DETAILED ACTION
Claims 1, 3-5, 7, 9-12, and 15-17 have been examined.
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 .
Claim Rejections - 35 U.S.C. § 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.
The claimed invention is directed to “mental steps” and “mathematical concepts” without significantly more.
The claims recite:
• convert the input data strings into input layer data strings by performing at least one of a first encoding process, a second encoding process and a third encoding process to the input data strings, the first encoding process converting an input data string into an input layer data string which expresses the input data string with one 1-bit and a plurality of 0- bits, the second encoding process letting a bit sequence corresponding to an input data string be an input layer data string, the third encoding process converting a numerical value expressed by an input data string into an input layer data string which is a scalar value (i.e., mathematical steps)
Applicant's Specification recites:
In step 5204, the conversion unit15 executes one or more encoding processes for each of the input data strings generated in step5203 to generate input layer data strings obtained by converting the input data strings. (i.e., mathematical steps)
Specifically, the conversion unit15 performs a plurality of encoding processes from the first encoding process to the third encoding process on each 128-bit input data string to obtain an input layer data string of a fixed length corresponding to 1024 input layer neurons. One element of the input layer data string may be a floating point number or a bit of a binary number (one of two values, 0 and 1). The fixed length is not limited to 1024 and may be set to any value. (i.e., mathematical steps)
The encoding processes include, for example, a single-bit process of converting an input data string into an input layer data string which expresses the input data string with one "1" bit and a plurality of "0" bits (also 15referred to as a fst encoding process), a process of directly letting a bit sequence corresponding to the input data string be an input layer data string without change (also referred to as a second encoding process), and a process of converting a numerical value expressed by the 20input data string to a single input layer data item which is a scalar value (also referred to as a third encoding process).
• extract a plurality of instructions from binary data of a target file that comprises one or more of a document file, an image file, or an audio file (i.e., mathematical steps)
Applicant's Specification recites:
…extraction unit 13 regards the binary data as a set of instructions and extracts data strings of instructions, each including an operand. As a method of extracting one instruction, a data string of one instruction may be extracted by, for example, executing disassembler processing. Any method may be used as long as a data string of one instruction can be extracted. The "instruction" according to the present embodiment is a concept including an opcode, which means an operator, and an operand, which means an object of an operation. Whether or not the binary data is actually a set of instructions does not matter.
• feature vector of a program including the instructions related to the program (i.e., mathematical steps)
• process the feature vector of the program (i.e., mathematical steps)
• instructions from binary data (i.e., mental steps)
• input data strings (i.e., mental steps)
• padding with a fixed character on data strings of the instructions so that the data strings of the instructions each have a fixed length (i.e., mental steps)
• fixed length data (i.e., mental steps)
Claim 1
Step 1 inquiry: Does this claim fall within a statutory category?
The preamble of the claim recites “1. A discrimination apparatus comprising a processor configured to…” Therefore, it is a “apparatus”, which is a statutory category of invention. Therefore, the answer to the inquiry is: “YES”.
Step 2A (Prong One) inquiry:
Are there limitations in Claim 1 that recite abstract ideas?
YES. The following limitations in Claim 1 recite abstract ideas that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG. Specifically, they are “mental steps” and “mathematical concepts”:
• convert the input data strings into input layer data strings by performing at least one of a first encoding process, a second encoding process and a third encoding process to the input data strings, the first encoding process converting an input data string into an input layer data string which expresses the input data string with one 1-bit and a plurality of 0- bits, the second encoding process letting a bit sequence corresponding to an input data string be an input layer data string, the third encoding process converting a numerical value expressed by an input data string into an input layer data string which is a scalar value (i.e., mathematical steps)
Applicant's Specification recites:
In step 5204, the conversion unit15 executes one or more encoding processes for each of the input data strings generated in step5203 to generate input layer data strings obtained by converting the input data strings. (i.e., mathematical steps)
Specifically, the conversion unit15 performs a plurality of encoding processes from the first encoding process to the third encoding process on each 128-bit input data string to obtain an input layer data string of a fixed length corresponding to 1024 input layer neurons. One element of the input layer data string may be a floating point number or a bit of a binary number (one of two values, 0 and 1). The fixed length is not limited to 1024 and may be set to any value. (i.e., mathematical steps)
The encoding processes include, for example, a single-bit process of converting an input data string into an input layer data string which expresses the input data string with one "1" bit and a plurality of "0" bits (also 15referred to as a fst encoding process), a process of directly letting a bit sequence corresponding to the input data string be an input layer data string without change (also referred to as a second encoding process), and a process of converting a numerical value expressed by the 20input data string to a single input layer data item which is a scalar value (also referred to as a third encoding process).
• extract a plurality of instructions from binary data of a target file that comprises one or more of a document file, an image file, or an audio file (i.e., mathematical steps)
Applicant's Specification recites:
…extraction unit 13 regards the binary data as a set of instructions and extracts data strings of instructions, each including an operand. As a method of extracting one instruction, a data string of one instruction may be extracted by, for example, executing disassembler processing. Any method may be used as long as a data string of one instruction can be extracted. The "instruction" according to the present embodiment is a concept including an opcode, which means an operator, and an operand, which means an object of an operation. Whether or not the binary data is actually a set of instructions does not matter.
• feature vector of a program including the instructions related to the program (i.e., mathematical steps)
• process the feature vector of the program (i.e., mathematical steps)
• instructions from binary data (i.e., mental steps)
• input data strings (i.e., mental steps)
• padding with a fixed character on data strings of the instructions so that the data strings of the instructions each have a fixed length (i.e., mental steps)
• fixed length data (i.e., mental steps)
Step 2A (Prong Two) inquiry:
Are there additional elements or a combination of elements in the claim that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception?
Applicant’s claims contain the following “additional elements”:
(1) A processor
(2) A convolutional neural network
(3) A convolutional layer
A “processor” is a broad term which is described at a high level and includes general purpose computers. M.P.E.P. § 2106.04(d)(I) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
• Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
This “processor” limitation does not integrate the additional element into a practical application and represents “insignificant extra-solution activity”. (See, M.P.E.P. § 2106.05(I)(A)).
A “convolutional neural network” is a broad term which is described at a high level. M.P.E.P. § 2106.05 (f)(2) recites in part:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
TLI Communications provides an example of a claim invoking computers and other machinery merely as a tool to perform an existing process. The court stated that the claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner. 823 F.3d at 612, 118 USPQ2d at 1747. The court then turned to the additional elements of performing these functions using a telephone unit and a server and noted that these elements were being used in their ordinary capacity (i.e., the telephone unit is used to make calls and operate as a digital camera including compressing images and transmitting those images, and the server simply receives data, extracts classification information from the received data, and stores the digital images based on the extracted information). 823 F.3d at 612-13, 118 USPQ2d at 1747-48. In other words, the claims invoked the telephone unit and server merely as tools to execute the abstract idea. Thus, the court found that the additional elements did not add significantly more to the abstract idea because they were simply applying the abstract idea on a telephone network without any recitation of details of how to carry out the abstract idea.
This “convolutional neural network” limitation does not integrate the additional element into a practical application and represents “insignificant extra-solution activity”. (See, M.P.E.P. § 2106.05(I)(A)).
A “convolutional layer” is a broad term which is described at a high level. M.P.E.P. § 2106.05 (f)(2) recites in part:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
TLI Communications provides an example of a claim invoking computers and other machinery merely as a tool to perform an existing process. The court stated that the claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner. 823 F.3d at 612, 118 USPQ2d at 1747. The court then turned to the additional elements of performing these functions using a telephone unit and a server and noted that these elements were being used in their ordinary capacity (i.e., the telephone unit is used to make calls and operate as a digital camera including compressing images and transmitting those images, and the server simply receives data, extracts classification information from the received data, and stores the digital images based on the extracted information). 823 F.3d at 612-13, 118 USPQ2d at 1747-48. In other words, the claims invoked the telephone unit and server merely as tools to execute the abstract idea. Thus, the court found that the additional elements did not add significantly more to the abstract idea because they were simply applying the abstract idea on a telephone network without any recitation of details of how to carry out the abstract idea.
This “convolutional layer” limitation does not integrate the additional element into a practical application and represents “insignificant extra-solution activity”. (See, M.P.E.P. § 2106.05(I)(A)).
The answer to the inquiry is “NO”, no additional elements integrate the claimed abstract idea into a practical application.
Step 2B inquiry:
Does the claim provide an inventive concept, i.e., does the claim recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception in the claim?
Applicant’s claims contain the following “additional elements”:
(1) A processor
(2) A convolutional neural network
(3) A convolutional layer
A “processor” is a broad term which is described at a high level and includes general purpose computers. M.P.E.P. § 2106.05 (I)(A)(i-ii) recites:
Limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include:
i. Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f));
ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d));
Further, M.P.E.P. § 2016.05(f) recites:
2106.05(f) Mere Instructions To Apply An Exception [R-10.2019]
Another consideration when determining whether a claim integrates a 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 a recitation of the words “apply it” (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do “‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on “the draftsman’s art”).
Further, M.P.E.P. § 2106.05(f)(2) recites:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
The processor is well-understood, routine, and conventional. Applicant’s Specification, page 4 recites:
A discrimination apparatus 1 according to the present embodiment includes a storage 11, an acquisition unit 12, an extraction unit 13, a padding unit 14, a conversion unit 15, and a generation unit 16. FIG. 1 shows an example in which the acquisition unit 12, the extraction unit 13, the padding unit 14, the conversion unit 15, and the generation unit 16 are implemented in electronic circuitry 10. The electronic circuitry 10 is configured by a single processing circuit, e.g., such as a central processing unit (CPU) or a graphics processing unit (GPU), or an integrated circuit such as an application specific integrated circuit (ASIC) or a field programmable gate array (FPGA). The electronic circuitry 10 and the storage 11 are connected to each other via a bus in such a manner that data can be transmitted and received therebetween. The configuration is not limited to this, and each unit may be configured as a single processing circuit or a single integrated circuit.
Therefore, the claim as a whole does not amount to significantly more than the exception itself (i.e., there is no inventive concept in the claim). (See, M.P.E.P. § 2106.05(II)).
A “convolutional neural network” is a broad term which is described at a high level. M.P.E.P. § 2106.05(f) recites:
For claim limitations that do not amount to more than a recitation of the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection. For example, an examiner could explain that implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two…
Further, M.P.E.P. § 2106.05(f)(2) recites:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. 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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
Applicant's convolutional neural network is well-understood, routine, and conventional. Applicant’s Specification recites:
As the trained CNN, a forward-propagation convolutional neural network is assumed; however, special multilayer CNNs such as so-called ResNet and DenseNet, which are different from common CNNs, are also applicable in a similar manner. Here, a convolution layer included in the trained CNN is designed to perform processing in units of instructions of a program. A training method and utilization method of the trained CNN according to the present embodiment will be described later.
Note that both special purpose and general purpose pretrained neural nets may be used in the claims.
Therefore, the claim as a whole does not amount to significantly more than the exception itself (i.e., there is no inventive concept in the claim). (See, M.P.E.P. § 2106.05(II)).
A “convolutional layer” is a broad term which is described at a high level. M.P.E.P. § 2106.05(f) recites:
For claim limitations that do not amount to more than a recitation of the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection. For example, an examiner could explain that implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two…
Further, M.P.E.P. § 2106.05(f)(2) recites:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. 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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
Applicant's convolutional layer is well-understood, routine and conventional. Applicant’s Specification recites:
As the trained CNN, a forward-propagation convolutional neural network is assumed; however, special multilayer CNNs such as so-called ResNet and DenseNet, which are different from common CNNs, are also applicable in a similar manner. Here, a convolution layer included in the trained CNN is designed to perform processing in units of instructions of a program. A training method and utilization method of the trained CNN according to the present embodiment will be described later.
Note that both special purpose and general purpose pretrained neural nets may be used in the claims.
Therefore, the claim as a whole does not amount to significantly more than the exception itself (i.e., there is no inventive concept in the claim). (See, M.P.E.P. § 2106.05(II)).
Therefore, the answer to the inquiry is “NO”, no additional elements provide an inventive concept that is significantly more than the claimed abstract ideas the claimed abstract idea into a practical application.
Claim 1 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 3
Claim 3 recites:
3. The discrimination apparatus according to claim 1, wherein a convolution filter size and stride in the convolution layer are determined so that processing is performed in units of the instructions.
Applicant’s Claim 3 merely teaches parameters of a neural network. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 3 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 4
Claim 4 recites:
4. The discrimination apparatus according to claim 1, wherein the classification result indicates a classification result of at least one of classification between a program and a non-program, classification by type of compiler used for generating the program, classification by type of program conversion tool used for generating the program, and classification by type of function included in the program.
Applicant’s Claim 4 merely teaches a classification result. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 4 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 5
Claim 5 recites:
5. The discrimination apparatus according to claim 1, wherein the processor performs disassembler processing.
Applicant’s Claim 5 merely teaches a disassembler. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 5 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 7
Step 1 inquiry: Does this claim fall within a statutory category?
The preamble of the claim recites “7. A discrimination method comprising…” Therefore, it is a “method” (or, a “process”), which is a statutory category of invention. Therefore, the answer to the inquiry is: “YES”.
Step 2A (Prong One) inquiry:
Are there limitations in Claim 7 that recite abstract ideas?
YES. The following limitations in Claim 7 recite abstract ideas that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG. Specifically, they are “mental steps” and “mathematical concepts”:
instructions from binary data
input data strings
padding with a fixed character
fixed length data
feature vector of a program
Step 2A (Prong Two) inquiry:
Are there additional elements or a combination of elements in the claim that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception?
Applicant’s claims contain the following “additional elements”:
(1) A convolutional neural network
(2) A convolutional layer
A “convolutional neural network” is a broad term which is described at a high level. M.P.E.P. § 2106.05 (f)(2) recites in part:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
TLI Communications provides an example of a claim invoking computers and other machinery merely as a tool to perform an existing process. The court stated that the claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner. 823 F.3d at 612, 118 USPQ2d at 1747. The court then turned to the additional elements of performing these functions using a telephone unit and a server and noted that these elements were being used in their ordinary capacity (i.e., the telephone unit is used to make calls and operate as a digital camera including compressing images and transmitting those images, and the server simply receives data, extracts classification information from the received data, and stores the digital images based on the extracted information). 823 F.3d at 612-13, 118 USPQ2d at 1747-48. In other words, the claims invoked the telephone unit and server merely as tools to execute the abstract idea. Thus, the court found that the additional elements did not add significantly more to the abstract idea because they were simply applying the abstract idea on a telephone network without any recitation of details of how to carry out the abstract idea.
This “convolutional neural network” limitation does not integrate the additional element into a practical application and represents “insignificant extra-solution activity”. (See, M.P.E.P. § 2106.05(I)(A)).
A “convolutional layer” is a broad term which is described at a high level. M.P.E.P. § 2106.05 (f)(2) recites in part:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
TLI Communications provides an example of a claim invoking computers and other machinery merely as a tool to perform an existing process. The court stated that the claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner. 823 F.3d at 612, 118 USPQ2d at 1747. The court then turned to the additional elements of performing these functions using a telephone unit and a server and noted that these elements were being used in their ordinary capacity (i.e., the telephone unit is used to make calls and operate as a digital camera including compressing images and transmitting those images, and the server simply receives data, extracts classification information from the received data, and stores the digital images based on the extracted information). 823 F.3d at 612-13, 118 USPQ2d at 1747-48. In other words, the claims invoked the telephone unit and server merely as tools to execute the abstract idea. Thus, the court found that the additional elements did not add significantly more to the abstract idea because they were simply applying the abstract idea on a telephone network without any recitation of details of how to carry out the abstract idea.
This “convolutional layer” limitation does not integrate the additional element into a practical application and represents “insignificant extra-solution activity”. (See, M.P.E.P. § 2106.05(I)(A)).
The answer to the inquiry is “NO”, no additional elements integrate the claimed abstract idea into a practical application.
Step 2B inquiry:
Does the claim provide an inventive concept, i.e., does the claim recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception in the claim?
Applicant’s claims contain the following “additional elements”:
(1) A convolutional neural network
(2) A convolutional layer
A “convolutional neural network” is a broad term which is described at a high level. M.P.E.P. § 2106.05(f) recites:
For claim limitations that do not amount to more than a recitation of the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection. For example, an examiner could explain that implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two…
Further, M.P.E.P. § 2106.05(f)(2) recites:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. 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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
Applicant's convolutional neural network is well-understood, routine, and conventional. Applicant’s Specification recites:
As the trained CNN, a forward-propagation convolutional neural network is assumed; however, special multilayer CNNs such as so-called ResNet and DenseNet, which are different from common CNNs, are also applicable in a similar manner. Here, a convolution layer included in the trained CNN is designed to perform processing in units of instructions of a program. A training method and utilization method of the trained CNN according to the present embodiment will be described later.
Note that both special purpose and general purpose pretrained neural nets may be used in the claims.
Therefore, the claim as a whole does not amount to significantly more than the exception itself (i.e., there is no inventive concept in the claim). (See, M.P.E.P. § 2106.05(II)).
A “convolutional layer” is a broad term which is described at a high level. M.P.E.P. § 2106.05(f) recites:
For claim limitations that do not amount to more than a recitation of the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection. For example, an examiner could explain that implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two…
Further, M.P.E.P. § 2106.05(f)(2) recites:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. 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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
Applicant's convolutional layer is well-understood, routine, and conventional. Applicant’s Specification recites:
As the trained CNN, a forward-propagation convolutional neural network is assumed; however, special multilayer CNNs such as so-called ResNet and DenseNet, which are different from common CNNs, are also applicable in a similar manner. Here, a convolution layer included in the trained CNN is designed to perform processing in units of instructions of a program. A training method and utilization method of the trained CNN according to the present embodiment will be described later.
Note that both special purpose and general purpose pretrained neural nets may be used in the claims.
Therefore, the claim as a whole does not amount to significantly more than the exception itself (i.e., there is no inventive concept in the claim). (See, M.P.E.P. § 2106.05(II)).
Therefore, the answer to the inquiry is “NO”, no additional elements provide an inventive concept that is significantly more than the claimed abstract ideas the claimed abstract idea into a practical application.
Claim 7 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 9
Claim 9 recites:
9. The discrimination method according to claim 7, wherein a convolution filter size and stride in the convolution layer are determined so that processing is performed in units of the instructions.
Applicant’s Claim 9 merely teaches parameters of a neural network. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 9 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 10
Claim 10 recites:
10. The discrimination method according to claim 7, wherein the classification result indicates a classification result of at least one of classification between a program and a non-program, classification by type of compiler used for generating the program, classification by type of program conversion tool used for generating the program, and classification by type of function included in the program.
Applicant’s Claim 10 merely teaches a classification result. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 10 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 11
Claim 11 recites:
11. The discrimination method according to claim 7, wherein the extracting the instructions includes disassembler processing.
Applicant’s Claim 11 merely teaches a disassembler. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 11 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 12
Claim 12 recites:
12. The discrimination method according to claim 7, wherein the program is malware embedded in a target file.
Applicant’s Claim 12 merely teaches malware. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 12 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 15
Step 1 inquiry: Does this claim fall within a statutory category?
The preamble of the claim recites “15. (New) A discrimination apparatus comprising a processor configured to…” Therefore, it is a “apparatus”, which is a statutory category of invention. Therefore, the answer to the inquiry is: “YES”.
Step 2A (Prong One) inquiry:
Are there limitations in Claim 15 that recite abstract ideas?
YES. The following limitations in Claim 15 recite abstract ideas that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG. Specifically, they are “mental steps” and “mathematical concepts”:
• convert the input data strings into input layer data strings by performing at least one of a first encoding process, a second encoding process and a third encoding process to the input data strings, the first encoding process converting an input data string into an input layer data string which expresses the input data string with one 1-bit and a plurality of 0- bits, the second encoding process letting a bit sequence corresponding to an input data string be an input layer data string, the third encoding process converting a numerical value expressed by an input data string into an input layer data string which is a scalar value (i.e., mathematical steps)
Applicant's Specification recites:
In step 5204, the conversion unit15 executes one or more encoding processes for each of the input data strings generated in step5203 to generate input layer data strings obtained by converting the input data strings. (i.e., mathematical steps)
Specifically, the conversion unit15 performs a plurality of encoding processes from the first encoding process to the third encoding process on each 128-bit input data string to obtain an input layer data string of a fixed length corresponding to 1024 input layer neurons. One element of the input layer data string may be a floating point number or a bit of a binary number (one of two values, 0 and 1). The fixed length is not limited to 1024 and may be set to any value. (i.e., mathematical steps)
The encoding processes include, for example, a single-bit process of converting an input data string into an input layer data string which expresses the input data string with one "1" bit and a plurality of "0" bits (also 15referred to as a fst encoding process), a process of directly letting a bit sequence corresponding to the input data string be an input layer data string without change (also referred to as a second encoding process), and a process of converting a numerical value expressed by the 20input data string to a single input layer data item which is a scalar value (also referred to as a third encoding process).
• extract a plurality of instructions from binary data of a target file that comprises one or more of a document file, an image file, or an audio file (i.e., mathematical steps)
Applicant's Specification recites:
…extraction unit 13 regards the binary data as a set of instructions and extracts data strings of instructions, each including an operand. As a method of extracting one instruction, a data string of one instruction may be extracted by, for example, executing disassembler processing. Any method may be used as long as a data string of one instruction can be extracted. The "instruction" according to the present embodiment is a concept including an opcode, which means an operator, and an operand, which means an object of an operation. Whether or not the binary data is actually a set of instructions does not matter.
• feature vector of a program including the instructions related to the program (i.e., mathematical steps)
• process the feature vector of the program (i.e., mathematical steps)
• instructions from binary data (i.e., mental steps)
• input data strings (i.e., mental steps)
• padding with a fixed character on data strings of the instructions so that the data strings of the instructions each have a fixed length (i.e., mental steps)
• fixed length data (i.e., mental steps)
• wherein a convolution filter size and stride in the convolution layer are determined so that processing is performed in units of the instructions (i.e., mental steps)
Step 2A (Prong Two) inquiry:
Are there additional elements or a combination of elements in the claim that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception?
Applicant’s claims contain the following “additional elements”:
(1) A processor
(2) A convolutional neural network
(3) A convolutional layer
A “processor” is a broad term which is described at a high level and includes general purpose computers. M.P.E.P. § 2106.04(d)(I) recites:
The courts have also identified limitations that did not integrate a judicial exception into a practical application:
• Merely reciting the words “apply it” (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f);
• Adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g); and
• Generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h).
This “processor” limitation does not integrate the additional element into a practical application and represents “insignificant extra-solution activity”. (See, M.P.E.P. § 2106.05(I)(A)).
A “convolutional neural network” is a broad term which is described at a high level. M.P.E.P. § 2106.05 (f)(2) recites in part:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
TLI Communications provides an example of a claim invoking computers and other machinery merely as a tool to perform an existing process. The court stated that the claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner. 823 F.3d at 612, 118 USPQ2d at 1747. The court then turned to the additional elements of performing these functions using a telephone unit and a server and noted that these elements were being used in their ordinary capacity (i.e., the telephone unit is used to make calls and operate as a digital camera including compressing images and transmitting those images, and the server simply receives data, extracts classification information from the received data, and stores the digital images based on the extracted information). 823 F.3d at 612-13, 118 USPQ2d at 1747-48. In other words, the claims invoked the telephone unit and server merely as tools to execute the abstract idea. Thus, the court found that the additional elements did not add significantly more to the abstract idea because they were simply applying the abstract idea on a telephone network without any recitation of details of how to carry out the abstract idea.
This “convolutional neural network” limitation does not integrate the additional element into a practical application and represents “insignificant extra-solution activity”. (See, M.P.E.P. § 2106.05(I)(A)).
A “convolutional layer” is a broad term which is described at a high level. M.P.E.P. § 2106.05 (f)(2) recites in part:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
TLI Communications provides an example of a claim invoking computers and other machinery merely as a tool to perform an existing process. The court stated that the claims describe steps of recording, administration and archiving of digital images, and found them to be directed to the abstract idea of classifying and storing digital images in an organized manner. 823 F.3d at 612, 118 USPQ2d at 1747. The court then turned to the additional elements of performing these functions using a telephone unit and a server and noted that these elements were being used in their ordinary capacity (i.e., the telephone unit is used to make calls and operate as a digital camera including compressing images and transmitting those images, and the server simply receives data, extracts classification information from the received data, and stores the digital images based on the extracted information). 823 F.3d at 612-13, 118 USPQ2d at 1747-48. In other words, the claims invoked the telephone unit and server merely as tools to execute the abstract idea. Thus, the court found that the additional elements did not add significantly more to the abstract idea because they were simply applying the abstract idea on a telephone network without any recitation of details of how to carry out the abstract idea.
This “convolutional layer” limitation does not integrate the additional element into a practical application and represents “insignificant extra-solution activity”. (See, M.P.E.P. § 2106.05(I)(A)).
The answer to the inquiry is “NO”, no additional elements integrate the claimed abstract idea into a practical application.
Step 2B inquiry:
Does the claim provide an inventive concept, i.e., does the claim recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception in the claim?
Applicant’s claims contain the following “additional elements”:
(1) A processor
(2) A convolutional neural network
(3) A convolutional layer
A “processor” is a broad term which is described at a high level and includes general purpose computers. M.P.E.P. § 2106.05 (I)(A)(i-ii) recites:
Limitations that the courts have found not to be enough to qualify as “significantly more” when recited in a claim with a judicial exception include:
i. Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f));
ii. Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry, as discussed in Alice Corp., 573 U.S. at 225, 110 USPQ2d at 1984 (see MPEP § 2106.05(d));
Further, M.P.E.P. § 2016.05(f) recites:
2106.05(f) Mere Instructions To Apply An Exception [R-10.2019]
Another consideration when determining whether a claim integrates a 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 a recitation of the words “apply it” (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do “‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on “the draftsman’s art”).
Further, M.P.E.P. § 2106.05(f)(2) recites:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
The processor is well-understood, routine, and conventional. Applicant’s Specification, page 4 recites:
A discrimination apparatus 1 according to the present embodiment includes a storage 11, an acquisition unit 12, an extraction unit 13, a padding unit 14, a conversion unit 15, and a generation unit 16. FIG. 1 shows an example in which the acquisition unit 12, the extraction unit 13, the padding unit 14, the conversion unit 15, and the generation unit 16 are implemented in electronic circuitry 10. The electronic circuitry 10 is configured by a single processing circuit, e.g., such as a central processing unit (CPU) or a graphics processing unit (GPU), or an integrated circuit such as an application specific integrated circuit (ASIC) or a field programmable gate array (FPGA). The electronic circuitry 10 and the storage 11 are connected to each other via a bus in such a manner that data can be transmitted and received therebetween. The configuration is not limited to this, and each unit may be configured as a single processing circuit or a single integrated circuit.
Therefore, the claim as a whole does not amount to significantly more than the exception itself (i.e., there is no inventive concept in the claim). (See, M.P.E.P. § 2106.05(II)).
A “convolutional neural network” is a broad term which is described at a high level. M.P.E.P. § 2106.05(f) recites:
For claim limitations that do not amount to more than a recitation of the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection. For example, an examiner could explain that implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two…
Further, M.P.E.P. § 2106.05(f)(2) recites:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. 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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
Applicant's convolutional neural network is well-understood, routine, and conventional. Applicant’s Specification recites:
As the trained CNN, a forward-propagation convolutional neural network is assumed; however, special multilayer CNNs such as so-called ResNet and DenseNet, which are different from common CNNs, are also applicable in a similar manner. Here, a convolution layer included in the trained CNN is designed to perform processing in units of instructions of a program. A training method and utilization method of the trained CNN according to the present embodiment will be described later.
Note that both special purpose and general purpose pretrained neural nets may be used in the claims.
Therefore, the claim as a whole does not amount to significantly more than the exception itself (i.e., there is no inventive concept in the claim). (See, M.P.E.P. § 2106.05(II)).
A “convolutional layer” is a broad term which is described at a high level. M.P.E.P. § 2106.05(f) recites:
For claim limitations that do not amount to more than a recitation of the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection. For example, an examiner could explain that implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two…
Further, M.P.E.P. § 2106.05(f)(2) recites:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. 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) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
Applicant's convolutional layer is well-understood, routine and conventional. Applicant’s Specification recites:
As the trained CNN, a forward-propagation convolutional neural network is assumed; however, special multilayer CNNs such as so-called ResNet and DenseNet, which are different from common CNNs, are also applicable in a similar manner. Here, a convolution layer included in the trained CNN is designed to perform processing in units of instructions of a program. A training method and utilization method of the trained CNN according to the present embodiment will be described later.
Note that both special purpose and general purpose pretrained neural nets may be used in the claims.
Therefore, the claim as a whole does not amount to significantly more than the exception itself (i.e., there is no inventive concept in the claim). (See, M.P.E.P. § 2106.05(II)).
Therefore, the answer to the inquiry is “NO”, no additional elements provide an inventive concept that is significantly more than the claimed abstract ideas the claimed abstract idea into a practical application.
Claim 15 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 16
Claim 16 recites:
16. (New) The discrimination apparatus according to claim 15, wherein the classification result indicates a classification result of at least one of classification between a program and a non- program, classification by type of compiler used for generating the program, classification by type of program conversion tool used for generating the program, and classification by type of function included in the program.
Applicant’s Claim 16 merely teaches the result of a “classification” step (i.e., a mental step). It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 16 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 17
Claim 17 recites:
17. (New) The discrimination apparatus according to claim 15, wherein the processor
performs disassembler processing.
Applicant’s Claim 17 merely teaches a well-understood, routine, and conventional disassembler. The Reverse-Engineering-Network, The Art Of Disassembly, ALPHA Release, 18 NOV 2003, pp. 1-119 recites:
13.2 Final Words
This chapter was the last part of the Intel Instruction Format. We should by now know everything (at least most of the knowledge) about the Intel Instruction Format. In the next chapter we’ll cover some few things that we didn’t mention, about the Intel Instruction Format. After the next chapter, we’ll go into an amazing journey, making our disassembler. We’ll have a great time coding our disassembler, and watching how it really decodes the bytes :) But as a suggestion from me, please don’t go on before you understand the previous chapters. If you do have some questions that the previous chapters couldn’t answer, you know where to ask us questions.
It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 17 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Response to Arguments
Applicant's arguments filed 04 DEC 2025 have been fully considered but they are not persuasive. Specifically, Applicant argues:
Argument 1
Claim Rejections Under 35 U.S.C. § 103
***
Claims 1 and 7 and their dependent claims are patentable
The Office Action states on pages 27-29 that generating "a plurality of input data strings by padding with a fixed character on data strings of the instructions SO that the data strings of the instructions each have a fixed length," as recited in previous claims 1 and 7, is disclosed in Nataraj on page 3, right column, last full paragraph, which states:
***
However, the cited portions of Nataraj at most explain the structure of a malware executable file. That is, when the size of the executable code is smaller than the size allocated as " text section," the compiler simply fills the remaining space in the " text section" with zeros. Nataraj does not distinguish between machine instructions and embedded resources, such as images within the executable file. Instead, it detects characteristic patterns that emerge by visualizing the resources.
Therefore, Nataraj does not assume processing at the instruction level as contemplated by the present claims. As shown in Figure 3 of Nataraj reproduced below, the ".text section" containing executable code in the three image samples vary in size and are not of fixed length. Consequently, using Nataraj's disclosure, it is not possible to input a fixed-length data sequence into a subsequent convolutional neural network or to perform processing at the instruction level.
Fig. 3 The images in the first row are images of 3 instances of malware belonging to the family Fakerean [26] and those in the second row belong to the family Dontovo.A [26].
Accordingly, Applicant respectfully submits that claims 1 and 7 and their dependent claims are patentable.
Amended claims 1 and 7 and new claim 15 as well as their dependent claims are patentable
The 35 U.S.C. § 103 rejections are withdrawn.
Argument 2
In addition, the Office Action does not reject previous claims 2, 3, or 8. In the interest of advancing prosecution, Applicant amended independent claim 1 to include the subject matter of previous claim 2, amended independent claim 7 to include the subject matter of previous claim 8, and presented previous claim 3 in independent form as new claim 15. For at least these additional reasons, Applicant respectfully submits that independent claims 1, 7, and 15 and their dependent claims are patentable.
The 35 U.S.C. § 103 rejections are withdrawn.
Argument 3
Rejection of claim 13 is moot
Applicant canceled claim 13 without prejudice or disclaimer thereby rendering its rejection moot.
For at least the foregoing reasons, Applicant respectfully requests withdrawal of the rejections.
The 35 U.S.C. § 103 rejections are withdrawn.
Argument 4
Dependent Claims
Although Applicant has not addressed all the issues of the dependent claims, Applicant respectfully submits that Applicant does not necessarily agree with the characterization and assessments of the dependent claims made by the Examiner, and Applicant believes that each claim is patentable on its own merits. Applicant respectfully submits that the dependent claims incorporate by reference all the limitations of the claim to which they refer and include their own patentable features and are therefore in condition for allowance. Therefore, Applicant respectfully requests the withdrawal of all claim rejections and prompts allowance of the claims.
The 35 U.S.C. § 103 rejections are withdrawn.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiries concerning this communication or earlier communications from the examiner should be directed to Wilbert L. Starks, Jr., who may be reached Monday through Friday, between 8:00 a.m. and 5:00 p.m. EST. or via telephone at (571) 272-3691 or email: Wilbert.Starks@uspto.gov.
If you need to send an Official facsimile transmission, please send it to (571) 273-8300.
If attempts to reach the examiner are unsuccessful the Examiner’s Supervisor (SPE), Kakali Chaki, may be reached at (571) 272-3719.
Hand-delivered responses should be delivered to the Receptionist @ (Customer Service Window Randolph Building 401 Dulany Street, Alexandria, VA 22313), located on the first floor of the south side of the Randolph Building.
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/WILBERT L STARKS/
Primary Examiner, Art Unit 2122
WLS
29 MAR 2026