DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1-8 are currently presented for examination.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-8 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 applicant regards as the invention.
Claim 1, line(s) 19 set forth features that may or may not occur in the future. The terms "can be" and "not being able to" indicate the lack of a positive recitation of the functionality that is recited for which a potential infringer would know with certainty whether or not he or she would be infringing the recited features. "Can be" and "not being able to" are merely potential acts that may or may not occur in the future. The claimed features are only passively recited and not positively recited as actual features within the body of the claim.
As to claim(s) 5 and 7, the same deficiency applies.
Dependent claims inherit the defect of the claim from which they depend.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-8 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent claims, Step 1: a solution system (system = 2019 PEG Step 1 = yes).
Independent claim 1 Step 2A, Prong One: claim recites:
calculate, when given an expression that represents energy in a combinatorial optimization problem and that includes an objective function and a constraint term, first energy change which is change of value of the constraint term when flipping any spin in each local solution of the combinatorial optimization problem; calculate second energy change which is change of a value of the objective function when flipping any spin in each local solution; calculate multiple types of third energy changes which are changes of the energy represented by the expression when flipping any spin in each local solution, based on the first energy change and the second energy change; calculate an inverse temperature at which any of spins can be flipped in each local solution for each individual third energy change, and calculate an inverse temperature at which the spins can be regarded as not being able to flip in each local solution; and execute pseudo-quantum annealing using calculated multiple inverse temperatures
Independent claim 1 is substantially drawn to mathematical concepts: mathematical relationships, formulas or equations, and calculations; but for the recitation of generic computer components. Information and/or data also fall within the realm of abstract ideas because information and data are intangible. See Electric Power Group1: “Information… is an intangible”.
As to the limitations “execute pseudo-quantum annealing using calculated multiple inverse temperatures”, under their broadest reasonable interpretation, they are mathematical concepts. The specification reads (see page 7, last paragraph):
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… [0079] The pseudo-quantum annealing execution unit 15 converts the input expression representing energy (e.g., the expression illustrated in Expression (2)) to an expression in the form of the Ising model shown in Expression (1). Then, the pseudo-quantum annealing execution unit 15 executes pseudo-quantum annealing using the expression in the form of the Ising model and the multiple inverse temperatures calculated by the inverse temperature calculation unit 14 to find the optimal solution to the combinatorial optimization problem
If a claim limitation, under its broadest reasonable interpretation, covers mathematical concepts, then it falls within groupings of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes).
Independent claim 1 Step 2A, Prong Two: As to the limitations a memory configured to store instructions and a processor configured to execute the instructions, they are interpreted at best as drawn to a generic computer for performing mathematical computations. This judicial exception is not integrated into a practical application (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Independent claim 1, Step 2B: As discussed with respect to Step 2A, Prong two, the limitations a memory configured to store instructions and a processor configured to execute the instructions are recited at a high level of generality and as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. The use of a computer to implement the abstract idea of a mathematical or mental algorithm has not been held by the courts to be enough to qualify as “significantly more”. Their collective functions merely provide conventional computer implementation. The implementation on a computing system is described in the specification (underline emphasis added):
'[0114] Some or all of the components may be realized by general-purpose or dedicated circuitry, processor, or a combination of these'.
Thus, taken alone the individual additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the additional elements taken individually. There is no indication that their combination improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claim does not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Independent claims 5 and 7, Step 2A Prong One: These claims recite substantially the same elements as claim 1 and are rejected for the same reasons above. (See Independent claim 1, Step 2A Prong One above).
Independent claims 5 and 7, Step 2A Prong two and 2B: As to the further additional elements computer and computer-readable recording medium, they are interpreted as drawn to a generic computer. (See Independent claim 1, Step 2B above).
Dependent claims Step 2A, Prong One: dependent claims further the abstract ideas of their independent claims. (See Independent claim 1, Step 2A, Prong One above).
As to the limitations "3… wherein the processor converts the objective function to form of predetermined model", under their broadest reasonable interpretation, they are mathematical concepts. The specification reads (underline emphasis added):
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[0040] The objective function and the constraint term can each be converted into the same form as the Ising model (see Expression (1))…
[0124] The second energy change calculation means 72 may also convert the objective function to form of predetermined model (e.g., the Ising model)
If a claim limitation, under its broadest reasonable interpretation, covers abstract ideas, then it falls within groupings of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes).
Dependent claims Step 2A, Prong Two:
As to the limitations "4… wherein the processor repeats a process of determining all spins as unselected, a process of selecting one spin from unselected spins, a process of determining whether or not to flip the one selected spin, and flipping the one selected spin when it is determined to flip the one selected spin, and a process of changing the inverse temperature to an inverse temperature that is higher than current inverse temperature and closest to the current inverse temperature when determination was made to flip for at least one spin after determining whether or not to flip for all spins, and changing the inverse temperature to an inverse temperature that is lower than the current inverse temperature and closest to the current inverse temperature when determination was made not to flip all spins"; these limitations represent no more than just “apply it” limitations, because they invoke computers or other machinery merely as a tool to perform an existing process.
This judicial exception is not integrated into a practical application (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Dependent claims Step 2B:
As discussed with respect to Step 2A, Prong two, limitations invoking computers or other machinery merely as a tool to perform an existing process are just “apply it” limitations – simply adding a general purpose computer or computer components after the fact to an abstract idea. See MPEP 2106.05 Well-Understood, Routine, Conventional Activity [R-07.2022] (d)(II): 'Performing repetitive calculations, Flook2… (recomputing or readjusting alarm limit values)'.
The claims do not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Allowable Subject Matter
Claims 1-8 are allowable over prior art of record. They will be allowed once all outstanding rejections/objections are traversed.
The following is a statement of reasons for the indication of allowable subject matter:
No reference taken either alone or in combination and with the prior art of record discloses
claims 1, 5, and 7, "… calculat(e/ing)… in a combinatorial optimization problem… that includes an objective function… first energy change… when flipping any spin in each local solution of the combinatorial optimization problem; calculat(e/ing) second energy change which is change of a value of the objective function when flipping any spin in each local solution; calculat(e/ing)… third energy changes… when flipping any spin in each local solution… calculat(e/ing) an inverse temperature at which any of spins can be flipped in each local solution for each individual third energy change, and calculat(e/ing) an inverse temperature at which the spins can be regarded as not being able to flip in each local solution; and execut(e/ing) pseudo-quantum annealing…",
in combination with the remaining steps, elements, and features of the claimed invention. Also, there is no motivation to combine any references to meet these limitations. It is for these reasons that Applicant's invention defines over the prior art of record.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUAN CARLOS OCHOA whose telephone number is (571)272-2625. The examiner can normally be reached Mondays, Tuesdays, Thursdays, and Fridays 9:30AM - 8:00 PM.
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/JUAN C OCHOA/Primary Examiner, Art Unit 2186
1 Electric Power Group, LLC v. Alstom S.A., 119 USPQ2d 1739 Fed. Cir. 2016
2 Flook, 437 U.S. at 594, 198 USPQ2d at 199
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