DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under pre-AIA .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 01/22/26 has been entered.
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. 7).
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, are intended to provide the specific technical solution and do not represent a fundamental truth or disembodied concept claimed in isolation. Instead these are analytical tools embedded within a technologically bound process, thus the claims do not recite any judicial exception (Remarks p. 7-8).
Examiner respectfully disagrees. Under the step 2A prong 1 analysis, the claims recite the following mathematical concepts:
an optimization of performing optimum solution search of an optimization problem using a model including a higher-order term of a third-order or higher, comprising
one or more coupling coefficients that represent interaction of a plurality of variables corresponding to a plurality of bits included in the model being an energy function that represents the optimization problem; and
select, 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, wherein:
obtain, from among the one or more coupling coefficients, 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, and
execute calculation of a term of a third-order or higher of a difference of a value of the energy function associated with inversion of the specific bit using the auxiliary variable and the obtained coupling coefficient.
See figures 3-4, and specification p. 13-15, and throughout the specification, which describe the claimed invention in terms of mathematical calculations and mathematical relationships for solving an optimization problem. Furthermore the intended application of the claim as recited in the preamble is to do math: performing optimization solution search of an optimization problem using a model including a higher-order term of a third-order or higher.
The claim recites mathematical concepts under step 2A prong1.
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 an overgeneralization. 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. 8-9).
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 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. This is not an improvement in technology, but rather possibly better math. 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). No improvement, beyond the math, in how the coupling coefficient is obtained from memory is claimed.
Furthermore, as to Ex parte Desjardins, the improvement was evident in the claim in additional elements, not solely in the abstract idea. See Ex parte Desjardins p. 9 “we discern at least the following limitation of independent claim 1 that reflects the improvement: ‘adjust the first values of the plurality of parameters to optimize performance of the machine learning model on the second machine learning task while protecting performance of the machine learning model of the first machine learning task’”. These are additional elements that result in the improvement, unlike the instant claims wherein the mathematical concepts result in the purported improvement: selecting based on a difference value of an energy function auxiliary variables of an optimization problem.
Furthermore, 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.
Furthermore, as to the purported improvement in asserted functional mechanism that reconfigures the computer’s memory access protocol, no computer protocol is actually claimed beyond the mathematical concepts, or resulting from the math: the retrieving of the coupling coefficient being performed so that 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 the memory. The actual accessing is generically claimed.
Applicant further asserts, under the step 2B analysis that the claims recite an approach that is not well understood, routine, or conventional in managing memory access in discrete optimization, which provide a useful application, solving complex optimization problems thereby integrating into a patent-eligible application (Remarks p. 10).
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.
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 1-7 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 optimization of performing optimum solution search of an optimization problem using a model including a higher-order term of a third-order or higher, comprising
one or more coupling coefficients that represent interaction of a plurality of variables corresponding to a plurality of bits included in the model being an energy function that represents the optimization problem; and
select, 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, wherein:
obtain, from among the one or more coupling coefficients, 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, and
execute calculation of a term of a third-order or higher of a difference of a value of the energy function associated with inversion of the specific bit using the auxiliary variable and the obtained coupling coefficient.
See figures 3-4, and specification p. 13-15, and throughout the specification, which describe the claimed invention in terms of mathematical calculations and mathematical relationships for solving an optimization problem. 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 optimization apparatus comprising a memory configured to store, a processor coupled to the memory, the processor being configured to perform the abstract idea, and access 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 is limited to the coupling coefficient corresponding to the auxiliary variable among the one or more 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
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.
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/EMILY E LAROCQUE/ Primary Examiner, Art Unit 2182