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
The amendment filed 23 October, 2025 has been entered. Claims 1-8 remain pending in the application.
Response to Arguments
Objection to the Specification
Applicant has amended the title of the application to be a descriptive title. The objection is withdrawn.
Claim Rejections – 35 USC § 112
Applicant has successfully amended claims 1 and 6-8 to correct for the issues of indefiniteness which caused the rejections under 35 USC 112. Therefore, the previous rejections are withdrawn. However, the amendments to claim 1 raise new issues under 112(b) that constitute grounds for rejection. See the section Claim Rejections – 35 USC § 112 below.
Claim Rejections – 35 USC § 101
Applicant’s arguments regarding the rejections under 35 USC 101 have been fully considered but are not persuasive.
Applicant argues under Step 2A, Prong 2 that the judicial exception is integrated into a practical application and therefore patent eligible. Specifically, Applicant asserts the claimed invention provides an improvement to the functioning of a general-purpose computer or an improvement to the technical field of combinatorial optimization.
Examiner respectfully disagrees. The purported improvements directed to the efficiency of solving the combinatorial optimization problem are realized as a direct result of the mathematical algorithm for simulated annealing as disclosed in the specification (see ¶ [0017]-[0021], [0044]-[0045], and [0065]-[0071]). Constraining the combinatorial optimization problem is realized by the introduction of additional terms to the energy function as shown by way of example in the specification (see equation (5), pg. 15 and ¶ [0086]-[0095]). Therefore the constraints exists as elements of the judicial exception. According to MPEP 2106.05(a) with regards to integration of a judicial exception into a practical application by providing a technical improvement, “the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements.” However, the recited additional elements (“input unit”, “simulated annealing unit”) are recited at a high level of generality and amount to mere instructions to apply the judicial exception using generic computer hardware. Therefore the judicial exception is not integrated into a practical application.
Applicant argues under Step 2B that the claims include additional elements that amount to significantly more. Specifically, applicant argues the “constraint-maintaining flip” mechanism provides an inventive concept that amounts to significantly more by providing a technical advantage and an improvement to a technical field.
Examiner respectfully disagrees. As noted above, constraining the combinatorial optimization problem is realized by introducing additional terms to the energy function. Therefore, the constraint-maintaining mechanism exists as a function of the mathematical algorithm and does not constitute an additional element that amounts to significantly more under Step 2B. Therefore, the claim is directed to a judicial exception without significantly more, and the claim is not patent eligible under 35 USC 101.
Applicant argues that claims 2-6 recite further limitations that constitute specific applications of the inventive concept and amount to more than mathematically limiting the abstract idea.
Examiner respectfully disagrees. As noted above, the constraint-maintaining mechanism exists as a function of the mathematical algorithm, and therefore the limitations recited in claims 2-6 only serve to further mathematically limit the abstract idea by introducing additional expressions to the energy function. Therefore claims 2-6 do not recite any additional elements which would serve to integrate the judicial exception into a practical application or amount to significantly more, and therefore are not patent eligible under 35 USC 101.
Claim Rejections – 35 USC § 102 and 35 USC § 103
Applicant argues that the applied prior art references, alone or in combination, do not teach each and every element of claim 1. Specifically, Applicant argues that applied reference Mertig does not teach the limitation “change the states of one or more spins including the selected spin while a condition where the set satisfies a constraint is maintained”.
Examiner respectfully disagrees. As cited in the grounds of rejection, Mertig teaches a spin update method involving the update of one or more spins of a set of spins (Mertig, ¶ [0077]-[0078]). In the cited passage, Mertig teaches the introduction of a parameter
q
which is used as a mechanism to control the changing of one or more of the spins of the set of spins. This is further illustrated in Fig. 3B. The parameter
q
is described earlier in ¶ [0073]-[0074] as a user defined function that, when set to be sufficiently large, causes the corresponding left and right spins to have the same value in the ground state. Based on this disclosure the parameter
q
is interpreted as a constraint which is maintained when one or more of the spins of the set of spins is update, and therefore Mertig teaches the cited limitation in addition to the other limitations of claim 1 as detailed in the previous action and in the grounds of rejection under section Claim Rejections – 35 USC § 102 below.
Claim Rejections - 35 USC § 112
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 1-6 are 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 1 recites “wherein the simulated annealing system in configured to solve the combinatorial optimization problem” in lines 9-10. This limitation is unclear because it merely states a function (solving the combinatorial optimization problem) without providing any indication about how the function is performed. The recited function does not follow from any structure recited in the claim, i.e. the input unit or the simulated annealing unit. Therefore it is unclear whether the function of solving the combinatorial optimization problem requires some other structure or is simply a result of operating the simulated annealing system in a particular manner.
Applicant could resolve the unclear boundaries of the claim by amending the claim to specify how the combinatorial optimization problem is solved. For example, the amendment could specify a particular structure such as the simulated annealing unit that solves the problem.
Claims 2-6 do not recite any additional limitations which clarify the above issue and are therefore rejected based on their dependence on claim 1.
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 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more. Specifically, the claims are directed to the abstract idea of Mathematical Concepts, i.e. combinatorial optimization and simulated annealing.
As per claim 1, at Step 1 of the current USPTO eligibility guidance (MPEP 2106), the claim is directed to the statutory category of invention of machine or manufacture. At Step 2A, Prong 1, the claims are directed to mathematical concepts. The first limitation of claim 1 recites an input unit that receives input of an energy function modeling states of individual spins corresponding to a combinatorial optimization problem. The second limitation of claim 1 recites a simulated annealing unit which obtains a state of each spin by performing simulated annealing on the energy function. The third limitation recites solving the combinatorial optimization problem by efficiently reducing the computation amount. The fourth limitation recites selecting a spin and a set to which the spin belongs. The fifth limitation recites determining if a state should be changed and, if so, changing the state of one or more spins while maintaining a constraint condition. The foregoing limitations recite mathematical concepts related to solving a combinatorial optimization problem using a simulated annealing algorithm, which are considered mathematical concepts. Accordingly, the claim recites an abstract idea.
At Step 2A Prong 2, the judicial exception is not integrated into a practical application. The limitations of claim 1 recite “an input unit” and “a simulated annealing unit”, but these elements are recited at a high level of generality and amount to no more than mere instructions to apply the exception in hardware. The circuitry is recited to perform the abstract idea, particularly to implement the combinatorial optimization of an energy function (e.g. Expressions 2-3, [0017]-[0021]; see also [0044]-[0045]) by performing simulated annealing ([0065]-[0071]; see also the algorithm of Figs. 6-7). Accordingly, these elements individually and in combination do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
At Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Thus, the claim does not provide an inventive concept that is furnished by an element or combination of elements that is recited in the claim beyond the judicial exception, and fails to ensure the claim as a whole amounts to significantly more than the judicial exception itself. Accordingly, the claim is not patent eligible under 35 U.S.C. 101.
Claims 7 and 8 recites a method and a non-transitory computer-readable recording medium which recite similar functional limitations as claim 1 and are therefore not patent eligible under 35 U.S.C. 101 for the same reasons.
Claims 2-6 are rejected for at least the same reasons as set forth with respect to claim 1. Claims 2-6 merely further mathematically limit the abstract idea of claim 1. The indicated claims recite no further additional elements individually or in combination that would require further analysis under Step 2A Prong 2 and Step 2B.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1 and 7-8 are rejected under 35 U.S.C. 102(a)(2) as being anticipated by Mertig et al. (US 20210072959 A1), hereinafter Mertig.
Regarding claim 1, Mertig teaches a simulated annealing system comprising:
an input unit configured to receive input of an energy function (Mertig, Fig. 6 element 611 and ¶ [0093]) in a model representing states of individual spins by a first value or a second value (Mertig, ¶ [0011]) wherein the energy function corresponds to a combinatorial optimization problem to be solved (Mertig, ¶ [0005]); and
a simulated annealing unit (Mertig, Fig. 6 element 620) configured to obtain a state of each spin corresponding to a solution of the combinatorial optimization problem by performing simulated annealing in a case where the energy function is input (Mertig, ¶ [0007], [0097])
wherein the simulated annealing system is configured to solve the combinatorial optimization problem by fundamentally improving the computational efficiency of simulated annealing, thereby enhancing the problem-solving capabilities of general-purpose computers in handling large-scale and complex combinatorial optimization problems, by efficiently reducing the computation amount in the problem space where the number of search candidates is extremely large (Mertig, ¶ [0163]), which is a problem inherent in conventional simulated annealing methods, shortening solution times, and reducing computational resources, and
wherein the simulated annealing unit is configured to, in a process of the simulated annealing:
select a spin (Mertig, ¶ [0014]);
select a set to which the selected spin belongs (Mertig, ¶ [0014]); and
change the states of one or more spins including the selected spin while a condition where the set satisfies a constraint is maintained (Mertig, Fig. 3B and ¶ [0077]-[0078]; parameter
q
as the constraint), in a case where the set satisfies the constraint and the state of the spin is determined to be changed (Mertig, ¶ [0013]-[0014], [0078]), such that transitions to ineffective search states that violate the constraint are prevented, thereby intrinsically improving the search efficiency of the algorithm, and accelerating the convergence speed of simulated annealing (Mertig, ¶ [0163]).
Claim 7 recites a method performed by the system of claim 1, and is therefore rejected for the same reason(s).
Claim 8 recites a computer-readable recording medium in which a solution program is recorded, the solution program causing a computer to perform the functions of the system of claim 1, and is therefore rejected for the same reason(s) (see also Mertig, ¶ [0094]).
Claim 2 is rejected under 35 U.S.C. 103 as being unpatentable over Mertig, in view of Inagaki et al. (US 20190391807 A1), hereinafter Inagaki.
Regarding claim 2, Mertig teaches the invention substantially as claimed. See the rejection of claim 1 above. Mertig does not explicitly teach:
as the constraint to be satisfied by the set,
a constraint that only one spin among a plurality of spins belonging to the set takes the first value is defined.
However, Inagaki teaches:
as the constraint to be satisfied by the set,
a constraint that only one spin among a plurality of spins belonging to the set takes the first value is defined (Inagaki, Fig. 19 and ¶ [0213]; the first value is one).
Mertig and Inagaki are both considered to be analogous to the claimed invention because they are in the same field of combinatorial optimization using simulated annealing. It would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to modify the simulated annealing process of Mertig to include the one-hot constraint as taught by Inagaki. This modification would have been obvious because the value of the objective function increases if a plurality of values in the set have a value of one (Inagaki, ¶ [0213]).
Regarding claim 3, the combination of Mertig teaches the invention substantially as claimed. See the rejection of claim 1 above. Inagaki further teaches:
as the constraint to be satisfied by the set,
a constraint that at least one spin among a plurality of spins belonging to the set takes the second value is defined (Inagaki, ¶ [0213]; “the values of variables
σ
3 and
σ
6 are set to zero”, where the second value is zero).
Regarding claim 4, Mertig teaches the invention substantially as claimed. See the rejection of claim 1 above. Inagaki further teaches:
as the constraint to be satisfied by the set,
a constraint that at least one spin among a plurality of spins belonging to the set takes the first value is defined (Inagaki, Fig. 19 and ¶ [0212]; “a lower value of the object function is obtained as more edges connect vertices corresponding to variables with different values… the variable
σ
3 with a value of one leads to a lower value of the objective function than the variable
σ
3 with a value of zero”).
Regarding claim 6, Mertig teaches the invention substantially as claimed. See the rejection of claim 1 above. Inagaki further teaches:
for a predetermined spin, the first value of the second value is defined as a fixed value (Inagaki, ¶ [0222]).
Allowable Subject Matter
Claim 5 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims, and rewritten to overcome any other rejections set forth in this action. The following is a statement of reason(s) for indicating allowable subject matter:
Regarding claim 5, the claim recites if the energy function is input, wherein the energy function is obtained by converting an expression representing energy whose order of variables representing the states of spins is reduced to second order, wherein the expression is obtained, in case order of the variables representing states of spins of an expression representing the energy in the combinatorial optimization problem is third order or higher, by replacing a plurality of the variables representing the states of spins with a single variable to reduce the order to second order, for the set containing an auxiliary spin corresponding to the single variable after replacement and a plurality of spins corresponding to the plurality of the variables before the replacement, a constraint that the state of the auxiliary spin is changed according to the change of any spin in the plurality of spins is defined.
The closest available prior art, Mandal et al. (US 20200371838 A1), teaches the reduction of higher order binary optimization to a quadratic optimization for an annealing process using auxiliary variables. However, neither Mandal nor any of the other available prior art teaches where the auxiliary spin variables represent a plurality of spin variables before replacement, nor a constraint that the state of the auxiliary spin is changed according to the change of any spin in the plurality of spins.
Conclusion
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 JONATHAN DAVID WARNER whose telephone number is (703)756-5956. The examiner can normally be reached M-F: 9-5.
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/J.D.W./
Jonathan David WarnerExaminer, Art Unit 2182
(703)756-5956
/ANDREW CALDWELL/Supervisory Patent Examiner, Art Unit 2182