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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 8/20/26 has been entered.
No new arguments were filed with the RCE and arguments filed 7/16/26 were previously addressed.
Response to Amendment
Applicant's arguments filed 7/16/26 and entered 8/20/26 have been fully considered but they are not persuasive.
The added limitation of generating a plurality of sets of optimization outputs from the tailorable mathematical representation, wherein a first of the sets corresponds to the optimization engine and a second of the sets corresponds to a second optimization engine fails to overcome the USC 101 rejection because it is well-settled that collecting and analyzing information by steps people go through in their minds or by mathematical algorithms, without more, are mental processes in the abstract-idea category. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016); see SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161, 1167 (Fed. Cir. 2018) ("[S]electing certain information, analyzing it using mathematical techniques, and reporting or displaying the results of the analysis" is abstract); Intellectual Ventures I LLC v. Cap. One Fin. Corp., 850 F.3d 1332, 1341 (Fed. Cir. 2017) ("Organizing, displaying, and manipulating data of particular documents" is abstract.); FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096-97 (Fed. Cir. 2016) (compiling and combining disparate data sources to generate a full picture of a user's activity, identity, frequency of activity, and the like in a computer environment to detect potential fraud does not differentiate a process from ordinary mental processes); In re Killian, 45 F.4th 1373, 1379 (Fed. Cir. 2022) ("These steps can be performed by a human, using 'observation, evaluation, judgment, [and] opinion,' because they involve making determinations and identifications, which are mental tasks humans routinely do").
Response to arguments
The claims amount to data analysis/manipulation and using some form of AI as a tool. The transformation of data, or the mere "manipulation of basic mathematical constructs [i.e.,] the paradigmatic 'abstract idea,"' is not a transformation sufficient to integrate a judicial exception into a practical application. CyberSource v. Retail Decisions, 654 F.3d 1366, 1372 n.2 (Fed. Cir. 2011) (quoting In re Warmerdam, 33 F.3d 1354, 1355, 1360 (Fed. Cir. 1994)).
Claiming AI on a high level can amount to using a black box without specifying any real details of how the AI operates or what’s in the black box. The claims need to specify the technical details of the AI.
Although the claims may specify an improvement they are only improving the abstract idea not a computer.
"The courts consider a mental process (thinking) that "can be performed in the human mind, or by a human using a pen and paper" to be an abstract idea." MPEP § 2106.04(a)(2).III. "Accordingly, the "mental processes" abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions." Id. For the purposes of this abstract idea, "[t]he courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation."
If the application claims the inventive concept (from the disclosure) and the claims are drawn to the specifics of e.g., learning or training, such as the how and for what purpose the training occurs, the claims may be eligible/statutory. If the generic computer or processor is merely "used for", "applied to" or "using" an AI learning/training algorithm, process or equivalent without claimed details, it will most often fall into the "Mere Instructions to Apply an Exception" as set forth in MPEP 2106.05(f). When a claim merely recites only the idea of a solution or outcome, i.e. the claim fails to recite details of how a solution to a problem is accomplished, as described in 2106.05(f)(1), it is rejected as ineligible. Also, use of an existing AI or learning technique or method, set forth to be WURC (in accordance with MPEP 2106.05(d)), may also prove to be ineligible.
If the claims are merely "using" existing "deep learning algorithms" and/or "artificial intelligence techniques" then learning/training/AI is not the inventive concept but is merely a tool used to manipulate data. This can be a process that was previously performed by "human agents" and may now be automated. Learning, training, "updating" and/or "dynamically modifying" are insignificant computer activities, shown to be WURC in accordance with MPEP 2106.05(d)(II)(iii), for instance.
Claims do not specify a clear practical application. It is true that making physical changes to at least a portion of hardware is not a mental process but if applicant merely states e.g., “making physical changes” without any more description it would be so broad that it would be directed to insignificant extra-solution activity. If the physical changes were more specifically laid out, examiner may agree that the physical changes make a claim eligible but if the examiner cannot easily identify what physical changes are positively made the claimed physical changes amount to mere extra-solution activity.
In order for an abstract idea to be integrated into a practical application, the improvement in a given technical field must be a byproduct of the additional elements. An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself”, as stated in MPEP 2106.5 (1). Applicant should state where within the claim limitations such an improvement is made.
Practical applications must be additional elements, not abstract ideas. Prong Two: evaluate whether the claim recites additional elements that integrate the exception into a practical application of the exception.
"It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception." paragraph is on 2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-07.2022].
Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
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.
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, 3-5,7-8, 10-12, 14-15, 17-18, 20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1: claims 1, 3-5,7-8, 10-12, 14-15, 17-18, 20 are directed to either a process, machine, manufacture or composition of matter.
With respect to claims 1, 8, 15:
2A Prong 1:
transforming the set of descriptive material to a tailorable mathematical representation that has extensible reasoning mechanisms (Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data);
rewriting the set of descriptive material using the received set of rules (Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data; mathematical concepts; see applicant’s Fig. 5);
processing, by the [optimization engine], the tailorable mathematical representation to produce a set of optimization results (Abstract idea of analyzing data. Mental process. A human-mind with pen and paper can process data);
generating a plurality of sets of optimization outputs from the tailorable mathematical representation, wherein a first of the sets corresponds to the optimization engine and a second of the sets corresponds to a second optimization engine (abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data and a user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation).
2A Prong 2: This judicial exception is not integrated into a practical application.
Additional elements:
an information handling system that includes a processor and a memory accessible by the processor (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component; the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358);
Claim 15 readable storage medium (Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
receiving a set of descriptive material that describes a problem, wherein the set of descriptive material comprises code of a verification program (mere data gathering and output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
receiving a set of rules corresponding to an optimization engine, wherein the rules include semantics of complex constructs(mere data gathering and output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
optimization engine (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component; the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358).
2B: The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Additional elements:
an information handling system that includes a processor and a memory accessible by the processor (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component; the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358);
Claim 15 readable storage medium (Adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
receiving a set of descriptive material that describes a problem, wherein the set of descriptive material comprises code of a verification program (mere data gathering and output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
receiving a set of rules corresponding to an optimization engine, wherein the rules include semantics of complex constructs(mere data gathering and output recited at a high level of generality - insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g));
optimization engine (computer component is recited at a high level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component; the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice, 134 S. Ct. at 2358)
Further, the receiving/transmitting steps were considered to be extra-solution activity in Step 2A Prong 2, and thus it is re-evaluated in Step 2B to determine if it is more than what is well-understood, routine, conventional activity in the field. The receiving and/or transmitting limitations constitute extra-solution activity. See buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355 (Fed. Cir. 2014) ("That a computer receives and sends the information over a network-with no further specification-is not even arguably inventive."). The court decisions cited in MPEP 2106.05(d)(II) indicate that merely Receiving and/or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information). Thereby, a conclusion that the claimed receiving/transmitting steps are well-understood, routine, conventional activity is supported under Berkheimer. The claim is not patent eligible.
3, 10, 17. The method of claim 2 further comprising: propagating one or more constraints (reads on transmitting/receiving, adding insignificant extra-solution activity to the judicial exception - see MPEP 2106.05(g)) found in the set of descriptive material, the propagating resulting in discovery of information implicit in the set of descriptive material, the information including data types, decision variables, and variable domains (further define mental process); and transforming an expressive power (not further defined) found in a set of inputs corresponding to the set of descriptive material to a set of optimization generator inputs(Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can transform data with or without a generic machine).
4, 11, 18. The method of claim 2 further comprising: converting one or more external models into the mathematical representation(mental process – user can manually perform raw thinking in their head as a first stage and then using paper and pen to perform mathematical operation), wherein at least one of the external models is selected from the group consisting of a regression model, a spreadsheet model, a graph specification model, and a natural language input model(additional element considered to be generally linking the use of the judicial exception to a particular technological environment or field of use – see MPEP 2106.05(h)).
5, 12. The method of claim 2 further comprising: after converting the external models into the mathematical representation, generating a second set of descriptive material from the mathematical representation (Abstract idea of analyzing data. Mental process. A human- mind with pen and paper can generate/determine data).
7, 14, 20. The method of claim 2 further comprising: converting an if-then-else construct found in the set of source code to a conjunction of implications that is included in the output(mental process of modeling with assistance of pen and paper); replacing a strict inequality found in the set of source code to a non-strict inequality form that is included in the output; and converting a quantifier found in the set of source code to a conjunction that is included in the output(mental process of modeling with assistance of pen and paper).
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Imamichi (2023/0197147) teaches optimization using CPLEX (0080-0081);
Mandal EP 4036763 A1 teaches optimization using CPLEX.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DAVID R VINCENT whose telephone number is (571)272-3080. The examiner can normally be reached ~Mon-Fri 12-8:30.
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, Alexey Shmatov can be reached at 5712703428. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/DAVID R VINCENT/Primary Examiner, Art Unit 2123
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