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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 7/9/2026 has been entered.
Claim Status
The claims filed 7/9/2026 have been entered.
Claims 1-13, 19-24, and 27 are pending.
Claim 1 is independent.
Claims 1-13, 19-24, and 27 are currently amended.
Response to Arguments
Applicant's arguments filed 7/9/2026 have been fully considered but they are not persuasive.
35 U.S.C. 101
Claims 1-13, 19-24, and 27 stand rejected under 35 U.S.C. 101 as being directed to an abstract idea without significantly more.
Applicant argues that amended claim 1, considered as an ordered combination, integrates the abstract idea into a practical application within the meaning of MPEP 2106.04(d) (see Remarks, pg. 7).
The argument is not persuasive. The additional elements of the claim, including the display, processor, and quantum/quantum-inspired computer are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component, as discussed in MPEP § 2106.05(f). The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts to generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claim 1 is directed to an abstract idea without a practical application.
Applicant argues that the Office has not established that the amended ordered combination is well-understood, routine, and conventional (see Remarks, pp. 7-8).
The argument is not persuasive. As delineated in the rejection, the majority of Applicant’s argued limitations fall under the abstract idea itself and are therefore not “additional elements” with regard to the analysis under the Alice/Mayo framework. The rejection carries over identification of the additional element(s) in the claim from Step 2A Prong Two; and carries over the conclusions from Step 2A Prong Two on the considerations discussed in MPEP §§ 2106.05(a) - (c), (e) (f) and (h). Here, the evaluation under Step 2B is made with respect to the considerations that the Supreme Court has identified as relevant to the eligibility analysis, which are discussed in detail in MPEP § 2106.05(a) through (h). Many of these considerations overlap, and often more than one consideration is relevant to analysis of an additional element. Not all considerations will be relevant to every element, or every claim. Because the evaluation in Step 2B is not a weighing test, it is not important how the elements are characterized or how many considerations apply from this list. It is important to evaluate the significance of the additional elements relative to the invention, and to keep in mind the ultimate question of whether the additional elements encompass an inventive concept. Nevertheless, the rejection herein clarifies that the additional elements do not go beyond what is well-understood, routine, and conventional activity in the field. Furthermore, looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. Their collective functions merely provide generic or conventional computer implementation.
Applicant further argues that claim 1 is not limited to generic computer implementation because it recites a particular ordered sequence of data transformations, not a generic instruction to apply an abstract idea on a computer (see Remarks, pg. 8).
The argument is not persuasive. Here, Applicant’s argument regarding the ordered sequence of data transformations is not persuasive because the ordered sequence falls under the abstract idea itself. Here, the abstract idea limitations include the ordered limitations drawn to defining respective probability distributions over future returns, modifying a distribution by Bayesian inference, defining a probabilistic objective function, converting that function to a QUBO representation, comparing candidate solutions to select one solution, and converting the solution to variables. Here, the only additional elements are the display/GUI, the processor, and the quantum or quantum-inspired computer, which does not integrate the abstract idea into a practical application under Step 2A Prong 2 or provide an inventive concept under Step 2B.
For the above reasons, the rejection of claims 1-13, 19-24, and 27 are maintained.
35 U.S.C. 103
The prior rejections under 35 U.S.C. 103 are withdrawn in view of the current amendments.
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 1-13, 19-24, and 27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 1
Claims 1-13, 19-24, and 27 are directed to methods and thus fall within the statutory categories of invention. (Step 1: YES).
Step 2A - Prong 1
The Examiner has identified independent method claim 1 as the claim that represents the claimed invention for analysis. Claim 1 recites the limitations of:
1. A computer-implemented method for determining a distribution of funds from probability distributions of investment returns using a quantum or quantum-inspired computer, the method comprising:
displaying, on an electronic computer display, a graphical user interface (GUI) to a user for receiving input about investment objectives and receiving the investment objectives;
receiving, by a processor, data including historical returns on investment for a plurality of available investments;
receiving, by the processor, supplemental investment information comprising at least one expert opinion, economic data item, or economic-data derivative spanning one or more of the plurality of available investments;
defining, by the processor, respective probability distributions over future returns for the plurality of available investments based on the historical returns;
modifying, by the processor, at least one of the respective probability distributions using Bayesian inference based on the supplemental investment information;
defining, by the processor and based on the respective probability distributions as modified and the investment objectives, a probabilistic objective function for obtaining a distribution of funds across the plurality of available investments according to the investment objectives;
converting, by the processor, the probabilistic objective function to quadratic unconstrained binary optimization (QUBO) representation comprising QUBO variables;
solving a QUBO problem defined by the QUBO variables with the quantum or quantum-inspired computer a plurality of times to generate a plurality of candidate QUBO solutions;
comparing the plurality of candidate QUBO solutions to select one of the plurality of candidate QUBO solutions as a selected QUBO solution; and
converting the selected QUBO solution to real variables representing the distribution of funds across at least a portion of the plurality of available investments according to the investment objectives.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Certain Methods of Organizing Human Activity”. The claim limitations delineated in bold above recite a fundamental economic practice, as they describe or set forth investment optimization. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as a fundamental economic practice, then it falls within the “Certain Methods of Organizing Human Activity” grouping of abstract ideas.
These limitations, under their broadest reasonable interpretation, cover performance of the limitation as “Mathematical Concepts”. The claim limitations delineated in bold above recite mathematical calculations as they describe or set forth calculating an optimized distribution of funds. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation as mathematical calculations, then it falls within the “Mathematical Concepts” grouping of abstract ideas.
The limitations are considered together as a single abstract idea for further analysis rather than as a plurality of separate abstract ideas to be analyzed individually.
Accordingly, the claim recites an abstract idea. The display, processor, and quantum/quantum-inspired computer in claim 1 is just applying generic computer components to the recited abstract limitations. The recitation of generic computer components in a claim does not necessarily preclude that claim from reciting an abstract idea. (Step 2A-Prong 1: YES. The claims recite an abstract idea)
Step 2A - Prong 2
This judicial exception is not integrated into a practical application. In particular, claim 1 recites the additional elements of: computer-implemented (preamble), display, processor, and quantum/quantum-inspired computer.
The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts no more than mere instructions to apply the exception using a generic computer component, as discussed in MPEP § 2106.05(f). The computer hardware/software is/are recited at a high-level of generality (i.e., as a generic processor performing a generic computer function) such that it amounts to generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h). Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea and are at a high level of generality. Therefore, claim 1 is directed to an abstract idea without a practical application. (Step 2A-Prong 2: NO. The additional claimed elements are not integrated into a practical application)
Step 2B
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, when considered separately and as an ordered combination, they do not add significantly more (also known as an “inventive concept”) to the exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a computer hardware amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. See Applicant’s specification para. [0008] about implementation using general purpose or special purpose computing devices and MPEP 2106.05(f) where applying a computer as a tool is not indicative of significantly more.
Additionally, the additional elements do not go beyond what is well-understood, routine, conventional activity in the field. For example:
Applicant’s specification [0008] describes (emphasis added) “As used herein, the term quantum-inspired computer, except where context is to the contrary, will be understood to refer to either a computer including a processor or co-processor with quantum-simulating gates, or a conventional computer running a program that simulates quantum computer behavior. For example, the server computer 202 may cause display of the GUI, for example via a browser, on a user computer 204, aggregate data received from the user and from networked historical and expert data sources 210, run the solver program 212, and/or run quantum-inspired software that solves the QUBO problem. Typically, the solver program runs the quantum or quantum-inspired computer, causing the QUBO problem to be run a plurality of times. Because quantum solutions are inherently uncertain, with respect to any one solution, running the QUBO problem multiple times ensures that a best solution is found. “ This serves as evidence that a conventional computer is employed and that repeated solving is the ordinary response to a known characteristic of quantum solvers.
Courts have recognized performing repetitive calculations as well-understood, routine, conventional activity. Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) (“The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims.”); MPEP 2106.05(d)(II)
Lang et al. (“Strategic Portfolio Optimization Using Simulated, Digital, and Quantum Annealing”, attached) discloses (emphasis added): “Commercially available quantum computers can also be split into two main classes: quantum annealers and quantum-gate computers. The former, manufactured for example by D-Wave Systems, are based upon the adiabatic theorem to perform calculations. Many of the (decision) problems currently thought to be intractable have an optimization version that can easily be mapped onto the native input format of quantum annealers, namely the Ising model (or the equivalent QUBO model). As of now, these models have become a quasi-standard for examining NP-complete and NP-hard problems in the realm of quantum computing. There is a plethora of known transformations for NP-complete/-hard problems to the QUBO model (see e.g., [2]), as well as guidelines on how to formulate QUBO models in general (see e.g., [3]). The performance of various QUBO formulations for certain problems has been subject to intensive investigations in the past couple of years (see e.g., [4,5,6,7,8,9,10,11]) and is still an ongoing effort.
Accordingly, these additional elements, do not change the outcome of the analysis, when considered separately and as an ordered combination. Thus, claim 1 is not patent eligible. (Step 2B: NO. The claims do not provide significantly more)
Dependent Claims
Dependent claims 2-13, 19-24, and 27 further define the abstract idea that is present in independent claim 1 and thus correspond to “Certain Methods of Organizing Human Activity” and “Mathematical Concepts” and hence are abstract for the reasons presented above. The dependent claims do not recite any further additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, the dependent claims are directed to an abstract idea without significantly more.
Thus, claims 1-13, 19-24, and 27 are not patent-eligible.
Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Glover et al. (“A Tutorial on Formulating and Using QUBO Models”, v6, 11/4/2019)
Lang et al. (“Strategic Portfolio Optimization Using Simulated, Digital, and Quantum Annealing”, 12/1/2022)
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to ERIC T WONG whose telephone number is (571)270-3405. The examiner can normally be reached 9am-5pm M-F.
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/ERIC T WONG/Primary Examiner, Art Unit 3693
ERIC WONG
Primary Examiner
Art Unit 3693
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