DETAILED ACTION
This action is in response to claims filed 18 September 2025 for application 17885588 filed 11 August 2022. Currently claims 1, 8 and 13 are pending.
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 § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1, 8 and 13 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
It is unclear if “the combining including adding, to the bias of the neuron” refers to the bias of the first or the third neuron as either has a bias that could be affected by the combination. Correction or clarification required.
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, 8 and 13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to the abstract idea of selecting neurons to remove without significantly more.
In step 1, claims 1, 8 and 13 are directed to the statutory categories of an article of manufacture and a system and a method, respectively.
In step 2a prong 1, claims 1, 8 and 13 recite, in part, identifying deletion targets of a first neuron for which all input weights are zero, combining a bias of a first neuron with a bias of a third neuron by adding to the bias a value of the multiplying the bias by the weight, correcting all output weights to zero, identifying from an output layer as deletion targets a second neuron for which inputs are zero, and deleting the first and second neuron by deleting rows and columns in a matrix. The limitations of identifying, combining, and deleting are processes that, under the broadest reasonable interpretation, covers performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting “computer-readable storage medium”, “memories”, and “processors” in the context of the claims, the limitations encompass a person manually identifying and removing the rows and columns in a matrix that contain all zeroes. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind but for the recitation of generic computer components, then it falls within the “Mental Processes” grouping of abstract ideas. Accordingly, the claims recite an abstract idea.
In step 2a prong 2, this judicial exception is not integrated into a practical application. In particular, the claims recite the additional elements of “computer-readable storage medium”, “memories”, and “processors”. The computer components in the claim are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts to no more than mere instructions to apply the exception using a generic computer component (MPEP 2106.05(f)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Please see MPEP §2106.04.(a)(2).III.C.
In step 2b, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception, either alone or in combination. As discussed above with respect to integration of the abstract idea into a practical application, the additional elements of “computer-readable storage medium”, “memories”, and “processors” to perform the steps of the claims amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Response to Arguments
Applicant’s arguments, see pp6-7, filed 18 September 2025, with respect to the rejection of claims 1-17 under 35 USC 103 have been fully considered and are persuasive. The rejection of claims 1-17 under 35 USC 103 has been withdrawn.
Applicant's arguments filed 18 September 2025 have been fully considered but they are not persuasive. Applicant argues that deleting neurons is not an abstract mental step and that reducing the size of the memory results in a reduction of memory that amounts to a practical application. Examiner respectfully disagrees. The neuron deletion is recited in the claim as removing the rows and columns from a matrix which is an abstract idea as a human can either in the mind or with pen and paper maintain and edit a matrix representing neurons in a neural network. The practical application of reducing a matrix size is merely an improvement to the abstract idea itself and is not a technical improvement to the technology.
Conclusion
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 ERIC NILSSON whose telephone number is (571)272-5246. The examiner can normally be reached M-F: 7-3.
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, James Trujillo can be reached at (571)-272-3677. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/ERIC NILSSON/ Primary Examiner, Art Unit 2151