DETAILED ACTION
Introduction
This Final Office Action is in response to amendments and remarks filed on February 6, 2026, for the application with serial number 17/655,040.
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 probabilistic discounted entropic risk measure values for the state and action pairs. See Remarks p. 11. The Examiner respectfully disagrees that this recitation renders the claims eligible. Although it is unclear what exactly constitutes “a probabilistic discounted entropic risk measure values for state action pairs;” this concept appears to be mathematical in nature. A probabilistic discount is a mathematical concept. Contrary to the Applicant’s assertions, the invention described in the Specification does not need to be implemented by a computer system. A computer system is merely used in the claims as a tool for performing calculations.
The Applicant further contends that the claims are subject matter eligible because the claims recite operation of a system. See Remarks p. 13. In response, the Examiner points out that the recited method does not operate a particular system – the claims recite that the process could be used to control a robot, robotic arm, self-driving vehicle, manufacturing plant, and semiconductor wafer processing system. See exemplary independent claim 1. As stated in the rejection, below, the claims could be applied to virtually any decision-making process. No particular machine is recited in the claims, and the claims do not provide a specific, practical effect. The claims merely recite implementation of the abstract idea of determining a policy for risk-sensitive decision-making in various environments. Contrary to the Applicant’s assertions, none of the recited machines are “very particular machines;” with a defined structure. The claims do not recite an improvement in a particular technical field or an improvement to a particularly designed machine. Operating a machine according to a policy is not a particular solution to a particular problem. An important consideration in determining whether a claim improves technology is the extent to which the claim covers a particular solution to a problem or a particular way to achieve a desired outcome, as opposed to merely claiming the idea of a solution or outcome. See MPEP §2106.05(a). The present claims merely apply the idea of a policy that considers risk to various unrelated industrial applications. Even assuming, for the sake of argument, that the recited hardware is not an “environment;” as the Applicant contends, the hardware could still be considered a “field of use” in accordance with MPEP §2106.05(h). The claims generally link the abstract idea to the robotics, manufacturing, and transportation industries. Contrary to the Applicant’s assertions, a “robot” is not a particular machine. The “robot” and “robotic arm” in the claims do not have a particular structure. Likewise, the semiconductor processing system and vehicle do not have any particular structure. The claims do not “require” the structures, contrary to the Applicant’s assertions, because a robot and a semiconductor processing facility are entirely different.
The Applicant additionally contends that the claims are subject matter eligible because the claims recite repeated calculation and updating of risk values. See Remarks p. 16. In response, the Examiner points to MPEP §2106.04(d)[II]{ii}, which states that use of a computer for performing repetitive calculations is conventional. Contrary to the Applicant’s assertions, the calculation does not represent an improvement to computer technology. The calculation could be performed mentally or on paper by a human being.
The Applicant further contends that the claims are subject matter eligible under step 2B of the Alice/Mayo test because there is no outstanding prior art rejection of the claims. See Remarks pp. 17-18. In response, the Examiner submits that lack of conventionality does not imply subject matter eligibility. Additional elements outside the scope of the abstract idea of determining a policy for risk-sensitive decision-making have been considered, but they have been found to amount to generic computer hardware operating in various technological environments. The Examiner respectfully disagrees with the Applicant’s position that the Supreme Court has conflated non-obviousness with subject matter eligibility. The test for conventionality in step 2B only applied to additional elements outside the scope of the abstract idea. The presently presented claims are not rejected under the prior art at least because the recited abstract idea is non-obvious.
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 the 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 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
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.
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/RICHARD N SCHEUNEMANN/Primary Examiner, Art Unit 3624