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 .
Status of Claims
This action is in reply to the amendment filed 10/23/2025.
Claims 1-18 are pending and have been examined on the merits (claims 1, 16, 17, and 18 being independent).
The amendment filed 10/23/2025 to the claims has been entered.
Response to Arguments
Applicant’s arguments and amendments filed 10/23/2025 have been fully considered.
Applicants assert that the pending claims fully comply with the requirement of 35 U.S.C. 101. Examiner respectfully disagrees. Applicant’s argument and amendments have been considered and are not persuasive. The rejections under 35 U.S.C. 101 have been maintained and clarified in view of the USPTO MPEP 2106.
Applicant’s arguments (see Applicant’s remarks, pages 8-45):
(1) Applicant's arguments regarding the 35 USC 101 rejection of record citing the ‘MPEP 2016 Test & USPTO Guidelines for Subject Matter Eligibility’ (see Applicant’s remarks, pages 9-21) are acknowledged, however they are not persuasive. Specifically, the arguments amount to a general allegation of patentability without specifically pointing out how the language of the claims is statutory. Applicant’s arguments are not found to be persuasive and thus the rejection under 35 USC 101 is maintained for the same reasons as set forth in previous Office Action. Furthermore, Examiner provides the response in the Office Action as below.
(2) Applicant's arguments that “[0027] Here, claimed elements are no less, and are even more technical in nature than in Core Wireless (e.g., GUIs that display commonalty accessed data on a menu), DDR (e.g., modifying conventional protocol to dynamically composite a dual source webpage), Enfish (e.g., self-referencing data base table data structure), Finian (e.g., generation of security profile data structure for virus protection), McRo (e.g., automated rules (rather than manual) synching animation speech), Trading Technologies (e.g., GUI preventing order entry at bid/ask price)” (see Applicant’s remarks, page 24), are not found persuasive. See below the response (3)-(8).
(3) In Core Wireless., the claims were found to patent eligible because they pertained to improvement to a graphical user interface (GUI) for mobile devices that displays an application summary of each application on the main menu while those applications are in an unlaunched state. The claims to computing devices were held patent eligible because the court concluded that they are directed to an improved user interface for electronic devices, not to the abstract idea of an index. In particular, the claims contain precise language delimiting the type of data to be displayed and how to display it, thus improving upon conventional user interfaces to increase the efficiency of using mobile devices. The specification of Core Wireless addressed specific problems with traditional user interfaces on mobile devices, particularly devices with small displays, showing that the prior art interfaces had many deficits relating to the efficient functioning of the computer, requiring a user “to scroll around and switch views many times to find the right data/functionality.” ’020 patent at 1:47–49. The claims and specification in Core Wireless were directed towards this problem and resulted in a benefit of the speed of a user’s navigation through various views and windows being improved because it “saves the user from navigating to the required application, opening it up, and then navigating within that application to enable the data of interest to be seen or a function of interest to be activated.” Id. at 2:35–39. Rather than paging through multiple screens of options, “only three steps may be needed from start up to reaching the required data/functionality.” Id. at 3:2–3. This language clearly indicates that the claims are directed to an improvement in the functioning of computers, particularly those with small screens. The Examiner fails to see how Core Wireless is applicable as the focus of the claims and specification is not on a solution or technical problems in the relevant art related to a GUI on a mobile device, furthermore the specification is silent on there being any technical problems or technical improvement related to the GUI, therefore arguments are not persuasive.
(4) In DDR, the claims here are not like those the Court found patent eligible in DDR, in which the inventive concept was in the modification of conventional mechanics behind website display to produce a dual-source integrated hybrid display because applicant’s claims here do not address problems unique to the Internet or require an arguably inventive device or technique for displaying information. So DDR has no applicability.
(5) In Enfish, the courts applied the distinction to reject the §101 challenge at stage one because the claims in Enfish focused not on asserted advances in uses to which existing computer capabilities could be put, but on a specific improvement — a particular database technique — in how computers could carry out one of their basic functions of storage and retrieval of data. Enfish, 822 F.3d at 1335-36; see Bascom, 827 F.3d at 1348-49, 2016 WL 3514158, at *5; cf. Alice, 134 S. Ct. at 2360 (noting basic storage function of generic computer). The present case is different: the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. So Enfish has no applicability.
(6) In Finjan, the claims were held patent eligible because the court concluded that the claimed method recites specific steps that accomplish a result that realizes an improvement in computer functionality. In particular, the method generates a security profile that identifies both hostile and potentially hostile operations, and can protect the user against both previously unknown viruses and "obfuscated code." This was a technical improvement to a technical problem over traditional virus scanning, which only recognized the presence of previously-identified viruses (see Memorandum - Recent Subject Matter Eligibility Decisions (Finjan Inc. v. Blue Coat Systems, Inc. and Core Wireless Licensing S.A.R.L., v. LG Electronics, Inc.) (April 2, 2018)). In the instance application the Examiner fails to see how computer functionality has been improved, therefore Finjan has no applicability.
(7) In McRO, the claims were held patent eligible because the claims were directed at specific rules that resulted in an improvement to the technology of computer generated lip synchronization. The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that "improved [the] existing technological process." The claims at issue in McRO described a specific way (use of particular rules to set morph weights and transitions through phonemes) to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters, allowing the computer to perform a function not previously performable by a computer. In the instant application, the examiner fails to see where the technological improvement is, the limitations are directed towards steps performed on a computer, the functioning of the additional elements or technological processes themselves and as whole are not improved. Furthermore, the patent claims here are not directed to a specific implementation to a solution to a problem in the software arts of improving computer animation through the use of specific rules, therefore McRO has no applicability.
(8) In Trading Technologies, the courts held the claimed subject matter is "directed to a specific improvement to the way computers operate," id., for the claimed graphical user interface method imparts a specific functionality to a trading system "directed to a specific implementation of a solution to a problem in the software arts.” The examiner fails to see how the instant application addresses a problem unique to the software arts, as a user interface is merely inputting and displaying data in a routine and conventional way. Therefore Trading Techs. has no applicability.
(9) Applicant's arguments that “[0032] Here, claimed elements are no less, and are even more technical in nature than in Amdocs (e.g., distributed networks), Berkheimer (e.g., improving operation efficiency, reducing costs/ redundancy/ storage/ etc., "storing a reconciled object structure"), RTC (e.g., image processing), BASCOM (e.g., Internet content filtering), SiRF (e.g., mathematical model to compute GPS position)” (see Applicant’s remarks, page 24), are not found persuasive. See below the response (10)-(12)
(10) In Amdocs, the claims are directed towards the network processing data in way that was unconventional resulting to an improvement to the technical area for processing data by reducing the flow of data records and reducing the amount of data stored in the central database, thus eliminating capacity bottlenecks, and improving the scalability and efficiency of the system, resulting in an improvement to the additional elements themselves. However, in the claimed invention, the computer has not been improved as the claims provide “an artificial intelligence-based optimized withdrawal policy recommendation engine generating apparatus, which obtains, via the at least one processor, a machine learning (ML) training request datastructure” (i.e. “apply it or the equivalent as amounts to simply applying the abstract idea to generic computer component). So Amdocs has no applicability.
(11) In Berkheimer, Applicant argues the Examiner must provide any of the above noted four bases in support of an assertion of a noted element being conventional. The Examiner notes that the steps of the claims, taken individually or as an ordered combination, have been identified as corresponding to an abstract idea. The additional elements in the claim are “a component collection stored in the at least one memory”, “at least one processor disposed in communication with the at least one memory”, “at least one processor executing processor-executable instructions from the component collection”, “a machine learning (ML) training request datastructure”, “the ML training request datastructure is structured specifying an optimal policy reward function and a set of training sample configuration datastructures”, “a set of training sample datastructures using the optimal policy reward function”, “an optimal policy using a reinforcement learning (RL) technique”, “storage of the component collection structured with processor-executable instructions” (Independent claim 1). Furthermore, it is clear, through a plain reading of Applicant’s specification, that the computing processors are suitably programmed to perform the abstract ilea, see at least paragraphs [0117-0120]. The claims at issue do not require any nonconventional computer, network, or other components, or even a non-conventional and non-generic arrangement of known, conventional pieces but merely call for performance of the claimed functions on a set of generic computer components. The elements of the instant process, when taken alone, each execute in a manner conventionally expected of these elements. The elements of the instant underlying process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone.
According to the USPTO guidelines of April 19, 2018 incorporating the Berkheimer memo (Berkheimer memo, hereinafter), in a step 2B analysis, an additional element (or combination of elements) is not well-understood, routine or conventional unless the examiner finds, and expressly supports a rejection in writing with, one or more of the following:
1. A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s).
2. A citation to one or more of the court decisions discussed in MPEP § 2106.05(d)(II) as noting the well-understood, routine, conventional nature of the additional element(s).
3. A citation to a publication that demonstrates the well-understood, routine, conventional nature of the additional element(s).
4. A statement that the examiner is taking official notice of the well-understood, routine, conventional nature of the additional elements). This option should be used only when the examiner is certain, based upon his or her personal knowledge, that the additional elements) represents well-understood, routine, conventional activity engaged in by those in the relevant art, in that the additional elements are widely prevalent or in common use in the relevant field, comparable to the types of activity or elements that are so well-known that they do not need to be described in detail in a patent application to satisfy 35 U.S.C. § 112(a).
The fact that a generic computing system such as described above can be suitably programmed, may be used to perform the claimed method and the fact that the claims at issue do not require any nonconventional computer, network, or other components, or even a “non- conventional and non-generic arrangement of known, conventional pieces” but instead merely call for performance of the claimed functions on a set of generic computer components, satisfies the Berkheimer memo requirement that the additional elements are conventional elements (as outlined in criterion 1 of the Berkheimer memo). The elements of the instant process, when taken alone, each execute in a manner conventionally expected of these elements. The elements of the instant process, when taken in combination, together do not offer substantially more than the sum of the functions of the elements when each is taken alone. Hence these additional elements do not add anything significantly more than an abstract idea.
(12) In BASCOM, when analyzing the claims under step 2B Examiner’s search for an inventive concept that can amount to significantly more, such as improvements to the functioning of a computer, improvements to any other technology or technical field, applying the judicial exception with, or by use of, a particular machine, effecting a transformation or reduction of a particular article to a different state or thing, adding a specific limitation other than what is well-understood, routine, conventional activity in the field, or adding unconventional steps that confine the claim to a particular useful application, e.g., a non-conventional and non-generic arrangement of various computer components for filtering Internet content, as discussed in BASCOM, or other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment (see MPEP 2106.05). Therefore, BASCOM has no applicability.
(13) Applicant's arguments that “[0043] Applicant respectfully disagrees, traverses the objection( s) / rejection( s), and submits the Office Action mischaracterized the claim(s), the law, and is in err.. The Office Action must consider the machine-or-transformation test of Bilski as evidence of "significantly more" where these additional elements integrate into the following practical applications” (see Applicant’s remarks, pages 33-34), are not found persuasive.
In the instant application, Examiner considers if applicant amends a claim to add a generic computer or generic computer components and asserts that the claim recites significantly more because the generic computer is 'specially programmed' (as in Alappat, now considered superseded) or is a 'particular machine' (as in Bilski, see MPEP 2106.05(b)), and further considers at whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. However, the instant claims as merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions do not automatically overcome an eligibility rejection. Further, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration into a practical application, the additional elements amount to no more than mere instructions to apply the exactly using generic computer component. The claim elements when considered separately and in an ordered combination, do not add significantly more than implementing the abstract idea over a generic computer network with a generic computer component. Therefore, Bilski has no applicability.
(14) Applicant's arguments that “[0050] As set-forth in the Kim Memorandum, the Office cannot over simply and ignore the recited claim limitations. Despite inferring otherwise, the instant Office Action simply has not met the Patent Office's burden in the 101 context, and has not followed existing PTO guidelines, including those clearly set forth and reiterated in the Kim Memorandum.” (see Applicant’s remarks, page 40), are not found persuasive.
In the instant application, Examiner considers whether a claim satisfies the criteria for subject matter eligibility by evaluating the claim in accordance with the following flowchart. The flowchart illustrates the steps of the subject matter eligibility analysis for products and processes that are to be used during examination for evaluating whether a claim is drawn to patent-eligible subject matter. It is recognized that under the controlling legal precedent there may be variations in the precise contours of the analysis for subject matter eligibility that will still achieve the same end result. The analysis set forth herein promotes examination efficiency and consistency across all technologies. As shown in the flowchart, Step 1 relates to the statutory categories and ensures that the first criterion is met by confirming that the claim falls within one of the four statutory categories of invention. See MPEP 2106.03 for more information on Step 1. Step 2, which is the Supreme Court’s Alice/Mayo test, is a two-part test to identify claims that are directed to a judicial exception (Step 2A) and to then evaluate if additional elements of the claim provide an inventive concept (Step 2B) (also called "significantly more" than the recited judicial exception). See MPEP 2106.04 for more information on Step 2A and MPEP 2106.05 for more information on Step 2B. Regarding to the Kim Memorandum, the previous and instant Office Actions have met the Patent Office's burden in the 101 analysis, and have followed existing PTO guidelines as well. Applicant’s arguments are not found to be persuasive and thus the rejection under 35 USC 101 is maintained as set forth in the instant Office Action.
(15) Applicant's arguments that “[0056] The USPTO's recent decision in Ex parte Desjardins, Appeal 2024-000567, September 26, 2025 ("Desjardins") clearly highlights that AI/ machine learning innovations cannot be simply waived away as simply merely some conventional implementations of generic computer components.” (see Applicant’s remarks, page 44).
In the instant application, Examiner considers whether independent claim 1, when considered as a whole, integrates an abstract idea into a practical application and also applicable to independent claims 16-18, and all pending dependent claims 2-15. Regarding to the USPTO's recent decision in Ex parte Desjardins, the previous and instant Office Actions have met the Patent Office's burden in the 101 analysis, and have followed existing PTO guidelines as well. Applicant’s arguments are not found to be persuasive and thus the rejection under 35 USC 101 is maintained as set forth in the instant Office Action.
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter without significantly more.
When considering subject matter eligibility under 35 U.S.C. 101, (1) it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, (2a) it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so (2b), it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v. CLS Bank International, et al., 573 U.S. (2014).
The claimed invention is directed to a judicial exception (i.e. a law of nature, a natural phenomenon, or an abstract idea) without significantly more. In the instant case, the claim(s) as a whole, considering all claim elements both individually and in combination, do not amount to significantly more than an abstract idea.
Step (1): In the instant case, the claims are directed towards to a method for determining an optimal policy which contains the steps of obtaining, generating, determining, calculating, and storing. The claim recites a series of steps and, therefore, is a process. The claims do fall within at least one of the four categories of patent eligible subject matter because claim 1 is direct to an apparatus, claim 16 is direct to a medium, and claims 17 and 18 are direct to a system and process respectively, i.e. machines programmed to carrying out process steps, Step 1-yes.
Step (2A) Prong 1: A method for determining an optimal policy is akin to the abstract idea subject matter grouping of: Certain Methods of Organizing Human Activity. As such, the claims include an abstract idea.
The specific limitations of the invention are (a) identified to encompass the abstract idea include: obtaining… training request datastructure…, generating… a set of training sample datastructure…, determining… a current state…, determining… an action for the current planning period…, calculating… a negative-asset-value-force cost…, determining… a reward value…, storing… the current state…, determining… an optimal policy…, and storing… an optimal policy datastructure…
As stated above, this abstract idea falls into the (b) subject matter grouping of: Certain Methods of Organizing Human Activity.
Step (2A) Prong 2: The instant claims do not integrate the exception into a practical application because additional elements: 1) “via the at least one processor”, “a machine learning (ML) training datastructure”, and “an actor network” amount to simply applying the abstract idea to a computer component. (e.g. “apply it”) 2) “processor-executable instructions” describes transmitting generic instructions to a generic device, and therefore also amounts to simply applying the abstract idea to generic computer components. (e.g. “apply it” or the equivalent) do not apply, rely on, or use the judicial exception in a manner that that imposes a meaningful limitation on the judicial exception (i.e. apply it 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)).
The instant recited claims including additional elements (i.e., processor, a component collection, executable instructions, a machine learning (ML) training request datastructure, a set of training sample datastructure, an actor network, an optimal policy datastructure, a training sample configuration datastructure, and a reinforcement learning (RL) technique) do not improve the functioning of the computer or improve another technology or technical field nor do they recite meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment. The limitations merely use a generic computing technology (Specification paragraphs [0117-0118]: MRLAPM controller, computers, processors, stored instruction codes, and information technology system) as apply it 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)). Therefore, the claims are directed to an abstract idea.
Step (2B): The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements (Claims: e.g., processor, a component collection, executable instructions, a machine learning (ML) training request datastructure, a set of training sample datastructure, an actor network, an optimal policy datastructure, a training sample configuration datastructure, and a reinforcement learning (RL) technique) amount to no more than mere instructions to apply the exactly using generic computer component. The claim elements when considered separately and in an ordered combination, do not add significantly more than implementing the abstract idea over a generic computer network with a generic computer component.
The computer is merely a platform on which the abstract idea is implemented. Simply executing an abstract concept on a computer does not render a computer “specialized,” nor does it transform a patent-ineligible claim into a patent-eligible one. See Bancorp Servs., LLC v. Sun Life Assurance Co. of Can., 687 F.3d 1266, 1280 (Fed. Cir. 2012). There are no improvements to another technology or technical field, no improvements to the functioning of the computer itself, transformation or reduction of a particular article to a different state or thing or any other meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment as a result of performing the claimed method. Also, the addition of merely novel or non-routine components to the claimed idea does not necessarily turn an abstraction into something concrete (See Ultramercial, Inc. v. Hulu, LLC, _ F.3d_, 2014 WL 5904902, (Fed. Cir. Nov. 14, 2014). Hence, the claims do not recite significantly more than an abstract idea. In conclusion, merely “linking/applying” the exception using generic computer components does not constitute ‘significantly more’ than the abstract idea. (MPEP 2106.05 (f)(h)). Therefore, the claims are not patent eligible under 35 USC 101.
Dependent claims 2-15 when analyzed as a whole and in an ordered combination are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitation(s) fail(s) to establish that the claim(s) is/are not directed to an abstract idea, as detailed below. The additional recited limitations in the dependent claims only refine the abstract idea.
For instance, in claim 2, the step of “… in which the optimal policy reward function is structured specifying an intermedia year reward function...” (i.e., determining an optimal policy), in claim 3, the step of “… in which the final year reward function is structured specifying a bequest reward function.” (i.e., determining an optimal policy), in claims 4 , the step of “… in which the user information data fields comprise: user age and user location.” (i.e., obtaining user information), in claims 5 , the step of “… in which the accounts information data Fields comprise: account type….” (i.e., obtaining account information), in claims 6 , the step of “… in which the retirement information data fields comprise: retirement year, planning horizon,….” (i.e., obtaining retirement information), in claims 7 , the step of “… in which the retirement information data fields further comprise at least one of: variable periodic withdrawal amount,...” (i.e., obtaining retirement information), in claims 8 , the step of “… in which an initial state further comprises incomes information data fields, and in which the incomes information data fields comprise: periodic income amount and income date range….” (i.e., obtaining user information), in claims 9 , the step of “… is structured specifying market return simulator settings data fields.” (i.e., setting market return), in claims 10, the step of “… in which the negative-asset-value-force cost for the current planning period is calculated...” (i.e., calculating cost), in claims 11 , the step of “… in which the negative-asset-value-force cost for the current planning period is calculated….” (i.e., calculating cost), in claims 12 , the step of “… in which the reward value for the current planning period is determined by evaluating the withdrawal policy for the current planning period….” (i.e., determining reward value), in claims 13 , the step of “… calculate, … account holdings for the set of user accounts for the next planning period based on a simulated portfolio return...” (i.e., determining account holdings), in claims 14 , the step of “… technique is Proximal Policy Optimization.” (i.e., determining an optimal policy), and in claim 15, the step of “… in which the set of parameters that define the structure of the optimal policy comprises: ...” (i.e., defining structure) are all processes that, under its broadest reasonable interpretation, covers performance of a fundamental economic practice but for the recitation of a generic computer component. Determining an optimal policy is a most fundamental commercial process.
This is an abstract concept with nothing more and is also considered mere instructions to apply an exception akin to a commonplace business method or mathematical algorithm being applied on a general purpose computer, Alice Corp. Pty. Ltd.; Gottschalk and Versata Dev. Group, Inc.; see MPEP 2106.05(f)(2).
In dependent claims 2-15, the step claimed are rejected under the same analysis and rationale as the independent claims 1, 16, 17, and 18 above. Merely claiming the same process using an artificial intelligence (e.g., a reinforcement learning (RL)) to determine an optimal policy does not change the abstract idea without an inventive concept or significantly more. Clearly, the additional recited limitations in the dependent claims only refine the abstract idea further. Further refinement of an abstract idea does not convert an abstract idea into something concrete.
Therefore, claims 1-18 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Conclusion
The prior art made of record but not relied upon herein but pertinent to Applicant’s disclosure is listed in the enclosed PTO-892.
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 extension fee 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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/YONGSIK PARK/Examiner, Art Unit 3694
December 23, 2025
/BENNETT M SIGMOND/Supervisory Patent Examiner, Art Unit 3694