DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
This Action is Non-final and is in response to the claims filed 01/14/2022. Claims 1-20 are currently pending, of which claims 1-20 are currently rejected.
Response to Arguments
Drawings: Objection to drawings has been withdrawn necessitated by amendment.
35 U.S.C. 101: Applicant's arguments filed 07/30/2026 have been fully considered but they are not persuasive.
Applicant argues in page 11-16 that the claims recite an improvement to the operation of the combination of devices. Applicant specifically argues
“Here, the claims employ the information provided by the alleged judicial exception - the QuantumMinimumLeaf procedures - and use them to generate quantum circuits that are then executed by the quantum computer. The classical computer program then uses the output of the execution to return the node N when an absolute value of a difference between a minimum of the value incumbent and the value incumbent' and a minimum of the value best bound and the value best bound' is less than the approximation margin. Thus, these elements together recite a meaningful way of using the alleged judicial exception beyond generally linking the use of the judicial exception to a particular technological environment.”
Examiner respectfully disagrees. Claims merely recite using a classical computer to execute the abstract idea and generally links a first and a second quantum circuit to execute this abstract idea. There is no technical improvement disclosed involving specific configuration of these quantum circuits other than merely generally linking the mathematical concepts to said quantum circuits. Additionally, any improvement to the abstract idea is not an improvement in technology. See MPEP 2106.05(a)(II).
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitations “generating, by the classical computer program, a first quantum circuit for” “instructing, by the classical computer program, a quantum computer to execute the first quantum circuit; generating, by the classical computer program, a second quantum circuit for” “instructing, by the classical computer program, a quantum computer to execute the second quantum circuit”. There is no first and second quantum circuits disclosed in the original disclosure. Closest support for this amendment is found in paragraphs 0045 and 0047, which disclose one or more quantum circuits. However, they do not disclose a first and second quantum circuits performing the respective features claimed in amended claim 1.
Claims 2-10 inherit the same deficiency as claim 1 by reason of dependence and are rejected for the same reasons.
Claim 11 recites similar limitations as claim 1 and is rejected for the same reasons therein.
Claims 12-20 inherit the same deficiency as claim 11 by reason of dependence and are rejected for the same reasons.
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 1-20 are rejected under 35 U.S.C. 101 because they are directed to an abstract idea without significantly more.
Apparatus claims 11-20 will be addressed before corresponding method claims 1-10.
Regarding Claim 11, at Step 1 the claim is directed to a method, which is a statutory category of
invention.
At Step 2A, Prong 1, Examiner notes that the claims are directed to mathematical concepts:
A system, comprising:
a classical computer comprising:
a memory storing a classical computer program; and
a computer processor; and
a quantum computer;
wherein:
the classical computer program receives a branch and bound problem comprising a root, a depth, a maximum cost, a failure probability, an approximation margin, and a heuristic function that is depth based or cost based (mathematical calculations/relationships);
the classical computer program sets an upper bound, a value best bound, a value incumbent, and a counter i (mathematical relationships);
the classical computer program executes a subtree estimation procedure with the root, a value 2i, a BRANCH function, a COST function, the depth, the failure probability, the approximation margin, and the heuristic function, wherein the subtree estimation procedure returns value branch_m that represents a tree of size m with minimal value for the heuristic function (mathematical relationships/calculations);
the classical computer program determines a value branch_i and a value cost_i based on branch_m (mathematical relationships/calculations);
the classical computer program sets a variable cost_feas to a value COST(N) for feasible nodes N, and to +∞ for unfeasible nodes (mathematical relationships/calculations);
the classical computer program generates a first quantum circuit for a QuantumMinimumLeaf procedure with the value branch_i, the value COST(N), the depth, the maximum cost, the failure probability, and the approximation margin (mathematical relationships/calculations);
the classical computer program instructs the quantum computer to execute the first quantum circuit;
the quantum computer executes the QuantumMinimumLeaf procedure and returns a node N (mathematical calculations);
the classical computer program sets a value incumbent' to equal to the value COST(N) (mathematical relationships);
the classical computer program generates a second quantum circuit for the QuantumMinimumLeaf procedure with branch_i, cost_i, the depth, the maximum cost, the failure probability, and the approximation margin (mathematical relationships/calculations);
the classical computer program instructs the quantum computer to execute the second quantum circuit;
the quantum computer executes the QuantumMinimumLeaf procedure and returns a node N' (mathematical calculations);
the classical computer program sets a value best bound' to equal COST(N') (mathematical relationships); and
the classical computer program returns the node N when an absolute value of a difference between a minimum of the value incumbent and the value incumbent' and a minimum of the value best bound and the value best bound' is less than the approximation margin (mathematical calculations/relationships).
At Step 2A Prong 2, the additional element is bolded above. This additional elements are merely
an “apply it” scenario using generically recited computer components. See MPEP 2106.05 (f).
The “A system, comprising: a classical computer comprising: a memory storing a classical computer program; and a computer processor” limitation simply uses generic computer components to perform the mathematical relationships/calculations (branch and bound problem). The “the classical computer program sets”, “the classical computer program executes”, “the classical computer program determines”, and “the classical computer program returns” limitations simply uses the generic program in the generic computer to perform the mathematical relationships/calculations (setting values to be used in the branch and bound problem, executing subtree estimation procedure, determining values based on branch value, and returning the result of an absolute value difference). Alternatively, even if not considered as merely an ”apply it” scenario, this type of architecture of a classical computer using a memory to store a program is an insignificant extra solution activity. See Step 2B analysis below.
Additionally, the italicized limitations “the classical computer program generates a first quantum circuit”, “the classical computer program instructs the quantum computer to execute the first quantum circuit”, “the classical computer program generates a second quantum circuit” “the classical computer program instructs the quantum computer to execute the first quantum circuit” above is merely an additional element that is generally linking the use of the judicial exception to a particular technological environment or a field of use. Examples of limitations that the courts have described as merely indicating a field of use or technological environments in which to apply a judicial exception include, as discussed in MPEP 2106.05(h):
iv. Specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, FairWarning v. Iatric Sys., 839 F.3d 1089, 1094-95, 120 USPQ2d 1293, 1295 (Fed. Cir. 2016); and
vi. 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, because limiting application of the abstract idea to power-grid monitoring is simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016);
At Step 2B, there are no additional elements claimed that amount to significantly more than the recited judicial exception. Regarding the architecture of the system, this is a well understood routine and conventional architecture known to be used in generic computers. As per the book “Computer Organization and Design: The Hardware/Software Interface, Chapter 1: Computer Abstractions and Technology”, “The memory is where the programs are kept when they are running; it also contains the data needed by the running programs.” (Page 20, Third paragraph), and “The processor is the active part of the board, following the instructions of a program to the letter. It adds numbers, tests numbers, signals I/O devices to activate, and so on” (Page 20, Fourth paragraph). These limitations therefore remain well understood, routine and conventional even upon consideration. Thus, these limitations do not amount to significantly more.
Claim 12 is directed to the mathematical concept of estimating the depth and maximum cost (mathematical calculations). Under Steps 2A prong 2 and 2B, the claim does not recite any additional elements that integrate the abstract idea into a practical application nor do they amount to significantly more than the judicial exception.
Claim 13 is directed to the mathematical concept of estimating the depth and maximum cost using a highest price (mathematical calculations/relationships). Under Steps 2A prong 2 and 2B, the claim does not recite any additional elements that integrate the abstract idea into a practical application nor do they amount to significantly more than the judicial exception.
Claim 14 is directed to the mathematical concept of executing the subtree estimation procedure (mathematical calculations). Under Steps 2A prong 2 and 2B, the claim does not recite any additional elements that integrate the abstract idea into a practical application nor do they amount to significantly more than the judicial exception.
Claim 15 is directed to the mathematical concept of executing the subtree estimation procedure for each node (mathematical calculations/relationships). Under Steps 2A prong 2 and 2B, the claim does not recite any additional elements that integrate the abstract idea into a practical application nor do they amount to significantly more than the judicial exception.
Claim 16 is directed to the mathematical concept of executing the subtree estimation procedure by executing a quantum tree size procedure (mathematical calculations/relationships). As explained in the Step 2A prong 2 analysis of claim 11, instructing a quantum computer to perform mathematical calculations is merely an additional element that is generally linking the use of the judicial exception to a particular technological environment or a field of use. At Step 2B, the additional elements do not, alone or in combination, amount to significantly more than the recited judicial exception.
Claim 17 is directed to the mathematical concept of the subtree estimation procedure returning values (mathematical calculations/relationships). Under Steps 2A prong 2 and 2B, the claim does not recite any additional elements that integrate the abstract idea into a practical application nor do they amount to significantly more than the judicial exception.
Claim 18 is directed to the mathematical concept of the subtree estimation procedure estimating a tree size based on a wanted cost (mathematical calculations/relationships). Under Steps 2A prong 2 and 2B, the claim does not recite any additional elements that integrate the abstract idea into a practical application nor do they amount to significantly more than the judicial exception.
Claim 19 is directed to the mathematical concept of executing the subtree estimation procedure by executing a quantum tree size procedure (mathematical calculations/relationships). As explained in the Step 2A prong 2 analysis of claim 11, instructing a quantum computer to perform mathematical calculations is merely an additional element that is generally linking the use of the judicial exception to a particular technological environment or a field of use. At Step 2B, the additional elements do not, alone or in combination, amount to significantly more than the recited judicial exception.
Claim 20 is directed to the mathematical concept of repeating a branch and bound process disclosed in claim 11 and increasing a count value(mathematical calculations/relationships). As explained in the Step 2A prong 2 analysis of claim 11, instructing a quantum computer to perform mathematical calculations is merely an additional element that is generally linking the use of the judicial exception to a particular technological environment or a field of use. At Step 2B, the additional elements do not, alone or in combination, amount to significantly more than the recited judicial exception.
Claim 1 is a method version of the apparatus of claim 11 and is rejected for at least the same
reasons therein. Herein, Claim 1 is directed towards the statutory category of a method, thus also satisfying Step 1. At Step 2A prong 2, as discussed in method claims 1-17, none of the additional elements regarding the generic computer components (i.e., classical computer program, computer processor) are more than high level generic computer components that amount to mere instructions to apply the abstract idea on a generic computer. See MPEP 2106.05(f). As explained in the Step 2A prong 2 analysis of claim 11, instructing a quantum computer to perform mathematical calculations is merely an additional element that is generally linking the use of the judicial exception to a particular technological environment or a field of use. At Step 2B, the additional elements do not, alone or in combination, amount to significantly more than the recited judicial exception.
With regards to Claims 2-10, they are method version of the claimed system (claims 12-20, respectively). They are rejected for the same reasons as claims 12-20.
Allowable Subject Matter
Claims 1-20 would be allowable if rewritten to overcome the 35 U.S.C. 101 rejections and the 35 U.S.C. 112(a) rejections discussed above. Claims would be allowable for the reasons stated in Non-Final Rejection mailed on 04/30/2026.
Prior Art Made of Record
US 12645963 B1 – teaches using a classical processor together with quantum hardware to perform to share physical control parameter values to be used for operations performed in the quantum hardware. See Fig. 4 and Column 17 Lines 13-26. This is pertinent to the classical computer providing data to the quantum computer program and quantum computer as disclosed in Fig. 1 and ¶0043 of the instant application.
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 CARLOS H DE LA GARZA whose telephone number is (571)272-0474. The examiner can normally be reached Monday-Friday 9:30AM-6PM.
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/C.H.D./
Carlos H. De La GarzaExaminer, Art Unit 2182 (571)272-0474
/EMILY E LAROCQUE/Primary Examiner, Art Unit 2182
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