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 .
Response to Arguments
Applicant's arguments filed 1/09/26 have been fully considered but they are not persuasive.
The applicant argues the USC 101 rejection.
Response to Arguments
It is well-settled that collecting and analyzing information by steps people go through in their minds or by mathematical algorithms, without more, are mental processes in the abstract-idea category. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis" is abstract); Intellectual Ventures I LLC v. Cap. One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Organizing, displaying, and manipulating data of particular documents" is abstract.); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096-97 (Fed. Cir. 2016) (compiling and combining disparate data sources to generate a full picture of a user's activity, identity, frequency of activity, and the like in a computer environment to detect potential fraud does not differentiate a process from ordinary mental processes); In re Killian, 45 F.4th 1373, 1379 (Fed. Cir. 2022) ("These steps can be performed by a human, using 'observation, evaluation, judgment, [and] opinion,' because they involve making determinations and identifications, which are mental tasks humans routinely do").
The claims amount to data analysis/manipulation and using some form of AI as a tool. The transformation of data, or the mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic 'abstract idea,"' is not a transformation sufficient to integrate a judicial exception into a practical application. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir. 1994)).
Claiming AI on a high level can amount to using a black box without specifying any real details of how the AI operates or what’s in the black box. The claims need to specify the technical details of the AI.
Although the claims may specify an improvement they are only improving the abstract idea not a computer.
In response to arguments pertaining to claimed invention not being an abstract idea, the claims amount to data analysis/manipulation and using some form of AI as a tool. Claiming AI on a high level can amount to using a black box without specifying any real details of how the AI operates or what’s in the black box. The claims need to specify the technical details of the AI.
In response to applicant’s arguments pertaining to claims being directed towards a practical application, and being a method of forming symbolic models to minimize complexity of an output (pg. 11 of remarks), claims do not specify a clear practical application. What the applicant actually claimed is “upon determining that one or more of the learned decision policies are optimal decision policies, generating different Q-function candidates, environments, and transitions by applying the different plurality of the state variables, the action variables, and the reward variables to a trained regression model and selecting a final decision policy; and executing said final decision policy using an auto machine learning system”. The claimed invention amounts to mere extra-solution activity.
In order for an abstract idea to be integrated into a practical application, the improvement in a given technical field must be a byproduct of the additional elements. An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself”, as stated in MPEP 2106.5 (1). Applicant should state where within the claim limitations such an improvement is made. Practical applications must be additional elements, not abstract ideas. Prong Two: evaluate whether the claim recites additional elements that integrate the exception into a practical application of the exception. "It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception." paragraph is on 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-07.2022].
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to affect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo.
All arguments have been addressed above or below in the body of the amended rejections.
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, 3-7, 9-13, 15-18 are rejected under 35 U.S.C. 101 because the claimed inventions are directed to an abstract idea without significantly more.
Step 1 for all claims
Under the first part of the analysis, claims 1-6 recite a method, which falls within the four statutory categories and the analysis for those claims now proceeds to Step 2A, Prongs 1 and 2, and then Step 2B. Claims 7-12 and 13-18 are rejected for reciting “computer readable storage media”, which does not fall within one of the four statutory categories as this encompasses signals per se.
Claim 1
Step 2A, prong 1: the following limitation recites a mental process: “determining if one or more of the learned decision policies are optimal decision policies based on an outputted expected reward from each of the one or more learned decision policies”, which is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, with perhaps the help of pencil and paper, and is thus an abstract idea.
generating different Q-function candidates, environments, and transitions by applying the different plurality of the state variables, the action variables, and the reward variables to a trained regression model and selecting a final decision policy (Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data). For example, the context of this claim encompasses a person comparing the expected reward, a numerical value, to a given threshold and determining if the value exceeds the threshold. Thus, the claim recites an abstract idea.
Step 2A, prong 2: the following limitations recite additional elements:
“receiving a tabular dataset from a database, wherein the tabular dataset comprises state variables, action variables, and reward variables”, which is insignificant extra-solution activity of data gathering. As described in MPEP 2106.05(g), limitations that amount to merely adding insignificant extra-solution activity to the judicial exception(s) do not amount to significantly more than the exception(s) itself, and cannot integrate a judicial exception(s) into a practical application.
“generating Q-function candidates, environments, and transitions by applying a plurality of the state variables, the action variables, and the reward variables to a trained regression model”, which is recited at a high-level of generality and amounts to no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea (See MPEP 2106.05(f)).
“applying the generated Q-function candidates to a reinforcement learning algorithm to learn a decision policy for each of the Q-function candidates”, which is recited at a high-level of generality and amounts to no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea (See MPEP 2106.05(f)).
“upon determining that one or more of the learned decision policies are optimal decision policies, executing said final decision policy using an auto machine learning system”, which is recited at a high-level of generality and amounts to no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea (See MPEP 2106.05(f)).
Accordingly, at Step 2A, prong two, the additional elements do not integrate the judicial exception into a practical application.
Step 2B: In accordance with Step 2B, the claim does not include additional elements that
are sufficient to amount to significantly more that the judicial exception. As discussed above, the additional element of “receiving a tabular dataset from a database, wherein the tabular dataset comprises state variables, action variables, and reward variables” is recited at a high level of generality and amount to extra-solution activity of receiving, transmitting, and outputting data i.e. pre-solution activity of gathering data and post-solution activity of outputting data for use in the claimed process. The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory”). Furthermore, the additional elements of “generating Q-function candidates, environments, and transitions by applying a plurality of the state variables, the action variables, and the reward variables to a trained regression model”, “applying the generated Q-function candidates to a reinforcement learning algorithm to learn a decision policy for each of the Q-function candidates”, and “upon determining that one or more of the learned decision policies are optimal decision policies, executing the one or more optimal decision policies using an auto machine learning system” amount to mere instructions for applying the judicial exception using a generic computer and thus do not amount to significantly more than the judicial exception because the use of generic computing tools to execute the mere instruction for the judicial exception does not denote anything significantly more than the judicial exception (see MPEP 2106.05(f)). Accordingly, at Step 2B the additional elements when considered individually or in combination do not amount to significantly more than the judicial exception.
Claim 2
Step 2A, prong 1: the following limitations recite a mental process:
“determining one or more optimal decision policies based, at least in part, on”, which is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, with perhaps the help of pencil and paper, and is thus an abstract idea. For example, the context of this claim encompasses a person selecting one of a plurality of decision policies as being optimal based off of some metric (abstract idea of analyzing data. Mental process. A human-mind with pen and paper can determine data);
“determining that none of the learned decision policies are optimal decision policies, iteratively selecting a different plurality of state variables, action variables, and reward variables from the tabular dataset”, which is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, with perhaps the help of pencil and paper, and is thus an abstract idea. For example, the context of this claim encompasses a person selecting variables different from a previously selected group of variables from a table of data(abstract idea of analyzing data. Mental process. A human-mind with pen and paper can determine data);
analyzing available policies to determine when there is an improvement of any prior determined expected reward to ensure a selected policy is an a most favorable decision policy amongst available policies, wherein the most favorable policies are determined by iteratively selecting a different plurality of state variables, action variables, and reward variables from the tabular dataset (Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can compare data and make determinations).
Thus, the claim recites an abstract idea.
Step 2A, prong 2: the following limitation recites an additional elements:
Receiving/storing tabular dataset (mere data gathering and output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
“generating different Q-function candidates, environments, and transitions by applying the different plurality of the state variables, the action variables, and the reward variables to the trained regression model”, which is recited at a high-level of generality and using auto machine learning system amounts to no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea (See MPEP 2106.05(f)). Accordingly, at Step 2A, prong two, the additional elements do not integrate the judicial exception into a practical application.
Step 2B: In accordance with Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more that the judicial exception. As discussed above, the additional element of “generating different Q-function candidates, environments, and transitions by applying the different plurality of the state variables, the action variables, and the reward variables to the trained regression model” and using auto machine learning system amounts to mere instructions for applying the judicial exception using a generic computer and thus does not amount to significantly more than the judicial exception because the use of generic computing tools to execute the mere instruction for the judicial exception does not denote anything significantly more than the judicial exception (see MPEP 2106.05(f)). Accordingly, at Step 2B the additional element when considered individually or in combination does not amount to significantly more than the judicial exception;
Further, the receiving/storing steps were considered to be extra-solution activity in Step 2A Prong 2, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The court decisions cited in MPEP 2106.05(d)(II) indicate that merely Receiving 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). Thereby, a conclusion that the claimed storing step is well-understood, routine, conventional activity is supported under Berkheimer. The claim is not patent eligible.
Claim 3
Step 2A, prong 2: the following limitation recites an additional element: “wherein each of the environments comprise an immediate reward model and a transition model”, which links the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Accordingly, at Step 2A, prong two, the additional elements do not integrate the judicial exception into a practical application.
Step 2B: In accordance with Step 2B, the claim does not include additional elements that
are sufficient to amount to significantly more that the judicial exception. As discussed above, the additional element of “wherein each of the environments comprise an immediate reward model and a transition model” recites a field of use (see MPEP 21065.05(h)). 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, 450 U.S.175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Accordingly, at Step 2B the additional elements when considered individually or in combination do not amount to significantly more than the judicial exception.
Claim 4
Step 2A, prong 2: the following limitation recites an additional element: “wherein the state variables are one or more columns in the tabular dataset, the action variables are a different column in the tabular dataset, and the reward variables are another different column in the tabular dataset”, which links the use of the judicial exception to a particular technological environment or field of use (see MPEP 2106.05(h)). Accordingly, at Step 2A, prong two, the additional elements do not integrate the judicial exception into a practical application.
Step 2B: In accordance with Step 2B, the claim does not include additional elements that
are sufficient to amount to significantly more that the judicial exception. As discussed above, the additional element of “wherein the state variables are one or more columns in the tabular dataset, the action variables are a different column in the tabular dataset, and the reward variables are another different column in the tabular dataset” recites a field of use (see MPEP 21065.05(h)). 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, 450 U.S.175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Accordingly, at Step 2B the additional elements when considered individually or in combination do not amount to significantly more than the judicial exception.
Claim 5
Step 2A, prong 1: the following limitation recites a mental process: “wherein the outputted expected reward from each of the one or more learned decision policies is determined using a trained immediate reward model that predicts an expected reward when applying an action in a state” which is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, with perhaps the help of pencil and paper, and is thus an abstract idea. For example, the context of this claim encompasses a person using a given function to determine an expected reward as its output upon inputting a number representing a change in a state value. Thus, the claim recites an abstract idea
Step 2A, prong 2: the claim does not recite any additional elements that integrate the
judicial exception into a practical application.
Step 2B: the claim does not recite any additional elements that amount to significantly
more than the judicial exception.
Claim 6
Step 2A, prong 1: the following limitation recites a mental process: “wherein a next state is determined using a transition model that predicts a next state when applying an action in a state”, which is a process that, under its broadest reasonable interpretation, covers performance of the limitation in the mind, with perhaps the help of pencil and paper, and is thus an abstract idea. For example, the context of this claim encompasses a person using a given function to determine an altered state value as its output upon inputting a number representing an original state value and a chosen transformation to apply to this value. Thus, the claim recites an abstract idea
Step 2A, prong 2: the claim does not recite any additional elements that integrate the
judicial exception into a practical application.
Step 2B: the claim does not recite any additional elements that amount to significantly
more than the judicial exception.
Claims 7, 9-12, 13, 15-18 are substantially similar to claims 1, 3-6 and therefore, in addition to failing to recite one of the statutory categories (Step 1), they are also rejected for the reasons set forth in Steps 2A and 2B of claims 1-6, respectively.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R VINCENT whose telephone number is (571)272-3080. The examiner can normally be reached ~Mon-Fri 12-8:30.
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/DAVID R VINCENT/Primary Examiner, Art Unit 2123