Detailed Action
This action is in response to the amendment filed on 07/06/2026 for application 18/345,154, in which:
Claims 1 and 11 are the independent claims.
Claims 1, 4, 6-11, 14, and 16-20 are currently amended.
Claims 5 and 15 are canceled.
Claims 1-4, 6-14, and 16-20 are currently pending.
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 .
Information Disclosure Statement
The information disclosure statements (IDS) submitted on 08/14/2026, 04/18/2025, 08/09/2024, 06/25/2024, and 08/09/2023 and are in compliance with the provisions of 37 CFR 1.97. Accordingly, the information disclosure statements are being considered by the examiner.
Response to Arguments
Applicants’ arguments filed 07/06/2026 have been fully considered but they are not persuasive.
Regarding the 35 USC § 101 Rejections:
Applicant's arguments regarding the 35 U.S.C. 101 rejections of the previous office action have been fully considered but are unpersuasive.
The Applicant emphasizes the claims (Pages 7-8) and asserts by noting that based on the determination, nodes and any child nodes thereof are pruned. In other words, any poor solutions are removed from the tree structure in optimization of the quantum circuit cutting. Thereby, computing resources are saved by not performing inferences for the pruned nodes and their children nodes. These above-recited features improve the functioning of the target simulated quantum computing system by reducing the computational burden required to solve quantum circuit cutting problems, enabling more efficient execution planning for quantum simulations. Thus, independent claims 1 and 11 integrate any alleged abstract idea into a practical application that improves computer technology. Therefore, Applicant respectfully submits that independent claims 1 and 11 are patent eligible.
Examiner respectfully disagrees. The previous and current rejections for the amended claims are directed to an abstract idea (Step 2A Prong 1) and do not integrate the abstract idea into a practical application (Step 2A Prong 2). Eligibility must be assessed based on the claim as a whole. When viewed as an integrated whole, the sole additional element recited within the independent claim only recites performance of an abstract idea within a computer (… by a runtime prediction engine comprising a machine learning model …); thus, as the additional element falls within MPEP 2106.05 the limitation is unable to integrate the judicial exception as it is unable to provide significantly more. The additional elements noted within Step 2A Prong 2 are unable to amount to significantly more than the judicial exception (when evaluated individually and holistically). The claims are not a technical solution to a technical problem as the independent claim is merely performing abstract ideas with specific restrictions within a computer. Thus, the additional element is not able to integrate the abstract ideas in a practical application. The claims are directed towards the improvement of an abstract idea. Therefore, the claims do not integrate the judicial exception into a practical application. The independent claim fails to recite the steps that achieve the improvement. The pending Claims are directed to a judicial exception due to reciting limitations which fall within the “mental processes” group of abstract ideas; where the judicial exception is unable to be directed to significantly more than the judicial exception due to the pending Claims not including additional elements that contribute to an “inventive concept”. The amended claims do not integrate the judicial exception into a practical application nor amount to significantly more. Although the Claims are interpreted in light of the specification, limitations from the specification are not read into the Claims.
MPEP 2106.05(a) recites:
After the examiner has consulted the specification and determined that the disclosed invention improves technology, the claim must be evaluated to ensure the claim itself reflects the disclosed improvement in technology … the claim must include the components or steps of the invention that provide the improvement described in the specification
…
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.
Applicant fails to show how any alleged technical improvement would be provided by anything more than the judicial exception on its own. Additionally, applicant fails to show how the claim includes components or steps that would provide the alleged improvement described in the specification or by the cited case law. By MPEP 2106.05(f)(1), "the claim recites only the idea of a solution or outcome, i.e. the claim fails to recite details of how a solution to a problem is accomplished". Moreover, the examiner maintains that the Claim does not impose any meaningful limits on the judicial exceptions. As noted in the rejection, due to the additional elements falling under MPEP 2106.05, the judicial exception is not integrated into a practical application.
The Applicant asserts (Page 8), that Claims 2-4 and 6-10 depend from independent claim 1 and claims 12-14 and 16-20 depend from independent claim 11. Therefore, Applicant respectfully submits that these dependent claims are also patent eligible for at least the same reasons set forth above with respect to independent claims 1 and 11. Claims 5 and 15 are cancelled, rendering the rejections of claims 5 and 15 moot. Accordingly, Applicant respectfully requests that the rejections of claims 1-4, 6-14, and 16-20 under 35 U.S.C. § 101 be withdrawn.
Examiner respectfully disagrees and notes the remarks from above. Please note that Claims 10 and 20 are not rejected under 35 U.S.C. 101 as the claimed invention recites an abstract idea which is integrated into a practical application under Subject Matter Eligibility Analysis Step 2A Prong 2. The office action establishes a proper and well- supported prima facie case as the claims are explained to be not patentable via the Patent Subject Matter Eligibility steps within MPEP 2106; thus, the additional elements noted within Step 2A Prong 2 are unable to amount to significantly more than the judicial exception (when evaluated individually and holistically). The limitations are unable to provide the alleged improvement as they are currently being evaluated as either abstract idea(s) or additional elements that fall within MPEP 2106.05. Therefore, for the reasons given above and in the updated rejections below, the rejection to all claims (including claim 1 and all dependent claims) are maintained and updated as necessitated by claim amendments. Applicants’ arguments regarding the other independent and dependent claims rely upon the same assertions with respect to claim 1 and are thus likewise unpersuasive. More specific details are discussed below within the 35 USC § 101 Rejections.
Claim Objections
Claims 7 and 17 are objected to because of the following informalities: Claims 7 and 17 both recite the term “indicate” and appears to be a typographical error. For the purposes of examination, the examiner is the term as “indicating”. 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 1-4, 6-9, 11-14 and 16-19 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Claims 10 and 20 are not rejected under 35 U.S.C. 101 as the claimed invention recites an abstract idea which is integrated into a practical application under Subject Matter Eligibility Analysis Step 2A Prong 2.
Regarding Claim 1:
Subject Matter Eligibility Analysis Step 1:
Claim 1 recites a method, thus a process, one of the four statutory categories of patentable subject matter.
Subject Matter Eligibility Analysis Step 2A Prong 1:
However, claim 1 further recites the method comprising of:
representing solutions to a cutting problem of cutting a quantum circuit into quantum subcircuits in a tree structure, wherein each node of the tree structure corresponds to a solution of the cutting problem (a human being can mentally apply evaluation and make a judgement to represent solutions to a specific problem in a specific tree structure)
evaluating a solution associated with a selected node (a human being can mentally apply evaluation to evaluate a solution associated with a specific node)
performing … an inference on the solution associated with the selected node to predict resource requirements comprising at least one of processor utilization, memory consumption, or execution time required for execution of the solution in a target simulated quantum computing system (a human being can mentally apply evaluation to perform an inference on a specific solution)
determining whether the predicted resource requirements of the solution exceed available computing resources of the target simulated quantum computing system (a human being can mentally apply evaluation to determine whether a specific resource exceeds a specific threshold within a specific system)
pruning the selected node and any child node of the selected node from the tree structure when it is … thereby reducing computational resources during addressing the cutting problem (a human being can mentally apply evaluation and make a judgement to prune a tree structure at a specific time)
traversing remaining nodes in the tree structure until predicted resource requirements for execution of a solution associated with any remaining node do not exceed the available computing resources of the target simulated quantum computing system (a human being can mentally apply evaluation and traverse a tree structure for remaining nodes until a specific threshold is met)
Claim 1 thus recites an abstract idea (that falls into the “mental processes” group of abstract ideas).
Subject Matter Eligibility Analysis Step 2A Prong 2:
This judicial exception is not integrated into a practical application because the sole additional element recited consists of … by a runtime prediction engine comprising a machine learning model … (to perform a mental process and the performance of an abstract idea on a computer is no more than instructions to “apply it” on a computer, by MPEP 2106.05(f)).
Subject Matter Eligibility Analysis Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the new sole additional element recited, alone or in combination, does not provide significantly more than the abstract idea itself. The additional element is merely applying the abstract idea on a computer (MPEP 2106.05(f)) which cannot provide significantly more. Thus, the claim is subject-matter ineligible.
Regarding Claim 2:
Subject Matter Eligibility Analysis Step 1:
Dependent Claim 2 recites the method of Claim 1. Claim 1 is a method, thus a process, one of the four statutory categories of patentable subject matter.
Subject Matter Eligibility Analysis Step 2A Prong 1:
However, claim 2 does not recite any additional abstract ideas and only inherits the abstract ideas from Claim 1. Claim 2 thus recites an abstract idea (that falls into the “mental processes” group of abstract ideas).
Subject Matter Eligibility Analysis Step 2A Prong 2:
This judicial exception is not integrated into a practical application because the sole additional element recited consists of receiving a quantum circuit from a client (which is insignificant extra-solution activity of data gathering, by MPEP 2106.05(g)).
Subject Matter Eligibility Analysis Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the new sole additional element recited, alone or in combination, does not provide significantly more than the abstract idea itself. The additional element falls within MPEP 2106.05(d) as well-understood, routine and conventional activities of receiving or transmitting data over a network (MPEP 2106.05(d)(II): buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014)). Thus, the claim is subject-matter ineligible.
Regarding Claim 3:
Subject Matter Eligibility Analysis Step 1:
Dependent Claim 3 recites the method of Claim 1. Claim 1 is a method, thus a process, one of the four statutory categories of patentable subject matter.
Subject Matter Eligibility Analysis Step 2A Prong 1:
However, claim 3 further recites the method comprising of … predict resource requirements of the set of quantum subcircuits and/or an execution time for the set of quantum subcircuits (a human being can mentally apply evaluation to predict specific requirements and/or specific times for specific circuits). Claim 3 thus recites an abstract idea (that falls into the “mental processes” group of abstract ideas).
Subject Matter Eligibility Analysis Step 2A Prong 2:
This judicial exception is not integrated into a practical application because the sole additional element recited consists of inputting the solution, which includes a set of quantum subcircuits, into a machine learning model that is configured to …(which is insignificant extra-solution activity of data gathering, by MPEP 2106.05(g)).
Subject Matter Eligibility Analysis Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the new sole additional element recited, alone or in combination, does not provide significantly more than the abstract idea itself. The additional element falls within MPEP 2106.05(d) as well-understood, routine and conventional activities of receiving or transmitting data over a network (MPEP 2106.05(d)(II): buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014)). Thus, the claim is subject-matter ineligible.
Regarding Claim 4:
Subject Matter Eligibility Analysis Step 1:
Dependent Claim 4 recites the method of Claim 3. Claim 3 is a method, thus a process, one of the four statutory categories of patentable subject matter.
Subject Matter Eligibility Analysis Step 2A Prong 1:
However, claim 4 further recites the method comprising of wherein the predicted resource requirements are compared to threshold resource requirements, wherein the solution is rejected when the comparison fails, and wherein the comparison fails when the predicted resource requirements are greater than the threshold resource requirements subcircuits (a human being can mentally apply evaluation to compare specific resource requirements with the predicted resource requirements). Claim 4 thus recites an abstract idea (that falls into the “mental processes” group of abstract ideas).
Subject Matter Eligibility Analysis Step 2A Prong 2:
This judicial exception is not integrated into a practical application because there are no new additional elements recited.
Subject Matter Eligibility Analysis Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no new additional elements recited.
Regarding Claim 6:
Subject Matter Eligibility Analysis Step 1:
Dependent Claim 6 recites the method of Claim 1. Claim 1 is a method, thus a process, one of the four statutory categories of patentable subject matter.
Subject Matter Eligibility Analysis Step 2A Prong 1:
However, claim 6 further recites the method comprising of comparing the predicted execution time with a threshold execution time, wherein the comparison fails when the predicted execution time is greater than the threshold execution time (a human being can mentally apply evaluation to compare specific time values). Claim 6 thus recites an abstract idea (that falls into the “mental processes” group of abstract ideas).
Subject Matter Eligibility Analysis Step 2A Prong 2:
This judicial exception is not integrated into a practical application because there are no new additional elements recited.
Subject Matter Eligibility Analysis Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no new additional elements recited.
Regarding Claim 7:
Subject Matter Eligibility Analysis Step 1:
Dependent Claim 7 recites the method of Claim 1. Claim 1 is a method, thus a process, one of the four statutory categories of patentable subject matter.
Subject Matter Eligibility Analysis Step 2A Prong 1:
However, claim 7 does not recite any additional abstract ideas and only inherits the abstract ideas from Claim 1. Claim 7 thus recites an abstract idea (that falls into the “mental processes” group of abstract ideas).
Subject Matter Eligibility Analysis Step 2A Prong 2:
This judicial exception is not integrated into a practical application because the sole additional element recited consists of wherein the available computing resources are constraints indicate whether the predicted resource requirements to be consumed by the solution can be executed on the target simulated quantum computing system (which is restricting the abstract idea to a Particular Technological Environment, by MPEP 2106.05(h)).
Subject Matter Eligibility Analysis Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the new sole additional element recited, alone or in combination, does not provide significantly more than the abstract idea itself. The additional element is only restricting the abstract idea to a Particular Technological Environment (MPEP 2106.05(h)) which cannot provide significantly more. Thus, the claim is subject-matter ineligible.
Regarding Claim 8:
Subject Matter Eligibility Analysis Step 1:
Dependent Claim 8 recites the method of Claim 1. Claim 1 is a method, thus a process, one of the four statutory categories of patentable subject matter.
Subject Matter Eligibility Analysis Step 2A Prong 1:
However, claim 8 does not recite any additional abstract ideas and only inherits the abstract ideas from Claim 1. Claim 8 thus recites an abstract idea (that falls into the “mental processes” group of abstract ideas).
Subject Matter Eligibility Analysis Step 2A Prong 2:
This judicial exception is not integrated into a practical application because the sole additional element recited consists of wherein all nodes in the tree structure are traversed (which is restricting the abstract idea to a Particular Technological Environment, by MPEP 2106.05(h)).
Subject Matter Eligibility Analysis Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the new sole additional element recited, alone or in combination, does not provide significantly more than the abstract idea itself. The additional element is only restricting the abstract idea to a Particular Technological Environment (MPEP 2106.05(h)) which cannot provide significantly more. Thus, the claim is subject-matter ineligible.
Regarding Claim 9:
Subject Matter Eligibility Analysis Step 1:
Dependent Claim 9 recites the method of Claim 1. Claim 1 is a method, thus a process, one of the four statutory categories of patentable subject matter.
Subject Matter Eligibility Analysis Step 2A Prong 1:
However, claim 9 does not recite any additional abstract ideas and only inherits the abstract ideas from Claim 1. Claim 9 thus recites an abstract idea (that falls into the “mental processes” group of abstract ideas).
Subject Matter Eligibility Analysis Step 2A Prong 2:
This judicial exception is not integrated into a practical application because the sole additional element recited consists of performing a backward verification on a parent node of the selected node (to perform a mental process and the performance of an abstract idea on a computer is no more than instructions to “apply it” on a computer, by MPEP 2106.05(f)).
Subject Matter Eligibility Analysis Step 2B:
The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the new sole additional element recited, alone or in combination, does not provide significantly more than the abstract idea itself. The additional element is merely applying the abstract idea on a computer (MPEP 2106.05(f)) which cannot provide significantly more. Thus, the claim is subject-matter ineligible.
Regarding Claims 11-14 and 16-19:
Claims 11-14 and 16-19 incorporates substantively all the limitations of Claims 1-4 and 6-9 in a non-transitory storage medium having stored therein instructions that are executable by one or more hardware processors to perform operations comprising (these claim limitations appear to perform a mental process and the performance of an abstract idea on a computer is no more than instructions to “apply it” on a computer, by MPEP 2106.05(f)) and does not appear to integrate the abstract idea into a particular application; thus, the claim is subject matter ineligible as it does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, alone or in combination, and do not provide significantly more than the abstract idea itself); thus, Claims 11-14 and 16-19 are rejected for reasons set forth in the rejection of Claims 1-4 and 6-9, respectively.
Examiner Comments
The claims have been searched but no prior art which anticipates or renders the independent claims obvious have been found.
Claims 1-4, 6-9, 11-14 and 16-19 are currently rejected under 35 USC § 101 only. A complete and thorough search was performed for these claims; however no prior art was uncovered that teach or fairly suggest the features recited claims. Specifically, none of the prior art of record, either alone or in combination, fairly discloses the limitations of the independent Claim 1 and its dependent Claims. In particular, the limitations in Claim 1:
A method comprising:
representing solutions to a cutting problem of cutting a quantum circuit into quantum subcircuits in a tree structure, wherein each node of the tree structure corresponds to a solution of the cutting problem; evaluating a solution associated with a selected node;
…
pruning the selected node and any child node of the selected node from the tree structure when it is determined that the predicted resource requirements of the solution exceed available computing resources of the target simulated quantum computing system, thereby reducing computational resources during addressing the cutting problem;
…
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
Mosca et al., US-20210406753-A1
Pednault et al., US-20190347575-A1
Tang et al., “CutQC: Using Small Quantum Computers for Large Quantum Circuit Evaluations”.
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.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to IBRAHIM RAHMAN whose telephone number is (703)756-1646. The examiner can normally be reached M-F 8am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kakali Chaki can be reached at (571) 272-3719. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/I.R./Examiner, Art Unit 2122
/MICHAEL H HOANG/PRIMARY EXAMINER, Art Unit 2122
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