DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The amendment filed 01/12/2026 has been received and considered. Claims 1-3, 5, 7-12, and 15-18 are currently pending.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/12/2026 has been entered.
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 1-3, 5, 7-12, and 15-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent claim 1, Step 1: claim recites an information processing system (machine = 2019 PEG Step 1 = yes).
Independent claim 1, Step 2A, Prong One: claim recites:
for solving combinatorial optimization problems for an objective function of a plurality of variables, the information processing system comprising…
the first optimization system is configured to perform a first optimization process that allows, as continuous variables, the variables to continuously change in-between discrete values, and operates optimization…
the extraction system is configured to perform an extraction process that extracts variables, based on the continuous values of the first optimization system, and extracts, as ambivalent variables, the variables which cannot be decided to which discrete values should be taken;
and the second optimization system is configured to perform a second optimization process that solves combinatorial optimization problems, based on the variables that are the ambivalent variables extracted in the extraction process;
the second optimization system is configured to solve combinatorial optimization problems of discrete variables which are extracted by the extraction process, and is operated by a quantum annealing scheme; and
the first optimization system is operated by a classical quantum annealing scheme that is an optimization method which imitates the quantum annealing scheme
a first result comprises a result of fixing values in the first optimization process,
a second result comprises a result of fixing values in the second optimization process…
the combining system is configured to combine the first result and the second result to solve combinatorial optimization problems
The limitations are substantially drawn to mathematical concepts but for the recitation of generic computer components. Information and/or data also fall within the realm of abstract ideas because information and data are intangible. See Electric Power Group1 (Electric Power hereinafter): “Information… is an intangible”.
As to the limitations "a second optimization process that solves combinatorial optimization problems", the limitations, as drafted and under their broadest reasonable interpretation, are mathematical concepts. The application description reads (see page 4, next to last paragraph):
"The combinatorial optimization problems have binary variables for input of an objective function, and a combination of binary values of the binary variables is subjected to the optimization. The output of the objective function is a combination which satisfies some restriction conditions. The binary variables take, for example, +1 values, and restriction conditions are, for example, such that the output of the objective function should be the optimum".
As to the limitations “the second optimization system is configured to solve combinatorial optimization problems of discrete variables which are extracted by the extraction process, and is operated by a quantum annealing scheme", see dependent claim 5 “wherein: the quantum annealing scheme is conducted based on Hamiltonian of equation (1) expressed by…” – equations and/or formulas (mathematical concepts: mathematical relationships, formulas or equations, and calculations).
As to the limitations “the first optimization system is configured to perform a first optimization process that allows, as continuous variables, the variables to continuously change in-between discrete values, and operates optimization… the first optimization system is operated by a classical quantum annealing scheme that is an optimization method which imitates the quantum annealing scheme", see dependent claim 7 "wherein: the classical quantum annealing scheme is conducted based on Hamiltonian of equation (2) expressed by…" – equations and/or formulas (mathematical concepts).
If a claim limitation, under its broadest reasonable interpretation, covers mathematical concepts, then it falls within the "(a) Mathematical concepts" grouping of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes, (a) Mathematical concepts).
Independent claim 1, Step 2A Prong two: The claim recites the additional elements a classical computer; and a quantum computer, wherein: the classical computer includes a first optimization system, an extraction system, and a combining system; the quantum computer includes a second optimization system.
As to the limitations “outputs evaluation which satisfies some restrictive conditions, using the continuous variables”, they are considered generic displaying. Displaying has not been held by the courts to be enough to qualify as “significantly more”. They are considered insignificant extra-solution activity. See Electric Power.
This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Independent claim 1, Step 2B: As discussed with respect to Step 2A, the claim recites the additional elements a classical computer; and a quantum computer, wherein: the classical computer includes a first optimization system, an extraction system, and a combining system; the quantum computer includes a second optimization system, and a signal comprising the second result is transmitted to the classical computer by the quantum computer. They are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with computers. Their collective functions merely provide conventional computer implementation. The use of computers to implement the abstract idea of a mathematical or mental algorithm has not been held by the courts to be enough to qualify as “significantly more”. As to the limitations "a signal comprising the second result is transmitted to the classical computer by the quantum computer", see Figure 1. The computer implementation is described in the specification (underline emphasis added):
'The classical computer 20 is an information processing system which conducts computation with utilizing classical bits. The classical computer 20 may equip a central processing unit (CPU) and a general-purpose computing on graphics processing unit (GPGPU), and would be an Ising machine which solves Hamilton dynamical systems, such as a simulated bifurcation machine (SBM) manufactured by Toshiba Corporation. Such Hamilton dynamical systems may be also called Molecular Dynamics (MD). The classical computer 20 could be also a coherent Ising machine (CIM) manufactured by Nippon Telegraph and Telephone Corporation, which utilizes bifurcation phenomena of coherent light.
The quantum computer 30 consists of quantum mechanical bits and conducts computation with utilizing such quantum bits. An example of quantum computer would be a quantum processing unit (QPU) manufactured by D-wave systems, Inc.’ (see page 5, lines 2-13)
and
'As shown in Fig. 1, the classical computer includes a continuous optimization system 22 (that corresponds to a first optimization system), an extraction system 24, and a combining system 26. The quantum computer 30 includes a binary optimization system 32 (that corresponds to a second optimization system)' (see page 6, lines 25-28).
As to the "quantum computer" (page 5, lines 2-13), quantum computing, Wikipedia, discloses “Any computational problem that can be solved by a classical computer can also be solved by a quantum computer… Conversely, any problem that can be solved by a quantum computer can also be solved by a classical computer, at least in principle given enough time” (see page 1, last paragraph to page 2, 1st paragraph). See MPEP 2106.05(b) Particular Machine and also MPEP '2106.05(h) Field of Use and Technological Environment [R-10.2019] Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than generally linking the use of a judicial exception to a particular technological environment or field of use. As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr... Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application'.
As discussed with respect to Step 2A, claim recites displaying, these limitations are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration.
Thus, taken alone the individual additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the additional elements taken individually. There is no indication that the combination of additional elements improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claims do not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Claims 17 and 18 recite substantially the same elements as claim 1 and are rejected for the same reasons above. Further, the additional elements of these claims a computer-readable storage medium and a computer are rejected below:
Independent claim 18, Step 2A Prong two and 2B: As to the further additional elements computer-readable storage medium and a computer, they are interpreted as drawn to a generic computer. (See Independent claim 1, Step 2B above).
Dependent claims, Step 2A, Prong One: The claim limitations further the mathematical concepts of their independent claim. If a claim limitation, under its broadest reasonable interpretation, covers mathematical concepts, then it falls within the "(a) Mathematical concepts" grouping of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes, (a) Mathematical concepts).
Dependent claims, Step 2A Prong Two: The dependent claims do not include more additional elements. This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Dependent claims, Step 2B: As discussed with respect to Step 2A, in the dependent claims, no more additional elements are provided and therefore the claims do not provide an inventive concept in Step 2B. Therefore, the claims do not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Allowable Subject Matter
Claims 1-3, 5, 7-12, and 15-18 are allowable over prior art of record. They will be allowed once all outstanding rejections/objections are traversed.
A reason for the indication of allowable subject matter was provided in the Office Action dated 12/20/2023.
Response to Arguments
Regarding the claim objections, the amendment corrected all deficiencies, and those objections are withdrawn.
Regarding the rejections under 101, Applicant's arguments have been considered but they are not persuasive. Claim rejections remain. Applicant argues, (see page10, 8th paragraph to page 11, next to last paragraph):
‘… Claims 1, 17, and 18 recite "a classical computer" and "a quantum computer" and have been further amended to recite "a signal comprising the second result is transmitted to the classical computer by the quantum computer", as discussed during the interview.
Example 41 of the Subject Matter Eligibility Examples teaches that "The combination of additional elements in the claim (receiving the plaintext word signal at the first computer terminal, transforming the plaintext word signal to one or message block word signals MA, and transmitting the encoded ciphertext word signal CA to the second computer terminal over a communication channel) integrates the exception into a practical application. In particular, the combination of additional elements use the mathematical formulas and calculations in a specific manner that sufficiently limits the use of the mathematical concepts to the practical application of transmitting the ciphertext word signal to a computer terminal over a communication channel. Thus, the mathematical concepts are integrated into a process that secures private network communications, so that a ciphertext word signal can be transmitted between computers of people who do not know each other or who have not shared a private key between them in advance of the message being transmitted, where the security of the cipher relies on the difficulty of factoring large integers by computers. Thus, the claim is not directed to the recited judicial exception, and the claim is eligible." (Emphasis added).
Similar to Example 41, Claims 1, 17, and 18 recite "a classical computer", "a quantum computer", and "a signal comprising the second result is transmitted to the classical computer by the quantum computer", comprise additional elements in the claim that integrates the exception into a practical application. This combination of additional elements limit the use of the alleged mathematical concepts to the practical application of transmitting a signal comprising the second result to the classical computer by the quantum computer. Thus, the alleged mathematical concepts are integrated into a process that combines the first result and the second result to solve combinatorial optimization problems using quantum computing…’
As to Applicant’s arguments about "solve combinatorial optimization problems", the application description reads (see page 4, next to last paragraph):
"The classical-quantum hybrid system 12 is intended to solve combinatorial optimization problems. The combinatorial optimization problems have binary variables for input of an objective function, and a combination of binary values of the binary variables is subjected to the optimization. The output of the objective function is a combination which satisfies some restriction conditions. The binary variables take, for example, +1 values, and restriction conditions are, for example, such that the output of the objective function should be the optimum. These combinatorial optimization problems can be applied to logistics, scheduling, portfolio, and urban design, or the like, and are not limited to these examples".
The MPEP reads (underline emphasis added):
'2106.04(d)(1) Evaluating Improvements in the Functioning of a Computer, or an Improvement to Any Other Technology or Technical Field in Step 2A Prong Two [R-10.2019]... the "improvements" analysis in Step 2A determines whether the claim pertains to an improvement to the functioning of a computer or to another technology… invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity… the word "improvements" in the context of this consideration is limited to improvements to the functioning of a computer or any other technology/technical field, whether in Step 2A Prong Two or in Step 2B...'.
Example 41 – Cryptographic Communications reads (underline emphasis added):
‘2A - Prong 2: Integrated into a Practical Application? Yes. The combination of additional elements in the claim (receiving the plaintext word signal at the first computer terminal, transforming the plaintext word signal to one or message block word signals MA, and transmitting the encoded ciphertext word signal CA to the second computer terminal over a communication channel) integrates the exception into a practical application… the mathematical concepts are integrated into a process that secures private network communications, so that a ciphertext word signal can be transmitted between computers of people who do not know each other or who have not shared a private key between them in advance of the message being transmitted, where the security of the cipher relies on the difficulty of factoring large integers by computers. Thus, the claim is not directed to the recited judicial exception, and the claim is eligible’
Examiner's response: Applicant's argument is not persuasive, because the claims may provide an improved abstract idea but do not provide limitations such that an improvement to the functioning of a computer itself or to any other technology is realized. An improved abstract idea is an abstract idea. An improved abstract idea is a species of the genus abstract idea. As to the argued 'the alleged mathematical concepts are integrated into a process that combines the first result and the second result to solve combinatorial optimization problems using quantum computing', see supra application description, page 4, next to last paragraph, the claims provide an improved abstract idea. See MPEP 2106.04(d)(1) supra: 'the word "improvements"… is limited to improvements to the functioning of a computer or any other technology/technical field'.
Applicant’s analogy to Example 41 fails, because securing private network communications is an improvement to a computer itself (underline emphasis added). In Example 41, "the mathematical concepts are integrated into a process that secures private network communications" (see supra Example 41 – Cryptographic Communications). In the claimed invention, on the other hand, abstract idea improvements (an improved mathematical solution) are not improvements to the functioning of a computer itself or to any other technology. Therefore, the claimed invention is clearly distinguished from that of Example 41.
The claims provide no additional elements/limitations such that an improvement to a computer itself or any other technology is realized (underline emphasis added). Therefore, the rejections are maintained.
Examiner invites Applicant to elaborate the additional elements recited in any of the claims that qualify as “integrating” under Step 2A Prong two or “significantly more” under step 2B.
Conclusion
Examiner would like to point out that any reference to specific figures, columns and lines should not be considered limiting in any way, the entire reference is considered to provide disclosure relating to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUAN CARLOS OCHOA whose telephone number is (571)272-2625. The examiner can normally be reached Mondays, Tuesdays, Thursdays, and Fridays 9:30AM - 7:00 PM.
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/JUAN C OCHOA/Primary Examiner, Art Unit 2186
1 Electric Power Group, LLC v. Alstom S.A., 119 USPQ2d 1739 Fed. Cir. 2016