The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
DETAILED ACTION
This is a reply to the application filed on 9/16/2024, in which, claims 1-20 are pending. Claims 1 and 16 are independent.
In response to a Restriction Requirement mailed 11/20/25, Applicant has elected without traverse to prosecute Group I claims 1-15. Group II claims 16-20 are withdrawn from further consideration as non-elected.
When making claim amendments, the applicant is encouraged to consider the references in their entireties, including those portions that have not been cited by the examiner and their equivalents as they may most broadly and appropriately apply to any particular anticipated claim amendments.
Drawings
The drawings filed on 9/16/2024 are accepted.
Specification
The disclosure filed on 9/16/2024 is accepted.
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 claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more. Claim(s) is/are directed to a method and system (apparatus). The claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claimed invention is directed to a judicial exception (i.e., an abstract idea) without significantly more. Based upon consideration of all of the relevant factors with respect to the claims as a whole, claims are held to claim an unpatentable abstract idea, and are therefore rejected as ineligible subject matter under 35 U.S.C. § 101.
Inventions for a “new and useful process, machine, manufacture, or composition of matter” generally constitute patent-eligible subject matter. 35 U.S.C. § 101. However, the U.S. Supreme Court has long interpreted 35 U.S.C. § 101 to include implicit exceptions: “[l]aws of nature, natural phenomena, and abstract ideas” are not patentable. Alice Corp. v. CLS Bank Int’l, 573 U.S. 208,216 (2014).
The Supreme Court, in Alice, reiterated the two-step framework previously set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), “for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.” Alice Corp., 573 U.S. at 217. The first step in that analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Id. If the claims are not directed to a patent-ineligible concept, e.g., an abstract idea, the inquiry ends. Otherwise, the inquiry proceeds to the second step where the elements of the claims are considered “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim’ into a patent-eligible application.” Id. (quoting Mayo, 566 U.S. at 79, 78). This is “a search for an ‘inventive concept’ - i.e., an element or combination of elements that is ‘sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.’” Id. at 217-18 (alteration in original).
The USPTO published revised guidance on January 7, 2019, for use by USPTO personnel in evaluating subject matter eligibility under 35 U.S.C. § 101. 2019 REVISED PATENT SUBJECT MATTER ELIGIBILITY GUIDANCE, 84 Fed. Reg. 50 (Jan. 7, 2019) (the “2019 Revised Guidance”). That guidance revised the USPTO's examination procedure with respect to the first step of the Mayo/Alice framework by (1) “[p]roviding groupings of subject matter that [are] considered an abstract idea”; and (2) clarifying that a claim is not “directed to” a judicial exception if the judicial exception is integrated into a practical application of that exception. Id. at 50. 1
The first step, as set forth in the 2019 Revised Guidance (i.e., Step 2A), is, thus, a two-prong test. In Step 2A, Prong One, we look to whether the claim recites a judicial exception, e.g., one of the following three groupings of abstract ideas: (1) mathematical concepts; (2) certain methods of organizing human activity, e.g., fundamental economic principles or practices, commercial or legal interactions; and (3) mental processes. See 2019 Revised Guidance, 84 Fed. Reg. at 54; MPEP §§ 2106.04(II)(A)(l), 2106.04(a). If so, we next determine, in Step 2A, Prong Two, whether the claim as a whole integrates the recited judicial exception into a practical application of that exception, i.e., whether the additional elements recited in the claim beyond the judicial exception, apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. See 2019 Revised Guidance, 84 Fed. Reg. at 54-55; MPEP §§ 2106.04(II)(A)(2), 2106.04(d). Only if the claim (1) recites a judicial exception and (2) does not integrate that exception into a practical application do we conclude that the claim is “directed to” the judicial exception, e.g., an abstract idea. See 2019 Revised Guidance, 84 Fed. Reg. at 54-55; MPEP § 2106.04(II)(A)(2).
If the claim is determined to be directed to a judicial exception under Step 2A, we next evaluate the additional elements, individually and in combination, in Step 2B, to determine whether they provide an inventive concept, i.e., whether the additional elements or combination of elements amounts to significantly more than the judicial exception itself; only then, is the claim patent eligible. See 2019 Revised Guidance, 84 Fed. Reg. at 56; MPEP § 2106.05.
Step One of the Mayo/Alice Framework (2019 Revised Guidance, Step 2A)
2019 Revised Guidance, Step 2A, Prong 1
The abstract idea to which claim 1 is directed to is mental process such as concepts performed in the human mind (including an observation, evaluation, judgement, opinion) and mathematical relationships/calculations. In particular, the claim recites the following abstract concepts:
(a) “receive input data” (i.e., abstract idea of collecting data/information as found abstract by the Courts in Internet Patents, Content Extraction, Digitech, CyberSource, Electric Power Group, Classen, FairWarning)
(b) “process, by a semantic encoder, the input data to generate a semantic representation of the input data, wherein the semantic representation comprises multiple semantic sub-flows, wherein each semantic sub-flow comprises a semantic weight corresponding to a relevance of the semantic data” (i.e., abstract idea of mental process of analyzing data as found abstract by the Courts in TLI Comms, Digitech, SmartGene, Bancorp Servs, Electric Power Group, Classen, FariWarning, Cybersource)
(c) “process, by a communication encoder, each of the semantic sub-flows to generate semantic transmissions corresponding to the semantic sub-flows, wherein characteristics of the semantic transmissions are based on the semantic weight of the corresponding semantic sub-flow” (i.e., abstract idea of mental process of categorizing/classifying data as found abstract by the Courts in Electric Power Group, Classen, FariWarning, TLI Comms),
(d) “prepare, for transmission to the receiver, the semantic transmissions” (i.e., abstract idea of mental process of informing, notifying, displaying the result of data processing to an entity as found abstract by the Courts in FairWarning, Content Extraction. Court has noted “merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis.” See e.g., Electric Power Group, 830 F.3d 1350, 1351, 1353–54)
The Supreme Court and Federal Circuit have identified abstract ideas in patent claims by making comparisons to concepts found in past decisions to be judicial exceptions to eligibility. The 2019 IEG summarizes concepts the courts have considered to be abstract ideas by associating eligibility decisions with judicial descriptors (e.g., “an idea of itself,” “certain methods of organizing human activities”, “mathematical relationships and formulas”) based on common characteristics. These associations define the judicial descriptors in a manner that stays within the confines of the judicial precedent, with the understanding that these associations are not mutually exclusive, i.e., some concepts may be associated with more than one judicial descriptor.
The abstract functions of the claims in the case are claim(s) is/are directed an apparatus data processing i.e., data encoding (i.e., abstract idea mental process and mathematical transformation/correlation) as defined by the claimed steps above.
The present claims, as a whole, and individual limitations, are reciting abstract concept of data collection, manipulation and conversion. As such the claims are analogous to Digitech, Grams, Flook, i.e., abstract idea of mental process and mathematical transformation. Looking at the steps of the claims, for each of the claims, data is simply being collected, converted using mathematical algorithm which was ruled abstract in:
a. Collecting and comparing known information (Classen);
b. Collecting and analyzing information to detect misuse and notifying a user when misuse is detected (FairWarning);
c. Obtaining and comparing intangible data (Cybersource);
d. Collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group);
e. Organizing and manipulating information through mathematical correlations (Digitech);
f. performing repetitive calculations, (Flook, 437 U.S. at 594, 198 USPQ2d at 199);
g. A mathematical formula for calculating parameters indicating an abnormal condition (Grams);
Furthermore, the invention is nothing more than data collecting, categorizing, organizing with mathematical operations/correlations being performed on the data as described in the claims that can be performed mentally (or with a pen and piece of paper). The steps are similar to concepts and ideas that have been identified as abstract by the courts. For example, collecting information, analyzing it, and displaying certain results of the collection and analysis (Electric Power Group); a mathematical formula for calculating parameters indicating an abnormal condition (Grams); collecting and analyzing information to detect misuse and notifying a user when misuse is detected (FairWarning); and obtaining and comparing intangible data (Cybersource). While the specific facts of the case differ from these cases, the claims are still directed to collecting and converting data. Further, each and every step can be performed mentally and with pen and paper. A computer is not necessary to generate, receive and correlate/compare data. Even further still, any steps that deal with generating, receiving, analyzing are insignificant, extra solution activity because receiving, converting and transmitting data, are all well-known in the computer network security arts.
2019 Revised Guidance, Step 2A, Prong 2
The 2019 Revised Guidance sets forth a non-exhaustive listing of considerations indicative that an additional element or combination of elements may have integrated a recited judicial exception into a practical application. See 2019 Revised Guidance, 84 Fed. Reg. at 55; MPEP § 2106.04(d). In particular, the Guidance describes that an additional element may have integrated the judicial exception into a practical application if, inter alia, the additional element reflects an improvement in the functioning of a computer or an improvement to other technology or a technical field. Id. At the same time, the Guidance makes clear that merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea; adding insignificant extra-solution activity to the judicial exception; or only generally linking the use of the judicial exception to a particular technological environment or field are not sufficient to integrate the judicial exception into a practical application. Id.
The abstract functions of the claims in the case are claim(s) is/are directed to abstract concept of data collection, manipulation and conversion as defined by the claimed steps. The claims do not require an arguably inventive set of components, methods, or algorithms. The abstract idea is implemented using generic computing elements (“processing circuitry, encoders”) that do not integrate a practical application of the abstract idea in the claims (step 2A, prong 2). Accordingly, even in combination, these additional generic computing elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claims recite a mental process and mathematical concepts, i.e., an abstract idea, and that the additional elements recited in the claim beyond the abstract idea are no more than generic computer components used as tools to perform the recited abstract idea and insignificant extra-solution activity. As such, they do not integrate the abstract idea into a practical application. See Alice Corp., 573 U.S. at 223-24 ("[W]holly generic computer implementation is not generally the sort of ‘additional featur[ e]’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’” (quoting Mayo, 566 U.S. at 77)); 2019 Revised Guidance, 84 Fed. Reg. at 55 (identifying “an additional element adds insignificant extra-solution activity to the judicial exception” and “an additional element does no more than generally link the use of a judicial exception to a particular technological environment or field of use” as examples in which a judicial exception has not been integrated into a practical application).
Step Two of the Mayo/Alice Framework (2019 Revised Guidance, Step 2B)
The relevant question under Step 2B is whether claim includes an additional element or combination of elements adds specific limitations beyond the judicial exception that are not “well-understood, routine, conventional activity” in the field or simply appends well-understood, routine, conventional activities previously known to the industry to the judicial exception. Here, the additional elements of claim beyond the abstract idea, namely, a “processing circuitry”, “encoders”, is a conventional computing equipment and algorithm used in a well-understood, routine, and conventional manner. These additional elements do not provide an inventive concept; rather, they simply append well-understood, routine, conventional activities previously known to the industry to the judicial exception.
Applying the test to the claims in the application, the structural elements of the claims, which include a computer when taken in combination with the functional elements claim(s) is/are directed to an apparatus to collect data, convert the data, and prepare it for transmission, together do not offer “significantly more” than the abstract idea itself because the claims do not recite an improvement to another technology or technical field, an improvement to the functioning of any computer itself, or provide meaningful limitations beyond generally linking an abstract idea to a particular technological environment (a general purpose computer and/or environment of the user). When considered as an ordered combination, the Examiner does not find any combination of the additional elements that amounts to more than the sum of the parts. The Examiner finds that the individual elements of the claims are performing their intended roles and functions. In most cases, the additional elements are applied merely to carry out data processing, as discussed above, fall under well-understood, routine, and conventional functions of generic computers – in our common day-to-day interactions. Note: Applicant’s disclosure states a generic hardware and/or software is used to execute the algorithms (¶33-¶36); note also cited art of record discloses processors; semantic encoders (see, e.g., US 8949242 B1, Figs. 1,3). Therefore, the claimed interactions of the various generically recited methods / devices lacks an unconventional step that confines the claim to a particular useful application in the sense that the result is equivalent to purely mental activity.
Dependent claims do not add an inventive step to the abstract idea of the independent claims and are therefore rejected based on the aforementioned rationale discussed in the rejection.
Dependent claims 2-13, 15, using a database for encoding data; using a ML to train data; encrypting/decrypting data without adding any inventive concept or using an unconventional computing element or improving the underlying computer technology.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-8, 11-13, 15 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Duan Y, Du Q, Fang X, Xie Z, Qin Z, Tao X, Pan C, Liu G. Multimedia semantic communications Representation, encoding and transmission. IEEE Network. 2023 Apr 27;37(1):44-50 (hereinafter ‘Duan’).
As regards claim 1, Duan discloses: An apparatus comprising processing circuitry configured to: receive input data; (Duan: Figs. 1-3, 5, pages 44, 46, 49, i.e., the system for receiving data for semantic trasmission)
process, by a semantic encoder, the input data to generate a semantic representation of the input data, wherein the semantic representation comprises multiple semantic sub-flows, wherein each semantic sub-flow comprises a semantic weight corresponding to a relevance of the semantic data; (Duan: Figs. 1-3, 5, pages 44, 46, 49, i.e., processing the data using semantic encoder wherein the original received data is divided into multiple semantic segments wherein the processing is based on machine learning, i.e., weights are inherent feature of ML processing. See e.g., US 8949242 B1, col.1:57 to col.2:44, i.e., weight-based similarity calculations of semantic segments)
process, by a communication encoder, each of the semantic sub-flows to generate semantic transmissions corresponding to the semantic sub-flows, wherein characteristics of the semantic transmissions are based on the semantic weight of the corresponding semantic sub-flow; and (Duan: Figs. 1-3, 5, pages 44, 46, 49, i.e., processing the data using semantic encoder wherein the original received data is divided into multiple semantic segments wherein the processing is based on machine learning, i.e., weights are inherent feature of ML processing. See e.g., US 8949242 B1, col.1:57 to col.2:44, i.e., weight-based similarity calculations of semantic segments)
prepare, for transmission to the receiver, the semantic transmissions. (Duan: Figs. 1-3, 5, pages 44, 46, 49, i.e., processing the data using semantic encoder wherein the original received data is divided into multiple semantic segments wherein the processing is based on machine learning, i.e., weights are inherent feature of ML processing and preparing the data for transmission)
As regards claim 2, Duan discloses the apparatus of claim 1, wherein the semantic encoder accesses a knowledge base to generate the semantic representation. (Duan: Figs. 1-3, 5, pages 44, 46, 49, i.e., the semantic knowledge to generate semantic representation)
As regards claim 3, Duan discloses the apparatus of claim 2, wherein the knowledge base comprises an (ML) model that incorporates information from a user equipment (UE) and the receiver. (Duan: Figs. 1-3, 5, pages 44, 46, 49, i.e., the AR/VR user equipment information)
As regards claim 4, Duan discloses the apparatus of claim 3, wherein the ML model is trained based on a target goal determined between the UE and the receiver. (Duan: Figs. 1-3, 5, pages 44, 46, 49, i.e., ML classiier)
As regards claim 5, Duan discloses the apparatus of claim 3, wherein the ML model is trained based on a determining relevant semantic representations for performing a task. (Duan: Figs. 1-3, 5, pages 44, 46, 49)
As regards claim 6, Duan discloses the apparatus of claim 3, wherein the ML model is further used to assign the semantic representation to the semantic sub-flows based on the semantic weight of the sub-flows. (Duan: Figs. 1-3, 5, pages 44, 46, 49, i.e., processing the data using semantic encoder wherein the original received data is divided into multiple semantic segments wherein the processing is based on machine learning, i.e., weights are inherent feature of ML processing. See e.g., US 8949242 B1, col.1:57 to col.2:44, i.e., weight-based similarity calculations of semantic segments)
As regards claim 7, Duan discloses the apparatus of claim 3, wherein the knowledge base further comprises complementary knowledge used by the receiver to decode the semantic representation. (Duan: Fig.1, i.e., semantic knowledge used for semantic decoding)
As regards claim 8, Duan discloses the apparatus of claim 7, wherein the knowledge base comprising the ML Model and complementary knowledge is shared between applications from a same category. (Duan: Figs. 1-3, 5, pages 44, 46, 49)
As regards claim 11, Duan discloses the apparatus of claim 1, wherein the semantic representation further comprises semantic application-independent metadata that indicates the weight for each of the multiple semantic sub-flows or a dependency between two or more semantic sub-flows. (Duan: Figs. 1-5, pages 44-46, 49)
As regards claim 12, Duan discloses the apparatus of claim 1, wherein the semantic representation further comprises semantic application-dependent metadata that indicates how data from each of the sub-flows is to be used by a semantic decoder of the receiver to generate the output. (Duan: Figs. 1-3, 5, pages 44-46, 49)
As regards claim 13, Duan discloses the apparatus of claim 1, wherein the communication encoder assigns each of the semantic sub-flows to a lossless transmission mechanism or a lossy transmission mechanism. Duan: Figs. 1-3, 5, pages 44-46, 49)
As regards claim 15, Duan discloses the apparatus of claim 1, wherein each data packet of the semantic representation comprises a further weight. (Duan: Figs. 1-3, 5, pages 44, 46, 49, i.e., processing the data using semantic encoder wherein the original received data is divided into multiple semantic segments wherein the processing is based on machine learning, i.e., weights are inherent feature of ML processing. See e.g., US 8949242 B1, col.1:57 to col.2:44, i.e., weight-based similarity calculations of semantic segments)
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Claim(s) 9, 10 is/are rejected under 35 U.S.C. 103 as being unpatentable over Duan in view of US 20240381059 A1 (hereinafter ‘Tian’).
As regards claim 9, Duan discloses the apparatus of claim 7, wherein the processing circuitry is further configured to: generate, for transmission to a server storing the knowledge base, information that is to be included as part of the ML model or complementary knowledge, (Duan: Figs. 1-3, 5, pages 44, 46, 49)
However, Duan does not but in analogous art, Tian (US 20240381059 A1) teaches: wherein the information is encrypted prior to transmission. (Tian: Fig. 12, ¶207, ¶234 i.e., encrypting the encoded semantic information for transmission)
Before the effective filing date of the claimed invention, it would have been obvious to one of ordinary skill in the art to modify Duan to include encrypting information prior to transmission as taught by Tian with the motivation to protect the information (Tian: Fig. 12, ¶207, ¶234)
As regards claim 10, Duan et al combination teaches the apparatus of claim 9, wherein the processing circuitry is further configured to: generate, for transmission to one or more users, a key to decrypt the encrypted information. (Tian: Fig. 12, ¶207, ¶231, ¶234)
Claim Objections
Claim 14 is objected. Claim recites allowable subject matter: “determine, by a radio link control (RLC) layer, when a transmit window is full, at least one service data unit (SDU) of the semantic representation is successfully transmitted without receiving a fully acknowledged indication for the SDU, wherein the determination is based on the weight of the corresponding semantic sub-flow” not taught by prior art taken alone or in combination. Claim would be allowable if rewritten in independent form including all of the limitations of the respective base claims and any intervening claims.
Conclusion
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/SYED A ZAIDI/Primary Examiner, Art Unit 2432
1 The MANUAL OF PATENT EXAMINING PROCEDURE (“MPEP”) incorporates the revised guidance and subsequent updates at § 2106 (9th ed. Rev. 10.2019, rev. June 2020).
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