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 .
Status of Claims
This office action is in response to arguments and amendments entered on December 23, 2025 for the patent application 18/191,558 originally filed on March 28, 2023. Claims 2, 5, 9, and 17-19 are amended. Claims 1, 4, and 21 are canceled. Claims 22 and 23 are new. Claims 2, 3, 5-20, 22, and 23 remain pending. The first office action of October 2, 2025 is fully incorporated by reference into this office action.
Terminal Disclaimer
The Applicant has filed a Terminal Disclaimer disclaiming the terminal part of the statutory term of any patent granted on the instant application which would extend beyond the expiration date of the full statutory term of prior patent number 11,645,518. The Examiner acknowledges that the Terminal Disclaimer was approved on December 23, 2025. As such, the Double Patenting rejection is withdrawn.
Drawings
The replacement drawings filed December 23, 2025 are acknowledged and accepted by the Examiner.
Response to Amendment
Applicant’s amendments to the claims have been noted by the Examiner.
Applicant’s amendments and arguments are not sufficient to overcome the 35 USC 101 rejection of claims 2, 3, 5-7, 9-20, 22, and 23. However, upon consideration, the 35 USC 101 rejection of claim 8 is withdrawn.
Applicant’s amendments and arguments are sufficient to overcome the outstanding 35 USC 103 rejections. Accordingly, the outstanding 35 USC 103 rejections are withdrawn.
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 2, 3, 5-7, 9-20, 22, and 23 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Claim 1 is directed to “a method” (i.e. a process), claim 18 is directed to “a system” (i.e. a machine), and claim 19 is directed to “one or more non-transitory computer storage media” (i.e. a machine), hence the claims are directed to one of the four statutory categories (i.e. process, machine, manufacture, or composition of matter). In other words, Step 1 of the subject-matter eligibility analysis is “Yes.”
However, the claims are drawn to an abstract idea of “generating simulations of an environment,” reasonably in the form of “mental processes,” in terms of processes that can be performed in the human mind (including an observation, evaluation, judgement or opinion) which are “performed on a computer” (per MPEP 2106(III)(C) “A Claim That Requires a Computer May Still Recite a Mental Process”).
Regardless, the claims are reasonably understood as “mental processes,” which require the following limitations (as provided in representative claim 2):
“obtaining a plurality of current simulation states for the time step;
generating, for each of the plurality of current simulation states, a plurality of candidate next simulation states for a next time step based on the current simulation state, wherein generating each candidate next simulation state comprises:
determining, for each of a plurality of agents included in the environment and for the candidate next simulation state, a respective next state of the agent at the next time step if the agent performs a respective action in response to the current simulation state at the current time step; and
selecting a proper subset of the plurality of candidate next simulation states as current simulation states for the next time step, wherein selecting the proper subset of the plurality of candidate next simulation states comprises:
determining, for each of the candidate next simulation states, a discriminative score based on the respective next states of the plurality of agents for the candidate next simulation state, wherein the discriminative score characterizes a likelihood that the candidate next simulation state is a realistic simulation state; and
selecting the proper subset of the plurality of candidate next simulation states based on the discriminative scores for the plurality of candidate next simulation states.”
These limitations simply describe a process of data gathering and manipulation, which is partially analogous to “collecting information, analyzing it, and displaying certain results of the collection analysis” (i.e. Electric Power Group, LLC, v. Alstom, 830 F.3d 1350, 119 U.S.P.Q.2d 1739 (Fed. Cir. 2016)). Hence, these limitations are akin to an abstract idea which has been identified among non-limiting examples to be an abstract idea. In other words, Step 2A, Prong 1 of the subject-matter eligibility analysis is “Yes.”
Furthermore, the claims do not include additional elements that either alone or in combination are sufficient to claim a practical application because to the extent that, e.g., “one or more computers,” “a system,” “one or more storage devices,” and “one or more non-transitory computer storage media” are claimed, as these are merely claimed to add insignificant extra-solution activity to the judicial exception (e.g., data gathering) and/or do no more than generally link the use of a judicial exception to a particular technological environment or field of use. In other words, the claimed “generating simulations of an environment,” is not providing a practical application, thus Step 2A, Prong 2 of the subject-matter eligibility analysis is “No.”
Likewise, the claims do not include additional elements that either alone or in combination are sufficient to amount to significantly more than the judicial exception because to the extent that, e.g. e.g., “one or more computers,” “a system,” “one or more storage devices,” and “one or more non-transitory computer storage media” are claimed these are all generic, well-known, and conventional computing elements. As evidence that these are generic, well-known, and conventional computing elements, Applicant’s specification discloses them in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. § 112(a), per MPEP § 2106.07(a) III (a), which satisfies the Examiner’s evidentiary burden requirement per the Berkheimer memo.
Specifically, the Applicant’s claimed “one or more computers,” “a system,” “one or more storage devices,” and “one or more non-transitory computer storage media” are described in instant specification paragraphs [0092-0093] as follows: “Computers suitable for the execution of a computer program can be based on general or special purpose microprocessors or both, or any other kind of central processing unit. Generally, a central processing unit will receive instructions and data from a read-only memory or a random access memory or both. The essential elements of a computer are a central processing unit for performing or executing instructions and one or more memory devices for storing instructions and data. The central processing unit and the memory can be supplemented by, or incorporated in, special purpose logic circuitry. Generally, a computer will also include, or be operatively coupled to receive data from or transfer data to, or both, one or more mass storage devices for storing data, e.g., magnetic, magneto-optical disks, or optical disks. However, a computer need not have such devices. Moreover, a computer can be embedded in another device, e.g., a mobile telephone, a personal digital assistant (PDA), a mobile audio or video player, a game console, a Global Positioning System (GPS) receiver, or a portable storage device, e.g., a universal serial bus (USB) flash drive, to name just a few… Computer-readable media suitable for storing computer program instructions and data include all forms of non-volatile memory, media and memory devices, including by way of example semiconductor memory devices, e.g., EPROM, EEPROM, and flash memory devices; magnetic disks, e.g., internal hard disks or removable disks; magneto-optical disks; and CD-ROM and DVD-ROM disks.”
That is, these elements are reasonably interpreted as generic computers or generic computer components which provide no details of anything beyond ubiquitous standard equipment. As such, the claimed limitations are reasonably understood as not providing anything significantly more than the judicial exception. Therefore, Step 2B, of the subject-matter eligibility analysis is “No.”
Dependent claim 8 is deemed to provide a practical application and is sufficient to amount to significantly more than the judicial exception, because the claim recites particular rules for operating a simulation utilizing multiple agents using neural networks in a real-world environment.
In addition, dependent claims 3, 5-7, 9-17, 20, 22, and 23 do not provide a practical application and are insufficient to amount to significantly more than the judicial exception. As such, dependent claims 3, 5-7, 9-17, 20, 22 and 23 are also rejected under 35 U.S.C. § 101, based on their respective dependencies to independent claims 1, 18, and 19.
Therefore, claims 2, 3, 5-7, 9-20, 22, and 23 are rejected under 35 U.S.C. § 101 as being directed to non-statutory subject matter.
Response to Arguments
The Applicant’s arguments filed on December 23, 2025 related to the claims have been fully considered and addressed below.
Regarding the 35 USC 101 rejections, the Applicant respectfully argues, “By reciting these specific simulation-generation and state-selection operations, the claims provide a technological solution that improves the functioning of computer simulation systems themselves. In particular, the claimed techniques enable the system to generate and evaluate ‘many different scenarios’ from a single initial condition, rather than being limited to replaying logged behavior, and thereby allow testing and evaluation of downstream systems ‘under a more comprehensive set of realistic scenarios.’ These improvements are achieved through the claimed computational processes for generating, sampling, and selecting simulation states, rather than through any abstract or mental process.”
The Examiner respectfully disagrees. MPEP 2106.05(a) asks examiners to “consider whether the claim ‘purport(s) to improve the functioning of the computer itself’ or ‘any other technology or technical field.’” In the present case, the claims do not purport to improve the functioning of the computer itself, which comprises “one or more computers.” The “one or more computers” are generic computers and the claims do not improve the functioning of “the computer itself.”
Regarding improvements to any other technology or technical field, MPEP 2106.05(a)(II) further cautions examiners that “it is important to keep in mind that an improvement in the abstract idea itself… is not an improvement in technology.” In the present case, the claims only state limitations for improving the abstract idea of “generating simulations of an environment,” which is not an improvement in technology.
The Examiner further notes that most of the claims do not recite specific details about how key elements such as discriminative scores, environment, and proper subsets are determined and utilized. Dependent claim 8 was deemed to have sufficient detail so as to be eligible because it improves an existing technological process.
For the above reasons, the outstanding 35 USC 101 rejections of claims 2, 3, 9-20, and 22 are maintained.
Regarding the 35 USC 103 rejections, the Applicant’s arguments are persuasive. Siddiqui discloses at paragraph [0069] “The system 100 may use the discriminator to compute a score indicating the extent to which the generated data looks realistic,” but this shows that the discriminator in Siddiqui characterizes a likelihood that the “generated data” looks realistic, not the next simulation state. Isele also does not disclose at least the limitation “a discriminative score based on the respective next states of the agent of the plurality of agents for the candidate next simulation state.
Therefore, the outstanding 35 USC 103 rejections are withdrawn.
Allowable Subject Matter
Claim 8 is objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
The following is a statement of reasons for the indication of allowable subject matter:
No prior art rejections are made in this office action. The amended independent claims overcome the 35 USC 103 rejections for the reasons given in the Response to Arguments, supra.
35 USC 101 rejections still apply to claims 2, 3, 5-7, 9-20, 22, and 23, for reasons given in the 35 USC 101 rejection, supra. Claim 8 was deemed to provide a practical application and is sufficient to amount to significantly more than the judicial exception, because the claim, along with base claim 2 and intervening claims 5 and 7, recites particular rules for operating a simulation utilizing multiple agents using neural networks in a real-world environment. That is, claim 8 improves an existing technological process, and is eligible under 35 USC 101.
Conclusion
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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/SA/Examiner, Art Unit 3715
/PETER S VASAT/Supervisory Patent Examiner, Art Unit 3715
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