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 .
Claims 1-20 have been presented for examination.
Information Disclosure Statement
The listing of references in the specification is not a proper information disclosure statement. 37 CFR 1.98(b) requires a list of all patents, publications, or other information submitted for consideration by the Office, and MPEP § 609.04(a) states, "the list may not be incorporated into the specification but must be submitted in a separate paper." Therefore, unless the references have been cited by the examiner on form PTO-892, they have not been considered.
Specification
The disclosure is objected to because of the following informalities:
Applicants have included their IDS list in their specification which is improper for the reason stated above.
Applicant has included known prior in their specification and not included in their BACKGROUND section. Specifically, applicant describes prior art to Fleeman in paragraphs 00108, 00110, and 00114-00115; and Bowcutt and Allen in paragraph 00109. There may also be additional instances and applicant should include all known prior art into their BACKGROUND section so that prior art can be easily recognized rather then buried in the specification.
Appropriate correction is required.
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.
Claims 1-20 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 applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, it is claimed that “receiving performance metrics… as stochastic variables” and thereafter recites “executing first order physics-based engineering equations of said performance metrics”. Applicants’ specification indicates that stochastic variables include “design parameters (e.g., accounting information, inventory management information, and manufacturing information parameters)” [00060], “design parameters (e.g., aerodynamic, propulsion, weight, and trajectory parameters)” [00063]. The specification also implies that equations are also stochastic variables by reciting “the Breguet range equation is the performance metric” [00116] since stochastic variables are performance metrics as presented in claim 1. Because applicant appears to be describing different types of stochastic variables (i.e., parameter values and equations), it is not clear which apply to the claims.
Additionally, the specification further describes “the generative AI system 930 contains (stored in memory) the first-order physics-based engineering (mathematical) equations (relationships, a plant model) of aerodynamics, propulsion, weight and trajectory parameters, etc.” [0063]. This portion describes that the first order physics-based engineering equations equate to the same as the design parameters above which are either parameters or equations. If the claimed invention receives a weight performance metric, it is presumed that executing a first order physics-based engineering equation to determine said weight would not be necessary, yet claim 1 requires it. Furthermore, if the performance metric is weight, how would a first order physics-based engineering equation meet that performance metric. What is it about weight that needs to be met? This further adds to the confusion presented by claim 1.
In addition, it appears that performance metrics are also synonymous with measures/metrics of merit. Specifically, the specification recites “When executed on a processor, the generative AI system 830 produces an advanced (e.g., optimal) design 840 for an operation of the commercial operations system meeting the aggregated system requirements and measures of merit 810 in a single step (or iteration)” [0060]. The claims refer to “meeting said performance metrics” while the specification instead refers to “aggregated system requirements and measures of merit” to meet the single iteration requirement. If we now must consider “primary metric of merit (i.e., measure of merit) 210 is the objective function of the process such as cost, net present value, operational readiness, organizational risk, or any other metric (or combination therein)” [0041] as a performance metric, does that mean those parameters are also stochastic variables? Additionally, meeting performance metrics that are received, executed via first order physics-based engineering equations and used as a metric that need to be met is further confusing. Specifically, the specification defines that the performance metric can be a Breguet range equation [00116]. In this instance we presume that the Breguet range equation is received. Somehow, the first order physics-based engineering equation executes using the Breguet range equation while also producing a threat analysis that meets the Breguet range equation?
The examiner cannot be sure what exactly applicant is claiming. Claims 8 and 15 recite the system and program embodiments of claim 1 and the dependent claims do not provide clarity.
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.
Claims 1-20 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention.
Per MPEP 2164.01(a), there are many factors to be considered when determining whether there is sufficient evidence to support a determination that a disclosure does not satisfy the enablement requirement and whether any necessary experimentation is “undue.” These factors include, but are not limited to:
(A) The breadth of the claims;
(B) The nature of the invention;
(C) The state of the prior art;
(D) The level of one of ordinary skill;
(E) The level of predictability in the art;
(F) The amount of direction provided by the inventor;
(G) The existence of working examples; and
(H) The quantity of experimentation needed to make or use the invention based on the content of the disclosure.
In re Wands, 858 F.2d 731, 737, 8 USPQ2d 1400, 1404 (Fed. Cir. 1988)
With respect to the factors stated above, the claims are directed to producing a threat assessment using performance metrics, stochastic variables and first order physics-based engineering equations so that performance metrics can be met and the execution can be performed in a single iteration (A, B). Applicants BACKROUND simply describes that complex systems exist and could benefit from rapid and optimized assessment of the complex system (B, C). It is further taught that threat assessments can utilize a digital twin which uses first order conceptual missile design and system engineering utilizing necessary physics-based engineering equations to describe aerodynamics, propulsion, mass properties, etc… (C). It is the examiners understanding that these equations require parameters to be plugged into the equations to determine the aerodynamics, propulsion, mass parameters, etc… (D, E). Applicant describes that some parameters may be unavailable and thus could rely on stochastic variables to use in lieu of the unavailable variables (F).
But the claims require that the performance metrics are represented as stochastic variables, are used to execute the first order physics-based engineering equations but also represent a metric that has to be met. The direction provided by the inventor to distinguish how the performance metric can be represented as a stochastic variable, be used in the first order physics-based engineering equations and be the metric to be met is unclear (F). Furthermore, the execution must occur within a single iteration. Applicant indicates that multiple iterations are necessary when a design does not meet a performance requirement; but over time, the design converges until measures of merit are met (F). Measure of merit is implied as the same as the performance requirement. But the measure/metric of merit is taught as further including metrics such as cost, net value, operational readiness, etc…. This differs from aerodynamics, propulsion, mass parameters, etc…. Applicants do not provide any direction how it is possible that stochastic variables, performance metrics, measures of merit are all interchangeable which is necessary to make or use the invention.
Applicant further states that an optimal design can meet the requirements in a single step (F). But the examiner is unaware how the design is optimized which is required in order to avoid running multiple iterations.
The examiner is aware of PGPUB 2021/0049460 to Ahn et al. [Ahn] who teaches a Deep Probabilistic Decision Machine (DPDM) which utilizes stochastic variables and physics-based equations in a neural network (G) but the examiner is unsure if Ahn applies to the claims. Due to the lack of understanding of the claims as presented, it is the examiners position that it would take an undue quantity of experimentation to make or use the invention based on the content of the disclosure (H).
According to MPEP 2173.06(II), where there is a great deal of confusion and uncertainty as to the proper interpretation of the limitations of a claim, it would not be proper to reject such a claim on the basis of prior art.
Due to the vagueness and a lack of clear definiteness in the articles used in the claims, the claims have not been treated on their merits. See In re Steele, 305 F.2d 859,134 USPQ 292 (CCPA 1962).
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 1-20 are rejected under 35 U.S.C. 101 because:
Claim 1: A method teaches the method of operating a generative artificial intelligence system on a processor and memory, comprising:
receiving performance metrics for a threat system represented as stochastic variables; and
executing first order physics-based engineering equations of said performance metrics with said generative artificial intelligence system on said processor to produce a threat analysis of said threat system to meet said performance metrics in a single iteration improving computational efficiency and reducing power consumption of said processor operating said generative artificial intelligence system.
Step 1: The claim is directed to a process which is a statutory category if invention.
Step 2A Prong One: Limitation (b) in the claim recites a processor “executing first order physics-based engineering equations… in a single iteration”. This limitation recites a concept that falls into the “mathematical concept” group of abstract ideas. This limitation also falls into the “mental process” group of abstract ideas, because the recited mathematical calculation is simple enough that it can be practically performed in the human mind. Note that even if most humans would use a physical air (i.e., pen and paper, a slide rule or a calculator) to help them complete the recited calculation, the use of such a physical aid does not negate the mental nature of this limitation because the claim here merely uses the processor as a tool to perform the otherwise mental process. In addition, limitation (b) recites a law of nature because the equations are “physics-based”.
Step 2A Prong Two: Besides the abstract ideas, the claim recites the additional element of receiving performance metrics as stochastic variables. This additional element represents mere data gathering (obtaining metrics) that is necessary for use of the recited judicial exception (the performance metrics are used in limitation (b)’s mathematical concept) and is recited at a high level of generality. Limitation (a) in the claim is thus insignificant extra-solution activity.
The processor is also an additional element which is configured to carry out limitation (b), i.e., it is the tool that is used to perform the mathematical calculations. But the processor is recited so generically (no details whatsoever are provided other than that it is a processor) that it represents no more than mere instructions to apply the judicial exceptions on a computer. As such, it is nothing more than attempt to generally link the use of the judicial exceptions to the technological environment of a processor. The fact that the first order physics-based engineering equations are performed by a generative artificial intelligence system running on a processor amounts to nothing more than merely performing the abstract idea (executing first order physics-based engineering equations) on a generic computer executing a generative artificial intelligence system. See MPEP 2106.05(f). Alternatively, it would be reasonable to consider the “executing first order physics-based engineering equations of said performance metrics with said generative artificial intelligence system” to merely restrict the abstract idea to a field of use under MPEP 2106.05(h). Under either 2106.05(f) or 2106.05(h), the claim does not integrate the abstract idea into a practical application.
Furthermore, the use of the judicial exceptions to produce a threat analysis is also nothing more than an attempt to generally link the use of the judicial exceptions to the technological environment of threat assessment.
The claim also improving computational efficiency and reducing power consumption…. But these steps are byproducts of the judicial exceptions above and a “judicial exceptions alone cannot provide the improvement” MPEP 2106.05(a). Furthermore, the improving computational efficiency and reducing power consumption… limitation amounts to an equivalent of a whereby clause. A “‘whereby clause in a method claim is not given weight when it simply expresses the intended result of a process step positively recited.’" Id. (quoting Minton v. Nat’l Ass’n of Securities Dealers, Inc., 336 F.3d 1373, 1381, 67 USPQ2d 1614, 1620 (Fed. Cir. 2003)). Claim 1 is directed to a method claim and thus, the improving computational efficiency and reducing power consumption… limitation is not given any patentable weight.
Step 2B: The claim as a whole does not amount to significantly more than the recited exception. The claim has additional elements. The claim includes the processor for performing limitation (b). As explained previously, the processor is at best the equivalent of merely assign the words “apply it” to the judicial exception. Mere instructions to apply an exception cannot provide an inventive concept. The second additional element is limitation (a), which as explained previously is extra-solution activity, which for purposes of Step 2A Prong Two was considered insignificant.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MARK A CONNOLLY whose telephone number is (571)272-3666. The examiner can normally be reached Monday-Friday 9am-5pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Kamini Shah can be reached at 571-272-2279. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/MARK A CONNOLLY/Primary Examiner, Art Unit 2115 6/2/26
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