DETAILED ACTION
Applicant’s response filed 06/23/2026 has been fully considered. Rejections and/or objections not reiterated from previous Office Actions are hereby withdrawn. The following rejections and/or objections are either reiterated or newly applied.
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 the Claims
Claims 1-4, 6, and 9 are pending and under consideration in this action. Claims 5 and 7-8 were canceled in the amendment filed 06/23/2026.
Priority
This application claims foreign priority from Republic of Korea Application No. 10-2022-0095986, filed 8/2/2022, as reflected in the filing receipt mailed 10/24/2022. Acknowledgment is made of applicant's claim for foreign priority under 35 U.S.C. 119 (a)-(d). Receipt is acknowledged of certified copies of papers required by 37 CFR 1.55. The claims to the benefit of priority are acknowledged and the effective filing date of claims 1-4, 6, and 9 is 8/2/2022.
Information Disclosure Statement
The information disclosure statement (IDS) submitted on 06/23/2026 is in compliance with the provisions of 37 CFR 1.97. Accordingly, the IDS has been considered by the examiner.
It is noted that certain references lack appropriate page numbers (NPL #1-3). The Examiner has annotated those references herein. Applicant is kindly reminded to provide proper citations in compliance with 37 CFR 1.97 in all future submissions to the office.
Specification
The objection to the Specification is withdrawn in view of Applicant’s amendments to the Specification filed 06/23/2026 (Applicant’s Remarks, Pg. 8).
Claim Interpretation
The interpretation of claim 1 under 35 U.S.C. 112(f) is withdrawn in view of Applicant’s amendments to the claims filed 06/23/2026 (Applicant’s Remarks, Pg. 8-9). As amended, claim 1 recites sufficient structure to perform the claimed function.
Claim Rejections - 35 USC § 112(a)
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-4, 6, and 9 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.
This rejection is newly recited and necessitated by claim amendment.
Claim 1 recites the limitations “at least one processor” and ”a memory coupled to the at least one processor and storing instructions that, when executed by the at least one processor, configure the system to…” in lines 3-5 of the claim. The Specification (see at least Para. [0001], [0008], [0014]-[0015], and [0041]) discloses a system for estimating the infectious disease transmission using a Markov chain and mathematical modeling, and several units (e.g., a parameter receiving unit, a calculation unit, an extraction unit, a risk estimation unit, and a prediction unit). The Specification (see Para. [0005]-[0006]) further discloses that “the development of the prediction technology for infectious disease may be explained by dividing it into three stages. The first is a mathematical algorithm-oriented technology, the second is a prediction technology centered on high-performance computing infrastructure such as supercomputers, and the third is a simulation-based technology through connection with big data that may explain a floating population pattern of an area which is a target of the prediction.” The disclosed model follows the first approach for mathematically approaching infectious disease. While the Specification discloses the use of supercomputers for prediction technology using high-performance computing, this does not appear to be the used in the claimed method (i.e., it appears the “first” mathematical model is used, as opposed to the “second” and “third” methods for high-performance and simulation based technologies disclosed in Specification Para. [0005]). Therefore, the Specification appears to be silent on the computer aspects necessary for the computation with the disclosed units. This is a NEW MATTER rejection.
Claim Rejections - 35 USC § 112(b)
The rejection of claims 1-9 under 35 U.S.C. 112(b) as being indefinite is withdrawn in view of Applicant’s amendments or cancelation of claims in the amendment filed 06/23/2026 (Applicant’s Remarks, Pg. 9-12).
Claim Rejections - 35 USC § 101
Maintained Rejections
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 1-4, 6, and 9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite both (1) mathematical concepts (mathematical relationships, formulas or equations, or mathematical calculations) and (2) mental processes, i.e., concepts performed in the human mind (including observations, evaluations, judgements or opinions) (see MPEP § 2106.04(a)).
Any newly recited portion is necessitated by claim amendment.
Step 1:
In the instant application, claims 1-4, 6, and 9 are directed towards a system, which falls into one of the categories of statutory subject matter (Step 1: YES).
Step 2A, Prong One:
In accordance with MPEP § 2106, claims found to recite statutory subject matter (Step 1: YES) are then analyzed to determine if the claims recite any concepts that equate to an abstract idea, law of nature or natural phenomenon (Step 2A, Prong One). The following instant claims recite limitations that equate to one or more categories of judicial exceptions:
Claim 1 recites a mathematical concept (i.e., constructing a Markov chain model) in “a parameter receiving unit that constructs a discrete-time Markov chain model indicating a state and a state transition probability”; a mathematical concept in “a calculation unit that calculates a number of hidden infectious states (
i
^
b
) through backward reasoning using the received parameter, and calculates a number of hidden infectious states (
i
^
f
) through forward reasoning using the received parameter and an inverse scale coefficient z”; a mathematical concept in “an extraction unit that: calculates a loss function (
L
(
t
;
z
)
) by substituting the number of hidden infectious states (
i
^
b
) calculated through the backward reasoning and the number of hidden infectious states (
i
^
f
) calculated through the forward reasoning into Equation 3 below … and λ indicates a penalty term that prevents a state value from becoming negative ”; a mathematical concept in “extracts the inverse scale coefficient z by minimizing the calculated loss function (
L
(
t
;
z
)
)”; a mathematical concept in “calculates a reproduction factor using the extracted inverse scale coefficient z at each of a plurality of time points”; a mental process (i.e., updating infectious disease information) in “a prediction unit that updates infectious disease status information using the calculated reproduction factor”; a mathematical concept (i.e., using the updated infection disease status information and the reproduction factor to calculate infectious persons; see Specification Para. [0084]-[0089]) in “predicts a number of hidden infectious persons using the updated infectious disease status information”; a mathematical concept in “a risk estimation unit that acquires each of a plurality of reproduction factors calculated during a period τ”; a mathematical concept in “calculates an average value of the plurality of reproduction factors”; and a mental process (i.e., a comparison of two values) in “determines that a risk for the infectious disease has increased when the calculated average value is greater than the reproduction actor calculated at the time point t”.
Claim 3 recites a mathematical calculation in “wherein the calculation unit calculates the number of hidden infectious states (
i
^
b
) through backward reasoning using Equation 2 below … wherein,
φ
*
indicates an arbitrarily assumed detected case ratio,
X
I
H
indicates the number of daily confirmed persons at the time point t, and γ indicates an inverse of an average infection period”.
Claim 4 recites a mathematical calculation in “wherein the calculation unit calculates the number of hidden infections states (
i
^
f
) through the forward reasoning using Equation 1 below … wherein γ indicates an inverse of an average infection period, z indicates the inverse scale coefficient, ε indicates an inverse of an average latent period, e indicates a number of exposed persons, and i indicates a number of hidden infectious persons,
U
(
t
-
2
;
z
)
indicates the reproduction factor calculated at a time point
t
-
2
using the inverse scale coefficient z, and XIH indicates the number of daily confirmed persons at the time point t”.
Claim 6 recites a mathematical calculation in “wherein the extraction unit extracts the inverse scale coefficient (z) by substituting the calculated loss function (
L
(
t
;
z
)
) into Equation 4below … wherein T indicates a starting time point of a window for minimizing the loss function and
L
(
t
;
z
)
indicates the calculated loss function at the time point t with the inverse scale coefficient z”.
Claim 9 recites a mental process (i.e., an evaluation of the data to update states) in “wherein the prediction unit uses the reproduction factor to update state data of each of a vaccinated state, a susceptible state, an exposed state, a hidden infectious state, a hospitalized state, a recovery state, and a dead state”; and a mathematical concept (i.e., using the updated infection disease status information and the reproduction factor to calculate infectious persons; see Specification Para. [0084]-[0089]) in “predicts the number of hidden infectious persons at a time point t+1 using the updated state data”.
These recitations are similar to the concepts of collecting information, and displaying certain results of the collection and analysis in Electric Power Group, LLC, v. Alstom (830 F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016)), comparing information regarding a sample or test to a control or target data in Univ. of Utah Research Found. v. Ambry Genetics Corp. (774 F.3d 755, 113 U.S.P.Q.2d 1241 (Fed. Cir. 2014)) and Association for Molecular Pathology v. USPTO (689 F.3d 1303, 103 U.S.P.Q.2d 1681 (Fed. Cir. 2012)), and organizing and manipulating information through mathematical correlations in Digitech Image Techs., LLC v Electronics for Imaging, Inc. (758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014)) that the courts have identified as concepts that can be practically performed in the human mind or mathematical relationships.
The abstract ideas recited in the claims are evaluated under the broadest reasonable interpretation (BRI) of the claim limitations when read in light of and consistent with the specification, and are determined to be directed to mental processes that in the simplest embodiments are not too complex to practically perform in the human mind. Additionally, the recited limitations that are identified as judicial exceptions from the mathematical concepts grouping of abstract ideas are abstract ideas irrespective of whether or not the limitations are practical to perform in the human mind.
Specifically, claim 1 involves nothing more than building a Markov chain model, calculating the number of infectious states, calculating a loss function, extracting the inverse scale coefficient, calculating the reproduction factor, updating the disease status, calculating the number of hidden infectious persons, and determining a risk that the infectious disease has increased. The steps of building a Markov chain model, calculating the number of infectious states, calculating a loss function, extracting the inverse scale coefficient, calculating the reproduction factor, and calculating the number of hidden infectious persons, has increased are, under the BRI, performed using mathematical operations. The instant Specification (see Para. [0055]-[0089]) discloses the formulas used to perform each of the calculations. For the sake of not reiterating the Specification, the recited calculating steps correspond to Equations 1-6 in the Specification. Additionally, since there are no specifics recited in the methodology, the steps of updating the disease status and determining a risk that the infectious disease has increased, are something that under the BRI, one could perform mentally, or with the aid of a generic computer. Therefore, the claimed steps are not further defined beyond something that reads on performing a calculation using a computer as a tool, and merely looking at data and making a determination based on the calculations. As such, said steps are directed to judicial exceptions. The instant claims must therefore be examined further to determine whether they integrate the abstract idea into a practical application (Step 2A, Prong One: YES).
Step 2A, Prong Two:
In determining whether a claim is directed to a judicial exception, further examination is performed that analyzes if the claim recites additional elements that when examined as a whole integrates the judicial exception(s) into a practical application (MPEP § 2106.04(d)). A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception. The claimed additional elements are analyzed to determine if the abstract idea is integrated into a practical application (MPEP § 2106.04(d)(I)). If the claim contains no additional elements beyond the abstract idea, the claim fails to integrate the abstract idea into a practical application (MPEP § 2106.04(d)(III)). The following independent claims recite limitations that equate to additional elements:
Claim 1 recites “at least one processor”; “a memory coupled to the at least one processor and storing instructions that, when executed by the at least one professor, configure the system to…”; “receives a parameter indicating status information according to the infectious disease transmission at a time point after t days have elapsed from a start of infection spread”; and “outputs a determination result indicating the risk for the infectious disease to a monitoring device”.
Regarding the above cited limitations in claim 1 of (i) at least one processor; and (ii) a memory coupled to the at least one processor and storing instructions that, when executed by the at least one professor, configure the system. These limitations require only a generic computer component, which does not improve computer technology. Therefore, these limitations equate to mere instructions to implement an abstract idea on a generic computer, which the courts have established does not render an abstract idea eligible in Alice Corp. 573 U.S. at 223, 110 USPQ2d at 1983.
Regarding the above cited limitations in claim 1 of (iii) receives a parameter indicating status information according to the infectious disease transmission at a time point after t days have elapsed from a start of infection spread. This limitation equates to insignificant, extra-solution activity of mere data gathering because this limitation gathers data before or after the recited judicial exceptions of updating the disease status information and predicting the number of hidden infectious persons (see MPEP § 2106.04(d)).
Regarding the above cited limitation in claim 1 of (iv) outputs a determination result indicating the risk for the infectious disease to a monitoring device. This limitation equates to an extra-solution step of generally outputting a result, which is incidental to the primary process of estimating infectious disease transmission by constructing a Markov chain model, calculating the number of hidden infectious states through forward and backward reasoning, calculating a loss function with the hidden infectious states, calculating a reproduction factor, and using the reproduction factor to estimate an increased risk at a given time point (see MPEP § 2106.05(g)).
Additionally, none of the recited dependent claims recite additional elements which would integrate the judicial exception into a practical application. Specifically, claim 2 further limits the received parameter indicating status information. As such, claims 1-4, 6, and 9 are directed to an abstract idea (Step 2A, Prong Two: NO).
Step 2B:
Claims found to be directed to a judicial exception are then further evaluated to determine if the claims recite an inventive concept that provides significantly more than the judicial exception itself (Step 2B). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The instant independent claims recite the same additional elements described in Step 2A, Prong Two above.
Regarding the above cited limitations in claim 1 of (i) at least one processor; and (ii) a memory coupled to the at least one processor and storing instructions that, when executed by the at least one professor, configure the system. These limitations equate to instructions to implement an abstract idea on a generic computing environment, which the courts have established does not provide an inventive concept (see MPEP § 2106.05(d) and MPEP § 2106.05(f)).
Regarding the above cited limitations in claim 1 of (i) receives a parameter indicating status information according to the infectious disease transmission at a time point after t days have elapsed from a start of infection spread. This limitation does not include any specific steps for acquiring the parameter indicating status information. Under the BRI, these limitations are merely receiving data for the subsequent steps of calculating the number of hidden infectious states, calculating the reproduction factor, updating the disease status, calculating the number of hidden infectious persons, and using the reproduction factor to estimate an increased risk at a given time point. Therefore, this limitation equates to receiving/transmitting data over a network, which the courts have established as a WURC limitation of a generic computer in buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014).
Regarding the above cited limitation in claim 1 of (iv) outputs a determination result indicating the risk for the infectious disease to a monitoring device. This limitation equates to an extra-solution step of generally outputting a result, which is incidental to the primary process of estimating infectious disease transmission by constructing a Markov chain model, calculating the number of hidden infectious states through forward and backward reasoning, calculating a loss function with the hidden infectious states, calculating a reproduction factor, and using the reproduction factor to estimate an increased risk at a given time point. This post solution activity is analogous to the additional element of measuring metabolites of a drug administered to a patient in Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 79, 101 USPQ2d 1961, 1968 (2012) and the post-solution activity of adjusting an alarm limit variable to a figure computed according to a mathematical formula in Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978) (see MPEP § 2106.05(g)).
These additional elements do not comprise an inventive concept when considered individually or as an ordered combination that transforms the claimed judicial exception into a patent-eligible application of the judicial exception. Therefore, the instant claims do not amount to significantly more than the judicial exception itself (Step 2B: NO). As such, claims 1-4, 6, and 9 are not patent eligible.
Response to Arguments under 35 U.S.C. 101
Applicant’s arguments filed 06/23/2026 have been fully considered but they are not persuasive.
1. Applicant argues that under Step 2A, Prong Two, that even if amended claim 1 recites a judicial exception, the claim integrates any such judicial exception into a practical application, and is therefore not “directed to” the exception under MPEP § 2106.04(d). Specifically, amended claim 1 recites “a risk estimation unit that …outputs a determination result indicating the risk for the infectious disease to a monitoring device”. The recited monitoring device is a particular machine that displays the risk determination output. The output to this particular machine is not “mere data gathering” – it is a meaningful, real-world output that applies the recited mathematical operations to a specific technological use, namely real-time epidemiological risk monitoring. Per MPEP § 2106.04(d)(II)(A), "applying or using a judicial exception ... with, or by use of, a particular machine" is an example of a meaningful limitation indicative of integration into a practical application. (Applicant’s Remarks, Pg. 12-13).
It is respectfully submitted that this is not persuasive for the following reasons:
MPEP § 2106.05(b)(I) recites:
“It is important to note that a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014). See also TLI Communications LLC v. AV Automotive LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623, 114 USPQ2d 1711, 1715 (Fed. Cir. 2015) (noting that Alappat’s rationale that an otherwise ineligible algorithm or software could be made patent-eligible by merely adding a generic computer to the claim was superseded by the Supreme Court’s Bilski and Alice Corp. decisions). 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), the examiner should look at whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 223-24, 110 USPQ2d 1976, 1983-84 (2014). See In re Alappat, 33 F.3d 1526, 1545, 31 USPQ2d 1545, 1558 (Fed. Cir. 1994); In re Bilski, 545 F.3d 943, 88 USPQ2d 1385 (Fed. Cir. 2008).”
Amended claim 1 recites generic computer components in the limitations of “at least one processor”; “a memory coupled to the at least one processor and storing instructions that, when executed by the at least one professor, configure the system”; and “outputs…to a monitoring device”. No evidence has been presented to suggest that the computer itself has been altered in any way, i.e., by changing the functions of the processor, or by changing the way in which it stores or accesses memory. Additionally, nothing about the physical components of the computer nor the way the computer operates is changed by the limitations in amended claim 1. Therefore, use of a general purpose computer does not qualify as a particular machine (see MPEP § 2106.05(b)).
Additionally, under Step 2A, Prong Two, the limitation of “outputs a determination result indicated the risk for the infectious disease to a monitoring device” is an extra-solution activity of generally outputting a result, which is incidental to the primary process of estimating infectious disease transmission by constructing a Markov chain model, calculating the number of hidden infectious states through forward and backward reasoning, calculating a loss function with the hidden infectious states, calculating a reproduction factor, and using the reproduction factor to estimate an increased risk at a given time point. This is analogous to the example of post-solution activity in MPEP § 2106.05(g): An example of post-solution activity is an element that is not integrated into the claim as a whole, e.g., a printer that is used to output a report of fraudulent transactions, which is recited in a claim to a computer programmed to analyze and manipulate information about credit card transactions in order to detect whether the transactions were fraudulent. Under Step 2B, this limitation is analogous to the extra-solution examples recited in MPEP § 2106.05(g): the additional element of measuring metabolites of a drug administered to a patient in Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 79, 101 USPQ2d 1961, 1968 (2012) and the post-solution activity of adjusting an alarm limit variable to a figure computed according to a mathematical formula in Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). Therefore, this limitation does integrate the judicial exceptions into a practical application and this argument is not persuasive.
2. Applicant also argues that amended claim 1 sets forth a specific, non-conventional pipeline tying the recited mathematical operations to a real-world technological context: (i) the parameter receiving unit constructs the discrete-time Markov chain model and receives the parameter indicating status information, (ii) the calculation unit performs both backward and forward reasoning to obtain two distinct estimates (
i
^
b
and
i
^
f
) of the number of hidden infectious states, (iii) the extraction unit reconciles the two estimates by computing the loss function L(t; z) per Equation 3 and minimizing L(t; z) to extract the inverse scale coefficient z, (iv) the prediction unit updates the disease status information using the calculated reproduction factor, and (v) the risk estimation unit averages the reproduction factors over the period T, compares the averaged reproduction factor against the reproduction factor at the time point t, and outputs the resulting determination result to the monitoring device. This ordered combination - culminating in the output to the monitoring device - is a specific, technological way of practically applying the recited operations, and is materially different from the generic "collecting information and displaying results" framework of Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350 (Fed. Cir. 2016), cited in the Office Action (Applicant’s Remarks, Pg. 13).
It is respectfully submitted that this is not persuasive for the following reasons:
MPEP 2106.04(d)(II) recites:
The analysis under Step 2A Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon (including products of nature). Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations introduced in subsection I supra, and discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h).
The limitations, indicated by Applicant, of (i) the parameter receiving unit constructs the discrete-time Markov chain model, (ii) the calculation unit performs both backward and forward reasoning to obtain two distinct estimates (
i
^
b
and
i
^
f
) of the number of hidden infectious states, (iii) the extraction unit reconciles the two estimates by computing the loss function L(t; z) per Equation 3 and minimizing L(t; z) to extract the inverse scale coefficient z, (iv) the prediction unit updates the disease status information using the calculated reproduction factor, and (v) the risk estimation unit averages the reproduction factors over the period T and compares the averaged reproduction factor against the reproduction factor at the time point t, have been identified as judicial exceptions in Step 2A, Prong One above. The integration of a judicial exception into a practical application can only be achieved by additional elements, not by a limitation that recites a judicial exception. Additionally, the judicial exceptions (i.e., the mental processes and mathematical concepts) are the only limitations considered to be similar to the concepts of collecting information, and displaying certain results of the collection and analysis in Electric Power Group, LLC, v. Alstom (830 F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016)), and organizing and manipulating information through mathematical correlations in Digitech Image Techs., LLC v Electronics for Imaging, Inc. (758 F.3d 1344, 111 U.S.P.Q.2d 1717 (Fed. Cir. 2014)).
Additionally, of the pipeline elements recited by Applicant above, the parameter receiving unit receives the parameter indicating status information and the risk estimation unit outputs the resulting determination result to the monitoring device are the only additional elements. The additional elements are not interpreted as being similar to the concepts of collecting information and displaying certain results of the collection and analysis in Electric Power Group, LLC, v. Alstom (830 F.3d 1350, 119 USPQ2d 1739 (Fed. Cir. 2016)), unlike the judicial exceptions, as described directly above. As disclosed in Step 2A, Prong Two, Step 2B, and argument (1) above, these two pipeline limitations are either an extra-solution activity of data gathering (parameter receiving unit) or an extra-solution activity of generally outputting a result (risk estimation unit). For the reasons disclosed in Step 2A, Prong Two, Step 2B, and argument (1) above, these limitations are not sufficient to amount to significantly more than the judicial exceptions. This argument is thus not persuasive.
3. Applicant also argues that even if the analysis proceeds to Step 2B, amended claim 1 recites significantly more than the alleged judicial exception. The Office Action's Step 2B analysis relies on the position that the only additional element of original claim 1 - the limitation that the parameter is received - is mere data gathering and well-understood, routine, and conventional ("WURC") under buySAFE, Inc. v. Google, Inc., 765 F.3d 1350 (Fed. Cir. 2014). That position no longer applies to amended claim 1, which recites materially additional elements that the Office has not asserted to be WURC, including: (i) the loss function calculation by substituting the number of hidden infectious states obtained through backward reasoning and the number of hidden infectious states obtained through forward reasoning into Equation 3, (ii) the extraction of the inverse scale coefficient by minimizing the loss function, and (iii) the output of the determination result to the monitoring device. Specifically, the Office Action expressly acknowledges, at page 26 (Conclusion), that "Sherlock et al. does not teach the specific equations to calculate the number of hidden infectious states through backward reasoning, the number of hidden infectious states through forward reasoning, or the loss function combining the number of hidden infectious states calculated through backward and forward reasoning, as disclosed in instant claims 3-5". A claim element that the Office has affirmatively found to be unknown in the prior art cannot, as a matter of logic, be "well-understood, routine, and conventional". See Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018) (whether a claim element is WURC is a question of fact that must be supported by evidence, and elements not found in the prior art cannot be deemed WURC) (Applicant’s Remarks, Pg. 13-14).
It is respectfully submitted that this is not persuasive for the following reasons:
As described in the rejection, and arguments (1)/(2) above, the following limitations recite judicial exceptions, not additional elements as indicated by Applicant: (i) the loss function calculation by substituting the number of hidden infectious states obtained through backward reasoning and the number of hidden infectious states obtained through forward reasoning into Equation 3, and (ii) the extraction of the inverse scale coefficient by minimizing the loss function. Judicial exceptions (analyzed in Step 2A, Prong One) do not need to be well-understood, routine, and conventional (WURC). Analysis of WURC limitations is performed in Step 2B for the additional elements of the claim. As described above, the additional elements in claim 1 are either an extra-solution activity of data gathering (parameter receiving unit) or an extra-solution activity of generally outputting a result (risk estimation unit).
MPEP § 2106.05(I) recites:
“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." Intellectual Ventures I v. Symantec Corp., 838 F.3d 1307, 1315, 120 USPQ2d 1353, 1358 (Fed. Cir. 2016) (quoting Diamond v. Diehr, 450 U.S. at 188–89, 209 USPQ at 9). See also Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103. See, e.g., BASCOM Global Internet v. AT&T Mobility LLC, 827 F.3d 1341, 1350, 119 USPQ2d 1236, 1242 (Fed. Cir. 2016) ("The inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art. . . . [A]n inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces."). Specifically, lack of novelty under 35 U.S.C. 102 or obviousness under 35 U.S.C. 103 of a claimed invention does not necessarily indicate that additional elements are well-understood, routine, conventional elements. Because they are separate and distinct requirements from eligibility, patentability of the claimed invention under 35 U.S.C. 102 and 103 with respect to the prior art is neither required for, nor a guarantee of, patent eligibility under 35 U.S.C. 101. The distinction between eligibility (under 35 U.S.C. 101) and patentability over the art (under 35 U.S.C. 102 and/or 103) is further discussed in MPEP § 2106.05(d).”
Additionally, whether or not the claimed elements appear to be free of the prior art is distinct from subject matter eligibility under 35 U.S.C. 101. As described in the rejection, and arguments above, only the additional elements can provide the technical improvements and amount to significantly more than the recited judicial exceptions. As described in arguments (1) and (2) above, the additional elements are extra-solution activity and do not provide significantly more than the recited judicial exceptions. This argument is thus not persuasive and the rejection of claims 1-4, 6, and 9 under 35 U.S.C. 101 is maintained.
Claim Rejections - 35 USC § 103
The rejection of claims 1-2 under 35 U.S.C. 103 as being unpatentable over Zuhairoh et al. in view of Sherlock et al. and Herbrich et al. is withdrawn in view of Applicant’s amendments to the claims filed 06/23/2026 (Applicant’s Remarks, Pg. 15). Specifically, Applicant has incorporated limitations from dependent claims 5 and 8, which were found to be free of the prior art in the Office action dated 04/09/2026, into independent claim 1.
Conclusion
No claims allowed.
Claims 1-4, 6, and 9 appear to be free of the prior art because the prior art does not fairly suggest or teach the specific equations for forward reasoning and for the loss function recited in claim 1. The closest prior art is Sherlock et al. (A coupled hidden Markov model for disease interactions. JR Stat Soc Ser C Appl Stat. 62(4): 609-627 (2013); previously cited). Sherlock et al. discloses a method for determining disease interactions using a hidden Markov model, which incorporates a forward-backward algorithm to determine a distribution of hidden states. However, Sherlock does not teach the specific equations to calculate the number of hidden infectious states through forward reasoning, or the loss function combining the number of hidden infectious states calculated through backward and forward reasoning, as disclosed in instant claim 1. Claims 2-4, 6, and 9 appear to be free of the prior art due to their dependency on claim 1.
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.
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/D.P.S./Examiner, Art Unit 1687
/Lori A. Clow/Primary Examiner, Art Unit 1687
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