DETAILED ACTION
Claims 1-3, 5-10, and 12-20 are pending. Claims 4 and 11 are cancelled.
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 .
Response to Arguments
Applicant’s arguments, filed 5/7/26, have been fully considered but are not persuasive, except where noted below.
Applicant’s comments on the drawing objection (page 7) are noted but are not persuasive because the drawings continue to exhibit the faults indicated in the last office action. Below is an example showing some of the illegible elements (marked) in the replacement sheet drawings of Fig. 6, filed 5/8/2026.
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Applicant’s arguments regarding the rejections under 35 U.S.C. § 112 of claims 3, 10 and 17 (pages 7-8) are persuasive and these claims are no longer rejected under 35 U.S.C. § 112.
Applicant argues, regarding the rejections under 35 U.S.C. § 112 of claims 2, 9 and 16, that ‘With respect to claim 2, the phrase "the feasible space volume is determined as an approximation for a current time" refers to determining an approximate value of the feasible space volume corresponding to the current state of the system at the current time. That is, the feasible space volume approximates the volume of the controller's feasible space at the present time of the system’ (page 8).
It is respectfully submitted that while this may be a reasonable and clearer definition of the claimed subject matter, the claims have not been amended to include this wording and thus remain indefinite. Note that it is improper to import limitations from the specification into the claims, see MPEP 2111. Applicant’s argument is therefore not persuasive.
Applicant argues, with respect to the rejection under 35 U.S.C. § 101, that ‘Claim 1 requires operations that rely on a system state and dynamics model and a control optimization executed by a controller. These elements inherently require computerized control computation rather than human mental reasoning… These operations are not practically performable in the human mind’ (page 9).
It is respectfully submitted that using a computer is considered merely applying the exception with generic computer technology, see MPEP 2106.04(a)(2) III C; the recitation of a generic controller is considered generally linking the use of the judicial exception to a particular well-understood, routine and conventional technological environment or field of use, see MPEP 2106.05(h)) and the detailed rejection below under 35 U.S.C. § 101. Applicant’s argument is therefore not persuasive.
Applicant argues that ‘Courts have repeatedly recognized that mathematical operations that must be performed by a computer to control a technological system are not mental processes’, cites McRO and Thales and states ‘Similarly, claim 1 is directed to a control architecture for determining control inputs to a controller based on feasible space analysis, which is a technological process implemented by a computing device.’ (page 9).
It is respectfully submitted that the courts have found claims that merely recite executing mathematical operations on a computer, without significantly more, to be ineligible under 35 U.S.C. § 101, see MPEP 2106.04. In addition, no evidence or reasoned argument is provided as to why the instant claims comprise significantly more than an abstract idea as determined by the courts for McRO or Thales. Applicant’s argument is therefore not persuasive.
Applicant argues that the claims integrate the alleged abstract concept into a practical application because ‘The final step of executing a control input for the controller ties the claimed method directly to operation of a physical control system’ (page 10).
It is respectfully submitted that claim 1 broadly recites ‘executing a control input for the controller based upon, at least in part, the new control optimization’, i.e. there is no actual claimed control performed, including physical control — an input is merely provided to a very broadly recited generic ‘controller’. Applicant’s argument is therefore not persuasive.
Applicant cites Diamond v. Diehr and Thales and states ‘Like the claims in Diehr and Thales, claim 1 applies mathematical reasoning to control a technological system by determining and executing control inputs. Thus, the claim integrates any alleged abstract concept into a practical application involving operation of a controller’ (page 10).
It is respectfully submitted that the claims in Diamond v. Diehr differ substantially from the instant claims because in Diamond v. Diehr a specific physical action involving automatically opening a press is performed based on the calculations. The instant claims do not recite such a specific physical action. Furthermore, the claims in Thales differ very substantially from the instant claims because the Thales claims involve a very specific arrangement of inertial sensors that transmit signals and not just a mathematical calculation. The instant claims do not recite such specific claim elements. Applicant’s argument is therefore not persuasive.
Applicant argues that the claim elements involve a specific control architecture and the associated steps ‘collectively implement a closed-loop control methodology’ (pages 10-11).
It is respectively submitted that the recitation of a generic ‘controller’ does not constitute a specific ‘control architecture’. Further, the claims do not recite closed-loop control, at least, because no control is actually performed — a control input is merely provided to a generic controller. Applicant’s argument is therefore not persuasive.
Applicant argues that the claimed method improves operation of optimization-based controllers (page 11).
It is respectfully submitted that improving an algorithm to determine a control input is merely an improvement to an abstract idea and eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) as cited in MPEP 2106.04, i.e. an improvement to the abstract idea itself (determining/calculating a control input) is still merely an abstract idea. Applicant’s argument is therefore not persuasive.
Applicant argues that ‘"deriving a new constraint that restricts a rate of change of the feasible space volume."… demonstrates that the claimed method is directed to controlling the evolution of the feasible space of the optimization problem, which is a technical mechanism used in optimization-based control systems to prevent infeasibility… further ties the claimed method to a specific technological control technique’ (page 11).
It is respectfully submitted that deriving a new constraint is a mental process that is not actually used to perform control, as indicated above. Therefore the claim is considered to recite a specific control algorithm but not a specific method of controlling a device, for example. Applicant’s argument is therefore not persuasive.
Applicant’s summary of the above arguments (page 12) is noted, however, each of these arguments been found to be unpersuasive and has been rebutted above.
Applicant’s arguments regarding 35 U.S.C. § 103 (pages 12-13) are moot because the claims are no longer rejected under that statute.
For at least these reasons, the rejection of the claims is maintained.
Drawings
The drawings are objected to as failing to comply with 37 CFR 1.84(l) because the character of the lines and text in Figures 1 and 3-6 do not conform to the required standard — every line, number, and letter must be durable, clean, black (except for color drawings), sufficiently dense and dark, and uniformly thick and well-defined. Corrected drawing sheets in compliance with 37 CFR 1.121(d) are required in reply to the Office action to avoid abandonment of the application. Any amended replacement drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is being amended. Each drawing sheet submitted after the filing date of an application must be labeled in the top margin as either “Replacement Sheet” or “New Sheet” pursuant to 37 CFR 1.121(d). If the changes are not accepted by the examiner, the applicant will be notified and informed of any required corrective action in the next Office action. The objection to the drawings will not be held in abeyance.
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.
Claim(s) 2, 9 and 16 is/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 pre-AIA the applicant regards as the invention.
With regard to claim 2, this claim recites ‘the feasible space volume is determined as an approximation for a current time’ and it is not clear if the feasible space volume is determined as an approximation at current time or if the feasible space volume is determined as an approximation representing/indicating a current time.
With regard to claim 9, this claim recites similar limitations to claim 2 and is rejected under the same rationale.
With regard to claim 16, this claim recites similar limitations to claim 2 and is rejected under the same rationale.
The dependent claims are also rejected under 35 U.S.C. § 112 as they inherit all of the characteristics of the claim from which they depend and none of the dependent claims provide a cure for the indefiniteness of the parent claims.
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.
Claim(s) 1-3, 5-10, and 12-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to the abstract idea (mental process) of determining a feasible space volume and a control optimization based on the feasible space volume.
Claim 1 recites a computer-implemented method, i.e. a process, which is a statutory category of invention. The claim recites:
determining a feasible space volume based upon, at least in part, the system state and dynamics model, wherein determining the feasible space volume includes deriving a new constraint that restricts a rate of change of the feasible space volume;
determining a new control optimization based upon, at least in part, the feasible space volume that may be performed in the human mind, or by a human using a pen and paper. Thus the claim recites an abstract idea (mental processes), see MPEP 2106.04(a).
This judicial exception is not integrated into a practical application because the additional elements, i.e. a computer-implemented method (applying the exception with generic computer technology, see MPEP 2106.04(a)(2) III C), a controller (generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h)), obtaining, by a computing device, a system state and dynamics model; obtaining user constraints in a controller for a control optimization; (insignificant extra-solution elements – mere data gathering, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d))) and executing a control input for the controller based upon, at least in part, the new control optimization (insignificant extra-solution elements – merely using generic computer technology, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d) e.g. receiving or transmitting data over a network) do not impose any meaningful limits on practicing the abstract idea. The claim is therefore directed to an abstract idea.
Note that controllers are well-understood, routine and conventional, see for example Hashimoto et al. U.S. Patent Publication No. 20060279246 [0005] or Hiratsuka et al. U.S. Patent Publication No. 20040010344 [0036, 0065].
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, a computer-implemented method (applying the exception with generic computer technology, see MPEP 2106.04(a)(2) III C), a controller (generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h)), obtaining, by a computing device, a system state and dynamics model; obtaining user constraints in a controller for a control optimization; (insignificant extra-solution elements – mere data gathering, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d))) and executing a control input for the controller based upon, at least in part, the new control optimization (insignificant extra-solution elements – merely using generic computer technology, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d) e.g. receiving or transmitting data over a network) are not considered significantly more. Considering the additionally elements individually and in combination and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Thus the claim is not patent eligible.
Claim 2 recites ‘the feasible space volume is determined as an approximation for a current time’ (mental process). Thus this claim recites an abstract idea.
Claim 3 recites ‘the feasible space volume is determined as a future time’ (mental process). Thus this claim recites an abstract idea.
Claim 5 recites ‘augmenting the user constraints with the new constraint’ (mental process). Thus this claim recites an abstract idea.
Claim 6 recites ‘deriving an update law for parameters in the user constraints such that the feasible space volume is one of increased or decreased within bounds’ (mental process). Thus this claim recites an abstract idea.
Claim 7 recites ‘updating the parameters in the user constraints based upon, at least in part, the update law’ (mental process). Thus this claim recites an abstract idea.
Claim 8 recites a computer program product residing on a non-transitory computer readable storage medium having a plurality of instructions stored thereon, i.e. an article of manufacture, which is a statutory category of invention. However, the method performed by the computer program product is similar to that recited in claim 1 and is rejected under the same rationale. Note that a computer program product residing on a computer readable storage medium having a plurality of instructions stored thereon and processors are considered merely applying the exception with generic computer technology and not significantly more – see MPEP 2106.04(a)(2) III C.
Claims 9-10 and 12-14 recite similar limitations to claims 2-3 and 5-7 and are rejected under the same respective rationales.
Claim 15 recites a computing system including one or more processors and one or more memories configured to perform operations, i.e. a machine, which is a statutory category of invention. However, the operations performed by the computer system are similar to those recited in claim 1 and are rejected under the same rationale. Note that processors and one or more memories are considered merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C.
Claims 16-17 and 18-20 recite similar limitations to claims 2-3 and 5-7 and are rejected under the same respective rationales.
Note that any citations to specific, pages, columns, lines, or figures in the prior art references and any interpretation of the reference should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP 2123.
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 BERNARD G. LINDSAY whose telephone number is (571)270-0665. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:30 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mohammad Ali can be reached on (571)272-4105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BERNARD G LINDSAY/
Primary Examiner, Art Unit 2119
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