DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 May 21, 2026, has been entered.
Claims 1, 8, and 21 are amended.
Claims 1, 5, 8, 12, and 21-36 are pending.
Response to Remarks/Amendments
35 USC §101 Rejections
The Applicant traverses the rejection of the claims as being directed to an ineligible abstract idea, contending that the claims are subject matter eligible because the claims recite steps that are implemented by a computer system to operate a robot, a robotic arm, a self-driving vehicle, a manufacturing plant, and/or a semiconductor wafer processing system. See Remarks p. 10. In response, the Examiner points to the rejection, below, which concludes that the recited computer hardware is generic. Generic computer hardware does not provide a practical application or significantly more than the recited abstract idea. See MPEP §2106.05(b)[I]. Similarly, the robot, robotic arm, self-driving vehicle, manufacturing plant, and/or semiconductor wafer processing system do not constitute a particular machine or apparatus. Those elements do not have a particular structure in the claims. Moreover, those elements do not implement the steps of the method, and their in involvement in the claims is extra-solution. See MPEP §2106.05(b)[II] & [III]. Contrary to the Applicant’s assertions, the claims are directed to a human activity because the claims recite logical steps for selecting state and action pairs for a policy. The steps could be implemented mentally or on paper by a human being. However, a generic computer is recited for implementing the steps.
The Applicant further contends that the claims are subject matter eligible because the abstract idea is integrated with a practical application of operating a robot, a robotic arm, a self-driving vehicle, a manufacturing plant, and a semiconductor wafer processing system. See Remarks p. 13. In response, the Examiner submits that this recitation merely amount to the idea of a solution. Implementation of the method does not result in a concrete or tangible result. The claims do not provide a specific, technical solution in robotics, autonomous vehicles, manufacturing, or semiconductor processing. Contrary to the Applicant’s assertions, the claimed systems are not particular. Several disparate system are claimed at a high level – robots, autonomous vehicles, manufacturing plants, and semiconductor processing facilities. The recitation of these systems amounts to a field of use and/or technological environment for implementing the abstract idea. Determining and Implementing a policy is simply an abstract idea.
The Applicant further contends that the claims improve a computerized process. See Remarks pp. 18-19. In response, the Examiner submits that the claimed process is not rooted in computer technology. Determining and implementing a policy is not rooted in computer technology. In contrast, the court cases cited by the Applicant – Enfish and DDR – involve claims that are rooted in computer technology.
The Applicant additionally contends that the claims are subject matter eligible because the claims involve steps that are not conventional. See Remarks p. 20. In response, the Examiner points out that lack of conventionality does not imply subject matter eligibility. Additional elements outside the scope of the abstract idea have been considered, but they have been found to amount to generic computer hardware operating in and a technological environment for implementing the abstract idea.
The rejection of the claims for lack of subject matter eligibility is maintained.
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.
The Manual of Patent Examining Procedure (MPEP) provides detailed rules for determining subject matter eligibility for claims in §2106. Those rules provide a basis for the analysis and finding of ineligibility that follows.
Claims 1, 5, 8, 12, and 21-36 are rejected under 35 U.S.C. 101. The claimed invention is directed to non-statutory subject matter because the claimed invention recites a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Although claims(s) 1-20 are all directed to one of the four statutory categories of invention, the claims are directed to determining a policy for risk-sensitive decision-making (as evidenced by the preamble of exemplary independent claim 1), an abstract idea. Certain methods of organizing human activity are ineligible abstract ideas, including managing personal behavior or relationships or interactions between people. Additionally note that mental processes and mathematical relationships are ineligible abstract ideas. See MPEP §2106.04(a). The limitations of exemplary claim 1 include: [1] “receiving . . . state and action pairs;” [2] “determining . . . current probabilistic discounted entropic risk measure values for the state and action pairs;” [3] “selecting . . . a set of the state and action pairs for the policy;” and [4] “operating . . . one of a robot, a robotic arm a self-driving vehicle, a manufacturing plant, and a semiconductor wafer processing system using the state and action pairs for the policy.” Several additional limitations recite calculations for determining initial probabilistic discounted entropic risk measure values for state and action pairs that amount to the recitation of an ineligible mathematical concept comprising a formula or equation. Steps [1]-[3] are steps for managing personal behavior related to the abstract idea of determining a policy for risk-sensitive decision-making that, when considered alone and in combination, are part of the abstract idea of determining a policy for risk-sensitive decision-making. The dependent claims further recite steps for managing personal behavior that are part of the abstract idea of determining a policy for risk-sensitive decision-making. These claim elements, when considered alone and in combination, are considered to be abstract ideas because they are directed to a method of organizing human activity which includes determining a best (or optimal) action from a set of possible actions.
Under step 2A of the subject matter eligibility analysis, a claim that recites a judicial exception must be evaluated to determine whether the claim provides a practical application of the judicial exception. Additional elements of the independent claims amount to generic computer hardware that does not provide a practical application (a computer system in independent claims 1, 8, and 21). See MPEP §2106.04(d)[I]. The claims do recite operating one of a robot, robotic arm, self-driving vehicle, manufacturing plant, and semiconductor wafer processing system. However, this list of loosely related hardware elements does not amount to a particular machine. No specific structure is recited, and the steps of the claims could be applied to virtually and decision making-process. Moreover, the recited machinery does not impose meaningful limits on the claim. Additionally note that the hardware could be considered to be a technological environment for implementing the abstract idea. The abstract idea of determining a policy for risk-sensitive decision-making is generally linked to an environment with robots, manufacturing facilities, or self-driving vehicles for implementation. See MPEP §2106.05(h). Step [4], identified above, merely amounts to instructions to apply the exception. The step only recites the idea of the solution – operating a system according to a determined state for an action pair. Moreover, the step has broad applicability for any decision-making process. The claims do not recite an improvement to another technology or technical field, nor do they recite an improvement to the functioning of the computer itself. See MPEP §2106.05(a). The claims require no more than a generic computer (a computer system in independent claims 1, 8, and 21) to implement the abstract idea, which does not amount to significantly more than an abstract idea. See MPEP §2106.05(f). Because the claims only recite use of a generic computer, they do not apply the judicial exception with a particular machine. See MPEP §2106.05(b). For these reasons, the claims do not provide a practical application of the abstract idea, nor do they amount to significantly more than an abstract idea under step 2B of the subject matter eligibility analysis. Using a generic computer to implement an abstract idea does not provide an inventive concept. Therefore, the claims recite ineligible subject matter under 35 USC §101.
Conclusion
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/RICHARD N SCHEUNEMANN/Primary Examiner, Art Unit 3624
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