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 .
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., an abstract idea) without significantly more.
Regarding claim 1, under the Alice Framework Step 1 analysis, the claim falls within the four statutory categories of patentable subject matter: a machine.
Step 2A Prong 1: Claim 1 is directed to an abstract idea as explained in the table below. The underlined text identifies language in the claim that recites an abstract idea. The words that are not underlined are directed to additional elements or generic terms not relevant to the 101 analysis (e.g. comprising).
A data processing apparatus of using a Ising machine to search for a combination of values of a plurality of state variables with which a value of an Ising-typed evaluation function of a discrete optimization problem becomes a local minimum or a local maximum, the data processing apparatus comprising:
Mathematical relationships
a memory configured to store a plurality of first local fields representative of a plurality of first change amounts of the value of the evaluation function in a case where a value of each of the plurality of state variables changes, a plurality of first coefficients in a matrix structure having M rows and N columns where M is a number of constraint terms in the
discrete optimization problem and N is a number of state variables in the plurality of state variables in the Ising-typed evaluation function, and a plurality of second local fields represented by a sum of a total sum of products of each of the plurality of first coefficients and each of the plurality of state variables and a second coefficient related to the constraint condition, each first coefficient of the plurality of first coefficients being indicative of strength of influence of a corresponding state variable among the plurality of state variables on a corresponding constraint term among the constraint terms in the discrete optimization problem;
The underlined text identifies the variables stored in the memory that are used in the claimed mathematical relationships.
And processor circuitry coupled to the memory, the processor circuitry being configured to be operable as the Ising machine and to perform processing including:
No abstract idea recited
selecting, as a flip candidate, a first state variable being any one of the plurality of state variables;
This step is a mathematical relationship or a mental step. See Spec. [0030, 0054, -0107, 0153].
retrieving, from the memory storing the plurality of first coefficients, a set of first coefficients in a first column in the matrix structure, the first column being a column corresponding to the selected first state variable, the set of first coefficients including M first coefficients each of which is associated with a respective constraint term of the constraint terms;
The reading itself is not an abstract idea. But the data read is the information that is used in the subsequent calculations.
calculating, based on the set of first coefficients, updated values of the plurality of second local fields in a case where a value of the first state variable changes;
Mathematical relationship
calculating, in the case where the value of the first state variable changes, a second change amount of a sum of the evaluation function and an entire magnitude of the plurality of constraint terms based on the updated values and a first local field, out of the plurality of first local fields, related to the first state variable;
Mathematical relationship
And determining whether to allow a change in the value of the first state variable based on a result of comparison between the second change amount and a predetermined value.
Mathematical relationship
As to the step of selecting, as a flip candidate, a first state variable, this limitation is either directed to a mathematical relationship or a mental step. If characterized as a mental step, this interpretation is supported by Applicant’s Specification. The Specification explains at [0054] how the flip candidate can be selected randomly or in a predetermined order. Both can be practically performed in the human mind. As to the predetermined order, this implies that more than one state variable is selected and provided in a particular order. In other words, a list. In the context of the claimed invention, a list could include all state variables (i.e., 1 to N), as shown in Spec. [0041] Expression (5). In this case, the list results in iterating according the mathematical expression. Either randomly selecting one state variable or selecting all N state variables is a decision that can be performed mentally.
As to step 2A prong 2, the judicial exceptions are not integrated into a practical application. Although the claim recites the additional elements of a data processing system comprising a memory for storing the data used in the judicial exception and was amended to include processing circuitry for performing the judicial exception, these additional elements are generic computer components recited at a high level of generality. Recitation of these additional elements does not add a meaningful limitation to the abstract idea because they are no more that instructions to apply the judicial exception on a generic computer. Applicant’s Specification provides evidence in support of this position. The Specification explains that in at least one embodiment (First Embodiment) that the processor circuitry “may be realized by using a processor that is hardware such as a central processing unit (CPU). Spec.[0050]. The Specification also explains that a program executing on the processing unit executes part or the entirety of processing of the method of processing data, by using software. Spec. [00049] (emphasis added). The Specification therefore explains that the abstract idea can be practiced by an appropriately programmed (i.e., performing the claimed abstract idea) general purpose computer. The claim was amended to also include the additional element that apparatus of claim 1 is a “data processing apparatus of [sic] using a [sic] Ising machine to search” and “the processor circuitry being configured to be operable as the Ising machine.” In view of Embodiment 1 as discussed above, these additional elements amount to nothing more than an explanation that a general purpose computer programmed to implement the judicial exception is an Ising machine. The additional element therefore does not specify a particular machine that is something more than a general purpose computer. These additional elements are therefore mere instructions to apply the judicial judicial exception on a generic computer. The claim also recites that the processor performs the function of “reading, from among the plurality of first coefficients stored in the memory, a set of first coefficients… .” This additional element amounts to mere data gathering of what is necessary for use of the recited judicial exception and is recited at a high level of generality. The data read is the data specified by the claimed mathematical relationships. This limitation is therefore directed to insignificant extra-solution activity. Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claim is directed to the judicial exception.
As to step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As explained at step 2A prong 2, the additional elements of the data processing system, memory, processor circuitry, and the Ising machine are at best the equivalent of merely adding the words “apply it” to the judicial exception. Mere instructions to apply an exception cannot provide an inventive concept. Also, the reading from the memory is, as explained above, insignificant extra-solution activity. Additional limitations that only store and retrieve information in memory are well understood, routine, conventional computer functions as recognized by the court decisions listed in MPEP § 2106.05(d). Moreover, Weiss shows that column-wise decomposition and not replicating an entire matrix is well understood, routine, and conventional. Even when considered in combination, the additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which do not provide an inventive concept. The claim is not eligible.
As to claims 2-5, they merely recite additional data used in the judicial exception or additional mathematical functions performed by the processor circuitry. They do not include additional elements that would change the analysis above for claim 1.
As to claim 6, it is directed to a non-transitory computer-readable medium storing a program that could be executed by the processor circuitry of claim 1. The claim merely recharacterizes the data processing apparatus of claim 1 as a computer The claim does not recite a particular organization structure for the program. Instead, it merely describes the operation of the program in terms of the judicial exception. As a result, the analysis applied to claim 1 applies equally to claim 6.
As to claim 7, it is directed to a computer-implemented method performed by the apparatus of claim 1. The claim merely recharacterizes the data processing apparatus of claim 1 as a computer. As a result, the analysis applied to claim 1 applies equally to claim 7.
Allowable Subject Matter
Claims 1-7 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action for the reasons given in the Office action mailed on July 17, 2025.
Response to Arguments
Regarding the rejection under 35 U.S.C. 101, Applicant's arguments filed January 26, 2026 have been fully considered but they are not persuasive.
Applicant argues that the amended claims do not recite any judicial exception for a number of reasons. Resp. pp. 9-10. Applicant argues that the utilization of an Ising machine is not a generic application of such a function but rather a specialized physical apparatus designed to solve complex discrete optimization problems. Id. at p. 9. This argument is not germane because it does not address the rejection made. As explained above, the Ising machine language in the claim is treated as an additional element and not as reciting a judicial exception. Applicant then argues that the steps of selecting, calculating, and determining are not mental steps because they cannot practically be performed in the human mind. As to the calculating and determining steps, this argument is not germane to the rejection made. The reasons for rejection, in both the last Office action and this final Office action, explain that the calculating and determining steps recite mathematical relationships and not mental steps. As to the selecting step, Applicant’s remarks do not address the evidence set forth in the Specification as to why the selection of the flip candidate is a mental step. The Specification describes how the selection can be to pick one state variable at random. Spec. [0054]. Assuming without conceding that Applicant is correct that the claims are somehow limited to a system with millions of state variables, a person can randomly pick a number between one and a million or one in ten million. Applicant has not addressed the reasoning set forth in the rejection, and the Applicant’s argument is therefore not persuasive..
Applicant argues that the subject matter of the claims integrates the abstract idea into a practical application for a number of reasons. Id. at pp. 10-11.
First, Applicant contends that the Office action dismisses the additional elements as generic or insignificant extra-solution activity fails to properly consider the claims as a whole. Id. at p. 9. This contention is conclusory because it does not address the analysis of the claimed invention in view of the Specification set forth in the rejection. In addition, Applicant’s contention ignores the fact that the Office action clearly states that the combination of additional elements were considered. Conclusory assertions inconsistent with the rejection made are not persuasive.
Second, Applicant contends that the rejection fails to consider the asserted improvement in the functioning of a computer or an improvement to other technology or technical field. Id. at p. 10. Applicant identifies the technical problem described at Spec. [0030} as the significant of significant technical problem of using all coefficients in the evaluation of the energy change. Id Applicant elaborates by explaining that there is a specific technological solution by storing a matrix of coefficients in memory and then only retrieving the relevant column for the chosen state variable. Id at p. 11. There is no evidence in the Specification that the matrix is stored in a manner that differs from the way in which matrices are ordinarily stored. Even if the Specification does provide evidence, any improved storage technique is not adequately reflected in the claims. As to Applicant’s contention regarding improved processing, the improved processing is a result of selecting less than all state variables as flip candidates and only accessing the coefficients needed to calculate results associated with those flip candidates. Once a state variable is selected as a flip candidate, the necessary column of coefficients is retrieved and used in the subsequent calculations. The particular column, however, is specified by the mathematics and is a direct consequence of the mathematics. Any reduction in “calculation amount” or reduction in “complexity in processing” (i.e., improvement) is therefore a direct consequence of the judicial exception. An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." MPEP 2106.05 I citing GeneticTechs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir.2016). A combination of abstract ideas (i.e., mental steps plus mathematics as in this Application) is still an abstract idea and therefore cannot provide the necessary improvement.
Third, Applicant argues that the rejection is inconsistent with Enfish. Applicant’s argument is not persuasive. Unlike this application, the claims in Enfish included language invoking 35 U.S.C. 112(f) incorporating specific structure from the Specification into the claims.
Applicant argues that the subject matter of the amounts to significantly more than an abstract idea for a number of reasons. Id. at pp. 11-11.
First, Applicant contends that the Office action appears to be fundamentally flawed by failing to properly evaluate how the specific combination and application of these elements in the claimed invention collectively rise to the level of an inventive concept. This statement is conclusory and fails to point out specific errors in the rejection that was made.
Second, Applicant argues that a new combination of steps in a process may be patentable even though all constituents of the combination were well known and in common use before the combination was made. Id. at pp. 11-12. Applicant then goes on to explain why Applicant believes that the claims recite an ordered combination that amounts to significantly more than an abstract idea. Id. at p. 12. In particular, Applicant contends that the claimed invention is directed to an ordered combination within the specific context of an Ising machine and within an Ising machine architecture for efficiently solving large-scale discrete optimization problems. Applicant’s Specification provides evidence that this Ising machine “context” amounts to nothing more than mere instructions to apply the abstract idea on a general purpose computer. The Specification explains that in at least one embodiment (First Embodiment) that the processor circuitry “may be realized by using a processor that is hardware such as a central processing unit (CPU). Spec.[0050]. The Specification also explains that a program executing on the processing unit executes part or the entirety of processing of the method of processing data, by using software. Spec. [00049] (emphasis added). The Specification therefore explains that the abstract idea can be practiced by an appropriately programmed (i.e., programmed to perform the claimed abstract idea) general purpose computer. Applicant then essentially repeats the arguments set forth at step 2A prong 2 regarding the steps of accessing the data necessary to perform the abstract idea. This argument is not persuasive for the reasons given above. Applicants have therefore not persuasively argued that the claimed invention amounts to significantly more than the abstract idea.
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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/ANDREW CALDWELL/Supervisory Patent Examiner, Art Unit 2182