DETAILED ACTION
This action is made FINAL in response to the amendments filed on 7/28/2026
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 – 7, and 9 – 12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step One
The claims are directed to a device with structural components (claims 1, 3 – 7, 11, and 12), a method (claim 9), and a non-transitory computer readable medium (claim 10). Thus, each of the claims falls within one of the four statutory categories (i.e., process, machine, manufacture, or composition of matter).
As to claims 1,
Step 2A, Prong One
The claim recites in part:
perform, softmax conversion as a conversion process to express a probability with respect to the acquired given output.
Under the broadest reasonable interpretation, these limitations are process steps that cover Mathematical Concepts. If a claim, under its broadest reasonable interpretation, covers a mathematical concept, then it falls within the “Mathematical Concepts” grouping of abstract ideas.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. In particular, the limitations:
add, with use of a given combination coefficient, an output of a decision tree that is a learner for each class received from each learning device that is a participant in a system, and an output of a decision tree that is a learner for each class trained by an own device, to thereby acquire a given output for obtained as a result of adding the outputs of the decision trees;
which amounts to extra-solution activity of gathering data for use in the claimed process. As described in MPEP 2106.05(g), limitations that amount to merely adding insignificant extra-solution activity to a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application.
The claim further recites a learning device, at least one memory, at least one processor, another learning device, and an own device which is recited at a high-level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)).
Accordingly, at Step 2A, Prong Two, the additional elements individually or in combination do not integrate the judicial exception into a practical application.
Step 2B
In accordance with Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more that the judicial exception. As discussed above, the limitations:
add, with use of a given combination coefficient, an output of a decision tree that is a learner for each class received from each learning device that is a participant in a system, and an output of a decision tree that is a learner for each class trained by an own device, to thereby acquire a given output for obtained as a result of adding the outputs of the decision trees;
are recited at a high level of generality and amounts to extra-solution activity of receiving data i.e. pre-solution activity of gathering data for use in the claimed process. The courts have found limitations directed to obtaining information electronically, recited at a high level of generality, to be well-understood, routine, and conventional (see MPEP 2106.05(d)(II), “receiving or transmitting data over a network”, "electronic record keeping," and "storing and retrieving information in memory").
The claim further recites a learning device, at least one memory, at least one processor, another learning device, and an own device which is recited at a high-level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)).
Accordingly, at Step 2B the additional elements individually or in combination do not amount to significantly more than the judicial exception.
As to claim 3,
Step 2A, Prong One
The claim recites in part:
the combination coefficient is a value determined in advance for each learning device on a basis of a number of learning datasets used for training of a learner by each learning device that is a participant included in the system.
For example, a human mentally decides in advance how much weight to give each learner’s answer based on how much training data they used, then combines the answers accordingly.
As drafted and under its broadest reasonable interpretation, these limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claim 4,
Step 2A, Prong One
The claim recites in part:
calculate the combination coefficient on a basis of the learner received from each learning device, the learner trained by the own device that is a participant included in the system, and data held by the own device;
For example, a human considers advice from others, their own experience, and information they already have, then mentally weighs them to reach a final decision.
As drafted and under its broadest reasonable interpretation, these limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claim 5,
Step 2A, Prong One
The claim recites in part:
specify data that falls to each leaf node in a decision tree that is a learner, and calculate the combination coefficient by using the data for each leaf node
For example, a human groups items by characteristics and mentally counts how many items fall in each group to decide their importance.
As drafted and under its broadest reasonable interpretation, these limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. For example: A human groups items by characteristics and mentally counts how many items fall in each group to decide their importance.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claim 6,
Step 2A, Prong One
The claim recites in part:
calculate the combination coefficient on a basis of the learner received from each learning device that us a participant included in the system, the learner trained by the own device, and validation data held by the own device.
For example, a human considers advice from others, their own experience, and factual information, then mentally weighs them to reach a final decision
As drafted and under its broadest reasonable interpretation, these limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. For example: A human considers advice from others, their own experience, and factual information, then mentally weighs them to reach a final decision
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claims 7,
Step 2A, Prong One
The claim recites in part:
calculate an additional feature value by using the learner received from each learning device that is a participant included in the system and data held by the own device;
For example, a human writing down a feature value is observing something and assigning a value to it.
acquire the given output by performing, for each class, a process of adding the output of the learner received from each learning device that us a participant included in the system and the output of the learner trained by the own device with use of the given combination coefficient.
For example, a human can receivea suggestion from a friend and compares it with their own idea, then mentally combines both using how much weight they give each to reach a final decision.
As drafted and under its broadest reasonable interpretation, these limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of:
train the learner by learning the calculated feature value in addition to the data held by the own device;
which is recited at a high-level of generality with no detail of the training process and amounts to no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea (See MPEP 2106.05(f))
Accordingly, at Step 2A, Prong Two, the additional elements individually or in combination do no integrate the judicial exception into a practical application.
Step 2B
In accordance with Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more that the judicial exception. As discussed above, the additional elements of:
train the learner by learning the calculated feature value in addition to the data held by the own device;
which is recited at a high-level of generality with no detail of the training process and amounts to no more than adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea (See MPEP 2106.05(f))
Accordingly, at Step 2B the additional elements individually or in combination do not amount to significantly more than the judicial exception.
Claim 9 has similar limitations as claim 1. Therefore, the claim is rejected for the same reasons as above.
The claim recites an information processing device which is recited at a high-level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)).
Claim 10 has similar limitations as claim 1. Therefore, the claim is rejected for the same reasons as above.
The claim recites a non-transitory computer readable medium which is recited at a high-level of generality and amounts to no more than mere instructions to apply the exception using a generic computer component (See MPEP 2106.05(f)).
As to claim 11,
Step 2A, Prong One
The claim recites in part:
calculate the combination coefficient on a basis of the learner received from each learning device that us a participant included in the system, the learner trained by the own device, and validation data held by the own device.
For example, a human considers advice from others, their own experience, and factual information, then mentally weighs them to reach a final decision
As drafted and under its broadest reasonable interpretation, these limitation covers performance of the limitation in the mind (including an observation, evaluation, judgment, opinion) or with the aid of pencil and paper but for the recitation of generic computer components. For example: A human considers advice from others, their own experience, and factual information, then mentally weighs them to reach a final decision
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
As to claim 11,
Step 2A, Prong One
The claim recites the abstract idea described above in claim 1, but does not recite any other abstract ideas or any other judicial exceptions.
Step 2A, Prong Two
The judicial exception is not integrated into a practical application. In particular, the claim recites the additional elements of:
wherein the at least one processor is configured to execute the instructions to: generate a model based on the result of adding the outputs of the decision trees and a result of performing the softmax conversion.
these elements are recited at a high-level of generality and amounts to no more than adding the words “apply it” to the judicial exception. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea (See MPEP 2106.05(f)). These limitations also amount to extra solution activity because it is a mere nominal or tangential addition to the claim, amounting to mere data output (see MPEP 2106.05(g)).
Accordingly, at Step 2A, Prong Two, the additional elements individually or in combination do no integrate the judicial exception into a practical application.
Step 2B
In accordance with Step 2B, the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above, the additional elements of:
wherein the at least one processor is configured to execute the instructions to: generate a model based on the result of adding the outputs of the decision trees and a result of performing the softmax conversion.
are recited at a high-level of generality and amounts to no more than adding the words “apply it” to the judicial exception. These limitations also amount to extra solution activity because it is a mere nominal or tangential addition to the claim, amounting to mere data output (see MPEP 2106.05(g)). The courts have similarly found limitations directed to displaying a result, 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.", “determining an estimated outcome and setting a price”).
Accordingly, at Step 2B the additional elements individually or in combination do not amount to significantly more than the judicial exception.
As to claims 12,
Step 2A, Prong One
The claim recites in part:
wherein the output of the decision tree comprises a negative value
Under the broadest reasonable interpretation, these limitations are process steps that cover Mathematical Concepts. If a claim, under its broadest reasonable interpretation, covers a mathematical concept, then it falls within the “Mathematical Concepts” grouping of abstract ideas.
Accordingly, at Step 2A, Prong One, the claim is directed to an abstract idea.
Step 2A, Prong Two
The claim does not include additional elements that integrate the judicial exception into a practical application.
Step 2B
The claim does not include additional elements that are sufficient to amount to “significantly more” to the judicial exception.
Response to Arguments
Applicant's arguments filed 7/28/2026 have been fully considered but they are not persuasive.
Specification
The new title overcomes the specification objection. The specification object has been withdrawn.
Claim Rejections - 35 USC § 112
The newly added limitations overcome the 112 Rejection. The 112 Rejection has been withdrawn.
Claim Rejections - 35 USC § 102 and 103
The newly added limitations overcome the 102 and 103 Rejections. The 102 and 103 Rejections have been withdrawn.
Claim Rejections - 35 USC § 101
Claims 1, 3 – 7, and 9 – 12 are still ejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The 101 Rejection still has not been overcome. The claims are abstract and the steps in the claims can be completed with a mental process and/or generic computer components. Additionally, the steps in the claims do not describe an improvement of technology in any way.
The applicant argues:
Claims 1-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Applicant respectfully traverses the rejection as follows.
First, Applicant respectfully submits that the claims do not recite a mental process within the context of the 35 U.S.C. § 101 analysis because it contains features that cannot be practically performed in the human mind. (See M.P.E.P. § 2106.04(a)(2)(III)(A)).
In SRI Int'l, Inc. V. Cisco Sys., Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019), the Court held "the human mind is not equipped to detect suspicious activity by using network monitors and analyzing network packets as recited by the claims." Similarly, the human mind is not equipped to perform the steps of claim 1 including, for example, to "perform sofimax conversion as a conversion process to express a probability with respect to the acquired given output." The human mind is also not equipped to perform to "train the learner by learning the calculated feature value in addition to the data held by the own device," as recited by claim 7 and to "generate a model based on the result of adding the outputs of the decision trees and a result of performing the softmax conversion," as recited by claim 11.
Second, Applicant respectfully traverses because the claims represents an improvement in a technical field. Claims directed to an improvement in a technical field are patent eligible. See MPEP §§ 2106.04(d)(1) and 2106.05(a) (citing Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1339 (Fed. Cir 2016) and McRO, Inc. V. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1315 (Fed. Circ. 2016)).
For example, Enfish teaches that "[s]oftware can make non-abstract improvements to computer technology, just as hardware improvements can." Enfish at 1336. Please also see the Appeals Review Panel Decision Ex parte Desjardins, 2024-000567 (September 26, 2025)(Technology Center 2100), Ex parte Desjardins at page 8.
The specification identifies the following technical problem:
According to Non-Patent Literature 1, in the case of performing GBF for multi-class classification, after softmax conversion is performed on an output of each decision tree, a value after the conversion is added to the result up to the previous round at a predetermined ratio. In the softmax conversion, conversion is performed in such a manner that an output with respect to an input falls within a range from 0 to 1. As a result, only a positive value is added in each round, and even if an increase in the probability of an incorrect class is overestimated in any round, it is difficult to correct it. As described above, there is a case where precise learning is difficult in the GBF.
Published Specification ("Spec.") at para. [0010]. (Emphasis added).
The specification provides that claims provide the following benefits:
[0039] The learning device 300 is an information processing device that creates a model having a better performance by combining decision trees trained by the respective participants such as the other learning device 200 and the learning device 300 in respective rounds. As described above, the learning device 300 described in the present embodiment can combine the respective decision trees by performing a conversion process for expressing a probability such as softmax conversion, after adding the outputs of the decision tress at a predetermined ratio.
[0068] As a result, since the addition process is performed on the output of a decision tree that may take a negative value before performing softmax conversion, it is possible to make a correction in the next round when the probability is overestimated or the like. As a result, more precise learning can be performed. Moreover, when a positive value is added in each round, the ratio may exceed 1 as the round proceeds. However, according to the configuration described above, since the addition process is performed before the softmax conversion, the possibility that the probability exceeds 1 can be reduced.
[0096] As described above, the coefficient calculation unit 453 calculates a combination coefficient such that the prediction performance with respect to validation data becomes optimum. Therefore, by combining the respective decision trees by using the combination coefficient, it is possible to generate a decision tree that is a learner that is more suitable for the learning device 300 having validation data. That is, according to the configuration described above, it is possible to perform more accurate learning and perform more personalized training of a decision tree.
Applicant respectfully submits the claims provide a technical benefit by reciting, for example, to "add, with use of a given combination coefficient, to thereby acquire a given output obtained as a result of adding the outputs of the decision trees," and to "perform softmax conversion as a conversion process to express a probability with respect to the acquired given output," as recited in claim 1. Applicant additionally submits the claims provide a technical benefit by reciting, for example, to "generate a model based on the result of adding the outputs of the decision trees and a result of performing the softmax conversion," as recited by claim 11 and "wherein the output of the decision tree comprises a negative value," as recited by claim 12.
The examiner disagrees, even if the claimed steps cannot practically be performed mentally, the claims still recite mathematical concepts, including adding decision tree outputs, applying coefficients, and performing a SoftMax conversion. Implementing these calculations on a generic learning device does not make them non-abstract. Unlike SRI and Enfish, the claims do not recite a specific improvement to computer functionality. The alleged improvement concerns prediction accuracy, which is an improved result of the mathematical process not an improvement to the computer itself.
It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements. See the discussion of Diamond v. Diehr, 450 U.S. 175, 187 and 191-92, 209 USPQ 1, 10 (1981)) in subsection II, below. In addition, the improvement can be provided by the additional element(s) in combination with the recited judicial exception. See MPEP § 2106.04(d) (discussing Finjan, Inc. v. Blue Coat Sys., Inc., 879 F.3d 1299, 1303-04, 125 USPQ2d 1282, 1285-87 (Fed. Cir. 2018))
Similarly, "claiming the improved speed or accuracy is inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
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 (MPEP 2106.05(a)(II).
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 BRANDON S COLE whose telephone number is (571)270-5075. The examiner can normally be reached Mon - Fri 7:30pm - 5pm EST (Alternate Friday's Off).
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Omar Fernandez can be reached at 571-272-2589. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BRANDON S COLE/ Primary Examiner, Art Unit 2128
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