DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Amendment
This office action is responsive to the amendments filed March 26, 2026.
Claims 1, 11 and 21 are amended.
Claims 5, 10, 15 and 20 are cancelled.
Claims 1-4, 6-9, 11-14, 16-19 and 21-24 are pending in this office action.
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 1-4, 6-9, 11-14, 16-19 and 21-24 are rejected under 35 U.S.C. 101 because the claims are directed to an abstract idea without significantly more.
Regarding claim 1, in Step 1 of the 101 analysis set forth in MPEP 2106, the claim recites “A method of estimating latent reward functions…”. A method is considered a process and is one of the four statutory categories of invention.
In Step 2a Pong 1 of the 101 analysis set forth in the MPEP 2106, the examiner has determined that the following limitations recite a process that, under the broadest reasonable interpretation, covers abstract ideas but for recitation of generic computer components:
“A method of estimating latent reward functions for the evolution of a biological system from a set of experiences, wherein each experience specifies a respective sequence of state transitions that represent an evolutionary process of the biological system” is a mathematical concept in view of specification paragraphs 0076 and Figure 6.
“(ii) initializing a current assignment which assigns the set of experiences into a first number of partitions that are each associated with a respective latent reward function” is a mental process. A person can mentally assign a set of experiences to a number of partitions using pen and paper.
“(iii) at each of a second plurality of steps:(a) updating the current assignment” is a mental process. A person can mentally assign and then make changes to the assignments using pen and paper.
“selecting a partition from a second number of candidate partitions using a random sampling process that samples according to a respective selection probability determined for each candidate partition in the second number, wherein the respective selection probability for each candidate partition in the second number to which an experience is already assigned is determined by reducing an initial probability by an amount defined by a discount parameter, thereby biasing the random sampling process toward selection of a partition having fewer or no experiences already assigned
and assigning the experience to the selected partition” is a mental process and/or a mathematical concept. A person can mentally evaluate partitions using random sampling to which fewer or no experience is assigned and make a judgement to select a partition and assign the experience. Selection according to a respective probability is a mathematical concept in view of specification paragraph 0056, 0081-0082, 0087 and 0095.
“b) updating, based on the updated current assignment, the latent reward functions in accordance with a specified update rule” is a mathematical concept in view of specification paragraphs 0085-0087.
“(iv) updating the current MDP using latent features associated with particular latent reward functions whose posterior probabilities are determined to be highest” is a mathematical concept in view of specification paragraphs 0084-0087.
If claim limitations, under their broadest reasonable interpretation, covers performance of the limitations as mental processes or mathematical concepts but for the recitation of generic computer components, then it falls within the mental processes or mathematical concept grouping of abstract ideas. According, the claim “recites” an abstract idea.
In Step 2a Prong 2 of the 101-analysis set forth in MPEP 2106, the examiner has determined that the following additional elements do not integrate this judicial exception into a practical application:
“wherein a respective latent policy is used to represent control of the biological system, and wherein each latent reward function specifies a corresponding reward to be received by the biological system by performing a respective action at each state of an environment of the biological system” is mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
“(i) generating a current Markov Decision Process (MDP) for use in characterizing biological system interactions with the environment” is mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
“modeling, with the respective updated MDP at each the second plurality of steps, a series of mutational events or an evolutionary trajectory of the biological system” is mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
Since the claim as a whole, looking at the additional elements individually and in combination, does not contain any other additional elements that are indicative of integration into a practical application, the claim is directed to an abstract idea.
In Step 2b of the 101-analysis set forth in the 2019 PEG, the examiner has determined that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above, the additional elements of “wherein a respective latent policy is used to represent control of the biological system, and wherein each latent reward function specifies a corresponding reward to be received by the biological system by performing a respective action at each state of an environment of the biological system”, “(i) generating a current Markov Decision Process (MDP) for use in characterizing biological system interactions with the environment” and “modeling, with the respective updated MDP at each the second plurality of steps, a series of mutational events or an evolutionary trajectory of the biological system” are mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
Considering the additional elements individually and in combination, and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Therefore, the claim is not patent eligible.
Regarding claim 2, it is dependent upon claim 1, and thereby incorporates the limitations of, and corresponding analysis applied to claim 1. Further claim 2 recites “wherein generating the current Markov Decision Process (MDP) comprises: setting the current MDP to be the same as a MDP from a preceding step in the first plurality of steps” which under step 2A prong II and step 2B are mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
Since the claim does not recite additional elements that either integrate the judicial exception into a practical application, nor provide significantly more than the judicial exception, the claim is not patent eligible.
Regarding claim 3, it is dependent upon claim 1, and thereby incorporates the limitations of, and corresponding analysis applied to claim 1. Further claim 3 recites “for a first step in the first plurality of steps: initializing a Markov Decision Process (MDP) with some measure of randomness” which is a mathematical concept in view of specification paragraph 0087.
The claim does not recite additional elements that either integrate the judicial exception into a practical application, nor provide significantly more than the judicial exception, the claim is not patent eligible.
Regarding claim 4, it is dependent upon claim 1, and thereby incorporates the limitations of, and corresponding analysis applied to claim 1. Further claim 4 recites “wherein the second number of candidate partitions comprise at least one empty partition to which no experience is currently assigned” which under step 2A prong II and step 2B is generally linking the use of judicial exception to a particular technological environment or field of use.
Since the claim does not recite additional elements that either integrate the judicial exception into a practical application, nor provide significantly more than the judicial exception, the claim is not patent eligible.
Regarding claim 6, it is dependent upon claim 1, and thereby incorporates the limitations of, and corresponding analysis applied to claim 1. Further claim 6 recites “wherein: the respective probability determined for each candidate partition in the second number is further based on a concentration parameter” which is a mathematical concept in view of specification paragraph 0056, 0079,0087 and 0095.
The claim does not recite additional elements that either integrate the judicial exception into a practical application, nor provide significantly more than the judicial exception, the claim is not patent eligible.
Regarding claim 7, it is dependent upon claim 1, and thereby incorporates the limitations of, and corresponding analysis applied to claim 1. Further claim 7 recites “after performing the first plurality of steps: generating, based on the updated MDPs, an output that defines the estimated latent reward functions” which is an insignificant extra solution activity of outputting under step 2A prong II. Under step 2B this insignificant extra solution activity is well understood routine and convention activity, see Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93.
Since the claim does not recite additional elements that either integrate the judicial exception into a practical application, nor provide significantly more than the judicial exception, the claim is not patent eligible.
Regarding claim 8, it is dependent upon claim 7, and thereby incorporates the limitations of, and corresponding analysis applied to claim 7. Further claim 8 recites “wherein the output further defines the estimated latent policies” which is an insignificant extra solution activity of outputting under step 2A prong II. Under step 2B this insignificant extra solution activity is well understood routine and convention activity, see Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93.
Since the claim does not recite additional elements that either integrate the judicial exception into a practical application, nor provide significantly more than the judicial exception, the claim is not patent eligible.
Regarding claim 9, it is dependent upon claim 1, and thereby incorporates the limitations of, and corresponding analysis applied to claim 1. Further claim 9 recites “wherein the specified update rule is a Langevin gradient update rule” which is a mathematical concept in view of specification paragraph 0087.
The claim does not recite additional elements that either integrate the judicial exception into a practical application, nor provide significantly more than the judicial exception, the claim is not patent eligible.
Regarding claim 11, in Step 1 of the 101 analysis set forth in MPEP 2106, the claim recites “A system comprising…”. A system is considered a machine and is one of the four statutory categories of invention.
In Step 2a Pong 1 of the 101 analysis set forth in the MPEP 2106, the examiner has determined that the following limitations recite a process that, under the broadest reasonable interpretation, covers abstract ideas but for recitation of generic computer components:
“estimating latent reward functions for the evolution of a biological system from a set of experiences, wherein each experience specifies a respective sequence of state transitions that represent an evolutionary process of the biological system” is a mathematical concept in view of specification paragraphs 0076 and Figure 6.
“(ii) initializing a current assignment which assigns the set of experiences into a first number of partitions that are each associated with a respective latent reward function” is a mental process. A person can mentally assign a set of experiences to a number of partitions using pen and paper.
“(iii) at each of a second plurality of steps:(a) updating the current assignment” is a mental process. A person can mentally assign and then make changes to the assignments using pen and paper.
“selecting a partition from a second number of candidate partitions using a random sampling process that samples according to a respective selection probability determined for each candidate partition in the second number, wherein the respective selection probability for each candidate partition in the second number to which an experience is already assigned is determined by reducing an initial probability by an amount defined by a discount parameter, thereby biasing the random sampling process toward selection of a partition having fewer or no experiences already assigned
and assigning the experience to the selected partition” is a mental process and/or a mathematical concept. A person can mentally evaluate partitions using random sampling to which fewer or no experience is assigned and make a judgement to select a partition and assign the experience. Selection according to a respective probability is a mathematical concept in view of specification paragraph 0056, 0081-0082, 0087 and 0095.
“b) updating, based on the updated current assignment, the latent reward functions in accordance with a specified update rule” is a mathematical concept in view of specification paragraphs 0085-0087.
“(iv) updating the current MDP using latent features associated with particular latent reward functions whose posterior probabilities are determined to be highest” is a mathematical concept in view of specification paragraphs 0084-0087.
If claim limitations, under their broadest reasonable interpretation, covers performance of the limitations as mental processes or mathematical concepts but for the recitation of generic computer components, then it falls within the mental processes or mathematical concept grouping of abstract ideas. According, the claim “recites” an abstract idea.
In Step 2a Prong 2 of the 101-analysis set forth in MPEP 2106, the examiner has determined that the following additional elements do not integrate this judicial exception into a practical application:
“a data processing apparatus, and one or more computer readable media having instructions stored thereon that, when executed by the data processing apparatus, cause the data processing apparatus to perform operations” are generic computer components and mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
“wherein a respective latent policy is used to represent control of the biological system, and wherein each latent reward function specifies a corresponding reward to be received by the biological system by performing a respective action at each state of an environment of the biological system” is mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
“(i) generating a current Markov Decision Process (MDP) for use in characterizing biological system interactions with the environment” is mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
“modeling, with the respective updated MDP at each the second plurality of steps, a series of mutational events or an evolutionary trajectory of the biological system” is mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
Since the claim as a whole, looking at the additional elements individually and in combination, does not contain any other additional elements that are indicative of integration into a practical application, the claim is directed to an abstract idea.
In Step 2b of the 101-analysis set forth in the 2019 PEG, the examiner has determined that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above, the additional elements of “a data processing apparatus, and one or more computer readable media having instructions stored thereon that, when executed by the data processing apparatus, cause the data processing apparatus to perform operations” are generic computer components and mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g). And “wherein a respective latent policy is used to represent control of the biological system, and wherein each latent reward function specifies a corresponding reward to be received by the biological system by performing a respective action at each state of an environment of the biological system”, “(i) generating a current Markov Decision Process (MDP) for use in characterizing biological system interactions with the environment” and “modeling, with the respective updated MDP at each the second plurality of steps, a series of mutational events or an evolutionary trajectory of the biological system” are mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
Considering the additional elements individually and in combination, and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Therefore, the claim is not patent eligible.
Regarding claims 12-14 and 16-19, they are dependent upon claim 11 and thereby incorporate the limitations of, and corresponding analysis applied to claim 11. Further, claims 12-14 and 16-19 comprise similar additional limitations as claims 2-4 and 6-9, respectively, and are rejected under the same rationale.
Regarding claim 21, in Step 1 of the 101 analysis set forth in MPEP 2106, the claim recites “One or more non-transitory computer readable media having instructions stored thereon…”. One or more non-transitory computer readable media having instructions is one of the four statutory categories of invention.
In Step 2a Pong 1 of the 101 analysis set forth in the MPEP 2106, the examiner has determined that the following limitations recite a process that, under the broadest reasonable interpretation, covers abstract ideas but for recitation of generic computer components:
“estimating latent reward functions for the evolution of a biological system from a set of experiences, wherein each experience specifies a respective sequence of state transitions that represent an evolutionary process of the biological system” is a mathematical concept in view of specification paragraphs 0076 and Figure 6.
“(ii) initializing a current assignment which assigns the set of experiences into a first number of partitions that are each associated with a respective latent reward function” is a mental process. A person can mentally assign a set of experiences to a number of partitions using pen and paper.
“(iii) at each of a second plurality of steps:(a) updating the current assignment” is a mental process. A person can mentally assign and then make changes to the assignments using pen and paper.
“selecting a partition from a second number of candidate partitions using a random sampling process that samples according to a respective selection probability determined for each candidate partition in the second number, wherein the respective selection probability for each candidate partition in the second number to which an experience is already assigned is determined by reducing an initial probability by an amount defined by a discount parameter, thereby biasing the random sampling process toward selection of a partition having fewer or no experiences already assigned
and assigning the experience to the selected partition” is a mental process and/or a mathematical concept. A person can mentally evaluate partitions using random sampling to which fewer or no experience is assigned and make a judgement to select a partition and assign the experience. Selection according to a respective probability is a mathematical concept in view of specification paragraph 0056, 0081-0082, 0087 and 0095.
“b) updating, based on the updated current assignment, the latent reward functions in accordance with a specified update rule” is a mathematical concept in view of specification paragraphs 0085-0087.
“(iv) updating the current MDP using latent features associated with particular latent reward functions whose posterior probabilities are determined to be highest” is a mathematical concept in view of specification paragraphs 0084-0087.
If claim limitations, under their broadest reasonable interpretation, covers performance of the limitations as mental processes or mathematical concepts but for the recitation of generic computer components, then it falls within the mental processes or mathematical concept grouping of abstract ideas. According, the claim “recites” an abstract idea.
In Step 2a Prong 2 of the 101-analysis set forth in MPEP 2106, the examiner has determined that the following additional elements do not integrate this judicial exception into a practical application:
“One or more non-transitory computer readable media having instructions stored thereon that, when executed by data processing apparatus, cause the data processing apparatus to perform operations” are generic computer components and mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
“wherein a respective latent policy is used to represent control of the biological system, and wherein each latent reward function specifies a corresponding reward to be received by the biological system by performing a respective action at each state of an environment of the biological system” is mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
“(i) generating a current Markov Decision Process (MDP) for use in characterizing biological system interactions with the environment” is mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
“modeling, with the respective updated MDP at each the second plurality of steps, a series of mutational events or an evolutionary trajectory of the biological system” is mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
Since the claim as a whole, looking at the additional elements individually and in combination, does not contain any other additional elements that are indicative of integration into a practical application, the claim is directed to an abstract idea.
In Step 2b of the 101-analysis set forth in the 2019 PEG, the examiner has determined that the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As discussed above, the additional elements of “One or more non-transitory computer readable media having instructions stored thereon that, when executed by data processing apparatus, cause the data processing apparatus to perform operations” are generic computer components and mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g). And “wherein a respective latent policy is used to represent control of the biological system, and wherein each latent reward function specifies a corresponding reward to be received by the biological system by performing a respective action at each state of an environment of the biological system”, “(i) generating a current Markov Decision Process (MDP) for use in characterizing biological system interactions with the environment” and “modeling, with the respective updated MDP at each the second plurality of steps, a series of mutational events or an evolutionary trajectory of the biological system” are mere instructions to apply the judicial exception using generic computer see MPEP 2106.05(g).
Considering the additional elements individually and in combination, and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Therefore, the claim is not patent eligible.
Regarding claims 22-24, which recites “where the biological system comprises a cancer cell” this limitation under step 2A prong II and step 2B is generally linking the use of judicial exception to a particular technological environment or field of use.
Since the claim does not recite additional elements that either integrate the judicial exception into a practical application, nor provide significantly more than the judicial exception, the claim is not patent eligible.
Response to Arguments
Applicant's arguments filed March 26, 2026 with respect to 35 USC 101 have been fully considered but they are not persuasive.
Regarding 101, applicant argues that amendments which recite “selecting a partition from a second number of candidate partitions using a random sampling process that samples according to a respective selection probability determined for each candidate partition in the second number, wherein the respective selection probability for each candidate partition in the second number to which an experience is already assigned is determined by reducing an initial probability by an amount defined by a discount parameter, thereby biasing the random sampling process toward selection of a partition having fewer or no experiences already assigned” identifies specific technical improvements tied at least in part to the use of a "discount parameter" that reduces the selection probability for a partition. Applicant also argues that the present claims enable the machine-learning model to more accurately infer optimal policies and latent reward functions in a biological system at least by introducing a discount parameter to bias the selection of candidate partitions to which experiences are assigned. See remarks pages 9-11.
In response to the preceding argument examiner respectfully submits that the amended limitation of “selecting a partition from a second number of candidate partitions using a random sampling process that samples according to a respective selection probability determined for each candidate partition in the second number, wherein the respective selection probability for each candidate partition in the second number to which an experience is already assigned is determined by reducing an initial probability by an amount defined by a discount parameter, thereby biasing the random sampling process toward selection of a partition having fewer or no experiences already assigned and assigning the experience to the selected partition” is a mental process and/or a mathematical concept. A person can mentally evaluate partitions using random sampling to which fewer or no experience is assigned and make a judgement to select a partition and assign the experience. Selection according to a respective probability is a mathematical concept in view of specification paragraph 0056, 0081-0082, 0087 and 0095.
The improvements should come from the additional limitations in the claims, however applicant is identifying the improvements to the technical field from the abstract ideas. The use of a "discount parameter" that reduces the selection probability for a partition can be done via mind or could be math in view of applicant’s specification. Therefore, it remains unclear how a "discount parameter" that reduces the initial probability enables the machine-learning to more accurately infer optimal policies and latent reward functions in a biological system.
Further, the additional elements in the claims are either generic computer components being used as a tool or are mere instructions to apply the judicial exceptions using generic computer components. since the claim does not recite additional elements that either integrate the judicial exception into a practical application, nor provide significantly more than the judicial exception, the claim is not patent eligible.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 inquiry concerning this communication or earlier communications from the examiner should be directed to Usmaan Saeed whose telephone number is (571)272-4046. The examiner can normally be reached Monday-Friday 9:00am - 5:30pm.
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/USMAAN SAEED/ Supervisory Patent Examiner, Art Unit 2146
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