DETAILED ACTION
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 03 November 2025 has been entered.
Status of Claims
Applicant has amended claims 1, 2, 4, 5, 9, 12, 13, 16, 17, 20 and 21. Claim 22 has been added. No claims have been canceled. Claims 3, 6, 7, 15 and 18 were canceled prior to previous office action. Thus, claims 1, 2, 4, 5, 8-14, 16, 17 and 19-22 remain pending in this application. 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 and amendments filed on 03 November 2025 with respect to:
objection to claims 1, 2, 4, 5, 8-14, 16, 17 and 19-21,
rejections of claims 1, 10 and 21 under U.S.C. § 112(a),
rejections of claims 1, 2, 4, 5, 8-14, 16, 17 and 19-21 under U.S.C. § 112(b),
rejection to claims 1, 2, 4, 5, 8-14, 16, 17 and 19-21 under U.S.C. § 101,
rejections of claims 1, 2, 4, 10, 12-14, 16 and 21 under 35 U.S.C. § 103 as being unpatentable over Cui et al (US Pub. No. 20200086862 A1) in view of O'Toole et al (US Pub. No. 20210216928 A1),
rejections of claims 5 and 17 under 35 U.S.C. § 103 as being unpatentable over Cui in view of O'Toole, in further view of Katoh (US Pub. No. 20220398663 A1),
rejections of claims 8, 11 and 19 under 35 U.S.C. § 103 as being unpatentable over Cui in view of O'Toole, in further view of Peng et al (US Pub. No. 20210287088 A1), and
rejections of claims 9 and 20 under 35 U.S.C. § 103 as being unpatentable over Cui in view of O'Toole, in further view of Agravante et al (US Pub. No. 20200034704 A1)
have been fully considered. Amendments to claims have been entered.
As an initial note: Applicant has amended claim 13. However, the status identifier of claim 13 recites “Previously Presented” although it should recite “Currently Amended” Accordingly, claim 13 will be interpreted as “’Currently Amended”.
Examiner acknowledges amendments to claims to overcome claim objections and 35 U.S.C. § 112(a) and § 112(b) rejections. However, amendments are not effective. See revised claim objections and § 112(a) and § 112(b) rejections below.
Examiner acknowledges amendments to, and arguments regarding claims to overcome 35 U.S.C. § 101 rejection. However, arguments are not persuasive.
Applicant argues subject matter eligibility under Step 2A – Prong One submitting that the claims are directed to improving training of an automated agent. [remarks page 9]. Examiner respectfully disagrees and maintains that claim is directed to the abstract idea of disabling a training cycle which is grouped under a fundamental economic practice of mitigating risk. Examiner would like to indicted that limitations, inter alia, restricting the next action by an agent and generating a disable signal so that the training of the automated agent is disabled are recited at a high level of generalization such that it is not clear what “restricting an action” means to convey.
Applicant argues subject matter eligibility under Step 2A – Prong Two submitting that the claimed subject matter provides an improvement to a computer system by reducing computing resources needed for training an automated agent by removing noise from training data [remarks page 9]. Examiner respectfully disagrees in as much as the claims, based on the broadest reasonable interpretation, does not indicate reducing noise in data.
Other arguments such as:
disabling training when the automated agent is restricted from taking actions is that the policy of the automated agent may improve more quickly, which may cause the automated agent to perform better than a comparable automated agent trained in the presence of restrictions
[remarks page 10] are not persuasive in that, as per MPEP 2106.05(a), accelerating an analyzing process, where the increased speed comes solely from the capabilities of a general purpose computer, has been found to be insufficient to show an improvement in computer-functionality.
Applicant argues subject matter eligibility under Step 2B submitting that the claimed subject matter amount to “significantly more” than the alleged exception [remarks page 10]. Examiner respectfully disagrees.
As with determining a practical application to an abstract idea, types of limitations indicative of an inventive concept (aka “significantly more”) – subject matter eligibility under Step 2B - include:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
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
Further, limitations also indicative of an inventive concept include:
Adding a specific limitation other than what is well-understood, routine, conventional activity in the field - see MPEP 2106.05(d).
Examiner maintains that the claimed invention does not contain any of these “types” of aforementioned limitations.
Limitations that are not indicative of an inventive concept include:
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),
Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g),
Generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h),
Simply appending well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception - see MPEP 2106.05(d) and Berkheimer Memo.
Examiner maintains that the claimed invention merely appends well-understood, routine, conventional activities previously known to the industry. Such activities including receiving data, determining an action, restricting an action, and disabling “something” are recited at a high level of generality, such that they do not convey an improvement to technology.
Rejections have been clarified herein in view of the claim amendments and the January 2019 Patent Subject Matter Eligibility Guidance – 2019 PEG.
Applicant's arguments filed with respect to claims regarding the 35 U.S.C. § 103 rejections have been fully considered. Although Examiner does not necessarily agree with Applicant’s contention regarding the cited prior art, Examiner cites new § 112(b) rejections and § 101 rejections based on January 2019 Patent Subject Matter Eligibility Guidance which prevent the Examiner from properly construing claim scope at this time.
If, in the opinion of the Applicant, a telephone conference would expedite the prosecution of the subject application, the Applicant is encouraged to contact the undersigned Examiner at the phone number listed below.
Priority
This application, filed on 23 August 2022 claims priority from provisional application 63/236,429, filed on 24 August 2021.
Claim Objections
Claims 1, 2, 4, 5, 8-14, 16, 17 and 19-22 are objected to because the claim language is so broad that it is not clear what the Applicant tis claiming as his invention.
For example, the specification discusses, inter alia, “limit price”, “market price”, “trading platform” and “tasks to be performed in relation to securities (e.g., stocks, bonds, options or other negotiable financial instruments)”, “market spread features”, “market quote” and “normalized market trade”. However, the claim language is devoid of any such language. Examiner suggests amending claims to recite something along the lines of “securities trading”.
Claims 1, 10 and 21 are objected to because the representative limitation:
determine whether the determined next action is restricted, based on the learning condition and the current environmental state data;
It is not clear what the metes and bounds are of “determining whether the determined next action is restricted”.
Correction is required. See related § 112 rejections.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 1, 10 and 21 rejected under 35 U.S.C. 112(a) as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor at the time the application was filed, had possession of the claimed invention.
Regarding claims 1, 10 and 21, the representative limitation recites:
receive an input indicating a learning condition for the automated agent;
However, Applicant's specification does not say what indicates a learning condition.
For example, the Applicant’s specification does recite of “determining a next action” such as in paragraph [0013] and [0024] of US Pub. 20230061752 A1 of the Applicant’s specification. Paragraph [0024] recites:
[0024] In another aspect, there is provided a non-transitory computer-readable storage medium storing instructions which when executed adapt at least one computing device to: instantiate an automated agent that includes a reinforcement learning neural network that is trained over a plurality training cycles and provides a policy for generating resource task requests; detect a learning condition that is expected to impede training of the automated agent during a given training cycle of the plurality of training cycles; and in response to the detecting, generating a disable signal to disable training of the automated agent for at least the given training cycle. (emphasis added)
However, detecting something that is “expected to impede something” is vague and indefinite in as much as the term “expected" is a relative term. “Expected” does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Regarding claims 1, 10 and 21, the representative limitation recites:
determine whether the determined next action is restricted, based on the learning condition and the current environmental state data;
However, Applicant's specification does not say how to determine an action is restricted. For example, paragraph [0085] of US Pub. 20230061752 A1 of the Applicant’s specification recites:
[0085] An automated agent 180 is restricted from taking actions in accordance with its policy when a user imposes a restriction on the automated agent 180. In one example, a user may substitute its own action selection in place of the action selection of the automated agent 180. In one example, a user may substitute its own policy in place of the policy of the automated agent 180. In one example, a user may prohibit the automated agent 180 from taking a certain action or prohibit the automated agent 180 from selecting a certain parameter value of an action. In one example, a user may prohibit the automated agent 180 from entering a certain portion of the environment being explored by the automated agent 180.
However, “being restricted from taking actions” does not convey “how” to determine an action is restricted. Therefore, Applicant has not described to one of ordinary skill how Applicant intended the function of "determining whether the determined next action is restricted" is to be performed. As per MPEP:
MPEP 2163 Guidelines for the Examination of Patent Applications Under the 35 U.S.C. 112(a) or Pre-AIA 35 U.S.C. 112, first paragraph, "Written Description" Requirement [R-10.2019]
35 U.S.C. 112(a) and the first paragraph of pre-AIA 35 U.S.C. 112 require that the "specification shall contain a written description of the invention ...." This requirement is separate and distinct from the enablement requirement. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1340, 94 USPQ2d 1161, 1167 (Fed. Cir. 2010) (en banc); Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1560, 19 USPQ2d 1111, 1114 (Fed. Cir. 1991); see also Univ. of Rochester v. G.D. Searle & Co., 358 F.3d 916, 920-23, 69 USPQ2d 1886, 1890-93 (Fed. Cir. 2004) (discussing the history and purpose of the written description requirement); In re Curtis, 354 F.3d 1347, 1357, 69 USPQ2d 1274, 1282 (Fed. Cir. 2004) ("conclusive evidence of a claim’s enablement is not equally conclusive of that claim’s satisfactory written description"). The written description requirement has several policy objectives. "[T]he ‘essential goal’ of the description of the invention requirement is to clearly convey the information that an applicant has invented the subject matter which is claimed." In re Barker, 559 F.2d 588, 592 n.4, 194 USPQ 470, 473 n.4 (CCPA 1977). Another objective is to convey to the public what the applicant claims as the invention. See Regents of the Univ. of Cal. v. Eli Lilly, 119 F.3d 1559, 1566, 43 USPQ2d 1398, 1404 (Fed. Cir. 1997), cert. denied, 523 U.S. 1089 (1998). "The ‘written description’ requirement implements the principle that a patent must describe the technology that is sought to be patented; the requirement serves both to satisfy the inventor’s obligation to disclose the technologic knowledge upon which the patent is based, and to demonstrate that the patentee was in possession of the invention that is claimed." Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1084 (Fed. Cir. 2005). Further, the written description requirement promotes the progress of the useful arts by ensuring that patentees adequately describe their inventions in their patent specifications in exchange for the right to exclude others from practicing the invention for the duration of the patent’s term.
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.
Claims 1, 2, 4, 5, 8-14, 16, 17 and 19-22 are rejected under 35 U.S.C. 112(b) 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.
Regarding claims 1, 10 and 21, the representative limitation:
determine whether the determined next action is restricted, based on the learning condition and the current environmental state data;
is vague and indefinite for several reasons. First, it is not clear what the metes and bounds are of “determining whether the determined next action is restricted”. Second, restricting “something” is not a clear method step. Perhaps the Applicant means to convey:
restrict the next action by the automated agent;
However, that is recited in the following method step.
Claims 2, 4, 5, 8, 9, 11-14, 16, 17, 19, 20 and 22 are rejected by way of dependency on a rejected independent claim.
The art rejections below are in view of the 112(b) rejections stated above.
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, 2, 4, 5, 8-14, 16, 17 and 19-22 are rejected under 35 U.S.C. 101 because 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, claims 1, 2, 4, 5, 8, 9 and 22 are directed to a “system” which is one of the four statutory categories of invention. Claims are directed to the abstract idea of disabling a training cycle which is grouped under a fundamental economic practice of mitigating risk.
in prong one of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance (Federal Register, Vol. 84, No. 5, p.p. 50-57 (Jan. 7, 2019))). Claims recite:
instantiate an automated agent that includes a reinforcement learning neural network;
obtain, during a given training cycle of the plurality of cycles, current environmental state data;
determine a next action for the agent, based in part on the current environmental state data;
determine whether the determined next action is restricted, based on the learning condition and the current environmental state data; and
in response to determining the determined next action is restricted,restrict the next action by the automated agent; andgenerate a disable signal causing training of the automated agent to be disabled for at least the given training cycle
Limitations such as:
is trained over a plurality training cycles and determines and performs actions within an environment under exploration by the automated agent during one or more training cycles
are merely a description of data and do not impose any meaningful limit on the computer implementation of the abstract idea.
Accordingly, the claim recites an abstract idea (See 2019 Revised Patent Subject Matter Eligibility Guidance).
This judicial exception is not integrated into a practical application because, when analyzed under prong two of step 2A (See 2019 Revised Patent Subject Matter Eligibility Guidance), the additional elements of the claim such as
a communication interface,
at least one processor, and
memory in communication with the at least one processor and software code stored in the memory executing the software,
represent the use of a computer as a tool to perform an abstract idea and/or do no more than generally link the abstract idea to a particular field of use. Similarly, “determining a next action for the agent, based in part on the current environmental state data” is a broad statement which also represents the use of a computer as a tool to perform an abstract idea. Therefore, the additional elements do not integrate the abstract idea into a practical application as they do no more than represent a computer performing functions that correspond to (i.e. automate) the acts of “collecting information, analyzing the information and providing the results of the analysis”.
When analyzed under step 2B (See 2019 Revised Patent Subject Matter Eligibility Guidance), the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception itself because the ordered combination does not offer substantially more than the sum of the functions of the elements when each is taken alone.
The computer and computer program instructions are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. The elements together execute in routinely and conventionally accepted coordinated manners and interact with their partner elements to achieve an overall outcome which, similarly, is merely the combined and coordinated execution of generic computer functionalities. These functionalities are well-understood, routine and conventional activities previously known to the industry. Therefore, the use of these additional elements does no more than employ a computer as a tool to automate and/or implement the abstract idea, which cannot provide significantly more than the abstract idea itself (MPEP 2106.05(I)(A)(f) & (h)).
Thus, viewed as a whole, the combination of elements recited in the claims merely describe the concept of generating a disable signal using computer technology (e.g. the processor).
Hence, claims are not patent eligible.
Dependent claims 2, 4, 5, 8 , 9 and 22 when analyzed as a whole are held to be patent ineligible under 35 U.S.C. 101 because the additional recited limitations fail to establish that the claims are not directed to a judicial exception (Step 2A- Prong One). Nor are the claims directed to a practical application to a judicial exception (Step 2A- Prong Two).
Accordingly, none of the dependent claims add a technological solution to the fundamental economic practice in the independent claim.
Note: The analysis above applies to all statutory categories of invention. As such, the presentment of claims 10-14, 16, 17, 19 and 20 otherwise styled as a method, and claim 21 styled as a non-transitory computer readable storage medium would be subject to the same analysis.
Conclusion
The claims as a whole do not amount to significantly more than the abstract idea itself. This is because the claims do not affect an improvement to another technology or technical field; the claims do not amount to an improvement to the functioning of a computer system itself; and the claims do not move beyond a general link of the use of an abstract idea to a particular technological environment.
Accordingly, there are no meaningful limitations in the claims that transform the judicial exception into a patent eligible application such that the claims amount to significantly more than the judicial exception itself.
Additional Comments
Regarding claims 1, 2, 4, 5, 8-14, 16, 17 and 19-22, in view of pending rejections, the Examiner is unable to locate prior art references that anticipate the claimed invention or renders it obvious.
Conclusion
The prior art of record and not relied upon is considered pertinent to Applicant’s disclosure:
EL-MOUSSA et al: “DETECTING CHANGES TO WEB PAGE CHARACTERISTICS USING MACHINE LEARNING”, (US Pub. No. 20200228569 A1).
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Any inquiry concerning this communication or earlier communications from the examiner should be directed to EDWARD J BAIRD whose telephone number is (571)270-3330. The examiner can normally be reached 7 am to 3:30 pm M-F.
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/EDWARD J BAIRD/Primary Examiner, Art Unit 3692