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 .
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 1-20 are rejected under 35 USC 101 because the claimed invention is directed to an abstract idea without significantly more. A subject matter eligibility analysis is set forth below. See MPEP 2106.
Under step 1, claim 1 belongs to a statutory category, namely it is a method claim.
Under step 2A, prong 1: claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. “mathematical concepts” or “mental process and concepts performed in the human mind” which the court has identified as abstract) without significantly more. Claim 1 is directed to the abstract idea of repeating at a plurality of time steps until a stopping condition is satisfied, the steps of: selecting a record of task performance from the training data set; using the observed context, the selected action, and reward from the selected record to update an initiated estimate of a linear function mapping observed context and the selected action to a predicted value of reward; and checking whether the stopping condition has been satisfied; the method further comprising: herein the stopping condition comprises the probability that an error condition for the linear function is satisfied descending below a maximum acceptability probability threshold (160); and wherein the error condition comprises an action selected using a current estimate of the linear function being separated by more than an error threshold from an action that generates a maximum reward for the given context. These limitations fall under mathematical concepts or mental processes (i.e. observing, repeating, estimating, selecting, checking, predicting)). The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the only additional elements are obtaining a training dataset comprising records of task performance by the environment during a period of management according to a reference policy, wherein each record of task performance comprises an observed context for the environment, an action selected for execution in the environment by the reference policy on the basis of the observed context, and a reward value indicating an observed impact of the selected action on task performance by the environment; which is mere data gathering recited at a high level of generality and outputting as the target policy a function operable to select for execution in the environment an action which, for a given context, is mapped by the estimate of the linear function at the time the stopping condition is satisfied to a maximum predicted value of reward, which is an extra solution activity such as outputting data. The claim as a whole does not amount to significantly more than the abstract idea itself.
The generic data gathering, processing, and output steps, are recited so generically (no details whatsoever are provided other than e.g., “wherein the error condition comprises an action selected using the current estimate of the linear function being separated by more than an error threshold from an action”) that it represents no more than mere instructions to apply the judicial exceptions on a computer. It can also be viewed as nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of a computer. Noting MPEP 2106.04(d)(I): “It is notable that mere physicality or tangibility of an additional element or elements is not a relevant consideration in Step 2A Prong Two. As the Supreme Court explained in Alice Corp., mere physical or tangible implementation of an exception does not guarantee eligibility. Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208, 224, 110 USPQ2d 1976, 1983-84 (2014) ("The fact that a computer ‘necessarily exist[s] in the physical, rather than purely conceptual, realm,’ is beside the point")”.
Thus, under Step 2A, prong 2 of the analysis, even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application and the claims are directed to the judicial exception. No specific practical application is associated with the claimed system. For instance, nothing is done with the selected action using the estimate of the linear function.
Under Step 2B, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, as described above, merely amount to a general purpose computer system that attempts to apply the abstract idea in a technological environment, limiting the abstract idea to a particular field of use, and/or merely insignificant extra-solution activity. Such insignificant extra-solution activity, e.g. data gathering and output, when re-evaluated under Step 2B is further found to be well-understood, routine, and conventional See MPEP 2106.05(d)(II).
Dependent claims 2-20 merely expand upon the abstract idea further defining the abstract steps of claim 1, and therefore stand rejected under 35 USC 101 as being directed to non-statutory subject matter.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
The term “maximum predicted value” in claim 1, line 20 is a relative term which renders the claim indefinite (metes and bounds are not defined). The term “maximum predicted value” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
The term “maximum reward” in claim 1, line 25 is a relative term which renders the claim indefinite (metes and bounds are not defined). The term “maximum reward” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Claims 2-20 are dependent from, and inherit the limitations of claim 1. Thus, claims 2-20 are rejected under 35 USC 112 second paragraph for at least the same reasons specified above with respect to claim 1.
The term “highest estimated reward” in claim 20, line 6, is a relative term which renders the claim indefinite (metes and bounds are not defined). The term “highest estimated reward” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Response to Arguments
Applicant's arguments filed 7/24/2026 have been fully considered but they are not persuasive.
Applicant argues that the claims are patent eligible because they recite a practical application and provides an improvement to the technical field.
In response the Examiner points to the fact that no specific improvement is recited in the claims. The outputting steps are merely an extra solution activity see (MPEP § 2106.05(g)). The steps of: “wherein the stopping condition comprises the probability that an error condition for the linear function is satisfied descending below a maximum acceptability probability threshold; and wherein the error condition comprises an action selected using a current estimate of the linear function being separated by more than an error threshold”; are simply part of the abstract idea. The claim as a whole does not amount to significantly more than the abstract idea itself.
Regarding the term phrases: “maximum predicted value”, “maximum reward” and “highest estimated reward”, these terms make the claims vague and indefinite because their metes and bounds are not defined. They are “maximum” or “highest” in comparison to what or in reference to what?
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 MANUEL A RIVERA VARGAS whose telephone number is (571)270-7870. The examiner can normally be reached M-F 9:00-6:00.
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/MANUEL A RIVERA VARGAS/Primary Examiner, Art Unit 2857
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