DETAILED ACTION
This Office Action is in response to the amendment filed 12/4/2025.
Claims 11-18 and 20 are pending in this application. Claims 11 and 20 are independent claims. This Office Action is made non-final after an RCE filed 1/2/2026.
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 11-18 and 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
As per Claim 11, it recites solving an Ising problem including a plurality of mathematical variables and matrices, initializing mathematical variables, performing a first variable update and a second variable update which generate values by adding value(s) to function(s) (e.g. a product-sum function) respectively, and outputting values of the updated variables, wherein many of the claimed variables and functions are defined via mathematical principals and relationships in the claim.
Under Prong One of Step 2A of the USPTO current eligibility guidance (see MPEP § 2106), such limitations cover mathematical calculations, relationships, and/or formulas. See e.g. the mathematical algorithm shown in Figure 4, as well as equations 1 and 6-8 in the instant specification. Therefore, the claim includes limitations that fall within the “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Under Prong Two of Step 2A, this judicial exception is not integrated into a practical application. The claim additionally recites a calculation device comprising a memory and one or more processors, storing variables in the memory, and displaying an image on a display device. However, these elements are recited at a high-level of generality (i.e. as generic computer components performing generic computer function(s) such as mathematical computations, storing data, and displaying information). For example, the “memory” merely operates to generically store and provide data for use in the claimed abstract idea, and the claim fails to recite structural or functional limitations that would make the memory any more particular than a generic computer memory. Since the claim fails to include any detail(s) as to the structure of the claimed processor, memory, or display device, or how they particularly function to perform the recited calculations or functions, these additional limitations fail to provide a meaningful limitation on the claimed steps, and amount to no more than mere instructions to apply the exception using generic computer components.
The claim additionally recites acquiring a matrix representing the Ising problem, and outputting the solution to the Ising problem, i.e. values of the calculated mathematical variables. However, these limitations merely recite a general means of inputting data and outputting result(s) to/from an abstract idea. Such steps amount to mere data gathering or output, i.e. insignificant extra-solution activity, as they are recited at a high level of generality, which fails to impose a meaningful limit on the corresponding claim limitations (see MPEP 2106.05(g)).
Moreover, limiting the input and output data to “Ising” data merely describes what the mathematical data represents, without making the claim any less abstract or altering/adding to the performance of the claimed mathematical calculations. Thus, it fails to impose a meaningful limit on the remaining steps and therefore only generally links the abstract idea to a particular technology or field of use (see e.g. MPEP 2106.05(h), “Limiting the abstract idea of collecting information [and] analyzing it…to data related to the electric power grid…is simply an attempt to limit the use of the abstract idea to a particular technological environment”).
Finally, the claim recites displaying on the display device “a monitoring image representing a temporal change in [the variables] based on the output values of [the variables]”. This may be interpreted as simply displaying the values of the calculated mathematical variables themselves, or as the dependent claims recite, plotting and/or graphing the mathematical variable values. Such a step could be attached to any mathematical calculation or algorithm, and could be performed mentally and/or with pen and paper, and thus fails to impose a meaningful limit on the corresponding or remaining claim limitations. Such a step therefore amounts to insignificant extra-solution activity. See e.g. MPEP 2106.05(a)(II), “Gathering and analyzing information using conventional techniques and displaying the result”; MPEP 2106.05(f), “The claims were found to be directed to the abstract idea of ‘collecting, displaying, and manipulating data.’”; MPEP 2106.05(g), “Selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display”; and MPEP 2106.05(h), “Limiting the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis to data related to the electric power grid.”
Accordingly, the abstract idea is not integrated into a practical application because the additional element(s) do not impose any meaningful limits on practicing the abstract idea, i.e. the claim is directed to an abstract idea.
Under Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, using a generic processor or generic computer component(s) to perform the claimed mathematical steps amounts to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See MPEP § 2106.05(f). Moreover, storing and retrieving data in a memory is well-understood, routine, conventional activity that fails to qualify as significantly more than the judicial exception. See MPEP 2106.05(d)(II), “storing and retrieving information in memory”. Additionally, generically receiving and outputting data to/from the recited judicial exception represents mere data gathering/data output and is insignificant extra-solution activity. The courts have found limitations directed to inputting and outputting information electronically, when recited at a high level of generality, to be well-understood, routine, and conventional. See MPEP 2106.05(d)(II), “storing and retrieving information in memory”, “receiving or transmitting data over a network”. Furthermore, claiming mathematical steps using data that represent particular mathematical calculations amounts to no more than generally linking the abstract idea to a particular technology or field of use, which fails to provide an inventive concept. See MPEP 2106.05(I)(A) and 2106.05(h), “Limiting the use of the formula…to determining the circumference of a wheel” and “Limiting the abstract idea…to data related to the electric power grid.” Finally, displaying the results of mathematical calculations or equations – including plotting or graphing such results – is well-understood, routine, and conventional activity. The references by backthenhistory.com and meta-calculator.com attached to the previous Office action explain that the first commercially-viable graphing calculator was introduced in 1985 by Casio, which plotted graphs based on multiple calculations, formulas, and equations, and was adopted for use by Ohio schools with other schools soon following suit. See also the reference by Moler attached to the previous Office action (sections 3.7 and 3.7), which explains that plotting and graphics, i.e. in response to mathematical equations such as ordinary differential equations ODEs, have been an essential part of MATLAB since the first MathWorks version in 1985. Well-understood, routine and conventional activity cannot provide an inventive concept. Accordingly, Claim 11 is not patent-eligible under 35 U.S.C. 101.
As per Claims 12-18, they are rejected under 35 U.S.C. 101 as non-statutory for at least the reasons stated above. The claims are dependent on Claim 11, but fail to include any additional elements sufficient to amount to significantly more than the judicial exception.
Claims 12-18 recite further limitations with respect to displaying, graphing, or plotting the mathematical results on the display device. As described above, displaying, graphing, or plotting mathematical results, recited in a way that could be attached to any mathematical calculation or algorithm, fails to impose meaningful limits on practicing the abstract idea, is insignificant extra-solution activity, and is well-understood, routine and conventional activity. Thus, the claims do not qualify as a practical application under Prong Two of Step 2A and do not provide an inventive concept under Step 2B. Accordingly, the claims are not patent-eligible under 35 U.S.C. 101.
As per Claim 20, it recites similar limitations to that of Claim 11, without reciting any new additional elements that impose meaningful limits on practicing the abstract idea or that are sufficient to amount to significantly more than the judicial exception. Thus, Claim 20 is rejected under the same rationale as presented in the above rejection of Claim 11.
Response to Arguments
Applicant's arguments filed 12/4/2025 (hereinafter “Remarks”) with respect to 35 U.S.C. 101 have been fully considered but they are not persuasive.
Regarding Step 2A, Prong One:
Applicant argues on Page 13 of the Remarks that the claims do not mathematical concepts in the abstract, but rather sets forth a concrete hardware structure, i.e. “a specialized hardware device”, that performs the recited steps.
The Examiner respectfully submits that in Prong One of Step 2A, the Examiner “should determine whether a claim recites an abstract idea by (1) identifying the specific limitation(s) in the claim under examination that the examiner believes recites an abstract idea, and (2) determining whether the identified limitations(s) fall within at least one of the groupings of abstract ideas” (see MPEP § 2106.04(a)). Moreover, “a mathematical concept need not be expressed in mathematical symbols, because ‘[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula” (MPEP 2106.04(a)(2)(I)).
In the instant case, the Examiner has identified limitations in Claim 11 that explicitly recite mathematical relationships and calculations. For example, “a jth Ising spin among the N Ising spins is represented by a matrix Ji,j, N being an integer equal to or greater than 2, i being an integer equal to or greater than 1 and equal to or smaller than N, j being an integer different from i and equal to or greater than 1 and equal to or smaller than N” are explicitly mathematical relationships, i.e. definitions. Furthermore, “adding a value obtained by a second function and a value obtained by a third function to the second value” wherein “the third function includes a product-sum operation of the matrix Ji,j and N first variables xj” explicitly recite mathematical calculations such as addition and product-sum operation. Finally, the claim recites limitations such as initializing variables and performing a first variable update and a second variable update. These limitations do not merely involve mathematical concepts, they are explicitly described and/or defined in the specification with mathematical equations (see Figure 4 and equations 1 and 6-8 in the instant specification). Thus, the limitations in question require specific mathematical calculations by referring the calculations by name, i.e. first variable update and second variable update, that are described and/or defined by specific corresponding equations found in the specification, and in turn recite an abstract idea, i.e. “mathematical concepts”.
Once specific limitations in the claim are determined to recite an abstract idea under Prong One of Step 2A, the analysis proceeds to Prong Two of Step 2A as well as Step 2B, wherein the remaining limitations, i.e. “additional elements”, are identified and analyzed both individually and together with the claim as a whole, in which it is asked if the additional element(s) provide a meaningful limitation(s) on the abstract idea, how do the additional element(s) significantly aid the abstract limitations, is the claimed concept necessarily rooted in computer technology, etc.
In this case, the result of such analysis/questions are that any additional limitations recited in the claim do not meaningfully limit the judicial exception, that the additional limitations are claimed without detail or specificity, and that the additional limitations merely invoke generic computer component(s) as a tool upon which the median determining method is applied (i.e. “apply it’) and/or mere instructions to apply the exception. See § MPEP 2106.05(f)(2), “Whether the claim invokes computers or other machinery merely as a tool… 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.” Further discussion regarding Prong Two of Step 2A and Step 2B can be found in the above claim rejections as well as the additional Response to Arguments below.
Moreover, the Examiner does not find that the claim recites a “specialized hardware device” for performing the claimed mathematics. As noted in the above claim rejections, the claimed calculation device comprising a memory, one or more processors, and a display device are recited generically and without specificity. While such additional elements provide a “concrete hardware structure” (i.e. a computer), they fail to constitute a particular machine, and instead are interpreted as a generic computer or computer system comprising a general purpose processor, as claimed and in light of the specification. See at least Paragraph 0032 of Applicant’s patent application publication US 2022/0019714, “a general-purpose computer can be used as the calculation device 100”.
Regarding Step 2A, Prong Two:
Applicant argues on Page 14 of the Remarks that the claimed calculation device is not a generic computer but rather a specialized “Ising machine” which is hardware designed to solve the Ising problem, and that acquiring a matrix representing the Ising problem and outputting a solution to the Ising problem provide a practical application of the claimed mathematical principles.
The Examiner respectfully submits that the claim does not recite an “Ising machine” or specialized hardware. As noted in the Response to Arguments above, the claim recites a “calculation device” comprising a memory, one or more processors, and a display device for performing the claimed mathematical steps, which is a “general-purpose computer”. Furthermore, inputting data representing a particular mathematical problem and outputting a solution to that particular problem fail to provide a meaningful limit on the general-purpose computer, or on the performance of the mathematics. In other words, inputting data to a computer and outputting a mathematical solution from the computer does not transform a general-purpose computer into a particular machine such as a specialized machine with particular, specially-designed hardware, regardless of the type of mathematical computation is performed utilizing the input data and output solution. As described in the above claim rejections, such elements amount to insignificant extra-solution activity such as mere data input/output or merely generally linking the abstract idea to a particular technology or field of use.
Applicant argues on Pages 15-17 of the Remarks that the claims recite additional elements that amount to a technological improvement in computer functionality and to the technical field of solving optimization problems. Applicant also argues that the instant claims are similar to the claims in US Application 16/319,040, which were found by an Appeals Review Panel to integrate an abstract idea into a practical application by reflecting an improvement to the functioning of a computer or an improvement to other technology or technical field.
The Examiner respectfully submits that the claims here are dissimilar from those in US 16/319,040 (hereinafter “the ‘040 application”). According to Applicant’s arguments, the claims in the ‘040 application were found to include “recitations which optimize the performance of a machine learning model on new tasks”, as well as “improve the operation of the model itself”. By optimizing and improving a machine learning model and its operations, the claims in the ‘040 application provide a technological improvement to a particular technology or technical field, since machine learning, machine learning models and their operations are rooted in computer technology.
However, the instant claims are directed to “solving an Ising problem” (or “solving optimization problems”), which is a mathematical procedure(s). Speeding up or more quickly solving a mathematical calculation is not a problem specifically arising as a consequence of technology (i.e. computer technology), and doing so by using new or simplified mathematical calculations is an improvement stemming directly from the abstract steps themselves, i.e. it is a mathematical improvement rather than a technological solution to a technological problem. See MPEP § 2106.05(a), the improvements consideration has “been referred to as the search for a technological solution to a technological problem.” In this case, the ‘040 application offered a technological improvement to a field rooted in computer technology, while the instant claims provide a mathematical improvement stemming from a new mathematical algorithm.
Additionally, Applicant notes on Pages 16-17 of the Remarks that the invention addresses shortcomings of conventional technology by introducing a calculation device that alternately updates two types of variables, and that “This dual-variable approach is not conventional and enables more efficient computation…When the new equations of motion given by Equation (6) to Equation (8) are used…[the] amount of calculation is thus reduced.” In other words, any improvements to “solving optimization problems” or “solving an Ising problem” are achieved as a result of “new equations of motion” in the unconventional “dual-variable approach”, which is an improvement stemming directly from the abstract mathematical steps. However, claim limitations reciting the excluded subject matter (i.e. the abstract idea) cannot satisfy the “improvement consideration” under Prong Two of Step 2A or under Step 2B. See MPEP § 2106.05(a), “[i]t is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements.” Therefore, any reduction in the amount of calculation (or increase in computation efficiency) offered by the claimed invention improperly relies upon the excluded subject matter (i.e. the abstract idea), and cannot satisfy the “improvement consideration”.
Applicant argues on Pages 17-18 of the Remarks that providing “real-time monitoring images that visualize the temporal evolution of the variables” on a display device provides immediate feedback, enhances understanding of algorithm dynamics, improves usability, and supports practical use for large-scale problems.
The Examiner respectfully submits that the limitation in question is an insignificant extrasolution activity that could be attached to any mathematical function, and therefore does not provide a meaningful limitation on the mathematical operations recited in the claim. In other words, plotting or graphing the results of a mathematical function(s) has no effect on the performance of the mathematical function(s), is merely performed at (or after) the conclusion of the mathematical function(s) or algorithm, and can be performed for nearly any mathematical function(s) or algorithm as a way to simply output the results of the calculations. Thus, the limitation does not limit the claimed mathematics in any way.
In addition, the MPEP makes clear that displaying the result(s) of data analysis is not sufficient to show an improvement to technology (MPEP 2106.05(a)(II), “Gathering and analyzing information using conventional techniques and displaying the result”), or is part of the abstract idea itself (MPEP 2106.05(f), “The claims were found to be directed to the abstract idea of ‘collecting, displaying, and manipulating data.’”; MPEP 2106.05(h), “the abstract idea of collecting information, analyzing it, and displaying certain results of the collection and analysis”). Furthermore, the Examiner provided evidence in the above claim rejections and attached references that plotting or graphing the solution to a mathematical function or algorithm is well-understood, routine and conventional. Therefore, the step of displaying the monitoring image does not provide a practical application or significantly more than the judicial exception itself.
Finally, with respect to the display device, neither the claim nor the specification provides any indication that the device is anything more than a generic computer display or computer monitor. Thus, even when viewed as a whole (i.e. with the other additional elements), the computer implementation recited in the claim is found to be merely a general purpose computer being used in its ordinary capacity, i.e. to store data, perform calculations, and display results. Such limitations do not transform the mathematical steps recited by the claim into a practical application or significantly more than the judicial exception.
Regarding Step 2B:
Applicant’s arguments regarding Step 2B are largely similar to the arguments presented regarding Step 2A, Prong One and Prong Two, and are thus addressed in the above claim rejections as well as the Response to Arguments presented above.
Conclusion
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/MATTHEW D SANDIFER/Primary Examiner, Art Unit 2151