DETAILED ACTION
The present application is being examined under the pre-AIA first to invent provisions.
This action is responsive to claims filed 05/01/2026 and Applicant’s communication regarding application 18/717573 filed 05/01/2026.
Claims 17-36 have been examined with this office action.
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 17-36 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of optimization of portfolios without significantly more.
Subject Matter Eligibility Standard
When considering subject matter eligibility under 35 U.S.C. 101, it must be determined whether the claim is directed to one of the four statutory categories of invention, i.e., process, machine, manufacture, or composition of matter. If the claim does fall within one of the statutory categories, it must then be determined whether the claim is directed to a judicial exception (i.e., law of nature, natural phenomenon, and abstract idea), and if so, it must additionally be determined whether the claim is a patent-eligible application of the exception. If an abstract idea is present in the claim, any element or combination of elements in the claim must be sufficient to ensure that the claim amounts to significantly more than the abstract idea itself. Examples of abstract ideas include fundamental economic practices; certain methods of organizing human activities; an idea itself; and mathematical relationships/formulas. Alice Corporation Pty. Ltd. v.CLS Bank International, et al., 573 U.S. _ (2014) as provided by the interim guidelines FR 12/16/2014 Vol. 79 No. 241.
Analysis
Step 1, the claimed invention must be to one of the four statutory categories. 35 U.S.C. 101 defines the four categories of invention that Congress deemed to be the appropriate subject matter of a patent: processes, machines, manufactures and compositions of matter. In this case independent claim 17 and all claims which depend from it are directed toward a method and independent claim 35 and all claims which depend from it are directed toward a device. As such, claims 17 and 35 and all claims which depend therefrom fall within one of the four categories of invention deemed to be the appropriate subject matter. Independent claim 32 and all claims which depend from it are directed toward a computer program which does not fall within a statutory category (see additional 35 USC § 101 rejection below).
Step 2A Prong 1, Under Step 2 A, Prong 1 of the 2019 Revised § 101 Guidance, it is determined whether the claims are directed to a judicial exception such as a law of nature, a natural phenomenon, or an abstract idea (See Alice, 134 S. Ct. at 2355) by identify the specific limitation(s) in the claim that recites abstract idea(s); and then determine whether the identified limitation(s) falls within at least one of the groupings of abstract ideas enumerated in the 2019 PEG.
Specifically, claim 17 comprises inter alia the functions or steps of “A computer-implemented method for solving an optimization problem, comprising: encoding the optimization problem into an Ising-Hamiltonian model, wherein a ground state of the Ising-Hamiltonian model is a solution to the optimization problem;providing a cost function;providing constraints for the cost function; applying digitized counterdiabatic driving to a Hamiltonian encoding the cost function; providing a parameterized circuit design with a minimum depth; and executing a time evolution until the ground state of the Ising-Hamiltonian model is computed”.
Claim 32 comprises inter alia the functions or steps of “A computer program having program code for performing a method comprising the steps of: encoding an optimization problem into an Ising-Hamiltonian model, wherein a ground state of the Ising-Hamiltonian model is a solution to the optimization problem;providing a cost function;providing constraints for the cost function; applying digitized counterdiabatic driving to a Hamiltonian encoding the cost function; providing a parameterized circuit design with a minimum depth; and executing a time evolution until the ground state of the Ising-Hamiltonian model is computed; wherein the computer program is executed on at least one of a computer, a processor, a quantum-processing unit and a programmable hardware component”.
Claim 35 comprises inter alia the functions or steps of “A computation device comprising: an interface for communicating with a quantum-processing unit comprising one or more processors, wherein the one or processors are configured: to encode an optimization problem into an Ising-Hamiltonian model, wherein a ground state of the Ising-Hamiltonian model is a solution to the optimization problem;to provide a cost function;to provide constraints for the cost function; to apply digitized counterdiabatic driving to a Hamiltonian encoding the cost function; to provide a parameterized circuit design with a minimum depth; and to execute a time evolution until the ground state of the Ising-Hamiltonian model is computed”.
Those claim limits in bold are identified as claim limitations which recite the abstract idea, while those that are un-bolded are identified as additional elements.
The cited limitations as drafted are systems and methods that, under their broadest reasonable interpretation, covers performance of a method of organizing human activity, but for the recitation of the generic computer components. Further, none of the limitations recite technological implementations details for any of the steps but, instead, only recite broad functional language being performed by the generic use of at least one processor. Optimization of portfolios is a fundamental economic practice long prevalent in commerce systems. If a claim limitation, under its broadest reasonable interpretation, covers a fundamental economic principle or practice but for the general linking to a technological environment, then it falls within the organizing human activity grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2, Next, it is determined whether the claim is directed to the abstract concept itself or whether it is instead directed to some technological implementation or application of, or improvement to, this concept, i.e., integrated into a practical application. See, e.g., Alice, 573 U.S. at 223, discussing Diamond v. Diehr, 450 U.S. 175 (1981). The mere introduction of a computer or generic computer technology into the claims need not alter the analysis. See Alice, 573 U.S. at 223—24. “[T]he relevant question is whether the claims here do more than simply instruct the practitioner to implement the abstract idea on a generic computer.” Alice, 573 U.S. at 225.
In the present case, the judicial exception is not integrated into a practical application. The claim limitations are not indicative of integration into a practical application by claiming an improvement to the functioning of the computer or to any other technology or technical field. Further, the claim limitations are not indicative of integration into a practical application by applying or using the judicial exception in some other meaningful way.
In particular, the claims contain the following additional elements: a computer-implemented; a computer program having program code; a processor; a quantum-processing unit; a programmable hardware component; a computation device; an interface for communicating with a quantum-processing unit; providing a parameterized circuit design with a minimum depth. However, the specification description of the additional elements a computer-implemented ([0135]); a computer program having program code ([0079-0080]); a processor ([0072-0073]); a quantum-processing unit ([0072-0073]); a programmable hardware component ([0072-0073]); a computation device ([0072-0073]); an interface for communicating with a quantum-processing unit ([0073]); providing a parameterized circuit design with a minimum depth ([0019] [0041] [0048] [0092] [0118] “Since the NISQ devices can only implement circuits of limited depth…”); are at a high level of generality using exemplary language or as part of a generic technological environment and are functions any general purpose computer performs such that it amount no more than mere instruction to apply the exception to a particular technological environment. Further, none of the limitations recite technological implementations details for any of the steps but, instead, only recite broad functional language being performed by the generic use of at least one processor. Accordingly, these additional elements do not integrate the abstract idea into a practical application because it does not impose any meaning limits on practicing the abstract idea. Thus, the claim is directed toward an abstract idea.
Step 2B, the claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements when considered both individually and as an ordered combination do not amount to significantly more that the abstract idea(s). As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using a processor to perform the abstract idea(s) amounts to no more than mere instructions to apply the exaction using a generic computer component. Mere instruction to apply an exertion using a generic computer component cannot provide an inventive concept. These generic computer components are claimed at a high level of generality to perform their basic functions which amount to no more than generally linking the use of the judicial exception to the particular technological environment of field of use (Specification as cited above for additional elements) and further see insignificant extra-solution activity MPEP § 2106.05 I. A. iii, 2106.05(b), 2106.05(b) III, 2106.05(g). Thus, the claims are not patent eligible.
As for dependent claims 18-31, 33-34, and 36 these claims recite limitations that further define the same abstract idea using previously identified additional elements noted from the respective independent claims from which they depend. Therefore, the cited dependent claims are considered patent ineligible for the reasons given above.
Prior Art
Claim 25 overcomes the prior art of record such that none of the cited prior art reference’s disclosures can be applied to form the basis of a 35 USC § 102 rejection nor can they be combined to fairly suggest in combination, the basis of a 35 USC § 103 rejection when the limitations are read in the particular environment of the claims. Initially, the “optimization” within the claims is interpreted as “portfolio optimization” since examples described in the specification are narrowly described only for portfolios (Specification [Title] [Abstract] [0001] [0003] example starting in [0024] [0103]] example starting in [0109] [0135-0140]). The examiner has cited multiple prior art references which mention that an Ising-Hamiltonian model can be applied to the optimization of portfolio (see prior art made of record and not relied upon is considered pertinent to applicant's disclosure in the Conclusion section within this office action). However, none of the prior art references can be shown to teach “providing a parameterized circuit design with a minimum depth”. Here the examiner notes that, on its face, the claim limitation “providing a parameterized circuit design with a minimum depth” could be patent eligible subject matter. However, the specification ([0019] [0041] [0048] [0092] [0118]) does not provide 112(a) support for how a parameterized circuit is designed with a minimum depth beyond applying a noisy intermediate-scale quantum (NISQ) device ([0118] “Since the NISQ devices can only implement circuits of limited depth…”). Therefore, even though prior cannot be applied to the claims, the claims at present are not patent eligible subject matter since the technology is merely applied to the abstract idea (portfolio optimization) of the claimed invention. Therefore, the claims may be allowable if amended to overcome the rejection(s) under 35 U.S.C. 101, set forth in this Office action.
Response to Arguments
Applicant's arguments with regards to prior art have been fully considered and are not persuasive. Applicant's arguments with regards to patent eligibility have been fully considered but they are not persuasive.
EXAMINER’S RESPONSE TO APPLICANT REMARKS CONCERNING Claim Rejections - 35 USC § 101: Applicant's arguments with regards to 35 USC § 101 have been fully considered but are not persuasive. Regarding applicant's argument directed toward PTAB, Ex Parte Yudong Cao, No. 2024-002159, the application in the Yudong made an improvement to an underlying technology, whereas, the present application merely applies the technology to implement an abstract idea (portfolio optimization). Thus, Yudong is readily distinguishable from the present claims. Additionally, PTAB, Ex Parte Yudong Cao, No. 2024-002159 is not precedential and each case rises and falls on its own fact pattern and merits. The examiner, again, notes that, on its face, the claim limitation “providing a parameterized circuit design with a minimum depth” could be patent eligible subject matter. However, the specification ([0019] [0041] [0048] [0092] [0118]) does not provide 112(a) support for how a parameterized circuit is designed with a minimum depth beyond applying a noisy intermediate-scale quantum (NISQ) device ([0118] “Since the NISQ devices can only implement circuits of limited depth…”). As such, the examiner maintains the rejection.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Rose (PGPub No. 20120045136) teaches [0009] Another approach to quantum computation involves using the natural physical evolution of a system of coupled quantum systems as a computational system. This approach does not make critical use of quantum gates and circuits. Instead, starting from a known initial Hamiltonian … "Quantum Adiabatic Evolution Algorithms versus Simulated Annealing"
[0021] Quantum annealing is a computation method that may be used to find a low-energy state, typically preferably the ground state, of a system … may be encoded in the ground state of a system and therefore quantum annealing may be used to find the solution to such hard problems.
[0022] As mentioned previously, adiabatic quantum computation typically involves evolving a system from a known initial Hamiltonian (the Hamiltonian being an operator whose eigenvalues are the allowed energies of the system) to a final Hamiltonian by gradually changing the Hamiltonian. A simple example of an adiabatic evolution
[0022] As mentioned previously, adiabatic quantum computation typically involves evolving a system from a known initial Hamiltonian (the Hamiltonian being an operator whose eigenvalues are the allowed energies of the system) to a final Hamiltonian by gradually changing the Hamiltonian. A simple example of an adiabatic evolution is:
where H.sub.i is the initial Hamiltonian, H.sub.f is the final Hamiltonian, H.sub.e is the evolution or instantaneous Hamiltonian, and s is an evolution coefficient which controls the rate of evolution. The coefficient s goes from 0 to 1, such that at the beginning of the evolution process the evolution Hamiltonian is equal to the initial Hamiltonian and at the end of the process the evolution Hamiltonian is equal to the final Hamiltonian. If the evolution is too fast, then the system can be excited to a higher state, such as the first excited state. In the present systems, methods, and apparatus, an "adiabatic" evolution is considered to be an evolution that satisfies the adiabatic condition, wherein the adiabatic condition is expressed as:
where {dot over (s)} is the time derivative of s, g(s) is the difference in energy between the ground state and first excited state of the system (also referred to herein as the "gap size") as a function of s, and .delta. is a coefficient much less than 1.
[0023] The evolution process in adiabatic quantum computing may sometimes be referred to as annealing. The rate that s changes, sometimes referred to as an evolution or annealing schedule, is normally constant and slow enough that the system is always in the instantaneous ground state of the evolution Hamiltonian during the evolution,…
[0026] Optimization problems are problems for which one or more objective functions are minimized or maximized over a set of variables, sometimes subject to a set of constraints. For example, financial portfolio selection, …
[0029] Graphs are an effective way of representing relationships among entities, and are commonly used in areas such as economics, mathematics, natural sciences and social sciences. While some graphs are simply used as a visual aid, others can be used to represent a problem to be solved. In fact, mapping a problem into graph format can sometimes help solve the problem. Instances of such problems include stock portfolio selection, microwave tower placement, delivery route optimization and other large-scale problems. Quantum computers can be used to solve such problems by way of translation of the original problem to a form that the quantum computer can solve. One method of doing this is through graph embedding, where a graph composed of a set of vertices and a set of edges that connect various vertices, representing a problem to be solved, is mapped into the qubit structure of a quantum processor and then solved.
Macready (US Patent No. 7877333) teaches … Another approach to quantum computation, involves using the natural physical evolution of a system of coupled quantum systems as a computational system. …"Quantum Adiabatic Evolution Algorithms versus Stimulated Annealing" … Optimization problems are problems for which one or more objective functions are minimized or maximized over a set of variables, sometimes subject to a set of constraints. For example, … financial portfolio selection….
Wang (U.S. Patent No. 11681774) teaches method and system are provided for solving combinatorial optimization problems. A classical algorithm provides an approximate or “seed” solution which is then used by a quantum circuit to search its “neighborhood” for higher-quality feasible solutions. A continuous-time quantum walk (CTQW) is implemented on a weighted, undirected graph that connects the feasible solutions. An iterative optimizer tunes the quantum circuit parameters to maximize the probability of obtaining high-quality solutions from the final state. The ansatz circuit design ensures that only feasible solutions are obtained from the measurement. The disclosed method solves constrained problems without modifying their cost functions, confines the evolution of the quantum state to the feasible subspace, and does not rely on efficient indexing of the feasible solutions as some previous methods require
… solve this problem on a quantum device, ƒ is encoded into an n-qubit Ising Hamiltonian … In another embodiment, the problem solved may be a Portfolio Optimization problem.
Pistoia (U.S. Patent No. 11556830) teaches systems and methods that address an optimized method in the area of optimization by showing how to generate Ising Hamiltonians automatically for a large class of optimization problems specially handling the constraints. The innovation facilitates qubit reduction in connection with an optimization problem by representing respective integer variables as linear sums of binary variables, wherein depending on the representation, additional equality constraints are provided. Additional slack variables are introduced to change inequality constraints to equality constraints. Based on the equality constraints, an unconstrained pseudo-boolean optimization problem is created. The pseudo-boolean optimization problem is quadratized to generate a quadratic pseudo-boolean function (QPBF) and the number of variables in the QPBF is reduced to facilitate qubit reduction. This results in an automated, problem instance dependent qubit reduction procedure. Thus, this innovation provides an effective method to solve such class of optimization problems by formulating efficient Ising Hamiltonians for integer optimization problems followed by an automated qubit reduction procedure to get the final Ising Hamiltonian, which can be solved using a quantum optimization algorithm.
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 extension fee 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 date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Gregory A Pollock whose telephone number is (571) 270-1465. The examiner can normally be reached M-F 8 AM - 4 PM.
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/Gregory A Pollock/Primary Examiner, Art Unit 3691
05/21/2026
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