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 Arguments
Applicant's arguments filed 3/12/26 have been fully considered but they are not persuasive. The amendments (previously proposed) were considered by both Primary Vincent and SPE Shmatov for the interview mailed 3/19/26 and the office maintains the claims are not statutory.
Regarding the newly added limitation generate an information signal based on an output feature map including the output feature indexes and the output feature values, wherein the information signal comprises a recognition signal, this does not overcome the USC 101 rejection because a human can generate a signal based on a feature map using pen and paper. Generating is an abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data.
"The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea." MPEP § 2106.04(a)(2).III. "Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions." Id. For the purposes of this abstract idea, "[t]he courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation."
It is well-settled that collecting and analyzing information by steps people go through in their minds or by mathematical algorithms, without more, are mental processes in the abstract-idea category. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis" is abstract); Intellectual Ventures I LLC v. Cap. One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Organizing, displaying, and manipulating data of particular documents" is abstract.); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096-97 (Fed. Cir. 2016) (compiling and combining disparate data sources to generate a full picture of a user's activity, identity, frequency of activity, and the like in a computer environment to detect potential fraud does not differentiate a process from ordinary mental processes); In re Killian, 45 F.4th 1373, 1379 (Fed. Cir. 2022) ("These steps can be performed by a human, using 'observation, evaluation, judgment, [and] opinion,' because they involve making determinations and identifications, which are mental tasks humans routinely do").
The claims amount to data analysis/manipulation and using some form of AI as a tool. The transformation of data, or the mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic 'abstract idea,"' is not a transformation sufficient to integrate a judicial exception into a practical application. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir. 1994)).
Claiming AI on a high level can amount to using a black box without specifying any real details of how the AI operates or what’s in the black box. The claims need to specify the technical details of the AI.
Although the claims may specify an improvement they are only improving the abstract idea not a computer.
If the claims are merely "using" existing artificial intelligence techniques then AI is not the inventive concept but is merely a tool used to manipulate data. This can be a process that was previously performed by "human agents" and may now be automated. Generating data, learning and/or training are insignificant computer activities, shown to be WURC in accordance with MPEP 2106.05(d)(II)(iii), for instance.
Claims do not specify a clear practical application. It is true that making physical changes to at least a portion of hardware is not a mental process but if applicant merely states e.g., “making physical changes” without any more description it would be so broad that it would be directed to insignificant extra-solution activity. If the physical changes were more specifically laid out, examiner may agree that the physical changes make a claim eligible but if the examiner cannot easily identify what physical changes are positively made the claimed physical changes amount to mere extra-solution activity.
In order for an abstract idea to be integrated into a practical application, the improvement in a given technical field must be a byproduct of the additional elements. An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself”, as stated in MPEP 2106.5 (1). Applicant should state where within the claim limitations such an improvement is made.
Practical applications must be additional elements, not abstract ideas. Prong Two: evaluate whether the claim recites additional elements that integrate the exception into a practical application of the exception.
"It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception." paragraph is on 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-07.2022].
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo.
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 3-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: claims 3-11 are directed to either a process, machine, manufacture or composition of matter.
With respect to claim 3:
2A Prong 1:
Generate (mental process) an input feature list (data) corresponding to non-zero input features based on an input feature map, the input feature the input feature map including a plurality of input features, the plurality of input features including the non-zero input features and zero-value input features, the input feature list including a plurality of input feature indexes and a plurality of input feature values corresponding to the non-zero input features, the plurality of input feature indexes corresponding to separate input features of the non-zero input features, the plurality of input feature values corresponding to separate input features of the non-zero input features (Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data; describing what the data is does not change the fact that generating data is a mental process);
generate a plurality of output feature indexes corresponding to non-zero output features based on performing a first operation on each of the plurality of input feature indexes of the input feature list and each of a plurality of weight indexes of a weight list, the weight list including the plurality of weight indexes and a plurality of weight values corresponding to non-zero weights in the memory, generate a plurality of output feature values corresponding to the plurality of output feature indexes based on performing a second operation on each of the plurality of input feature values of the input feature list and each of the plurality of weight values of the weight list(Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data);
generate an information signal based on an output feature map including the output feature indexes and the output feature values, wherein the information signal comprises a recognition signal (Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data).
2A Prong 2: This judicial exception is not integrated into a practical application.
Additional elements:
a central processing unit; a communication interface; a memory; and at least one neural network device coupled to the memory (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component; the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358);
using the neural network(Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) – Examiner’s note: high level application of a previously trained model to make a prediction);
write the plurality of output feature values in the memory (mere data gathering and/or output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)).
2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Additional elements:
a central processing unit; a communication interface; a memory; and at least one neural network device coupled to the memory (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component; the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358);
using the neural network(Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) – Examiner’s note: high level application of a previously trained model to make a prediction);
write the plurality of output feature values in the memory (mere data gathering and/or output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)).
Further, the writing steps were considered to be extra-solution activity in Step 2A Prong 2, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The receiving and/or transmitting limitations constitute extra-solution activity. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer receives and sends the information over a network-with no further specification-is not even arguably inventive."). The court decisions cited in MPEP 2106.05(d)(II) indicate that merely Receiving and/or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information). Thereby, a conclusion that the claimed receiving/transmitting steps are well-understood, routine, conventional activity is supported under Berkheimer. The claim is not patent eligible.
4. (New) The apparatus of claim 3, wherein the memory is configured to store the weight list received through the communication interface storing (mere data gathering and output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)).
5. (New) The apparatus of claim 3, wherein the at least one neural network device is further configured to generate the weight list corresponding to the non-zero weights based on a weight map (using the neural network/model (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) – Examiner’s note: high level application of a previously trained model to make a prediction); and write the weight list in the memory (mere data gathering and output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)).
6. (New) The apparatus of claim 5, wherein the at least one neural network device is further configured to generate an initial weight list, the initial weight list including a plurality of initial weight indexes corresponding to locations of the non-zero weights from the weight map and the plurality of weight values corresponding to the non-zero weights(using the neural network/model (Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) – Examiner’s note: high level application of a previously trained model to make a prediction); and adjust the plurality of initial weight indexes to the plurality of weight indexes (modeling: mental process of modeling with assistance of pen and paper).
7. (New) The apparatus of claim 6, wherein the at least one neural network device is further configured to mirror the plurality of initial weight indexes based on a weight bias index indicating a center of a matrix of the weight map (using model); and subtract the weight bias index from a plurality of mirrored weight indexes (mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation).
8. (New) The apparatus of claim 3, wherein the at least one neural network device is further configured to generate an initial input feature list, the initial input feature list including a plurality of initial input feature indexes corresponding to locations of the non-zero input features from the input feature map and the plurality of input feature values corresponding to the non-zero input features (using model); and generate the plurality of input feature indexes corresponding to the input feature map padded with zeros based on adding a feature bias index to the initial input feature indexes of the non-zero input features (Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data).
9. (New) The apparatus of claim 3, wherein the at least one neural network device is further configured to generate a multiplication value based on multiplying an input feature value by a weight value, the multiplication value corresponding to an output feature index of the plurality of output feature indexes(mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation); and generate an output feature value corresponding to the output feature index based on adding a plurality of multiplication values corresponding to the output feature index(mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation).
10. (New) The apparatus of claim 3, wherein the at least one neural network device is further configured to add each of the plurality of input feature indexes and each of the plurality of weight indexes to generate the plurality of output feature indexes(mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation).
11. (New) The apparatus of claim 3, further comprising a sensor device (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component; the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358), wherein the at least one neural network device is further configured to receive input data from the sensor device (mere data gathering and output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)); and generate the input feature map based on input data(Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R VINCENT whose telephone number is (571)272-3080. The examiner can normally be reached ~Mon-Fri 12-8:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Alexey Shmatov can be reached at 5712703428. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R VINCENT/Primary Examiner, Art Unit 2123
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