DETAILED ACTION
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Under step 1 of MPEP §2106’s subject matter eligibility guidelines, the claims 1-14 fall within the categories of a process, machine, or manufacture.
Under Step 2A, prong 1, the claim(s) recite(s) “identifying a high-dimensional output space; identifying a low-dimensional space with a base probability distribution; applying a first set of computer model layers of a computer model having first parameters defining a first transformation comprising one or more conformal flows between the high-dimensional output space and a first position in the low-dimensional space, the first transformation describing a manifold of the high-dimensional output space in the low- dimensional space; and applying a second set of computer model layers of the computer model having second parameters defining a second transformation between the first position and a second position corresponding to the base probability distribution in the low-dimensional space… wherein the first transformation consists of one or more conformal flows… wherein the high-dimensional space is an image space having dimensions describing a plurality of pixels at a resolution… learning the first transformation and second transformation based on a training set of data points in the high-dimensional space… determining the second point by sampling from the base probability distribution; and wherein applying the first and second transformation comprises applying the second transformation to the second point to determine the first position and applying the first transformation to the first position to generate a sampled output in the high-dimensional output space… receiving a test data point in the high-dimensional output space, the first transformation being applied to the test data point to determine the first position and the second transformation being applied to the first position to determine the second position; and determining a likelihood of the test data point with respect to an unknown distribution in the high-dimensional output space based on a likelihood of the second data…the high-dimensional space is an image space having dimensions describing a plurality of pixels at a resolution, each pixel having one or more color channels.” These claims fall within the judicial exception of mathematical concepts as articulated in MPEP §2106.04(a)(2)(I).
Under Step 2A, prong 2, the claims contain the additional limitations of “a processor; and a computer-readable medium having instructions executable by the processor”. Regarding the processor and memory coupled to the processor, “use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.” MPEP §2106.05(f). Accordingly, the claims do not recite additional elements that integrate the judicial exception into a practical application.
Under Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As stated above in regard to Step 2A, prong 2, the claims recite the additional limitations of “a processor; and a computer-readable medium having instructions executable by the processor”. Regarding the processor and memory coupled to the processor, “use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more.” MPEP §2106.05(f). Accordingly, the claims do not recite additional elements that amount to significantly more than the judicial exception.
Response to Arguments
Applicants argue the following:
“The claimed invention is an improvement to generative modeling systems that enables the model to effectively achieve both 1) learn the manifold in the output data space (e.g., the image space) and 2) apply probabilistic modeling. In addition, while a variety of approaches could conceivably achieve this aim, the claimed approach (e.g., the first transformation comprising conformal flows with a second transformation mapping to a probability distribution) enables actual computer implementation by achieving this combination tractably (i.e., in a computable way that computers can actually perform). See e.g., specification at 6-7 (with a manifold accounted for in the first transformation and density estimation in the second transformation), 31, 34. The claims are additionally amended to clarify that the claimed invention is implemented with a computer model having respective computer model layers and parameters that define the first and second transformations. See e.g., specification at 21-24. This model architecture thus improves how the model itself performs on this type of modeling.” (Remarks, pgs. 7-8)
However, the examiner respectfully points out that “this type of modeling” is mathematical modeling. Specifically probabilistic manifold modeling as stated in the preamble of claims 1, 8, and 15. In Applicants’ argument it is correctly pointed out that that the applying steps of the claimed invention have a first transformation that is a conformal transformation of a Riemannian manifold (See Obata et al, “Conformal Transformations of Riemannian Manifolds” made of record with the Office Action mailed 07/14/2025), and a second applying step a transformation mapping to a probability distribution. In other words, this invention is a mathematical solution to a mathematical problem.
The federal circuit has made it clear that such an alleged improvement is invalid under §101. “Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract.” RecogniCorp, LLC v. Nintendo Co., 122 USPQ2d 1377,1380 (Fed. Cir. 2017); See also, PersonalWeb Technologies LLC v. GOOGLE LLC, 8 F. 4th 1310 (Fed. Cir. 2021).
Applicants further argue:
“This provides a specific improvement to probabilistic manifold modeling. As recently emphasized by Desjardins, improvements to software are often defined by the improved logical structures and processes, and improvements to "how the machine learning model itself operates" are eligible. See Ex Parte Desjardins, PTAB September 26, 2025 Appeal 2024-000567, Application No. 16/319,040 (designated precedential Nov. 4, 2025) (director action vacating a new ground of rejection under 101 issued by the Board), citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir. 2016).” (Remarks, pg. 9).
However, the claimed invention is not an improvement to software, it’s an improvement to probabilistic manifold modeling, i.e. a mathematical solution to a mathematical problem. As stated in Enfish, “In sum, the self-referential table recited in the claims on appeal is a specific type of data structure designed to improve the way a computer stores and retrieves data in memory. The specification's disparagement of conventional data structures, combined with language describing the “present invention” as including the features that make up a self-referential table, confirm that our characterization of the “invention” for purposes of the § 101 analysis has not been deceived by the “draftsman's art.” Cf. Alice, 134 S. Ct. at 2360. In other words, we are not faced with a situation where general-purpose computer components are added post-hoc to a fundamental economic practice or mathematical equation. Rather, the claims are directed to a specific implementation of a solution to a problem in the software arts.) (Emphasis Added).
Ex Parte Desjardins and Enfish are specific implementations of solutions to problems in the software arts, whereas the present application is exactly what Enfish warned about when it mentions a situation where general-purpose computer components are added post-hoc to a mathematical equation.
As further stated in MPEP §2106.04(II)(A)(2):
“Because a judicial exception is not eligible subject matter, Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06 (quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)), if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself."). For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B. If there are no additional elements in the claim, then it cannot be eligible.” (Emphasis Added).
In this case, by Applicants’ own admission the claimed invention is “the first transformation comprising conformal flows with a second transformation mapping to a probability distribution” (Remarks, pg. 7). Such a mathematical solution to a mathematical probabilistic manifold modeling problem is ineligible under Federal Circuit case law and MPEP §2106.04(II)(A)(2). Accordingly, Applicants’ arguments are found to be unpersuasive, and the §101 rejection has been maintained.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
F.H. King, “11 – Transforming Density Functions” teaches transformation functions on probability density functions.
Rezende et al., “Normalizing Flows on Tori and Spheres” teaches density transformations from one Riemannian manifold to another by a smooth map.
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). 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 BRIAN W WATHEN whose telephone number is (571)270-5570. The examiner can normally be reached M-F 9-5:30pm.
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BRIAN W. WATHEN
Primary Examiner
Art Unit 2151
/BRIAN W WATHEN/ Primary Examiner, Art Unit 2151