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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 09 March 2026 has been entered.
Election/Restrictions
During a telephone conversation with Aina Breen Reg No. 81592 of Harrity & Harrity on 11 March 2026 a provisional election was made without traverse to prosecute the invention of the optimization of a hardware machine, claims 1-10. Affirmation of this election must be made by applicant in replying to this Office action. Claims 11-30 withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
Status of Claims
In reply filed on 09 March 2026, the following changes have been made: amendments to claims 1, 10, 11, and 16.
Claims 11-20 have been withdrawn from consideration.
Claims 1-10 are currently pending and have been examined.
Notice to Applicant
Examiner acknowledges [0137] of the specification which discloses the following: “computer-readable storage medium, as that term is used in the present disclosure, is not to be construed as storage in the form of transitory signals per se, such as radio waves or other freely propagating electromagnetic waves, electromagnetic waves propagating through a waveguide, light pulses passing through a fiber optic cable, electrical signals communicated through a wire, and/or other transmission media.”
Claim Rejections - 35 USC § 112(a)
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the
invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. Amended claim 1 now specifies performing actions for a hardware machine that includes motion at a particular speed, motion at a particular acceleration, or motion in a particular direction. Examiner points out the specification does not disclose how such actions are actually performed and instead discloses a mere suggestion of a desired action in a Tables 6 & 7. The disclosure must demonstrate that the inventor was in "possession" of the claimed invention, not just suggesting a possibility. A mere suggestion of a solution, concept, or desired function is generally not sufficient to satisfy the written description requirements of 35 U.S.C. § 112(a) for actually performing an action. A patent application must explain how the invention intends to achieve the claimed function. MPEP 2161.01 notes, “When examining computer-implemented functional claims, examiners should determine whether the specification discloses the computer and the algorithm (e.g., the necessary steps and/or flowcharts) that perform the claimed function in sufficient detail such that one of ordinary skill in the art can reasonably conclude that the inventor possessed the claimed subject matter at the time of filing.” Accordingly, a rejection for lack of written description is necessary. Dependent claims 2-10 inherit the deficiency of claim 1 and are rejected for the same reason.
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.
The claim(s) recite(s) subject matter within a statutory category as a process (claims 1-10).
INDEPENDENT CLAIMS
Step 2A Prong 1
Claim 1 recites steps of
sequentially performing, by one or more processors of a computer system, iterations t (t=0, 1, . . . , T), wherein T≥2,
wherein performing iteration t (t = 0) includes receiving input comprising: C= a set of N features (C1, . . . , CN) wherein N≥3;
A= a set of N candidate exploration-exploitation distribution parameter values αi (i.e., α1, . . . αN);
CV= a set of V features within C;
CP= a pool of P features within C such that C=CV+CP, N=V+P, V≥1, and P≥2;
U= a number of features dynamically selected from CP in each iteration t of an iterative process such that U<P where CU(t) is defined as a set of the U features selected at iteration t;
λ(t) at iteration t;
constant w such that 0≤w≤1; and
a set of K arms such that K≥2; and
wherein performing iteration t (t=1, . . . , T) comprises:
generating a vector cV(t) of dimension N from V values received from an external system that is external to the computer system, wherein cV(t) includes the V values of the respective V features in CV;
selecting distribution parameter αt from (α1, . . . αN) by having the selected αt maximize a function of α that includes a dependence on cV(t) and θα, wherein θα is a measure of a probability of success at each α∈A as measured by rewards observed in response to selections of arms in the set of K arms;
selecting a set CU(t) of the U features from CP by having the selected U features maximize a function that depends on cV(t) and αt;
receiving, from the external system, values cU+V(t) of respective features in CU+V(t), wherein CU+V(t) is a vector of dimension N and includes CU∪CV(t);
selecting an arm k(t) from the K arms, by having the selected arm k(t) maximize a function that depends on cU+V(t) and αt;
sending a first electromagnetic signal to a hardware machine, the first electromagnetic signal including the selected arm k(t) and directing the hardware machine to perform a first action of the selected arm k(t), wherein the first action comprises one or
more of:
motion at a particular speed,
motion at a particular acceleration, or
motion in a particular direction;
performing, by the hardware machine and in response to receiving the first
electromagnetic signal, the first action of the selected arm k(t);
receiving an identification of a reward rk(t) resulting from the hardware machine performing the action of the selected arm k(t), wherein 0≤rk(t)≤1;
updating parameters for the next iteration t+1 if t<T, the parameters being updated including parameters being updated in dependence on rk(t), αt, or both rk(t) and αt, wherein updating the parameters for the next iteration causes the
hardware machine to perform a second action that is different from the first action;
sending a second electromagnetic signal to the hardware machine, the second electromagnetic signal directing the hardware machine to perform the second action based on the updated parameters; and
performing, by the hardware machine, the second action, wherein the second action comprises one or more of:
motion at a different speed than the particular speed,
motion at a different acceleration than the particular acceleration, or
motion in a different direction than the particular direction.
These steps of optimizing an exploration-exploitation distribution parameter within a multi-armed bandit process, as drafted, under the broadest reasonable interpretation, includes mathematical calculations and mathematical formulas or equations but for recitation of generic computer components in light of the 2024 USPTO AI Guidance. That is nothing in the claim element precludes the italicized portions from reciting mathematical calculations and mathematical formulas or equations through finding the optimal exploration of the contextual bandit algorithm (which is a first step toward the automation of the multi-armed bandit algorithm). This could be analogized to using an algorithm for determining the optimal number of visits by a business representative to a client. The italicized portions also, as drafted, under the broadest reasonable interpretation, fall under methods of organizing human activity. That is, nothing in the claim element precludes the italicized portions from performing fundamental economic practices or principles pertaining to optimizing business or resource allocation by iteratively selecting U features and k(t) arms. This could be analogized to performing calculations (even iterative ones) to optimize a business strategy. If a claim limitation, under its broadest reasonable interpretation, covers performance as mathematical calculations and mathematical formulas or equations; and, covers performance as organizing human activity but for the recitation of generic computer components, then it falls within the “Mathematical Concepts” and “Methods of Organizing Human Activity” grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2
This judicial exception is not integrated into a practical application. In particular, the additional elements, non-italicized portions identified above for claim 1, does not integrate the abstract idea into a practical application, other than the abstract idea per se, because the additional elements amount to no more than limitations which:
amount to mere instructions to apply an exception (such as recitation of by one or more processors of a computer system; from an external system that is external to the computer system; from the external system; directing the hardware machine to perform a first action […], wherein the first action comprises one or more of: motion at a particular speed, motion at a particular acceleration, or motion in a particular direction; performing, by the hardware machine […] the first action; from the hardware machine performing the action; causes the hardware machine to perform a second action that is different from the first action; the second electromagnetic signal directing the hardware machine to perform the second action; and, performing, by the hardware machine, the second action, wherein the second action comprises one or more of: motion at a different speed than the particular speed, motion at a different acceleration than the particular acceleration, or motion in a different direction than the particular direction amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f))
add insignificant extra-solution activity to the abstract idea (such as recitation of receiving […] values cU+V(t) of respective features in CU+V(t); sending a first electromagnetic signal to a hardware machine; receiving the first electromagnetic signal; receiving an identification of a reward rk(t); and, sending a second electromagnetic signal to the hardware machine amounts to mere data gathering and output since it does not add meaningful limitations to the receiving and sending actions performed, see MPEP 2106.05(g))
Each of the above additional elements therefore only amounts to mere instructions to implement functions within the abstract idea using generic computer components or other machines within their ordinary capacity, and also add insignificant extra-solution activity to the abstract idea. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. These elements are therefore not sufficient to integrate the abstract idea into a practical application. Therefore, the above claims, as a whole, are directed to an abstract idea.
Step 2B
The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to discussion of integration of the abstract idea into a practical application, the additional elements amount to no more than mere instructions to apply an exception and also add insignificant extra-solution activity to the abstract idea. Additionally, the additional limitations, other than the abstract idea per se, amount to no more than limitations which:
amount to mere instructions to apply an exception in particular fields such as recitation of by one or more processors of a computer system; from an external system that is external to the computer system; from the external system; directing the hardware machine to perform a first action […], wherein the first action comprises one or more of: motion at a particular speed, motion at a particular acceleration, or motion in a particular direction; performing, by the hardware machine […] the first action; from the hardware machine performing the action; causes the hardware machine to perform a second action that is different from the first action; the second electromagnetic signal directing the hardware machine to perform the second action; and, performing, by the hardware machine, the second action, wherein the second action comprises one or more of: motion at a different speed than the particular speed, motion at a different acceleration than the particular acceleration, or motion in a different direction than the particular direction, e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f);
amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields such as recitation of receiving […] values cU+V(t) of respective features in CU+V(t); sending a first electromagnetic signal to a hardware machine; receiving the first electromagnetic signal; receiving an identification of a reward rk(t); and, sending a second electromagnetic signal to the hardware machine, e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i).
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 computer implementation.
DEPENDENT CLAIMS
Step 2A Prong 1
Dependent claims recite additional subject matter which further narrows or defines the abstract idea embodied in the claims (such as claims 2-10 particular aspects for optimizing an exploration-exploitation distribution parameter within a multi-armed bandit process such as
[Claim 2] randomly sampling θα from a Beta distribution Beta(Sα(t−1), Fα(t−1) for each α∈A, wherein Sα(t−1) and Fα(t−1) denote a current total number of successes and failures, respectively, as measured by the rewards observed in response to the selections of arms in the set of K arms;
computing pt,α, wherein pt,α depends linearly on a and non-linearly on cV(t); and
selecting αt from α∈A to maximize (wθα+(1−w)pt,α);
[Claim 3] computing Θα=Aα −1*bα; and
computing pt,a=Θα T cV(t)+αi [((cV(t))T Aα −1 cV(t)]1/2, wherein Aa is an N×N matrix and bα is vector of order N, and wherein updating the parameters for the next iteration comprises updating Aα and bα;
[Claim 4] randomly sampling θi, for each i of Ci∈CP, from a normal distribution N({circumflex over (θ)}i, αt 2Bi −1) wherein {circumflex over (θ)}i is a vector of order N and Bi is an N×N matrix, and wherein said updating the parameters for the next iteration comprises updating {circumflex over (θ)}i and Bi (i=1, . . . , N); and
selecting CU(t) from Ci U to maximize Σi∈{i} cV(t)Tθi, wherein Ci U=U features Ci in CP and {i}=indexes i of the U features Ci in CP;
[Claim 5] randomly sampling μk for k=1, . . . , K from a normal distribution N({circumflex over (μ)}k, αt 2Ak −1), wherein {circumflex over (μ)}k is a vector of order N and Ak is an N×N matrix, and wherein updating the parameters for the next iteration comprises updating {circumflex over (μ)}k and Ak ; and
selecting the arm k(t) from the K arms to maximize cU+V(t)Tμk;
[Claim 6] wherein the hardware machine is a robotic arm configured to perform real-time surgery; and wherein updating the parameters for the next iteration changes a speed of motion or a direction of motion of the robotic arm;
[Claim 7] wherein the hardware machine is a self-navigating
vehicle; and wherein updating the parameters for the next iteration changes a direction of motion or an acceleration of the self-navigating vehicle;
[Claim 8] wherein the hardware machine is an Application-Specific Integrated Circuit (ASIC), a Field-Programmable Gate Array (FPGA), a Neural Processing Unit (NPU), a Tensor Processing Unit (TPU), Graphics Processing Unit (GPU), or Digital Signal Processor (DSP);
[Claim 9] wherein the external system comprises the hardware machine;
[Claim 10] wherein said transmitting the first signal comprises transmitting the first electromagnetic signal indirectly to the hardware machine in the external system via a computing device in the external system, wherein the computing device is configured to receive the first electromagnetic signal and to subsequently send the first electromagnetic signal to the hardware machine;
these italicized portions are mathematical concepts since they merely describe an act of calculating using mathematical methods to determine a variable or number, and also describe mathematical relationship(s) between variables or numbers).
Step 2A Prong 2
Dependent claims 6-10 recite additional subject matter which amount to limitations consistent with the additional elements in the independent claims (the additional limitations in claim 9 (wherein the external system comprises the hardware machine); and, claim 10 (via a computing device in the external system) amounts to invoking computers as a tool to perform the abstract idea, see MPEP 2106.05(f); add insignificant extra-solution activity to the abstract idea such as claim 10 (wherein said transmitting the first signal comprises transmitting the first electromagnetic signal indirectly to the hardware machine in the external system […], wherein the computing device is configured to receive the first electromagnetic signal and to subsequently send the first electromagnetic signal to the hardware machine) amounts to mere data gathering and output since it does not add meaningful limitations to the sending, transmitting, and receiving actions performed, see MPEP 2106.05(g); and, claim 6 (wherein the hardware machine is a robotic arm configured to perform real-time surgery; and wherein updating the parameters for the next iteration changes a speed of motion or a direction of motion of the robotic arm), claim 7 (wherein the hardware machine is a self-navigating vehicle; and wherein updating the parameters for the next iteration changes a direction of motion or an acceleration of the self-navigating vehicle), and claim 8 (wherein the hardware machine is an Application-Specific Integrated Circuit (ASIC), a Field-Programmable Gate Array (FPGA), a Neural Processing Unit (NPU), a Tensor Processing Unit (TPU), Graphics Processing Unit (GPU), or Digital Signal Processor (DSP)) amounts to generally linking the abstract idea to a particular technological environment or field of use; as can be seen, employing hardware machines to execute an abstract idea, even when limiting the use of the idea to one particular environment, does not integrate the judicial exception into a practical application, see MPEP 2106.05(f))). Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea.
Step 2B
Dependent claims 9 & 10 recite additional subject matter which, as discussed above with respect to integration of the abstract idea into a practical application, amount to invoking computers as a tool to perform the abstract idea, e.g., a commonplace business method or mathematical algorithm being applied on a general-purpose computer, Alice Corp. v. CLS Bank, MPEP 2106.05(f). Also, see [0130] which provides examples of off-the-shelf input devices, [0139] which provides examples of off-the-shelf computer devices, and [0137] & [0143] which provides examples of types of memory. Dependent claim 10 amount to elements that have been recognized as well-understood, routine, and conventional activity in particular fields, e.g., receiving or transmitting data over a network, Symantec, MPEP 2106.05(d)(II)(i). Dependent claims 6-8 amounts to generally linking the abstract idea to a particular technological environment or field of use, e.g., simply an attempt to limit the use of the abstract idea to a particular technological environment, Electric Power Group, LLC v. Alstom S.A., MPEP 2105.05(h). There is no indication that these additional elements improve the functioning of a computer or improves any other technology. Their collective functions merely provide generic computer implementation. Therefore, in consideration of all the facts, the present invention is clearly not a patent-eligible invention under USC 101. Additionally, it is evident that the present invention monopolizes the judicial exception since it covers any computer-driven decision-making context with this particular mathematical optimization; thus restricting further innovation in this area without offering a specific, technical improvement to how the computer actually operates; “monopolization of those tools through the grant of a patent might tend to impede innovation more than it would tend to promote it.” Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980 (quoting Myriad, 569 U.S. at 589, 106 USPQ2d at 1978 and Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012)).
Response to Arguments
The arguments filed on 09 March 2026 have been considered, but are not fully persuasive.
Regarding the USC 101 rejection, applicant asserts that the claims are patent eligible under USC 101 and requests withdrawal of the USC 101 rejection.
Examiner disagrees with the applicant’s argument. Examiner asserts the present amendments/claim construction does not advance prosecution to help overcome USC 101. Applicant is merely using computers to improve upon the judicial exception. The invention does not describe a new way for the computer itself to function. Applicant’s current claims aren’t meaningful and do not help integrate the judicial exception into a practical application. The examiner asserts the following facts that the applicant won’t be able to dispute:
1) the invention does NOT involve a novel algorithm or data structure that significantly improves the computer's functionality,
2) the invention does NOT involve a new hardware component or configuration that works with the computer to achieve a specific technical benefit, and 3) the computer is NOT used in a completely new way demonstrating a significant technical advancement.
The claim appears directed to the result (achieving a better outcome via a selection strategy) rather than a technical solution to a technical problem. Simply sending data to a generic machine does not turn a business method into a technical invention, as the content of the signal is just the output of an abstract algorithm. It can be seen that the claim does not describe improving the machine doing the work, but rather using the machine to perform an abstract optimization task faster. To show an involvement of a computer assists in improving technology, the claims must recite details regarding how a computer aids the method, the extent to which the computer aids the method, or the significance of a computer to the performance of the method. Merely adding generic computer components to perform the method is not sufficient. Thus, the claim must include more than mere instructions to perform the method on a generic component or machinery to qualify as an improvement to an existing technology (MPEP 2106.05(a)(II)). The "significantly more" standard has also not been satisfied. The applicant has not demonstrated that their invention is inventive and thus the present invention is still not patent-eligible under USC 101. Therefore, the USC 101 rejection is strongly maintained.
Prior Art Cited but not Relied Upon
Sharaf, A., & Daumé III, H. (2021, May). Meta-learning effective exploration strategies for contextual bandits. In Proceedings of the AAAI Conference on Artificial Intelligence (Vol. 35, No. 11, pp. 9541-9548).
This art is relevant since it discloses a meta-learning algorithm called MELEE that is conceptually similar to COmbLINUCB as it aims to automate how the decision is explored rather than relying on a fixed parameter.
Liu, K., Huang, H., Zhang, W., Hariri, A., Fu, Y., & Hua, K. (2021). Multi-armed bandit based feature selection. In Proceedings of the 2021 SIAM International Conference on Data Mining (SDM) (pp. 316-323). Society for Industrial and Applied Mathematics.
This art is relevant since it discloses finding the best subset of features as a multi-armed bandit task.
Wen, Z., Kveton, B., & Ashkan, A. (2015, June). Efficient learning in large-scale combinatorial semi-bandits. In International Conference on Machine Learning (pp. 1113-1122). PMLR.
This art is relevant since it discloses an algorithm of the same name CombLinUCB.
Bouneffouf, Djallel. "Multi-Armed Bandit Problem and Application." (2023).
This art is relevant since it discloses the entirety of the applicant’s invention.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to WINSTON FURTADO whose telephone number is (571)272-5349. The examiner can normally be reached Monday-Friday 8:00 AM to 4:00 PM EST.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mamon Obeid can be reached at (571) 270-1813. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WINSTON R FURTADO/Examiner, Art Unit 3687
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