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 .
DETAILED ACTION
Response to Arguments
In communications filed on 7/29/2026, claims 1, 3-9, and 11-16 are presented for examination. Claims 1 and 9 are independent.
Amended claim(s): 1, 3, 4, 6-9, 11, 12, and 14-16.
Applicants’ arguments, see Applicant Arguments/Remarks filed 7/29/2026, with respect to claim(s) rejected under prior art have been fully considered and are persuasive in view of amendments to the claims.
Applicants’ arguments, see Applicant Arguments/Remarks filed 7/29/2026, with respect to claim(s) rejected under 35 USC 101 have been fully considered and are unpersuasive. The abstract functions of the claims in the case are claim(s) is/are directed to system and method of performing an approximation operation by applying a mathematical algorithm (i.e., the recited Softmax function) on a computing device. As such, the abstract idea is generating a number by performing mathematical operations as defined by the claimed steps listed above. As such, the claims fall under at least the category of “an idea of itself” and “mathematical relations / formulas”.
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. Independent claim(s) 1, 9, and their respective dependent claims 2-8, 10-16 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, 9 is/are directed 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(s) recite the following abstract ideas:
(a) wherein the at least one processor is configured to based on homomorphic ciphertext data received from the external device through the interface, store the homomorphic ciphertext data in the memory, (i.e., receiving or transmitting/storing data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016))
(b) obtain an initial intermediate Softmax computation result for the homomorphic ciphertext data in an initial approximation range (i.e., abstract idea of concepts relating to data processing using a mathematical algorithm as found abstract by the Courts in TLI Comms, Electic Power Group, Classen, FairWarning, Grams)
(c) obtain a Softmax function computation result by performing, for a plurality of iterations, squaring and normalizing operations on the initial intermediate Softmax computation result, and (i.e., abstract idea of concepts relating to data processing using a mathematical algorithm as found abstract by the Courts in TLI Comms, Electic Power Group, Classen, FairWarning, Grams)
(d) transmit the Softmax function computation result to the external device through the interface (i.e., abstract and routine computing operations of receiving or transmitting/storing data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016))
(e) wherein each of the plurality of iterations includes: obtaining a normalization factor based on a sum of squares of values included in an intermediate Softmax computation result of a previous iteration, normalizing the values included in the intermediate Softmax computation result of the previous iteration using the normalization factor, and squaring the normalized values to obtain an intermediate Softmax computation result of a current iteration; wherein the one or more iterations extend an approximation range from the initial approximation range to a target approximation range. (i.e., abstract idea of concepts relating to data processing using a mathematical algorithm as found abstract by the Courts in TLI Comms, Electic Power Group, Classen, FairWarning, Grams)
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 to system and method of performing an approximation operation by applying a mathematical algorithm (i.e., the recited Softmax function) on a computing device.
As such, the abstract idea is generating a number by performing mathematical operations as defined by the claimed steps listed above. As such, the claims fall under at least the category of “an idea of itself” and “mathematical relations / formulas”. The phrase “an idea of itself is used to describe an idea standing alone such as an instantiated concept, plan or scheme, as well as a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper." Looking at the steps of the claims, for each of the claims, data is simply being generated by using mathematical operations/correlations which was ruled abstract in:
a. Organizing and manipulating information through mathematical correlations (Digitech);
b. A mathematical formula for calculating parameters indicating an abnormal condition (Grams);
Furthermore, the invention is nothing more than generating a number by applying mathematical formula as described in the claims that can be performed mentally. The steps are similar to concepts and ideas that have been identified as abstract by the courts. For example, a mathematical formula for calculating parameters indicating an abnormal condition (Grams). While the specific facts of the case differ from these cases, the claims are still directed to collecting and analyzing data to make an observation i.e., mental process. Further, each and every step can be performed mentally and with pen and paper. A computer is not necessary to generate a number
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.
Under step 2A (prong 1) of the 101 analysis, claims recite abstract idea of generating a number based on a mathematical formula and the abstract idea of mental process of performing mathematical calculations. The abstract idea is implemented using generic computing elements (“computer processing system”, “an interface”, “processor”, “memory”) 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 claims 1, 9 beyond the abstract idea, namely, a “processor”, “memory” are conventional computing equipment 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 generic device, modules when taken in combination with the functional elements claim(s) is/are directed to system and method for performing mathematical calculations, 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 device). 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, which 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 (¶29, ¶33); note also cited art of record discloses processors; devices, programs, in performing mathematical operations such as Softmax operations (see, e.g., US 20250036948 A1: Fig. 6, 15, ¶229-¶230). 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, e.g., generating a number. Dependent claims are rejected based on the rationale discussed in the rejection of the independent claims because the claims merely recite variations of the mathematical formula without integrating the model into a practical application.
Conclusion
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 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.
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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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