Quantized Majorana Conductance, 596 Nature 584 (2021).
A Nature article “Evidence of elusive Majorana particle dies — but computing hope lives on” discloses “[n]o one yet knows how to detect Majorana fermions directly” and “[i]t remains to be seen whether Majorana states exist”.
“Furor over quantum computing claim heats up” (Science vol 387 issue 6741) by Zack Savitsky discloses “[t]o better define their search for the elusive Majoranas—whose discovery has been claimed and then debunked multiple times—Microsoft researchers devised a protocol in 2021 that tests whether a device can host the quasiparticles.”(underline added)
These examples are not cited as prior art against the claims. Rather, they illustrate the unpredictable nature of the quantum-computing field and the difficulty of determining whether claimed quantum advantages can be reliably achieved across the full scope of broad claims.
Conclusion
Considering the Wands factors as a whole, undue experimentation would be required to make and use the full scope of the claimed invention.
In particular:
the claims are broad and would encompass topological quantum computing device using Majorana zero modes
the specification provides limited implementation guidance;
the specification lacks sufficient working examples; (a protocol for detecting Majorana zero modes had not been developed until a year after filing)
quantum computing remains a highly unpredictable art; and
substantial experimentation would be required to determine how to achieve the claimed quantum computing functionality using topological quantum computing device using Majorana zero modes.
Accordingly, claims 27-50 are rejected under 35 U.S.C. § 112(a) for lack of enablement across the full scope of the claims.
Conclusion
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/BRADLEY SMITH/Primary Examiner, Art Unit 2817
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