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 .
DETAILED ACTION
Status of Claims
This action is in reply to the RCE and amendments filed May 12, 2026.
Claims 1-11 are currently pending.
Claims 1, 3, and 8 have been amended.
Claim 11 is newly presented.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on May 12, 2026 has been entered.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 1 recites “narrow down candidates for one or more contraction patterns from a plurality of contraction patterns to which a contraction rate of the neural network is set, based on the state of ignition.” It is not clear how the state of ignition relates to the contraction patterns or contraction rate and the specification does not describe this step sufficiently to enable one of ordinary skill to make and/or use the invention. Considering the Wands factors:
(A) The breadth of the claims – the claims are broad and lacking in detail.
(B) The nature of the invention – the invention is directed to neural networks and artificial intelligence.
(C) The state of the prior art – pruning neural networks is generally known.
(D) The level of one of ordinary skill – the level of ordinary skill would be high, but the specification provides no guidance and one of ordinary skill would be unable to make and/or use the claimed invention.
(E) The level of predictability in the art – the level of predictability is low as there are many ways to implement neural networks and determine how to prune/contract neural networks.
(F) The amount of direction provided by the inventor – no direction is provided regarding how the ignition state relates to the contraction patterns and contraction rate.
(G) The existence of working examples – no evidence of working examples has been provided beyond the specification.
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure – the level of experimentation would be high as there are many ways to implement neural networks and determine how to contract/prune neural networks.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 has been amended to recite: “generating the plurality of contraction patterns based on an ignition frequency of the one or more neurons.” The specification does not disclose how to generate contraction patterns based on an ignition frequency of the one or more neurons. [0041] of the instant specification discloses determining a neuron that is frequently ignited on the input data and that a low igniting frequency would result in low sensitivity, this is the only paragraph that mentions the term “frequency,” “frequently,” etc. Nowhere in the specification details how contraction patterns may be generated based on an ignition frequency and the amendments lack written description support.
Claims 1-11 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. Claim 1 has been amended to recite: “a neural network which performs an operation for an application of a host device.” The specification does not disclose a neural network which performs an operation for an application of a host device. The specification does not teach any host device or an application of a host device.
The previous rejection of claims 1-10, under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, for failing to comply with the written description requirement due to the limitation “calculate a state of ignition of neurons of the neural network by the input data, the state of ignition including a frequency with which a neuron is ignited” is withdrawn in view of Applicant’s amendments.
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 3 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention. Claim 3 recites the limitation "the one or more contraction patterns having a minimal value of the inference error" in line two. There is insufficient antecedent basis for this limitation in the claim.
The previous rejection of claims 1-10, under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, for being indefinite due to the recitation of “calculate a state of ignition of neurons of the neural network by the input data, the state of ignition including a frequency with which a neuron is ignited” is withdrawn in view of Applicant’s amendments.
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 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
When considering subject matter eligibility under 35 U.S.C. § 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter (Step 1). If the claim does fall within one of the statutory categories, the second step in the analysis is to determine whether the claim is directed to a judicial exception (Step 2A). The step 2A analysis is broken into two prongs. In the first prong (Step 2A, Prong 1), it is determined whether or not the claims recite a judicial exception (e.g. mathematical concepts, mental processes, certain methods of organizing human activity). If it is determined in step 2A, Prong 1 that the claims recite a judicial exception, the analysis proceeds to the second prong (Step 2A, Prong 2), where it is determined whether or not the claims integrate the judicial exception into a practical application. If it is determined that step 2A, Prong that the claims do not integrate the judicial exception into a practical application, the analysis proceeds to determining whether the claim is a patent-eligible application of the exception (Step 2B). If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim integrates the judicial exception into a practical application, or else amounts to significantly more than the abstract idea itself.
According to Step 1 of the analysis, in the instant case claims 1-11 are directed to a computing device. Thus, each of the claims falls within one of the four statutory categories (i.e., process, machine, manufacture, or composition of matter).
Independent claim 1: considering Step 2A, Prong One, the limitations in claim 1 including: “calculate a state of ignition of one or more neurons in the neural network by the input data,” “narrow down candidates for one or more contraction patterns from a plurality of contraction patterns to which a contraction rate of the neural network is set, based on the state of ignition,” generating the plurality of contraction patterns based on an ignition frequency of the one or more neurons,” and “selecting, using one of a plurality of contraction methods that is specific to the application of the host device, the one or more contraction patterns” covers mental processes but for the recitation of generic computer components.
MPEP 2106.04.(a)(2)(III) details “the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions.” Calculating a state of ignition, narrowing down candidates for contraction patterns, generating a plurality of contraction patterns, and selecting a contraction pattern, are all evaluations and judgements, and mental processes.
Claim 1 contains additional elements “a computing device,” “host device,” and “execute contraction of the neural network, based on the narrowed-down candidates for the one or more contraction patterns to generate a post-contraction neural network.”
Considering Step 2A, Prong Two, the judicial exception in claim 1 is not integrated into a practical application. The devices are generic computer components that do not integrate the judicial exception into a practical application; see MPEP 2106.05(b). Additionally, the executing limitation amounts to mere instructions to apply an exception; see MPEP 2106.05(f).
Considering Step 2B, the devices are generic computer component that do not amount to significantly more; see MPEP 2106.05(b). Further, the executing limitation does not amount to significantly more because it amounts to no 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; see MPEP 2106.05(f).
Therefore, claim 1 is ineligible.
Claim 2, dependent on claim 1, recites “perform[ing] inference on the post-contraction neural network to calculate an inference error and extract the one or more contraction patterns based on the inference error from among the plurality of contraction patterns” is a mental step, observation, evaluation, and judgment. Claim 2 does not include any new additional elements.
Claim 3, dependent on claim 2, recites “extract[ing] the one or more contraction patterns having a minimal value of the inference error” is a mental step, observation, evaluation, and judgment. Claim 2 does not include any new additional elements.
Claim 4 recites only additional elements and are not rejected under 101. Streamlined analysis Step 2A, Prong One, “Does the claim recite an abstract idea, law of nature, or natural phenomenon?” would be no; see MPEP 2106.04. If the language from this claim were to be incorporated into claim 1 the additional elements in claim 4 would be analyzed to determine whether they integrate the judicial exception into a practical application and/or amount to significantly more.
Claim 5 recites only additional elements and are not rejected under 101. Streamlined analysis Step 2A, Prong One, “Does the claim recite an abstract idea, law of nature, or natural phenomenon?” would be no; see MPEP 2106.04. If the language from this claim were to be incorporated into claim 1 the additional elements in claim 5 would be analyzed to determine whether they integrate the judicial exception into a practical application and/or amount to significantly more.
Claim 6, dependent on claim 1, recites “calculate[ing] a feature amount obtained by estimating … the state of ignition of each neuron of the neural network” is a mental step, observation, evaluation, and judgment.
Claim 6 includes the additional elements “receiv[ing] the input data corresponding to the neural network and a destination for application of the post-contraction neural network,” “digitalizing the state of ignition of each neuron of the neural network,” and output the feature amount as an analysis result including a feature specific to an application destination.” The receiving and output limitations are insignificant extra-solution activity that does not integrate the abstract idea into a practical application or amount to significantly more. These limitations amount to mere data gathering; see MPEP 2106.05(g). Additionally, the digitalizing limitation amounts to mere instructions to apply an exception; see MPEP 2106.05(f).
Claim 7 recites only additional elements and are not rejected under 101. Streamlined analysis Step 2A, Prong One, “Does the claim recite an abstract idea, law of nature, or natural phenomenon?” would be no; see MPEP 2106.04. If the language from this claim were to be incorporated into claim 1 the additional elements in claim 7 would be analyzed to determine whether they integrate the judicial exception into a practical application and/or amount to significantly more.
Claim 8 recites only additional elements and are not rejected under 101. Streamlined analysis Step 2A, Prong One, “Does the claim recite an abstract idea, law of nature, or natural phenomenon?” would be no; see MPEP 2106.04. If the language from this claim were to be incorporated into claim 1 the additional elements in claim 8 would be analyzed to determine whether they integrate the judicial exception into a practical application and/or amount to significantly more.
Claim 9 recites only additional elements and are not rejected under 101. Streamlined analysis Step 2A, Prong One, “Does the claim recite an abstract idea, law of nature, or natural phenomenon?” would be no; see MPEP 2106.04. If the language from this claim were to be incorporated into claim 1 the additional elements in claim 9 would be analyzed to determine whether they integrate the judicial exception into a practical application and/or amount to significantly more.
Claim 10, dependent on claim 9, recites “calculate[ing] an inference error” is a mental step, observation, evaluation, and judgment. Claim 10 does not include any new additional elements.
Claim 11 recites only additional elements and are not rejected under 101. Streamlined analysis Step 2A, Prong One, “Does the claim recite an abstract idea, law of nature, or natural phenomenon?” would be no; see MPEP 2106.04. If the language from this claim were to be incorporated into claim 1 the additional elements in claim 1 would be analyzed to determine whether they integrate the judicial exception into a practical application and/or amount to significantly more.
Claim Rejections - 35 USC § 103
The previous rejection of claims under 35 U.S.C. 103 is withdrawn in view of Applicant’s amendments and arguments, which begin on page 6 of remarks.
Response to Arguments
Applicant's arguments filed May 12, 2026 have been fully considered but they are not persuasive.
Beginning on page 5 of remarks, Applicant argues that the claim amendments overcome the previous rejections under 112(a) and 112(b). Some of the previous rejections have been overcome, but not all, and new rejections have been made. See above for details.
Beginning on page 6 of remarks, Applicant argues that the prior art rejection has been overcome due to the amendments. Examiner agrees and the previous rejection is withdrawn.
Conclusion
Claims 1-11 are rejected.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANIEL T PELLETT whose telephone number is (571)270-7156. The examiner can normally be reached Monday - Friday 9-5 EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Li Zhen can be reached on 571-272-3768. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DANIEL T PELLETT/Primary Examiner, Art Unit 2121
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