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 .
Response to Amendment
Acknowledgement is made of Applicant’s claim amendments on 01/22/2026. The claim amendments are entered. Presently, claims 1, 3, and 6-9 remain pending. Claims 1, 3, and 6-9 have been amended and claims 2, 4, and 5 are cancelled.
Response to Arguments
Regarding the 35 U.S.C 103 rejection, Applicant’s arguments, see pages 12-14 of remarks, filed 01/22/2026, with respect to claims 1, 3, and 6-9 have been fully considered and are persuasive. The 35 USC 103 rejection of claims 1, 3, and 6-9 has been withdrawn. In particular, the cited prior of record do not fairly teach or suggest "select, from among the first satisfying rules, surrogate rules which minimizes a sum of the first errors and the rule adoption costs, and generate a surrogate rule candidate set including the surrogate rules; receive a target of observation data and a predicted value of a target model for the target observation data; receive the surrogate rule candidate set; select, from the surrogate rule candidate set, second satisfying rules whose condition becomes true for the target data; calculate errors between predicted values of the second satisfying rules for the target observation data and the predicted values of the target model for the target observation data; determine, from among the second satisfying rules, a surrogate rule for the target model which minimizes the errors as a surrogate rule for the target model; and execute automated prediction processing using the predicted value of the surrogate rule instead of the predicted value of the target model," as recited in claim 1. Claims 8 and 9 recite features similar to those discussed above with respect to claim 1, and the 35 USC 103 rejections are withdrawn for the same reasons.
Regarding the 35 USC 101 Rejection, Applicant's arguments filed 01/22/2026 have been fully considered but they are not persuasive.
Applicant argues: The generation and selection of rules are not general computation and achieves reliability and acceptability of the black-box operation. In addition, any abstract concept is integrated into a practical application of the prediction process (pages 9-12 of remarks).
Examiner response: Examiner respectfully disagrees. Independent claims 1 and 8-9 recite a number of mental processes that are directed to an abstract idea such as “selecting” and “determining” which are practically implementable in the human mind. See MPEP § 2106.04(a)(2), subsection III. The steps of “calculating” are directed to a mathematical concept. See MPEP § 2106.04(a)(2), subsection I. Paragraphs [0018]-[0028] of the specification describe the rules as IF-THEN statements, the black box model is further described as an equation in paragraph [0020], and selecting a rule that minimizes the sum of errors and adoption costs is shown as an equation in paragraph [0027]. A human can reasonably select a set of IF-THEN rules that trigger the IF statement to be true based on the training data and target observation data. A human can further select a rule based on an equation that minimizes the sum of first errors and an adoption cost in their mind with the aid of paper and pencil. Similarly, a human can determine a whether a second set of rules minimizes an error between the rule and the target model. Applicant argues that the steps of generating and selecting rules and adopting the surrogate rule instead of the black box achieve a reliability and acceptability. However, as explained above, those steps encompass an abstract idea. MPEP 2106.05(a)(II) states “[h]owever, it is important to keep in mind that an improvement in the abstract idea itself (e.g. a recited fundamental economic concept) is not an improvement in technology” thus, the abstract idea is not integrated into a practical application. The independent claims also recite the additional element of “receiving…” however, “receiving…” is an insignificant extra-solution activity that is well known routine and conventional as evidenced by MPEP 2106.05 (d) (II). Furthermore, using a “memory” and “processor” to “execute automated prediction processing using the predicted value of the surrogate rule instead of the predicted value of the target model” is mere instructions to apply the exception using a generic computer component and does not integrate the claims into a practical application. See 2106.05(f). Arguments are not persuasive.
Claim Objections
Claims 1 and 8-9 objected to because of the following informalities: Claims 1 and 8-9 recite “select, from the surrogate rule candidate set, second satisfying rules whose condition becomes true for the target data”. The claims should recite “select, from the surrogate rule candidate set, seconds satisfying rules whose condition becomes true for the target observation data”. Appropriate correction is required.
Claim 6 is objected to because of the following informalities: Claim 6 recites “wherein the one or more processors determine the surrogate rule by solving an optimization problem of assigning the rules such that the sum becomes minimum for the observation data”. The claim should recite “wherein the one or more processors determine the surrogate rule by solving an optimization problem of assigning the rules such that the sum becomes minimum for the target observation data”. Appropriate correction is required.
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, 3, and 6-9 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.
Claims 1, and 8-9 recites the limitation "the predicted values" in “calculate first errors between the predicted values of the first satisfying rules for the training data and the predicted values of the target model”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, Examiner interprets “the prediction values” as corresponding to the “prediction results.” Claims 3 and 6-7 are dependent claims that do not cure the deficiencies and are rejected for the same reasons.
Claims 1, and 8-9 recites the limitation "the predicted values" in “calculate errors between predicted values of the second satisfying rules for the target observation data and the predicted value values of the target model for the target observation data”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, Examiner interprets the limitation as “calculate errors between predicted values of the second satisfying rules for the target observation data and
Claim 7 recites the limitation "the cost" in “wherein the cost is determined in advance for each original rule belonging to the original rule set”. There is insufficient antecedent basis for this limitation in the claim. For examination purposes, Examiner interprets “the cost” as “the rule adoption cost”.
Claim 8 recites “selecting, from the surrogate rule candidate set, seconds satisfying rules whose condition become true for the target data satisfying rule rules whose condition becomes true for the target data from the rule set, the satisfying rule being a rule in which the condition becomes true for the observation data”. It is unclear which rules the “satisfying rules” is referring to and the limitation appears to repeat itself. For examination purposes, Examiner interprets the limitation as “selecting, from the surrogate rule candidate set, second satisfying rules whose condition become true for the target observation data ”.
Claim 8 recites “determining, from among the second satisfying rules, a surrogate rule for the target model which minimizes the errors as a surrogate rule for the target model determining, from among the second satisfying rules, a surrogate rule for the target model”. The determining step appears to be repeated. For examination purposes, Examiner interprets the limitation as “determining, from among the second satisfying rules, a surrogate rule for the target model which minimizes the errors as a surrogate rule for the target model ”.
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, 6-9 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
According to the first part of the analysis, in the instant case, claims 1, 3, 6-7 are directed to a device comprising a processor, claim 8 is directed to a method, and claim 9 is directed to a non-transitory computer-readable recording medium. Thus, each of the claims falls within one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter).
Claim 1 recites:
Step 2A, Prong 1
“select, from among the original rule set, first satisfying rules whose condition becomes true for the training data” (This step is a recitation of a mental process that is practical to perform in the human mind. A human can select a rule that triggers a condition in the rule to be true for the training data. (i.e., observation, evaluation, judgement, opinion). See MPEP § 2106.04(a)(2), subsection III.)
“calculate first errors between the predicted values of the first satisfying rules for the training data and the predicted values of the target model” (This step is directed to a mathematical concept. See MPEP § 2106.04(a)(2), subsection I.)
“calculate or acquire rule adoption costs for adopting the first satisfying rules” (This step is directed to a mathematical concept. See MPEP § 2106.04(a)(2), subsection I.)
“select, from among the first satisfying rules, surrogate rules which minimizes a sum of the first errors and the rule adoption costs, and generate a surrogate rule candidate set including the surrogate rules” (This step is a recitation of a mental process that is practical to perform in the human mind. A human can select a rule that minimizes a sum of first errors and a rule adoption cost to make another set of surrogate rules. (i.e., observation, evaluation, judgement, opinion). See MPEP § 2106.04(a)(2), subsection III.)
“select, from the surrogate rule candidate set, seconds satisfying rules whose condition becomes true for the target data” (This step is a recitation of a mental process that is practical to perform in the human mind. A human can select a rule that triggers a condition in the rule to be true for the target data. (i.e., observation, evaluation, judgement, opinion). See MPEP § 2106.04(a)(2), subsection III.)
“calculate errors between a predicted values of the second satisfying rules for the target observation data and the predicted values of the target model for the target observation data” (This step is directed to a mathematical concept. See MPEP § 2106.04(a)(2), subsection I.)
“determine, from among the second satisfying rules, a surrogate rule for the target model which minimizes the errors as a surrogate rule for the target model” (This step is a recitation of a mental process that is practical to perform in the human mind. A human can determine a rule that minimizes the errors. (i.e., observation, evaluation, judgement, opinion). See MPEP § 2106.04(a)(2), subsection III.)
Step 2A, Prong 2
“An information processing device comprising: a memory configured to store instructions; and one or more processors configured to execute the instructions to” (mere instructions to apply the exception using a generic computer component. See 2106.05(f).)
“receive pairs of training data and prediction results for the training data by a target model” (This step is directed to mere data gathering and is understood to be insignificant extra-solution activity. See MPEP 2106.05(g).)
“receive an original rule set including a plurality of original rules, wherein each original rule includes a pair of a condition and a predicted value corresponding to the condition” (This step is directed to mere data gathering and is understood to be insignificant extra-solution activity. See MPEP 2106.05(g).)
“receive a target of observation data and a predicted value of a target model for the target observation data” (This step is directed to mere data gathering and is understood to be insignificant extra-solution activity. See MPEP 2106.05(g).)
“receive the surrogate rule candidate set” (This step is directed to mere data gathering and is understood to be insignificant extra-solution activity. See MPEP 2106.05(g).)
“execute automated prediction processing using the predicted value of the surrogate rule instead of the predicted value of the target model” (Making a prediction based on a predicted value of a rule is a mental process. Automatically executing the prediction process on computer hardware is mere instructions to apply the exception using a generic computer component. See 2106.05(f).)
This judicial exception is not integrated into a practical application.
Step 2B
“An information processing device comprising: a memory configured to store instructions; and one or more processors configured to execute the instructions to” (mere instructions to apply the exception using a generic computer component. See 2106.05(f).)
“receive pairs of training data and prediction results for the training data by a target model” (This step appears to be directed to transmitting and receiving data, which is well-understood, routine, and conventional. i. Receiving 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); See MPEP 2106.05 (d) (II).)
“receive an original rule set including a plurality of original rules, wherein each original rule includes a pair of a condition and a predicted value corresponding to the condition” (This step appears to be directed to transmitting and receiving data, which is well-understood, routine, and conventional. i. Receiving 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); See MPEP 2106.05 (d) (II).)
“receive a target of observation data and a predicted value of a target model for the target observation data” (This step appears to be directed to transmitting and receiving data, which is well-understood, routine, and conventional. i. Receiving 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); See MPEP 2106.05 (d) (II).)
“receive the surrogate rule candidate set” (This step appears to be directed to transmitting and receiving data, which is well-understood, routine, and conventional. i. Receiving 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); See MPEP 2106.05 (d) (II).)
“execute automated prediction processing using the predicted value of the surrogate rule instead of the predicted value of the target model” (Making a prediction based on a predicted value of a rule is a mental process. Automatically executing the prediction process on computer hardware is mere instructions to apply the exception using a generic computer component. See 2106.05(f).)
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim 3 recites:
Step 2A, Prong 1
“wherein the surrogate rule candidate set includes less surrogate rule candidates as the rule adoption cost is high, and the surrogate rule candidate set includes more surrogate rule candidates as the rule adoption cost is low” (This step is a recitation of a mental process that is practical to perform in the human mind. A human can select candidate rules so that there are less selected candidate rules when an adoption cost is high and more selected candidate rules when the cost of adopting the rule is low. (i.e., observation, evaluation, judgement, opinion). See MPEP § 2106.04(a)(2), subsection III.)
Step 2A, Prong 2 & 2B
The claim does not recite any additional elements.
Claim 6 recites:
Step 2A, Prong 1
“determine the surrogate rule by solving an optimization problem of assigning the rules such that the sum becomes minimum for the observation data” (This step is a recitation of a mental process that is practical to perform in the human mind. A human can determine a rule by solving an equation that sets a sum as a minimum. (i.e., observation, evaluation, judgement, opinion). See MPEP § 2106.04(a)(2), subsection III.)
Step 2A, Prong 2
“wherein the one or more processors determine the surrogate rule by solving an optimization problem of assigning the rules such that the sum becomes minimum for the observation data” (Mere instructions to apply the exception using a generic computer component. See 2106.05(f).)
This judicial exception is not integrated into a practical application.
Step 2B
“wherein the one or more processors determine the surrogate rule by solving an optimization problem of assigning the rules such that the sum becomes minimum for the observation data” (Mere instructions to apply the exception using a generic computer component. See 2106.05(f).)
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim 7 recites:
Step 2A, Prong 1
“and wherein the cost is determined in advance for each original rule belonging to the original rule set” (This step is a recitation of a mental process that is practical to perform in the human mind. A human can determine a cost for an original rule set. (i.e., observation, evaluation, judgement, opinion). See MPEP § 2106.04(a)(2), subsection III.)
Step 2A, Prong 2
“wherein the one or more processors receive the original rule set prepared in advance,” (This step is directed to mere data gathering and is understood to be insignificant extra-solution activity. See MPEP 2106.05(g).)
This judicial exception is not integrated into a practical application.
Step 2B
“wherein the one or more processors receive the original rule set prepared in advance” (This step appears to be directed to transmitting and receiving data, which is well-understood, routine, and conventional. i. Receiving 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); See MPEP 2106.05 (d) (II).)
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claim 8 recites:
Step 2A, Prong 1
“selecting, from among the original rule set, first satisfying rules whose condition becomes true for the training data” (This step is a recitation of a mental process that is practical to perform in the human mind. A human can select a rule that triggers a condition in the rule to be true for the training data. (i.e., observation, evaluation, judgement, opinion). See MPEP § 2106.04(a)(2), subsection III.)
“calculating first errors between the predicted values of the first satisfying rules for the training data and the predicted values of the target model” (This step is directed to a mathematical concept. See MPEP § 2106.04(a)(2), subsection I.)
“calculating or acquire rule adoption costs for adopting the first satisfying rules” (This step is directed to a mathematical concept. See MPEP § 2106.04(a)(2), subsection I.)
“selecting, from among the first satisfying rules, surrogate rules which minimizes a sum of the first errors and the rule adoption costs, and generating a surrogate rule candidate set including the surrogate rules” (This step is a recitation of a mental process that is practical to perform in the human mind. A human can select a rule that minimizes a sum of first errors and a rule adoption cost to make another set of surrogate rules. (i.e., observation, evaluation, judgement, opinion). See MPEP § 2106.04(a)(2), subsection III.)
“selecting, from the surrogate rule candidate set, seconds satisfying rules whose condition become true for the target data satisfying rules whose condition becomes true for the target data from the rule set, the satisfying rule being a rule in which the condition becomes true for the observation data” (This step is a recitation of a mental process that is practical to perform in the human mind. A human can select a rule that triggers a condition in the rule to be true for the target data. (i.e., observation, evaluation, judgement, opinion). See MPEP § 2106.04(a)(2), subsection III.)
“calculating errors between a predicted values of the second satisfying rules for the target observation data and the predicted values of the target model for the target observation data” (This step is directed to a mathematical concept. See MPEP § 2106.04(a)(2), subsection I.)
“determining, from among the second satisfying rules, a surrogate rule for the target model which minimizes the errors as a surrogate rule for the target model determining, from among the second satisfying rules, a surrogate rule for the target model” (This step is a recitation of a mental process that is practical to perform in the human mind. A human can determine a rule that minimizes the errors. (i.e., observation, evaluation, judgement, opinion). See MPEP § 2106.04(a)(2), subsection III.)
Step 2A, Prong 2
“receiving pairs of training data and prediction results for the training data by a target model” (This step is directed to mere data gathering and is understood to be insignificant extra-solution activity. See MPEP 2106.05(g).)
“receiving an original rule set including a plurality of original rules, wherein each original rule includes a pair of a condition and a predicted value corresponding to the condition” (This step is directed to mere data gathering and is understood to be insignificant extra-solution activity. See MPEP 2106.05(g).)
“receiving a target of observation data and a predicted value of a target model for the target observation data” (This step is directed to mere data gathering and is understood to be insignificant extra-solution activity. See MPEP 2106.05(g).)
“receiving the surrogate rule candidate set” (This step is directed to mere data gathering and is understood to be insignificant extra-solution activity. See MPEP 2106.05(g).)
“executing automated prediction processing using the predicted value of the surrogate rule instead of the predicted value of the target model” (Making a prediction based on a predicted value of a rule is a mental process. Automatically executing the prediction process on computer hardware is mere instructions to apply the exception using a generic computer component. See 2106.05(f).)
This judicial exception is not integrated into a practical application.
Step 2B
“receiving pairs of training data and prediction results for the training data by a target model” (This step appears to be directed to transmitting and receiving data, which is well-understood, routine, and conventional. i. Receiving 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); See MPEP 2106.05 (d) (II).)
“receiving an original rule set including a plurality of original rules, wherein each original rule includes a pair of a condition and a predicted value corresponding to the condition” (This step appears to be directed to transmitting and receiving data, which is well-understood, routine, and conventional. i. Receiving 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); See MPEP 2106.05 (d) (II).)
“receiving a target of observation data and a predicted value of a target model for the target observation data” (This step appears to be directed to transmitting and receiving data, which is well-understood, routine, and conventional. i. Receiving 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); See MPEP 2106.05 (d) (II).)
“receiving the surrogate rule candidate set” (This step appears to be directed to transmitting and receiving data, which is well-understood, routine, and conventional. i. Receiving 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); See MPEP 2106.05 (d) (II).)
“executing automated prediction processing using the predicted value of the surrogate rule instead of the predicted value of the target model” (Making a prediction based on a predicted value of a rule is a mental process. Automatically executing the prediction process on computer hardware is mere instructions to apply the exception using a generic computer component. See 2106.05(f).)
Claim 9 recites:
Step 2A, Prong 1
See rejection of claim 1. Same rationale applies.
Step 2A, Prong 2 & 2B
The claim recites additional elements (“A non-transitory computer-readable recording medium recording a program”). (Mere instructions to apply the exception using a generic computer component. See 2106.05(f).)
This judicial exception is not integrated into a practical application.
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Conclusion
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 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 HENRY K NGUYEN whose telephone number is (571)272-0217. The examiner can normally be reached Mon - Fri 7:00am-4:30pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Li B Zhen can be reached at 5712723768. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/HENRY NGUYEN/ Examiner, Art Unit 2121
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