CTFR 17/543,774 CTFR 93321 2182 DETAILED ACTION The present application, filed on or after March 16, 2013, is being examined under pre-AIA. Response to Arguments 35 USC 101 . Applicant asserts that the claims as amended is not merely a mathematical concept but rather a specific technological solution to a concrete technological problem in the field of optimization, resulting in a demonstrable improvement in computer functionality (Remarks p. 10). Examiner respectfully disagrees. What is claimed with specificity, that purportedly results in improvement in computer functionality is the mathematical concepts, not a specific technological solution. Beyond, the mathematical concepts, the claim merely “applies it” in a computer, using well understood, routine and conventional components, and asserts and improvement that is a direct result of the mathematical concepts. “It is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology” (MPEP 2106.05(a)(II)). See also, the “inventive concept cannot be furnished by the unpatentable law or nature (or natural phenomenon or abstract idea) itself.” MPEP 2106.05.I. See also “[t]he judicial exception alone cannot provide the improvement". MPEP 2106.05(a). Applicant further asserts, under the step 2A prong 1 analysis, that while the claim involves mathematical concepts, the claims do not recite a mathematical concept (Remarks p. 11). Applicant asserts that instead, the claims are directed to an annealing-type optimization apparatus and method for searching for a ground state of an Ising model related to a combinatorial optimization problems and that while such optimization involves mathematical concepts, the focus is on a specific technical solution to a pervasive problem in the field of high-order combinatorial optimization: the enormous data transfer burden between a processor and memory during optimization calculations (Remarks p. 11,p. 16). As such, Applicant asserts an improvement in the efficiency of optimization apparatus (Remarks p. 11, p. 17). Examiner respectfully disagrees. Under the step 2A prong 1 analysis, the claims recite mathematical concepts, to solve a mathematical model, the Ising model. See characterization below of the most of claim 1 as reciting mathematical concepts. See also, the specification, which describes annealing-type optimization, the Ising model, and claimed elements in terms of mathematical equation, mathematical calculation, and mathematical relationships: [0021-0029] describing the Ising model, energy function, coupling coefficients, and associated bits in terms of mathematical relationships and equations. See also figures 3-4, and specification p. 13-15, and throughout the specification, which describe the claimed algorithm for solving the Ising model in terms of mathematical calculations and mathematical relationships for solving an optimization problem. See, e.g., [0044] describing the claimed invention as performing “various kinds of arithmetic processing is exemplified as an example of the optimization apparatus. In this information processing apparatus, in the simulating annealing using an Ising-type energy function, adoption/rejection of bit inversion is selected based on a difference in the energy function accompanying the bit inversion to perform optimization as one arithmetic processing. Specifically, for example, the information processing apparatus stochastically inverts one or more bits and calculates an energy change in a case where the bits are inverted, and adopts whether or not to accept the bit solution that minimizes energy.” Furthermore as to the stochastic inversion, and as claimed the “randomly selecting, as a candidate bit to be inverted”, [0045] describes using “the Monte Carlo method in which one or more bits are randomly inverted to search for the optimum solution to obtain a state x, which is the minimum energy of an energy function (E).” It is further noted that the Monte Carlo method is a mathematical calculation. For these reasons claim 1 recites mathematical concepts. Any arguably improved efficiency in the arithmetic calculations, is a direct result of the mathematical algorithm claimed, not as a result of improvement processor circuitry, memory functionality itself to reduce the data transfer burden. Applicant further asserts that the complex calculations and memory access optimizations could not be practically performed in the human mind, and therefore do not recite a mental process (Remarks p. 11-12). Examiner has characterized the claim elements as reciting mathematical concepts, not mental processes. As such, whether or not the calculations or memory access optimizations could practically be performed in the human mind is not relevant to eligibility. Applicant further asserts, under step 2A prong 2 that the claim improves the functioning of a computer or other technology consistent with Ex parte Desjardins, Enfish, and MPEP 2106.04(d)(1), and that examiner’s characterization as better math is flawed. Applicant further supports this assertion citing sections of the specification reciting computational resource requirements in solving optimization problems, and that the improvement is in a functional mechanism that reconfigures the computer-memory access protocol (Remarks p. 12-13, 16). Applicant further asserts that claim 1 recites “the processor circuit’ as the active agent for all steps including “randomly selecting”, “calculating a difference value” and “selecting adoption or rejection”, which is a concrete hardware component beyond the abstract idea (Remarks p. 15-16). Applicant further asserts that the limitation to only the auxiliary coupling coefficients during retrieval is an additional element that reflects the improvement consistent with Ex parte Desjardins (Remarks p. 18-19). Applicant similarly asserts a structural constraint on memory access architecture, similar to Enfish (Remarks p. 18). Examiner respectfully disagrees. Claim 1 recites selecting “based on a difference of a value of the energy function associated with inversion of a value of each of the plurality of bits, adoption or rejection of bit inversion to perform optimization of the energy function” (emphasis added). This limitation comprises an abstract idea. Claim 1 further recites the obtaining “a coupling coefficient corresponding to an auxiliary variable, the auxiliary variable being a product of variables corresponding to respective bits from which a variable corresponding to a specific bit in the energy function is excluded ” (emphasis added). This limitation further recites an abstract idea. Furthermore, the “randomly selecting” is also part of the mathematical calculations. See 0045] describes using “the Monte Carlo method in which one or more bits are randomly inverted to search for the optimum solution to obtain a state x, which is the minimum energy of an energy function (E).” It is further noted that the Monte Carlo method is a mathematical calculation. Furthermore, the selection of which coefficient to obtain from memory is based upon the above recited abstract idea limitations, using math to determine which bit is excluded, them obtaining the appropriate coupling coefficient from memory. Furthermore, the limitation with respect to only the auxiliary coupling coefficients being retrieved is merely an intended result of the math; not a result of the processor circuit or memory itself. As such, the claims are unlike Desjardins. Similarly, the claims are unlike Enfish. Like Ex parte Desjardins, additional elements evidenced the improvement, wherein the referential databased was determined to be structural in part based on interpretation under 35 USC 112f. Therefore the claim is not an improvement in technology, but rather possibly better math. Recitation of the mathematical steps being performed in a “processor circuit” and interaction with memory merely “applies the math” in a computer. No details of how the processor circuitry is configured, or how the configuration of the memory, memory access, memory retrieval in computer circuitry or components is claimed whatsoever. The conclusion that the purported improvement is a result of math and not technology is not a generalization but a specific analysis of claimed features As stated in response to Applicant’s first argument, the “inventive concept cannot be furnished by the unpatentable law or nature (or natural phenomenon or abstract idea) itself.” MPEP 2106.05.I; and "The judicial exception alone cannot provide the improvement". MPEP 2106.05(a). Applicant further asserts, under the step 2B analysis that the claims recite an inventive concept, and that Examiner failed to consider the amended claims’ specific combination of elements in their non-conventional arrangement consistent with MPEP 2106.05. (Remarks p. 13). Applicant asserts the claimed invention’s strategic implementation of auxiliary variables to minimize data transfer for higher-order optimization problems is not a well-understood, routine, or conventional activity in the field of optimization, especially concerning high-order terms (Remarks p. 13). Applicant further points to indication of allowable subject matter over the art in further support (Remarks p. 14). Examiner respectfully disagrees. For the reasons set forth in response to arguments under step 2A prong 2, what is novel is the mathematical concepts, not an improvement in technology as evidence in the claims. Furthermore, what application points to as not being well understood, routine or conventional in the field of optimization is a mathematical algorithm that is not known in the art. An improvement in a mathematical algorithm is not eligible subject matter. Furthermore, the question of what is prior art and whether a claim comprises statutory subject matter are two different questions. What is novel over the art as the math, not the construction, configuration of the processor circuit and memory itself. Applicant further asserts that eligibility turns not on whether mathematics informs a hardware operation, but on whether the claim as a whole is directed to an improvement in how the machine operates (Remarks p. 19-20). Examiner can find no support for this assertion in the MPEP. However, in response, better math may arguably allow a computer to compute more efficiently, but better math is not eligible. Claim Rejections - 35 USC § 101 07-04-01 AIA 07-04 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 1-7 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Regarding claim 1, under the Alice framework Step 1, the claims fall within the four statutory categories of patentable subject matter identified by 35 USC 101: a process, machine , manufacture or a composition of matter. Under the Alice framework Step 2A prong 1, claim 1 recites mathematical concepts of mathematical calculations and mathematical relationships for calculating an optimization of an energy function. Specifically, claim 1 recites the following mathematical calculations and mathematical relationships: an annealing-type optimization of searching for, as an optimum solution of a combinatorial optimization problem, using a ground state of an Ising model converted from the combinatorial optimization problem, the annealing-type optimization, comprising a plurality of coupling coefficients, each of the plurality of coupling coefficients representing interaction among a plurality of bits included in the Ising model; and perform optimum solution search including: randomly selecting, as a candidate bit to be inverted, any one of the plurality of bits; calculating a difference value between values of an energy function corresponding to the Ising model before and after a bit inversion of the selected candidate bit, the energy function having a plurality of terms including first-order terms, second-order terms, and third-order terms, each of the second-order terms being a term including a product of respective two bits among the plurality of bits, each of the third-order terms being a term including a product of respective three bits among the plurality of bits; selecting, based on the difference value, adoption or rejection of the bit inversion of the selected candidate bit, wherein: auxiliary coupling coefficients for third-order term, each of the auxiliary coupling coefficients corresponding to any one of a plurality of auxiliary variables, each of the plurality of auxiliary variables corresponding to any one of the third-order terms and being a variable that is a product of variables corresponding to the plurality of bits except for a respective specific one bit of the plurality of bits, the calculating the difference value directly calculates the difference value using a transformed energy difference formula, the transformed energy difference formula being derived from the energy function such that the transformed energy difference formula includes a first transformed term and a second transformed term, the first transformed term corresponding to a contribution of the first-order term and the second-order term in the energy function, the second transformed term corresponding to a contribution of the third-order term, the calculating the difference value includes: from among the plurality of coupling coefficients, a first auxiliary coupling coefficient corresponding to a first auxiliary variable, the first auxiliary variable being a product of variables corresponding to the plurality bits except the selected candidate bit, and executing calculation of the second transformed term in the transformed energy function by using the first auxiliary coupling coefficient and the first auxiliary variable, and obtaining the difference value by using a result of calculation of the second transformed term in the transformed energy function. See [0021-0029] describing the Ising model, energy function, coupling coefficients, and associated bits in terms of mathematical relationships and equations. See also figures 3-4, and specification p. 13-15, and throughout the specification, which describe the claimed algorithm for solving the Ising model in terms of mathematical calculations and mathematical relationships for solving an optimization problem. See, e.g., [0044] describing the claimed invention as performing “various kinds of arithmetic processing is exemplified as an example of the optimization apparatus. In this information processing apparatus, in the simulating annealing using an Ising-type energy function, adoption/rejection of bit inversion is selected based on a difference in the energy function accompanying the bit inversion to perform optimization as one arithmetic processing. Specifically, for example, the information processing apparatus stochastically inverts one or more bits and calculates an energy change in a case where the bits are inverted, and adopts whether or not to accept the bit solution that minimizes energy.” Furthermore as tot the stochastic inversion, and as claimed the “randomly selecting, as a candidate bit to be inverted”, [0045] describes using “the Monte Carlo method in which one or more bits are randomly inverted to search for the optimum solution to obtain a state x, which is the minimum energy of an energy function (E).” It is further noted that the Monte Carlo method is a mathematical calculation. For these reasons claim 1 recites mathematical concepts. Under the Alice framework Step 2A prong 2 analysis, claim 1 recites the following additional elements: an annealing-type optimization apparatus comprising a memory configured to store, a processor circuit coupled to the memory, the processor circuit being configured to perform the abstract idea, storing in memory, and accessing the memory to retrieve a coupling coefficient stored in memory, the retrieving of the coupling coefficient being performed so that the data transfer from the memory to the processor circuit is limited to only the first auxiliary coupling coefficient corresponding to the first auxiliary variable from among the plurality of coupling coefficients stored in memory. These elements are recited at a very high level of generally, wherein the claim does no more than merely generally link the use of the mathematical concepts in a manner that merely recites “apply it” on a computer. Furthermore the storing in and accessing to retrieve from memory comprises an insignificant extra solution activity. Furthermore the retrieving so that the data transfer from the memory to the processor is limited to the coupling coefficient corresponding to the auxiliary variable among the one or more coupling coefficients stored in memory is merely an intended result of the math, which flows as a direct result of the math, and not as a result of the apparatus itself. For these reasons, claim 1 is not integrated into a practical application. Under the Alice Framework Step 2B analysis, claim 1 considered individually and as an ordered combination do not include additional elements that are sufficient to amount to significantly more than the abstract idea. As stated in the Step 2A prong 2 analysis, the claims do no more than merely generally link the use of the mathematical concepts to a computer in a manner that merely recites “apply it”. Furthermore the storing in and accessing from a memory is well understood, routine, and conventional activity. See MPEP 2106.05.(d).II.iv. storing and retrieving information in memory. Furthermore, the retrieving so that the data transfer from the memory to the processor is limited to the coupling coefficient corresponding to the auxiliary variable among the one or more coupling coefficients stored in memory does not result in an inventive concept. What is novel is the math, not the apparatus or combination of elements of the apparatus itself. For these reasons claim 1 does not amount to significantly more than the abstract idea. Claims 2-3 are rejected for at least the reasons set forth with respect to claim 1. Claims 2-3 merely further mathematically limit the mathematical concepts of claim 1. Claims 2-3 contain no further additional elements that would require further analysis under steps 2A prong 2 and step 2B. Claims 4-5 is directed to a non-transitory computer-readable medium storing an optimization program that would be executed by the apparatus of claims 1-2 as configured. All steps executed in claims 4-5 are executed by the apparatus as in claims 1-2 as configured. The claim 1-2 analysis applies equally to claim 4-5. Claims 6-7 is directed to a method that would be practiced by the apparatus of claims 1-2. All steps performed by the method of claims 6-7 are executed by the apparatus as in claims 1-2 as configured. The claim 1-2 analysis applies equally to claims 6-7. Allowable Subject Matter For the reasons set forth in the office action dated 05/14/25, claims 1-7 would be allowable if rewritten to overcome the rejections under 35 USC 101. Conclusion 07-39 AIA 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 inquiry concerning this communication or earlier communications from the examiner should be directed to EMILY E LAROCQUE whose telephone number is (469)295-9289. The examiner can normally be reached on 10:00am - 1200pm, 2:00pm - 8pm ET M-F. Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor Andrew Caldwell can be reached on 571-272-3702. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300. Information regarding the status of an application may be obtained from the Patent Application Information Retrieval (PAIR) system. Status information for published applications may be obtained from either Private PAIR or Public PAIR. Status information for unpublished applications is available through Private PAIR only. For more information about the PAIR system, see http://pair-direct.uspto.gov. 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If you would like assistance from a USPTO Customer Service Representative or access to the automated information system, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000. /EMILY E LAROCQUE/ Primary Examiner, Art Unit 2182 Application/Control Number: 17/543,774 Page 2 Art Unit: 2182 Application/Control Number: 17/543,774 Page 3 Art Unit: 2182 Application/Control Number: 17/543,774 Page 4 Art Unit: 2182 Application/Control Number: 17/543,774 Page 5 Art Unit: 2182 Application/Control Number: 17/543,774 Page 6 Art Unit: 2182 Application/Control Number: 17/543,774 Page 7 Art Unit: 2182 Application/Control Number: 17/543,774 Page 8 Art Unit: 2182 Application/Control Number: 17/543,774 Page 9 Art Unit: 2182 Application/Control Number: 17/543,774 Page 10 Art Unit: 2182 Application/Control Number: 17/543,774 Page 11 Art Unit: 2182 Application/Control Number: 17/543,774 Page 12 Art Unit: 2182 Application/Control Number: 17/543,774 Page 13 Art Unit: 2182
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