DETAILED ACTION
Claims 1, 2 and 4-11 are presented for examination.
Claims 1 and 9 have been amended.
Claim 3 has been cancelled.
This office action is in response to the RCE submitted on 12-MAY-2026.
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 .
Priority
Acknowledgment is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d). The certified copy has been filed Application No. DE102020114575.6, filed on 05/30/2020.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.
Response to Arguments – 35 USC 101
On pgs. 6-11 of the Applicant/Arguments Remarks (hereinafter ‘Remarks’), Applicant argues the amended claims have overcome the rejection under 35 USC 101. Examiner respectfully disagrees.
On pg. 7, the applicant argues the invention cannot practically be performed in the human mind.
The examiner disagrees. The claim limitations are written at a high level of generality that there is nothing that precludes the mind from performing them. Further, the determining step could be interpreted as a further abstract idea as a mathematical calculation (see MPEP 2106.04(a)(2)). The applicant is reminded that the physics with its sophisticated equations for the field of quantum computing, were invented before the advent of modern calculators and computers. The use of measuring equipment to measure decoherence is merely data gathering: an extra solution activity under MPEP 2106.05(g).
The courts do not distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer").
The applicant on pg. 8, argues the amended claim integrates the abstract idea into a practical application.
The examiner finds the amended limitation, controlling or optimizing the simulation algorithm on the quantum computer to achieve a target state or a target parameter value determined from the abstract quantum spin system, a positive step in the right direction, however, it’s recited at a high level of generalization that it amounts to merely applying the limitation to a field of use. The applicant is advised to further amend the limitation to clarify and ground the function of the application.
On pgs. 8, the applicant argues their invention is an improvement in the field of quantum simulation.
The examiner respectfully disagrees. The applicant is reminded that the novelty of the invention is a separate analysis not related to the 101 subject matter eligibility. Please see MPEP 2106.05. Although the courts often evaluate considerations such as the conventionality of an additional element in the eligibility analysis, the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91, 101 USPQ2d at 1973 (rejecting "the Government’s invitation to substitute §§ 102, 103, and 112 inquiries for the better established inquiry under § 101 "). As made clear by the courts, the "‘novelty’ of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter."
The examiner further disagrees with the practical application is an improvement to the field of quantum computing. A proper statement of the rule as given by Enfish: For that reason, the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities or, instead, on a process that qualifies as an "abstract idea" for which computers are invoked merely as a tool. (see Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1336 (Fed. Cir. 2016)).
The Court’s analysis of the claim hinged on the “self-referential table” limitation being an improvement over the conventional technology and not invoking the computer as a tool.
In our instant application, the claimed improvement is an improvement on the mental process, but invokes a computer as a tool to perform the mental process. It is important to note, the judicial exception alone cannot provide the improvement (see MPEP 2106.05(a) paragraph 6).
MPEP 2106.05(a) further states: To show that the involvement of a computer assists in improving the technology, the claims must recite the details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology. See MPEP § 2106.05(f) for more information about mere instructions to apply an exception.
The applicant on pg. 10, further argues that controlling or optimizing the simulation algorithm on the quantum computer to achieve a target state or a target parameter value determined from the abstract quantum spin system, amounts to more than merely performing a simulation with the decoherence rate.
The examiner, as pointed out earlier, disagrees. This is recited at a high level of generality, and doesn’t amount to more than merely applying the abstract idea. The applicant is encouraged to further clarify and specify the practical application.
Applicant's arguments have been fully considered but they are not persuasive. Rejection under 35 USC 101 is maintained.
Response to Arguments – 35 USC 103
The applicant has included the limitations of claim 3 into claim 1. Applicant argues the amended claims overcome the rejection under 35 USC 103. The arguments have been considered fully and are persuasive. The rejection is withdrawn.
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 1-11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 1
Step 1: Statutory class – process.
Step 2A Prong One: Does the claim recite an abstract idea, law of nature or natural phenomenon?
Yes
“3) Mental processes – concepts performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III).” MPEP § 2106.04(a).
The claims are directed to an abstract idea of data processing and analysis. The claim recites:
Mapping the real, spin system on an abstract quantum spin system and at least one physical parameter to be determined to the abstract quantum spin system,
Creating a simulation algorithm for the abstract quantum spin system
determining decoherence rates and corresponding coupling operators of all available qubits of the quantum computer
mapping effective decoherence rates of spins of the abstract quantum spin system and the effective decoherence rates of the spins with the spins and associated decoherence rates of the qubits in such a way that the abstract quantum spin system is then simulated on the quantum computer
the at least one physical parameter is determined.
determining the effective decoherence rate Γdec within a time development step tsim by means of
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wherein N is a sequence of quantum gate operations, τi g quantum gate times and Γi g decoherence rate
The mapping, creating, determining and simulating limitations are mental processes of evaluation, judgement and mathematical calculations. By way of example, one can mentally create a quantum spin computing environment, map one physical parameter on the computing system, evaluate a simulation algorithm, determine the decoherence rate, and the coupling operators of available qubits and determine the value of the physical parameter following the simulation result.
Step 2A Prong Two: Does the claim recite additional elements that integrate the judicial exception into a practical application?
No.
The additional elements are:
using a quantum computer
controlling or optimizing the simulation algorithm on the quantum computer to achieve a target state or a target parameter value determined from the abstract quantum spin system.
The quantum computer is a type of computer.
The controlling/optimizing limitation is merely applying it. MPEP § 2106.05(f). It is also linking the use of a juridical exception to a technological environment. MPEP § 2106.05(h). Controlling/optimizing a simulation based on the received information (this is both insignificant extra solution activity and merely linking to a field of use, i.e., executing in a computer environment).
Step 2B: Does the claim recite additional elements that amount to significantly more than judicial exception?
No, as discussed with respect to Step 2A, the additional limitation is a general purpose quantum computer and merely applying the exception to a field of use. They do not impose any meaningful limits on practicing the abstract idea and therefore the claim does not provide an inventive concept in Step 2B. Further, in regards to step 2B and as cited above in step 2A, MPEP 2106.05(g) “Obtaining information about transactions using the Internet to verify credit card transactions, CyberSource v. Retail Decisions, Inc., 654 F.3d 1366, 1375, 99 USPQ2d 1690, 1694 (Fed. Cir.2011)” is merely data gathering. The additional elements have been considered both individually and as an ordered combination in the significantly more consideration. This claim is ineligible.
Claim 2 recites determining effective coupling operators associated with the effective decoherence rates, which are generated by the application of discrete gate operations from the coupling operators of the qubits, which is a mental/mathematical process under Step 2A Prong One. Therefore, the claim is considered ineligible under 35 USC 101.
Claim 4 recites defining decoherence superoperators are defined which include the coupling operators of the qubits, which is a mental/mathematical process under Step 2A Prong One. Therefore, the claim is considered ineligible under 35 USC 101.
Claim 5 recites using a swapping of the decoherence superoperators to determine the effective coupling operators, which is a mental/mathematical process under Step 2A Prong One. Therefore, the claim is considered ineligible under 35 USC 101.
Claim 6 recites transforming the effective coupling operators by using gate operations, which is a mental/mathematical process under Step 2A Prong One. Therefore, the claim is considered ineligible under 35 USC 101.
Claim 7 recites using rotations of the qubit basis for the transforming the effective coupling operators, which is a mental/mathematical process under Step 2A Prong One. Therefore, the claim is considered ineligible under 35 USC 101.
Claim 8 recites a certain state of equilibrium is to be reached, which is a mental/mathematical process under Step 2A Prong One. Therefore, the claim is considered ineligible under 35 USC 101.
Claim 9 recites taking into account at least one interaction, between adjacent qubits (5) and/or quantum gates in the simulation algorithm of the abstract quantum spin system wherein the at least one interaction is in the form of a simulated spectrum; and verifying whether the simulated spectrum matches a spectrum taken from a real sample, which is a mental/mathematical process under Step 2A Prong One. Therefore, the claim is considered ineligible under 35 USC 101.
Claim 10 recites in order to optimize the mapping of the effective decoherence rates with the decoherence of the qubits of the quantum computer, the effective decoherence rate Γdec is a function according to the mapping
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which is a mental/mathematical process under Step 2A Prong One. Therefore, the claim is considered ineligible under 35 USC 101.
Claim 11 recites , the effective decoherence rate Γdec(Mopt) is a function according to the mapping
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, which is a mental/mathematical process under Step 2A Prong One. Therefore, the claim is considered ineligible under 35 USC 101.
Allowable Subject Matter
Claim 1 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action and to include all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
Tacchino et al. (Quantum computers as universal quantum simulators) in view of Gu et al. (When can quantum decoherence be mimicked by classical noise?) and further in view of Temme et al. (Error mitigation for short-depth quantum circuits).
Temme (Page 4, “Let Dk be the depolarizing noise on k = 1, 2 qubits that returns the maximally mixed state with probability… Define a noisy version of a kqubit unitary gate U as DkU. The noisy basis Ω is obtained by multiplying ideal gates on the left by arbitrary Pauli operators and adding the depolarizing noise. Thus Ω is a set of operations Oα = DkPU, where U ∈ Γ is a k-qubit ideal gate and P ∈ {I, X , Y, Z}⊗k is a Pauli TPCP map.” This shows the error and consequently decoherence being measured as function of gates and gate times).
However, this reference or any reference of record or combination of references, do not disclose or suggest, the whole equation as set forth in Claims 1 specifically,
Determining the effective decoherence rate Γdec within a time development step tsim by means of
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wherein N is a sequence of quantum gate operations, τi g quantum gate times and Γi g decoherence rate.
In combination with the remaining features and elements of the claims from which they depend.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMIR DARWISH whose telephone number is (571)272-4779. The examiner can normally be reached 7:30-5:30 M-Thurs.
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/A.E.D./Examiner, Art Unit 2199
/LEWIS A BULLOCK JR/Supervisory Patent Examiner, Art Unit 2199
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