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 . In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. The applicant's submission, the “AMENDMENT C AND RESPONSE TO FINAL OFFICE ACTION” of 07 November 2025 (hereinafter referred to as the “Amendment”) has been entered.
Status of the Claims
The pending claims in the present application are claims 1, 8, 9, 11, 12, 14-17, and 19-21 of the Amendment.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 8, 9, 11, 12, 14-17, and 19-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The paragraphs below provide rationales for the rejection. The rationales are based on the multi-step subject matter eligibility test outlined in MPEP 2106.
Step 1 of the eligibility analysis involves determining whether a claim falls within one of the four enumerated categories of patentable subject matter recited in 35 USC 101. (See MPEP 2106.03(I).) That is, Step 1 asks whether a claim is to a process, machine, manufacture, or composition of matter. (See MPEP 2106.03(II).) Referring to the pending claims, the “method” of claims 1, 8, 9, 11, 12, 14-17, and 19-21 constitutes a process under 35 USC 101. Accordingly, claims 1, 8, 9, 11, 12, 14-17, and 19-21 meet the criteria of Step 1 of the eligibility analysis. The claims, however, fail to meet the criteria of subsequent steps of the eligibility analysis, as explained in the paragraphs below.
The next step of the eligibility analysis, Step 2A, involves determining whether a claim is directed to a judicial exception. (See MPEP 2106.04(II).) This step asks whether a claim is directed to a law of nature, a natural phenomenon (product of nature) or an abstract idea. (See id.) Step 2A is a two-prong inquiry. (See MPEP 2106.04(II)(A).) Prong One and Prong Two are addressed below.
In the context of Step 2A of the eligibility analysis, Prong One asks whether a claim recites an abstract idea, law of nature, or natural phenomenon. (See MPEP 2106.04(II)(A)(1).) Using claim 1 as an example, the claim recites the following abstract idea limitations:
“A ... method for optimizing ... an allocation of opportunities to recipients, the method comprising: ...” - See below regarding MPEP 2106.04(a), certain methods of organizing human activity, and mental processes
“... determining ... a plurality of opportunities, n, to be allocated; ...” - See below regarding MPEP 2106.04(a), certain methods of organizing human activity, and mental processes
“... determining ... a plurality of recipients, m, to be allocated at least one of the plurality of opportunities; ...” - See below regarding MPEP 2106.04(a), certain methods of organizing human activity, and mental processes
“... determining, ... based on a first matrix of values, a respective acceptance likelihood of each of the plurality of recipients accepting each of the plurality of opportunities, the first matrix having a dimension of n by m, each value in the first matrix indicating the respective likelihood of one of the plurality of recipients accepting one of the plurality of opportunities; ...” - See below regarding MPEP 2106.04(a), mathematical concepts, certain methods of organizing human activity, and mental processes
“... determining ... a first constraint includes a predetermined budget, which is associated with a cost acceptance of each of the plurality of opportunities by the plurality of recipients; ...” - See below regarding MPEP 2106.04(a), certain methods of organizing human activity, and mental processes
“... determining a second constraint, which indicates a number of offers permitted per recipient and/or ones of the plurality of opportunities are mutually exclusive; and ...” - See below regarding MPEP 2106.04(a), certain methods of organizing human activity, and mental processes
“... determining ... an optimized allocation of the opportunities to the recipients through expression of a Quadratic Unconstrained Binary Optimization (QUBO) energy function representing the respective likelihoods, the first constraint and the second constraint, the optimized allocation including a second matrix of binary values, the second matrix having a dimension of n by m, wherein, for each cell of the second matrix, a first binary value indicates that one of the plurality of opportunities corresponding to the cell is allocated to one of the plurality of recipients corresponding to the cell and a second binary value indicates that the one of the plurality of opportunities corresponding to the cell of the second matrix is not allocated to the one of the plurality of recipients represented by the cell of the second matrix; and ...” - See below regarding MPEP 2106.04(a), mathematical concepts, certain methods of organizing human activity, and mental processes
“... outputting ... the optimized allocation ...” - See below regarding MPEP 2106.04(a), certain methods of organizing human activity, and mental processes
The above-listed limitations of claim 1, when applying their broadest reasonable interpretations in light of their context in the claim as a whole, fall under enumerated groupings of abstract ideas outlined in MPEP 2106.04(a). For example, limitations of the claim can be characterized as: commercial interactions, including advertising, marketing, or sales activities or behaviors, where opportunities may include advertising, offers, or promotions; and managing personal behavior or relationships or interactions between people, including between offerors and recipients of offers, which fall under the certain methods of organizing human activity grouping of abstract ideas (see MPEP 2106.04(a)). Limitations of the claim also can be characterized as: concepts performed in the human mind, including observation, evaluation, judgment, and opinion (e.g., the recited “determining” and “outputting” limitations), which fall under the mental processes grouping of abstract ideas (see MPEP 2106.04(a)). Accordingly, for at least these reasons, claim 1 fails to meet the criteria of Step 2A, Prong One of the eligibility analysis.
In the context of Step 2A of the eligibility analysis, Prong Two asks if the claim recites additional elements that integrate the judicial exception into a practical application. (See MPEP 2106.04(II)(A)(2).) Continuing to use claim 1 as an example, the claim recites the following additional element limitations:
The claimed “method” is “computer-implemented” - See below regarding MPEP 2106.05(a)-(c), (f), and (h)
The claimed “optimizing” is “by a quantum computer” - See below regarding MPEP 2106.05(a)-(c), (f), and (h)
The claimed “determining” is “by a classic computer” or “by the classic computer” - See below regarding MPEP 2106.05(a)-(c), (f), and (h)
The claimed “determining” is “by physical properties of the quantum computer” - See below regarding MPEP 2106.05(a)-(c), (f), and (h)
The claimed “outputting” is “by the quantum computer” and “to the classic computer” - See below regarding MPEP 2106.05(a)-(c), (f), and (h)
The above-listed additional element limitations of claim 1, when applying their broadest reasonable interpretations in light of their context in the claim as a whole, are analogous to: accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer, and mere automation of manual processes, which courts have indicated may not be sufficient to show an improvement in computer-functionality (see MPEP 2106.05(a)(I)); a commonplace business method being applied on a general purpose computer, and selecting a particular generic function for computer hardware to perform from within a range of fundamental or commonplace functions performed by the hardware, which courts have indicated may not be sufficient to show an improvement to technology (see MPEP 2106.05(a)(II)); a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions, and merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions, which do not qualify as a particular machine or use thereof (see MPEP 2106.05(b)(I)); a machine that is merely an object on which the method operates, which does not integrate the exception into a practical application (see MPEP 2106.05(b)(II)); use of a machine that contributes only nominally or insignificantly to the execution of the claimed method, which does not integrate a judicial exception (see MPEP 2106.05(b)(III)); transformation of an intangible concept such as a contractual obligation or mental judgment, which is not likely to provide significantly more (see MPEP 2106.05(c)); recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, which courts have found to be mere instructions to apply an exception, because they recite no more than an idea of a solution or outcome (see MPEP 2106.05(f)); use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea, a commonplace business method or mathematical algorithm being applied on a general purpose computer, and requiring the use of software to tailor information and provide it to the user on a generic computer, which courts have found to be mere instructions to apply an exception, because they do no more than merely invoke computers or machinery as a tool to perform an existing process (see MPEP 2106.05(f)); and specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, which courts have described as merely indicating a field of use or technological environment in which to apply a judicial exception (see MPEP 2106.05(h)). For at least these reasons, claim 1 fails to meet the criteria of Step 2A, Prong Two of the eligibility analysis.
The next step of the eligibility analysis, Step 2B, asks whether a claim recites additional elements that amount to significantly more than the judicial exception. (See MPEP 2106.05(II).) The step involves identifying whether there are any additional elements in the claim beyond the judicial exceptions, and evaluating those additional elements individually and in combination to determine whether they contribute an inventive concept. (See id.) The ineligibility rationales applied at Step 2A, Prong Two, also apply to Step 2B. (See id.) For all of the reasons covered in the analysis performed at Step 2A, Prong Two, independent claim 1 fails to meet the criteria of Step 2B. Further, claim 1 also fails to meet the criteria of Step 2B because at least some of the additional elements are analogous to: performing repetitive calculations, and electronic recordkeeping, which courts have recognized as well-understood, routine, conventional activity, and as insignificant extra-solution activity (see MPEP 2106.05(d)(II)). As a result, claim 1 is rejected under 35 USC 101 as ineligible for patenting.
Regarding claims 8, 9, 11-17, and 19-21, the claims depend from claim 1, and expand upon limitations introduced by claim 1. The dependent claims are rejected at least for the same reasons as claim 1. For example, the dependent claims recite abstract idea elements similar to the abstract idea elements of claim 1, that fall under the same abstract idea groupings as the abstract idea elements of claim 1 (e.g., the “wherein the first constraint is provided by a vector of values, wherein each respective value provides an indication of a first constraint associated with a respective opportunity” of claim 8, the “wherein the second constraint is provided by a vector of values, wherein each respective value provides an indication of a second constraint associated with a respective opportunity; and/or wherein the second constraint is provided by a vector of values, wherein each respective value provides an indication of a second constraint associated with a respective recipient” of claim 9, the “wherein the opportunity is an offer made available by a merchant” of claim 11, the “wherein the recipient is a card holder” of claim 12, the “wherein the plurality of recipients are arranged into groups of recipients and the allocation of opportunities is made to said groups of recipients” of claim 14, the “wherein each recipient shares a common interest with each other recipient in the respective group of recipients” of claim 15, the “wherein at least one recipient is a member of a plurality of groups of recipients” of claim 16, the “wherein each recipient is a member of a limited number of groups of recipients; and/or wherein each recipient is a member of a maximum of 4 groups of recipients” of claim 17, the ”wherein, during the determination of the optimized allocation, a weight is applied to each group of recipients, further wherein the weight applied to a group is related to the number of recipients within the group” of claim 19, the “further comprising determining, based on a number of recipients within a group of recipients and the first constraint, that the first constraint cannot be met, and splitting the group of recipients into two further groups of recipients” of claim 20, and the “wherein the splitting of groups of recipients is performed iteratively until the first constraint is met” of claim 21). Accordingly, claims 8, 9, 11-17, and 19-21 also are rejected as ineligible under 35 USC 101.
Examiner’s Remarks
In view of the changes made to the pending claims by the Amendment, the applicant’s arguments and remarks from pp. 9-12 of the Amendment, and the reasons outlined below, prior art rejections are no longer being asserted against the pending claims. In the previous Office Action, the pending claims were rejected under 35 USC 103 in view of combinations of the cited Jones (U.S. Pat. No. 6,925,441 B1), Castinado (U.S. Pat. App. Pub. No. 2018/0255000 A1), L’Huillier (U.S. Pat. No. 10,535,075 B1), and Jodice references (U.S. Pat. App. Pub. No. 2015/0120391 A1). Generally speaking, Jones was cited as the closest prior art of record, for its disclosure of targeted marketing by optimizing offers to consumers (see, e.g., Abstract), which includes elements that read on some of the recited “optimizing ... an allocation of opportunities to recipients” limitations of the pending claims. Jones did not appear to disclose any elements reading on the recited “quantum computer” limitations of the pending claims, leading to reliance on Castinado, for its disclosure of using quantum optimizers (see, e.g., Abstract). Neither Jones nor Castinado appeared to disclose any elements reading on the recited “matrix” limitations of the pending claims, leading to reliance on L’Huillier, for its disclosure of multi-dimensional matrices (see, e.g., col. 8, ll. 33 and 34). However, L’Huillier does not disclose the recited “second matrix of binary values” limitations added to claim 1 by the Amendment. See, for example, FIG. 5 of L’Huillier, which shows matrices of wide ranges of values, not of binary values. Jodice does not remedy these deficiencies, as Jodice does not disclose any matrices. For at least these reasons, the pending claims are patentably distinguishable from Jones, Castinado, L’Huillier, and Jodice, whether they are taken alone or in combination.
While searching for prior art turned up the Shim reference (see the listed non-patent literature from the Notice of References cited of 25 March 2025) and the Johnson reference (see the listed foreign publication from the Notice of References cited of 25 March 2025), the former is similar to Jones, and therefore has similar deficiencies; while the latter is similar to Castinado, and therefore has similar deficiencies. For all of these reasons, no prior art rejections are being asserted against the pending claims.
Response to Arguments
On pp. 5-8 of the Amendment, the applicant requests reconsideration and withdrawal of the claim rejection under 35 USC 101. More specifically, the applicant contends that “the pending claims recite a technical solution to the technical problem to express real world problems, “to the quantum computer in a resolvable manner [wherein determining] how to express the problem and variables may be a computationally expensive task which may require more processing cycles than would be needed to solve the problem using a traditional iterative method.” See, ¶0004 of the instant application.” (Amendment, pp. 5 and 6.) The examiner disagrees with the contention. No technical solution is described in the pending claims or in the specification. The claims do not describe how to express real world problems to a quantum computer in a resolvable manner, or what even constitutes a resolvable manner. The specification merely states, “FIG. 3 shows a method 300 of operation for the computing system 100. A real world problem is input 302 into the classical computer 130. The classical computer 130 determines a computational structure 304 for the problem and optimises the framework 306. Then intermediate heuristics or optimisations are determined 308. The optimisations are then passed to the quantum computer 140 to determine the quantum computing form 310. The quantum computation 312 is then performed and the results passed back to the classical computer 130 to determine the results of the quantum computation. Then the result is output to the real world 316.” (Specification, p. 6, ll. 6-13.) The specification also states, “The classical computer 222 may provide an expression of the information provided by the allocation system 201 and a problem to be optimised to a quantum computer 224. The expression may be formed such that the quantum computer is able to resolve the information provided by the allocation system to provide an optimised answer to the problem.” (Specification, p. 8, ll. 25-29.) The specification also states, “Some embodiments may structure the expressions provided to the quantum computer such that the quantum computer provides an optimised assignment of the opportunities or offers to the recipients or cardholders,” “In some embodiments, expressions provided to the quantum computer are defined such that the solution provided by the quantum computer maximises of the overall expected return,” and “In some embodiment expressions provided to the quantum computer are defined such that the solution provided by the quantum computer minimises the overall expected rejection of the offers.” (Specification, p. 11, ll. 20-22, and p. 12, ll. 1-3 and 5-7.) The specification only recites the idea of a solution or outcome, while failing to recite details of how a solution to a problem is accomplished. The claims recite even less than the specification, and thus, provide no more than mere instructions to apply an exception per MPEP 2106.05(f).
The applicant also emphasizes the reciting of the QUBO energy function in the claims. (See Amendment, p. 6.) The applicant contends that “the pending claims do not merely use the quantum computer as some too, but in effect, redefine the specific problems consistent with the structure of the quantum computer.” (Amendment, p. 6.) The examiner disagrees with the contention. The QUBO limitations are abstract idea elements, not additional elements. To the extent that the applicant’s contention involves the QUBO limitations being additional elements that are more than mere instructions to apply quantum computers, the contention would appear to be based on the QUBO limitations being additional elements rather than abstract idea elements. Adding more abstract idea elements to the claims does not warrant eligibility.
The applicant also contends that “the pending claims provide for a allocation solution, which is sufficient to “improve on the results of the offers being used without having to unduly limit the number of offers being provided and cardholders targeted at a time.” See, ¶0044.” (Amendment, p. 6.) The examiner disagreed with the notion that such an improvement warrants a finding of eligibility. The alleged improvement is an improvement to an abstract idea, which is indicative of ineligibility. (See MPEP 2106.05(a)(II).)
The applicant also contend that “the pending claims recite specific technology to overcome the issues of “existing system” which required a trade-off between accuracy of the allocation of opportunities to recipients and the number of opportunities being provided and recipients targeted at a time. See, ¶0042. It is not the mere increase in computer power, or the extension of additional resources; the pending claims again redefine the allocation problem in terms outside of the real world (e.g., through the Quadratic Unconstrained Binary Optimization (QUBO) energy function) to integrate the quantum computer as a fundamental of the solution. This is a technical solution.” (Amendment, p. 6.) The examiner disagrees with the contention. It is unclear what eligibility rationale from MPEP 2106.05 is being implicated by the applicant’s contentions. It also appears that the claims offer an arguably technical solution to a non-technological problem. Issues associated with allocation of opportunities are not technological problems. Without a clear technical solution to a technological problem, eligibility will continue to be denied.
The applicant also contends that “the specific quantum computer, and the specific constrained energy function integrated therewith, is integral to the claimed subject matter, whereby the pending claims amount to far more than mere implementation of the idea in a general-purpose computer. The claims’ leveraging of the quantum computer provides the practical application.” (Amendment, pp. 6 and 7.) The examiner disagrees with the contentions. A quantum computer with a chosen energy function is a type of general-purpose computer. The situation parallels the situation where a machine learning model uses a chosen activation function. See Example 47, claim 2, from the July 2024 Subject Matter Eligibility Examples. Example 47 is closer, situationally, to the pending claims than McRo or Uniloc that are highlighted by the applicant on pp. 7 and 8 of the Amendment. Finally, the attached Lewis, Bauer, and Alongi non-patent literature references call into question whether QUBO and hybrid quantum-classical computer are unconventional technical solutions or improvements at all, further distinguishing the scenario of the present application from those in McRo and Uniloc.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure. Such prior art includes the following:
Bauer, Bela, et al. "Hybrid quantum-classical approach to correlated materials." Physical Review X 6.3 (2016): 031045.
Lewis, Mark. "Quadratic unconstrained binary optimization problem preprocessing: Theory and empirical analysis." Networks (2017).
Alongi, Paul. “Combining the best of quantum computing and classical computing.” Clemson News, 13 April 2020 (last accessed on 16 March 2026 via https://news.clemson.edu/combing-the-best-of-quantum-computing-and-classical-computing/).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to THOMAS Y. HO, whose telephone number is (571)270-7918. The examiner can normally be reached Monday through Friday, 9:30 AM to 5:30 PM Eastern.
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/THOMAS YIH HO/Primary Examiner, Art Unit 3624