DETAILED ACTION
The following is a Final Office Action in response to the Amendment/Remarks received on 20 May 2026. Claims 1, 2, 5, 6, 10, and 11 have been amended. Claims 3, 4, 7-9, 12, and 13 have been cancelled. Claims 1, 2, 5, 6, 10, and 11 remain pending in this application.
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 Arguments
Applicant's arguments, see Remarks, pgs. 9-18, filed 20 May 2026 with respect to rejected claims 1, 2, 5, 6, 10, and 11 under 35 U.S.C. 101 have been fully considered but they are not persuasive.
With respect to the applicant’s argument,
Notably, the Examiner's reliance on MPEP § 2106.04(a)(2)(I)(C) is misplaced. That section addresses a claim that, under its broadest reasonable interpretation, covers performance by mathematical calculation - i.e., a claim whose recited steps could be entirely substituted by pencil-and-paper arithmetic. The amended claims cannot be so performed. The "acquiring" steps require physical interaction with a hardware engine control apparatus measuring the output of a physically operating internal combustion engine. No amount of mathematical reasoning can substitute for the physical measurement of rotational speed, torque, boost pressure, or exhaust gas concentration from a combusting engine. Because at least these physical steps cannot be reduced to mathematical calculations, the claim as a whole does not fall within the Mathematical Concepts grouping under BRI. See MPEP § 2106.04(a)(2)(I)(C) ("[a] mathematical calculation is a mathematical operation or an act of calculating using mathematical methods to determine a variable or number"). Acquiring sensor data from a running engine is neither. (see Remarks, pg. 13, paragraph 2)
The examiner respectfully disagrees.
MPEP 2106.04(a)(2): Abstract Idea Groupings:
I. MATHEMATICAL CONCEPTS
The mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations. The Supreme Court has identified a number of concepts falling within this grouping as abstract ideas including: a procedure for converting binary-coded decimal numerals into pure binary form, Gottschalk v. Benson, 409 U.S. 63, 65, 175 USPQ2d 673, 674 (1972); a mathematical formula for calculating an alarm limit, Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ2d 193, 195 (1978); the Arrhenius equation, Diamond v. Diehr, 450 U.S. 175, 191, 209 USPQ 1, 15 (1981); and a mathematical formula for hedging, Bilski v. Kappos, 561 U.S. 593, 611, 95 USPQ 2d 1001, 1004 (2010).
The Court’s rationale for identifying these "mathematical concepts" as judicial exceptions is that a ‘‘mathematical formula as such is not accorded the protection of our patent laws,’’ Diehr, 450 U.S. at 191, 209 USPQ at 15 (citing Benson, 409 U.S. 63, 175 USPQ 673), and thus ‘‘the discovery of [a mathematical formula] cannot support a patent unless there is some other inventive concept in its application.’’ Flook, 437 U.S. at 594, 198 USPQ at 199. In the past, the Supreme Court sometimes described mathematical concepts as laws of nature, and at other times described these concepts as judicial exceptions without specifying a particular type of exception. See, e.g., Benson, 409 U.S. at 65, 175 USPQ2d at 674; Flook, 437 U.S. at 589, 198 USPQ2d at 197; Mackay Radio & Telegraph Co. v. Radio Corp. of Am., 306 U.S. 86, 94, 40 USPQ 199, 202 (1939) (‘‘[A] scientific truth, or the mathematical expression of it, is not patentable invention[.]’’). More recent opinions of the Supreme Court, however, have affirmatively characterized mathematical relationships and formulas as abstract ideas. See, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 218, 110 USPQ2d 1976, 1981 (2014) (describing Flook as holding "that a mathematical formula for computing ‘alarm limits’ in a catalytic conversion process was also a patent-ineligible abstract idea."); Bilski v. Kappos, 561 U.S. 593, 611-12, 95 USPQ2d 1001, 1010 (2010) (noting that the claimed "concept of hedging, described in claim 1 and reduced to a mathematical formula in claim 4, is an unpatentable abstract idea,").
When determining whether a claim recites a mathematical concept (i.e., mathematical relationships, mathematical formulas or equations, and mathematical calculations), Examiners should consider whether the claim recites a mathematical concept or merely limitations that are based on or involve a mathematical concept. A claim does not recite a mathematical concept (i.e., the claim limitations do not fall within the mathematical concept grouping), if it is only based on or involves a mathematical concept. See, e.g., Thales Visionix, Inc. v. United States, 850 F.3d 1343, 1348-49, 121 USPQ2d 1898, 1902-03 (Fed. Cir. 2017) (determining that the claims to a particular configuration of inertial sensors and a particular method of using the raw data from the sensors in order to more accurately calculate the position and orientation of an object on a moving platform did not merely recite "the abstract idea of using ‘mathematical equations for determining the relative position of a moving object to a moving reference frame’."). For example, a limitation that is merely based on or involves a mathematical concept described in the specification may not be sufficient to fall into this grouping, provided the mathematical concept itself is not recited in the claim.
It is important to note that a mathematical concept need not be expressed in mathematical symbols, because "[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula." In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989). See, e.g., SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018) (holding that claims to a ‘‘series of mathematical calculations based on selected information’’ are directed to abstract ideas); Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014) (holding that claims to a ‘‘process of organizing information through mathematical correlations’’ are directed to an abstract idea); and Bancorp Servs., LLC v. Sun Life Assurance Co. of Can. (U.S.), 687 F.3d 1266, 1280, 103 USPQ2d 1425, 1434 (Fed. Cir. 2012) (identifying the concept of ‘‘managing a stable value protected life insurance policy by performing calculations and manipulating the results’’ as an abstract idea).
A. Mathematical Relationships
A mathematical relationship is a relationship between variables or numbers. A mathematical relationship may be expressed in words or using mathematical symbols. For example, pressure (p) can be described as the ratio between the magnitude of the normal force (F) and area of the surface on contact (A), or it can be set forth in the form of an equation such as p = F/A.
Examples of mathematical relationships recited in a claim include:
i. a relationship between reaction rate and temperature, which relationship can be expressed in the form of a formula called the Arrhenius equation, Diamond v. Diehr; 450 U.S. at 178 n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981);
ii. a conversion between binary coded decimal and pure binary, Benson, 409 U.S. at 64, 175 USPQ at 674;
iii. a mathematical relationship between enhanced directional radio activity and antenna conductor arrangement (i.e., the length of the conductors with respect to the operating wave length and the angle between the conductors), Mackay Radio & Tel. Co. v. Radio Corp. of America, 306 U.S. 86, 91, 40 USPQ 199, 201 (1939) (while the litigated claims 15 and 16 of U.S. Patent No. 1,974,387 expressed this mathematical relationship using a formula that described the angle between the conductors, other claims in the patent (e.g., claim 1) expressed the mathematical relationship in words); and
iv. organizing information and manipulating information through mathematical correlations, Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014). The patentee in Digitech claimed methods of generating first and second data by taking existing information, manipulating the data using mathematical functions, and organizing this information into a new form. The court explained that such claims were directed to an abstract idea because they described a process of organizing information through mathematical correlations, like Flook's method of calculating using a mathematical formula. 758 F.3d at 1350, 111 USPQ2d at 1721.
B. Mathematical Formulas or Equations
A claim that recites a numerical formula or equation will be considered as falling within the "mathematical concepts" grouping. In addition, there are instances where a formula or equation is written in text format that should also be considered as falling within this grouping. For example, the phrase "determining a ratio of A to B" is merely using a textual replacement for the particular equation (ratio = A/B). Additionally, the phrase "calculating the force of the object by multiplying its mass by its acceleration" is using a textual replacement for the particular equation (F= ma).
Examples of mathematical equations or formulas recited in a claim include:
i. a formula describing certain electromagnetic standing wave phenomena, Mackay Radio & Tel. Co. v. Radio Corp. of America, 306 U.S. 86, 91, 40 USPQ 199, 201 (1939) (50.9(l/lambda<-0.513>);
ii. the Arrhenius equation, Diamond v. Diehr; 450 U.S. 175, 178 n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981) (ln v = CZ + x);
iii. a formula for computing an alarm limit, Parker v. Flook, 437 U.S. 584, 585, 198 USPQ 193, 195 (1978) (B1=B0 (1.0–F) + PVL(F)); and
iv. a mathematical formula for hedging (claim 4), Bilski v. Kappos, 561 U.S. 593, 599, 95 USPQ2d 1001, 1004 (2010) (Fixed Bill Price = Fi + [(Ci + Ti + LDi) x (α + βE(Wi))]).
C. Mathematical Calculations
A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation. There is no particular word or set of words that indicates a claim recites a mathematical calculation. That is, a claim does not have to recite the word "calculating" in order to be considered a mathematical calculation. For example, a step of "determining" a variable or number using mathematical methods or "performing" a mathematical operation may also be considered mathematical calculations when the broadest reasonable interpretation of the claim in light of the specification encompasses a mathematical calculation.
Examples of mathematical calculations recited in a claim include:
i. performing a resampled statistical analysis to generate a resampled distribution, SAP America, Inc. v. Investpic, LLC, 898 F.3d 1161, 1163-65, 127 USPQ2d 1597, 1598-1600 (Fed. Cir. 2018), modifying SAP America, Inc. v. Investpic, LLC, 890 F.3d 1016, 126 USPQ2d 1638 (Fed. Cir. 2018);
ii. calculating a number representing an alarm limit value using the mathematical formula ‘‘B1=B0 (1.0–F) + PVL(F)’’, Parker v. Flook, 437 U.S. 584, 585, 198 USPQ 193, 195 (1978);
iii. using a formula to convert geospatial coordinates into natural numbers, Burnett v. Panasonic Corp., 741 Fed. Appx. 777, 780 (Fed. Cir. 2018) (non-precedential);
iv. managing a stable value protected life insurance policy via performing calculations, Bancorp Servs., LLC v. Sun Life Assur. Co. of Canada (U.S.), 687 F.3d 1266, 1280, 103 USPQ2d 1425, 1434 (Fed. Cir. 2012);
v. using an algorithm for determining the optimal number of visits by a business representative to a client, In re Maucorps, 609 F.2d 481, 482, 203 USPQ 812, 813 (CCPA 1979); and
vi. calculating the difference between local and average data values, In re Abele, 684 F.2d 902, 903, 214 USPQ 682, 683-84 (CCPA 1982).
The newly presented limitation of “acquiring, from the engine control apparatus, a plurality of pieces of measurement data each of which includes a value of a corresponding one of a plurality of measurement object variables, the plurality of pieces of measurement data being generated by the engine control apparatus measuring output of an internal combustion engine as the first control object device when the internal combustion engine is controlled by the engine control device to physically perform operation based on the plurality of pieces of manipulation data, each of the plurality of measurement object variables being at least any one of rotational speed, torque, a boost pressure, an intake air flow rate, or concentration of substances contained in exhaust gas” has been addressed in step 2A, prong two and step 2B of the subject matter eligibility requirement below. Further, the preceding limitation is a pre-solution activity directed to mere data gathering for use in the abstract idea of “generating a reward function …”. Hence, the applicant’s argument is found unpersuasive since the claims are directed to an abstract idea and the additional elements neither integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea (Step 2A, prong two of the subject matter eligibility requirement) nor provide significantly more than the abstract idea (Step 2B of the subject matter eligibility requirement).
With respect to the applicant’s arguments,
The improvement is manifest in how the claimed program leveraged the generated reward function-even if considered a mathematical concept-to facilitate a novel and efficient human-in-the-loop process for generating improved control maps within the context of engine performance testing. This process enhances the capabilities of engineers to capture and leverage human intelligence in a structured manner, allowing for more effective optimization of engine performance. This achieves a "technological solution to a technological problem" not merely by executing an algorithm, but by orchestrating a structured interaction that resolves a long-standing issue in complex engineering. (see Remarks, pg. 14, paragraph 2)
Specifically, the claims introduce the interaction with a "second engineer" (typically less experienced in engine performance testing) who is provided with "the generated reward function and the first manipulated variable distribution information" via a "displaying" step. This enables the second engineer to understand and internalize the first engineer's (expert's) criteria for optimal engine control behavior. Furthermore, the "receiving an instruction from the second engineer to modify the values" and "generating modified second manipulated variable distribution information having values modified according to the instruction" steps provide a concrete mechanism for human-in-the-loop optimization within the engine performance test environment. This is not "mere instructions to apply" an abstract idea or "insignificant extra- solution activity" (MPEP § 2106.05(f), § 2106.05(g)). Instead, it directly implements the derived expert knowledge (via the reward function) to solve the technical problem of creating better engine control maps more efficiently and less dependently on individual expertise in engine performance testing. This goes beyond automating a conventional human activity by providing a novel, technology-assisted methodology that significantly enhances the capabilities of human engineers involved in engine performance testing. This is a "technological solution to a technological problem" as discussed in DDR Holdings and BASCOM within the specific technical field of engine performance testing (MPEP § 2106.05(f) and § 2106.05(a)). (see Remarks, pg. 14, paragraph 3 – pg. 15, paragraph 1)
The examiner respectfully disagrees.
In DDR, the courts held the claimed solution is necessarily rooted in computer technology to overcome a problem specifically arising in the realm of computer networks and is not merely the routine or conventional use of the Internet. The claims of BASCOM were directed to a non-generic and non-conventional arrangement of additional elements to improve a technical field (i.e. filtering) that improved the performance of a system itself. However, the applicant has not claimed or provided support from their specification as to how the claimed limitations entail an unconventional arrangement that improves (i.e. enhances) a technological problem, the applicant has only described the claimed combination of elements provide advantages (i.e. benefits of use (e.g. “… more effective optimization of engine performance … ”, “… enables the second engineer to understand and internalize the first engineer's (expert's) criteria for optimal engine control behavior.”, “… creating better engine control maps more efficiently and less dependently on individual expertise in engine performance testing.”, and “… significantly enhances the capabilities of human engineers involved in engine performance testing.”) using an information processing device to determine data of “modified second manipulated variable distribution information”. In addition, the applicant provided an intended use (i.e. “… provide concrete mechanism for human-in-the-loop optimization within the engine performance test environment.”) of the information processing device. Therefore, the applicant’s arguments are found unpersuasive since the claims are directed to an abstract idea and the additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea (Step 2A, prong two of the subject matter eligibility requirement).
In regards to the applicant’s arguments,
Lastly, the claims explicitly state that the measurement data is acquired from an "internal combustion engine as the first control object device when the internal combustion engine is controlled by the engine control device to physically perform operation." This strong physical nexus ensures that the claimed invention moves beyond the purely conceptual realm and is firmly rooted in the physical reality of engine performance testing. The concrete outputs from the engine (e.g., rotational speed, torque, boost pressure, exhaust gas concentration), which are physical phenomena, are directly linked to the physical operation of a concrete machine (internal combustion engine) under the control of an "engine control apparatus," and the invention aims to improve this physical performance. This stands in stark contrast to claims merely automating mental processes, abstract business practices, or mathematical concepts. (see Remarks, pg. 15, paragraph 2)
The combined effect of acquiring data related to a specific physical system controlled by specific physical parameters within an engine performance test context, applying advanced machine learning (inverse reinforcement learning) to derive a reward function representing expert knowledge specific to engine control, providing an interactive feedback mechanism for an engineer to define/modify control maps based on this expert knowledge, and generating modified control maps for direct application in controlling a second physical system, unequivocally integrates any abstract idea into a practical application and results in a clear improvement in the specific technical field of engine performance testing. This goes far beyond generic computer functions or mere data manipulation. (see Remarks, pg. 15, paragraph 3)
The examiner respectfully disagrees.
The newly presented limitation of “acquiring, from the engine control apparatus, a plurality of pieces of measurement data each of which includes a value of a corresponding one of a plurality of measurement object variables, the plurality of pieces of measurement data being generated by the engine control apparatus measuring output of an internal combustion engine as the first control object device when the internal combustion engine is controlled by the engine control device to physically perform operation based on the plurality of pieces of manipulation data, each of the plurality of measurement object variables being at least any one of rotational speed, torque, a boost pressure, an intake air flow rate, or concentration of substances contained in exhaust gas” has been addressed in step 2A, prong two and step 2B of the subject matter eligibility requirement below. Further, the preceding limitation is a pre-solution activity directed to mere data gather for use in the abstract idea of “generating a reward function”. Hence, the applicant’s argument is found unpersuasive since the claims are directed to an abstract idea and the additional elements neither integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea (Step 2A, prong two of the subject matter eligibility requirement) nor provide significantly more than the abstract idea (Step 2B of the subject matter eligibility requirement).
In addition, the examiner notes that the features upon which applicant relies (i.e., “controlling a second physical system”) are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993). Therefore, the applicant’s arguments are found unpersuasive.
With respect to the applicant’s argument,
The improvement here is also analogous to the claims upheld in Enfish, LLC V. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), and the subsequent guidance in MPEP § 2106.05(a), where claims directed to a specific improvement in a computer's own functionality were found patent-eligible. Here, the specific improvement is not merely in the output data but in the process of generating engine control maps; the limitations structurally changes how control map calibration is performed by providing a machine-generated, mathematically derived proxy for an expert engineer's tacit evaluation criteria (the reward function with coefficient distribution maps), which is then used interactively to guide a second engineer. This is a concrete, defined mechanism, not an abstract goal. Furthermore, under the Desjardins Notice framework, the claim's inclusion of "displaying the generated reward function and the first manipulated variable distribution information to the second engineer" is not mere output of an abstract result; it is a functional step that makes implicit expert knowledge visible and actionable within the engineering workflow, which constitutes a specific technical improvement in the engine calibration process itself. See MPEP § 2106.05(a) (eligible where claims improve another technology or technical field, not just the computer itself). (see Remarks, pg. 15, paragraph 4 - pg. 16, paragraph 1)
The examiner respectfully disagrees.
The applicant has not clearly explained how “… generating a reward function by performing inverse reinforcement learning by using the plurality of pieces of manipulation data and the plurality of pieces of measurement data, the reward function including evaluation indices for the first manipulated variable distribution information defined by the first engineer and coefficient distribution information that represents distribution of the values of coefficients of the evaluation” improves the operational functionality/characteristics of a computer (as required by Enfish). Further, the examiner notes the applicant has set forth an advantage of use (i.e. a benefit of “… expert knowledge visible and actionable within the engineering workflow …”) and intended use (“… structurally changes how control map calibration is performed by providing a machine-generated, mathematically derived proxy for an expert engineer's tacit evaluation criteria (the reward function with coefficient distribution maps), which is then used interactively to guide a second engineer.”) without providing any improvement (i.e. enhancement) in the functioning of a computer or an improvement (i.e. enhancement) to another technology or technical field (see MPEP 2106.04(d)(1) and MPEP 2106.04(a); i.e. The applicant has failed to provide any arguments/rationales/evidence as to why the claimed limitations provide an improvement (i.e. enhancement) in the functioning of a computer or an improvement (i.e. enhancement) to generating a reward function). Hence, the applicant’s argument is found unpersuasive.
In regards to the applicant’s argument,
Moreover, the specific human-computer interface for technical adjustment, detailed through the steps of receiving second manipulated variable distribution information defined by a second engineer, displaying the generated reward function and the first manipulated variable distribution information to the second engineer, receiving an instruction from the second engineer to modify values, and generating modified second manipulated variable distribution information, constitutes a specific and unconventional human-computer interaction within the engine performance testing domain. This interaction is designed precisely to overcome the technical problem of manual control map adjustment in engine performance testing. These are "meaningful limitations" (MPEP § 2106.05(e)) that integrate the abstract idea into a practical application by providing a structured framework for knowledge transfer and iterative refinement within this specific technical context. This contrasts sharply with cases where generic interfaces merely present data for human interpretation without providing a structured feedback loop for technical improvement. (pg. 16, paragraph 6 - pg. 17, paragraph 1)
MPEP 2106.05 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).
The applicant has merely summarized the combination of claimed limitations without claiming or providing support from their specification as to why the claimed limitations entail a non-conventional and non-generic arrangement that improves the functioning of a computer or a technology/technological field. Further, the examiner notes “a practical application” is analyzed in step 2A, prong two of the subject matter eligibility requirement and not step 2B. Therefore, the applicant’s argument is found unpersuasive.
With respect to the applicant’s argument,
With respect to the Examiner's characterization of the "acquiring" step as "mere data gathering" and well-understood, routine, and conventional activity under MPEP § 2106.05(g) and § 2106.05(d)(II): this characterization is inapplicable to the amended claims. The amended claims do not recite acquiring data in a generic or abstract sense. Rather, the claims specifically require acquiring, from a hardware engine control apparatus, manipulation data that represents the specific physical values of a plurality of particular engine-actuator variables (fuel injection quantity, injection pressure, injection timing, EGR opening, turbo opening, and intake valve opening) as defined by a first engineer, alongside measurement data generated by that apparatus by physically operating the internal combustion engine based on those values. This is not "obtaining data" in the sense of looking up a value in a database. It is the physical measurement of a complex mechanical system under active control. Courts have held that data gathering steps that are integral to and inseparable from the claimed physical process do not constitute insignificant extra-solution activity. See Rapid Litigation Mgmt. Ltd. v. CellzDirect, Inc., 827 F.3d 1042, 1050 (Fed. Cir. 2016) (steps integral to achieving the claimed technical result are not extra-solution activity). The data acquisition here is not a preliminary step, but is the physical grounding that ties the entire claimed process to a concrete technical environment and distinguishes it from any human-performable mental process. (see Remarks, pg. 17, paragraph 2)
The examiner respectfully disagrees.
MPEP 2106.05(a)(II):
II. IMPROVEMENTS TO ANY OTHER TECHNOLOGY OR TECHNICAL FIELD
The courts have also found that improvements in technology beyond computer functionality may demonstrate patent eligibility. In McRO, the Federal Circuit held claimed methods of automatic lip synchronization and facial expression animation using computer-implemented rules to be patent eligible under 35 U.S.C. 101, because they were not directed to an abstract idea. McRO, 837 F.3d at 1316, 120 USPQ2d at 1103. The basis for the McRO court's decision was that the claims were directed to an improvement in computer animation and thus did not recite a concept similar to previously identified abstract ideas. Id. The court relied on the specification's explanation of how the claimed rules enabled the automation of specific animation tasks that previously could not be automated. 837 F.3d at 1313, 120 USPQ2d at 1101. The McRO court indicated that it was the incorporation of the particular claimed rules in computer animation that "improved [the] existing technological process", unlike cases such as Alice where a computer was merely used as a tool to perform an existing process. 837 F.3d at 1314, 120 USPQ2d at 1102. The McRO court also noted that the claims at issue described a specific way (use of particular rules to set morph weights and transitions through phonemes) to solve the problem of producing accurate and realistic lip synchronization and facial expressions in animated characters, rather than merely claiming the idea of a solution or outcome, and thus were not directed to an abstract idea. 837 F.3d at 1313, 120 USPQ2d at 1101.
Consideration of improvements is relevant to the eligibility analysis regardless of the technology of the claimed invention. That is, the consideration applies equally whether it is a computer-implemented invention, an invention in the life sciences, or any other technology. See, e.g., Rapid Litigation Management v. CellzDirect, Inc., 827 F.3d 1042, 119 USPQ2d 1370 (Fed. Cir. 2016), in which the court noted that a claimed process for preserving hepatocytes could be eligible as an improvement to technology because the claim achieved a new and improved way for preserving hepatocyte cells for later use, even though the claim is based on the discovery of something natural. Notably, the court did not distinguish between the types of technology when determining the invention improved technology. However, 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. For example, in Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology.
The newly presented limitation of “an engine control apparatus” is a recited at a high level of generality and recited so generically that it represents no more than mere instructions to apply the judicial exception on a computer component to obtain data for use in the abstract idea (i.e. a mathematical concept) of “… generating a reward function by performing inverse reinforcement learning by using the plurality of pieces of manipulation data and the plurality of pieces of measurement data, the reward function including evaluation indices for the first manipulated variable distribution information defined by the first engineer and coefficient distribution information that represents distribution of the values of coefficients of the evaluation”. Further, the examiner maintains the abstract idea, as set forth in subject matter eligibility requirement of the Non-Final Rejection mailed on 25 February 2026, was indicated as falling within the “Mathematical Concepts” grouping of abstracts ideas and not that of “Mental Concepts”. Hence, the applicant’s argument is unpersuasive.
With respect to the applicant’s argument,
Finally, the overall combination of steps, from acquiring highly specific physical data from an "internal combustion engine" within the context of an engine performance test to generating refined control maps for that engine, directly contributes to an improvement in the specific technical field of engine performance testing. The claimed invention enables a qualitative improvement in the methodology of engine performance testing itself. The physical process of engine operation and the technical outcome of optimized control are central to this improvement, transforming the manual, experience-driven adjustment process into a guided, data-driven, and human-computer collaborative process. (see Remarks, pg. 17, paragraph 3 - pg. 18, paragraph 1)
The examiner respectfully disagrees.
The examiner notes the applicant has set forth an advantage of use (i.e. a benefit of “… transforming the manual, experience-driven adjustment process into a guided, data-driven, and human-computer collaborative process.”) and intended use (“… optimized control …”) without providing any improvement (i.e. enhancement) in the functioning of a computer or an improvement (i.e. enhancement) to another technology or technical field (see MPEP 2106.04(d)(1) and MPEP 2106.04(a); i.e. The applicant has failed to provide any arguments/rationales/evidence as to why the claimed limitations provide an improvement (i.e. enhancement) in the functioning of a computer or an improvement (i.e. enhancement) to generating a reward function). Hence, the applicant’s argument is found unpersuasive.
Claims 1, 5, and 10 stand objected to and claims 1, 2, 5, 6, 10, and 11 stand rejected under 35 U.S.C. 101.
Claim Objections
Claims 1, 5, and 10 are objected to because of the following informalities:
Claim 1 recites “an engine control apparatus” in line 3 and “the engine control device” in line 19. The claims recite two different terms for the same limitation. To avoid any ambiguity in the claims the same term should be used for the same limitation. Suggested claim language: “the engine control device” in line 19 should read “the engine control apparatus”; and has been interpreted as such for the purpose of examination.
Claim 5 recites “an engine control apparatus” in line 2 and “the engine control device” in line 20. The claims recite two different terms for the same limitation. To avoid any ambiguity in the claims the same term should be used for the same limitation. Suggested claim language: “the engine control device” in line 20 should read “the engine control apparatus”; and has been interpreted as such for the purpose of examination.
Claim 10 recites “an engine control apparatus” in line 3 and “the engine control device” in line 19. The claims recite two different terms for the same limitation. To avoid any ambiguity in the claims the same term should be used for the same limitation. Suggested claim language: “the engine control device” in line 19 should read “the engine control apparatus”; and has been interpreted as such for the purpose of examination.
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 2, 5, 6, 10, and 11 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claim 5:
At step 5, the claim recites “(an) information processing device” comprising of concrete devices (i.e. a memory and processor), and therefore is a machine, which is a statutory category of invention.
At step 2A, prong one, the claim recites “… first manipulated variable distribution information defined by a first engineer, the first manipulated variable distribution information indicating that represents distribution of values of the plurality of manipulated variables in accordance with a definition generated by the first engineer, each of the plurality of manipulated variables being at least any one of a fuel injection quantity, a fuel injection pressure, a fuel injection timing, an exhaust gas recirculation opening, a turbo opening, or an intake valve opening”; “… generating a reward function by performing inverse reinforcement learning by using the plurality of pieces of manipulation data and the plurality of pieces of measurement data, the reward function including evaluation indices for the first manipulated variable distribution information defined by the first engineer and coefficient distribution information that represents distribution of the values of coefficients of the evaluation”; and “… second manipulated variable distribution information defined by a second engineer who is a person different from the first engineer, the second manipulated variable distribution information indicating distribution of the values of the plurality of manipulated variables for a second control object device in accordance with a definition generated by the second engineer”.
The limitation of “… first manipulated variable distribution information defined by a first engineer, the first manipulated variable distribution information indicating that represents distribution of values of the plurality of manipulated variables in accordance with a definition generated by the first engineer, each of the plurality of manipulated variables being at least any one of a fuel injection quantity, a fuel injection pressure, a fuel injection timing, an exhaust gas recirculation opening, a turbo opening, or an intake valve opening”, as drafted, is a process, under its broadest reasonable interpretation covers performing the limitation by use of steps in organizing a human activit(ies).
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitations by managing personal behavior (i.e. “… first manipulated variable distribution information defined by a first engineer …” ) using an instruction or rule (i.e. “… the first manipulated variable distribution information indicating that represents distribution of values of the plurality of manipulated variables in accordance with a definition generated by the first engineer, each of the plurality of manipulated variables being at least any one of a fuel injection quantity, a fuel injection pressure, a fuel injection timing, an exhaust gas recirculation opening, a turbo opening, or an intake valve opening”), then it falls within the sub-grouping of “C. Managing Personal Behavior or Relationships or Interactions Between People” of the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. (MPEP 2106.04(a)(2)(C)(II): “Finally, the sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping. It is noted that the number of people involved in the activity is not dispositive as to whether a claim limitation falls within this grouping. Instead, the determination should be based on whether the activity itself falls within one of the sub-groupings.”) Accordingly, the claim recites an abstract idea.
The limitation of “… generating a reward function by performing inverse reinforcement learning by using the plurality of pieces of manipulation data and the plurality of pieces of measurement data, the reward function including evaluation indices for the first manipulated variable distribution information defined by the first engineer and coefficient distribution information that represents distribution of the values of coefficients of the evaluation” (U.S. Patent Publication No. 2023/0266719 A1: pg. 5, par. [0087]), as drafted, is a process, under its broadest reasonable interpretation covers performing the limitation by use of a mathematical calculation(s) (MPEP 2106.04(a)(2)(I)(C): “A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation. There is no particular word or set of words that indicates a claim recites a mathematical calculation.”).
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitations per use of mathematical calculations, then it falls within the “Mathematical Concepts” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
The limitation of “… second manipulated variable distribution information defined by a second engineer who is a person different from the first engineer, the second manipulated variable distribution information indicating distribution of the values of the plurality of manipulated variables for a second control object device in accordance with a definition generated by the second engineer”, as drafted, is a process, under its broadest reasonable interpretation covers performing the limitation by use of steps in organizing a human activit(ies).
If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitations by managing personal behavior (i.e. “… second manipulated variable distribution information defined by a second engineer who is a person different from the first engineer …” ) using an instruction or rule (i.e. “… the second manipulated variable distribution information indicating distribution of the values of the plurality of manipulated variables for a second control object device in accordance with a definition generated by the second engineer”), then it falls within the sub-grouping of “C. Managing Personal Behavior or Relationships or Interactions Between People” of the “Certain Methods of Organizing Human Activity” grouping of abstract ideas. (MPEP 2106.04(a)(2)(C)(II): “Finally, the sub-groupings encompass both activity of a single person (for example, a person following a set of instructions or a person signing a contract online) and activity that involves multiple people (such as a commercial interaction), and thus, certain activity between a person and a computer (for example a method of anonymous loan shopping that a person conducts using a mobile phone) may fall within the "certain methods of organizing human activity" grouping. It is noted that the number of people involved in the activity is not dispositive as to whether a claim limitation falls within this grouping. Instead, the determination should be based on whether the activity itself falls within one of the sub-groupings.”) Accordingly, the claim recites an abstract idea.
At step 2A, prong two, the judicial is not integrated into a practical application. In particular, the claim recites “… an engine control apparatus“; a memory”; and “a processor coupled to the memory, the processor being configured to perform processing including: acquiring, from the engine control apparatus, a plurality of pieces of manipulation data each of which includes a value of a corresponding one of a plurality of manipulated variables for a first control object device, the plurality of pieces of manipulation data being generated based on first manipulated variable distribution information …; acquiring, from the engine control apparatus, a plurality of pieces of measurement data each of which includes a value of a corresponding one of a plurality of measurement object variables, the plurality of pieces of measurement data being generated by the engine control apparatus measuring output of an internal combustion engine as the first control object device when the internal combustion engine is controlled by the engine control device to physically perform operation based on the plurality of pieces of manipulation data, each of the plurality of measurement object variables being at least any one of rotational speed, torque, a boost pressure, an intake air flow rate, or concentration of substances contained in exhaust gas; displaying the generated reward function and the first manipulated variable distribution information to the second engineer; receiving an instruction from the second engineer to modify the values of the plurality of manipulated variables included in the second manipulated variable distribution information; and generating modified second manipulated variable distribution information having values modified to the instruction”.
The limitations of “… an engine control apparatus“; a memory”; and “a processor coupled to the memory, the processor being configured to perform processing” are recited at a high level of generality and recited so generically that they represent no more than mere instructions to apply the judicial exception on a computer component (see MPEP 2106.05(f)).
The limitation of “… an internal combustion engine as the first control object device when the internal combustion engine is controlled by the engine control device to physically perform operation …” is recited at a high level of generality and merely limits the abstract idea to a field of use. The Courts have found “a claim directed to a judicial exception cannot be made eligible ‘simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use.’ Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.” (MPEP 2106.05(h)).
The limitation of “acquiring, …, a plurality of pieces of manipulation data each of which includes a value of a corresponding one of a plurality of manipulated variables for a first control object device, the plurality of pieces of manipulation data being generated based on first manipulated variable distribution information …” represents mere data gathering. The limitation of “acquiring” is recited at a high level of generally and recited so generically it represents no more than an insignificant extra-solution activity of gathering data (see MPEP 2106.05(g)).
The limitation of “acquiring, …, a plurality of pieces of measurement data each of which includes a value of a corresponding one of a plurality of measurement object variables, the plurality of pieces of measurement data being generated by the engine control apparatus measuring output of an internal combustion engine as the first control object device when the internal combustion engine is controlled by the engine control device to physically perform operation based on the plurality of pieces of manipulation data, each of the plurality of measurement object variables being at least any one of rotational speed, torque, a boost pressure, an intake air flow rate, or concentration of substances contained in exhaust gas” represents a mere means (i.e. “the engine control device’) and actions for data gathering and use in the abstract idea of “… generating a reward function …”. The limitations of “acquiring”, “measuring”, and “control(ling)” are recited at a high level of generally and recited so generically they represent no more than insignificant extra-solution activities of gathering data (see MPEP 2106.05(g)).
The limitation of “displaying the generated reward function and the first manipulated variable distribution information to the second engineer” represents the mere output of data. The “displaying” is recited at a high level of generality and recited so generically it represents no more than an insignificant extra-solution activity of outputting data (see MPEP 2106.05(g)).
The limitation of “receiving an instruction from the second engineer to modify the values of the plurality of manipulated variables included in the second manipulated variable distribution information” represents mere data gathering. The limitation of “receiving” is recited at a high level of generality and recited so generically it represents no more than an insignificant extra-solution activity of gathering data (see MPEP 2106.05(g)).
The limitation of “generating modified second manipulated variable distribution information having values modified …” represents mere data gathering. The limitation of “generating” (U.S. Patent Publication No. 2023/0266719 A1: pg. 5, par. [0097] and [0099]) is recited at a high level of generality and recited so generically it represents no more than an insignificant extra-solution activity of gathering data (see MPEP 2106.05(g)).
Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to an abstract idea.
At step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As previously discussed with respect to the integration of the abstract idea into a practical application, the addition of the elements of “… an engine control apparatus“; a memory”; and “a processor coupled to the memory, the processor being configured to perform processing”, amount to no more than mere instructions to apply the exception using generic computer components. Mere instructions to apply an exception using generic computer components cannot provide an inventive concept. See MPEP 2106.05(d)(II), “Courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking).”
The additional limitation of “… an internal combustion engine as the first control object device when the internal combustion engine is controlled by the engine control device to physically perform operation …” merely limits the abstract idea to a field of use. Wherein, limiting the invention to a field of use cannot provide an inventive concept. Thus, the claim is not patent eligible. (MPEP 2106.05(h)).
The limitation of “acquiring, …, a plurality of pieces of manipulation data each of which includes a value of a corresponding one of a plurality of manipulated variables for a first control object device, the plurality of pieces of manipulation data being generated based on first manipulated variable distribution information …”, as discussed above, amounts to no more than mere data gathering. In addition, the limitation is well-understood, routine and conventional; wherein the courts have found limitations directed to obtaining data, recited at high level of generality, to be well-understood, routine and conventional. See MPEP 2106.05(d)(II), “storing and retrieving information in memory”.
The limitation of “acquiring, …, a plurality of pieces of measurement data each of which includes a value of a corresponding one of a plurality of measurement object variables, the plurality of pieces of measurement data being generated by the engine control apparatus measuring output of an internal combustion engine as the first control object device when the internal combustion engine is controlled by the engine control device to physically perform operation based on the plurality of pieces of manipulation data, each of the plurality of measurement object variables being at least any one of rotational speed, torque, a boost pressure, an intake air flow rate, or concentration of substances contained in exhaust gas”, as discussed above, amounts to no more than a mere means (i.e. “the engine control device’) and actions for data gathering. In addition, the limitation is well-understood, routine and conventional; wherein the courts have found limitations directed to obtaining data, recited at high level of generality, to be well-understood, routine and conventional. See MPEP 2106.05(d)(II), “storing and retrieving information in memory”.
The limitation of “displaying the generated reward function and the first manipulated variable distribution information to the second engineer”, as discussed above, represents an insignificant extra-solution activity of outputting data. Further, the limitation is well-understood, routine and conventional; wherein the courts have found limitations directed to outputting data, recited at a high level of generality, to be well-understood, routine, and conventional. See MPEP 2106.05(d)(II), presenting offers and gathering statistics.
The limitation of “receiving an instruction from the second engineer to modify the values of the plurality of manipulated variables included in the second manipulated variable distribution information”, as discussed above, amounts to no more than mere data gathering. In addition, the limitation is well-understood, routine and conventional; wherein the courts have found limitations directed to obtaining data, recited at high level of generality, to be well-understood, routine and conventional. See MPEP 2106.05(d)(II), “storing and retrieving information in memory”.
The limitation of “generating modified second manipulated variable distribution information having values modified …”, as discussed above, amounts to no more than mere data gathering. In addition, the limitation is well-understood, routine and conventional; wherein the courts have found limitations directed to obtaining data, recited at high level of generality, to be well-understood, routine and conventional. See MPEP 2106.05(d)(II), “storing and retrieving information in memory”.
Considering the additional elements individually and in combination and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Hence, the claim is not patent eligible.
Claim 6:
The limitations “distribution of values of a specific manipulated variables”, “the reward function”, “the coefficient distribution information”, and “distribution of values of a specific coefficient” in claim 6 further details the limitations of “distribution of values of manipulated variables”, “a reward function”, “coefficient distribution information”, and “distribution of the values of coefficients of the evaluation indices” in claim 5, respectively; and the claim stands rejected for the same rational as set forth above in claim 5.
Claim 1:
Claim 1 represents an equivalent a non-transitory computer-readable recording medium claim to claim 5 and is rejected under 35 U.S.C. 101 for the same rationale as set forth in claim 5.
Claim 2:
Claim 2 represents an equivalent a non-transitory computer-readable recording medium claim to claim 6 and is rejected under 35 U.S.C. 101 for the same rationale as set forth in claim 6.
Claim 10:
Claim 10 represents an equivalent method claim to claim 5 and is rejected under 35 U.S.C. 101 for the same rationale as set forth in claim 5.
Claim 11:
Claim 11 represents an equivalent method claim to claim 6 and is rejected under 35 U.S.C. 101 for the same rationale as set forth in claim 6.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
The following references are cited to further show the state of the art with respect to optimization systems/methods, modeling systems/methods, and machine learning.
U.S. Patent No. 5,166,873 discloses a device having an internal process model to estimate the dynamic characteristics a process to be controlled, wherein proportional-Integral (PI) operation parameters are determined by a process model based upon an estimated result.
U.S. Patent No. 6,745,088 B2 discloses adaptive control via a matrix of feed-forward relationships respective to a process or series of processes implemented in an apparatus such as a chemical manufacturing plant.
U.S. Patent No. 11,530,662 B2 discloses a method of generating vehicle control data, a vehicle control device, and a vehicle control system.
U.S. Patent No. 12,645,951 B2 discloses a reward function estimation unit estimates a reward function by multiple importance sampling using samples of a decision-making history of a subject and of a decision-making history generated based on a sampling policy.
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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