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 .
Status of Claims
This action is in reply to the communications filed on 05/24/2026.
Claims 1, 6-9, and 12 have been amended and are hereby entered
Claims 1-12 are currently pending and have been examined.
This action is made FINAL.
Drawing
The amended drawing, filed on 05/24/2026, is hereby entered.
Claim Objections
Claims 1 -10 and 12 are objected to because of the following informalities:
Claims 1 -10 and 12 interchangeably recites the limitations “packages,” “Quantum Utility Exchange packages,” and “sale quantum utilities packages”. Is “packages” different than “Quantum Utility Exchange packages;” or “sale quantum utilities packages” which are interchangeably recited throughout claims 1-10 and 12? It appears there is a typographical mistake since the specification only points to one package for this interpretation, which is the Quantum Utility Exchange package. For compact examination purposes, Examiner interpreted the instances recited throughout Claims 1-10 and 12 as “Quantum Utility Exchange packages.” Appropriate corrections are required.
Claims 1-10 and 12 are replete with the recitation of the limitations “Quantum Utility Exchange Traded Resources (QU-ETRs),” “QU-ETR,” “packages,” and “Quantum Utility Exchange packages.” However, there are no indefinite or definite articles ( i.e. “a,” “an,” or “the”) recited before these limitations. Therefore, claims 1-10 and 12 are replete with antecedent basis issues. It appears this is a typographical mistake because definite and indefinite articles should be properly used to avoid antecedent basis issues. Appropriate correction is required.
Claim Rejections - 35 USC § 112
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.
Claims 1-12 are rejected under 35 U.S.C. 112(a), as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. For instance, in In re Hayes Microcomputer Products, the written description requirement was satisfied because the specification disclosed the specific type of microcomputer used in the claimed invention as well as the necessary steps for implementing the claimed function. The disclosure was in sufficient detail such that one skilled in the art would know how to program the microprocessor to perform the necessary steps described in the specification. In re Hayes Microcomputer Prods., Inc. Patent Litigation, 982 F.2d 1527, 1533-34, 25 USPQ2d 1241, ___ (Fed. Cir. 1992). In the present applicant, claim 1 discloses “automatically cutting off access to the physical quantum hardware when a resource limit is reached;” where automatically cutting off access ….. when a resource limit is reached is not supported in the specification as to how the applicant is “…automatically cutting off access to the physical quantum hardware when a resource limit is reached …” in order to show possession of the invention at the time of filing. While one skilled in the art could have devised a way to accomplish this aspect of the invention, Applicant’s original disclosure lacks sufficient detail to explain how Applicant envisioned achieving the goal of “automatically cutting off access to the physical quantum hardware when a resource limit is reached.” Simply stating or re-stating the claim limitation does not provide enough support to show possession. Since these important details about how the invention operates are not disclosed, it is not readily evident that Applicant has full possession of the invention at the time of filing (i.e., the original disclosure fails to provide adequate written description to support the claimed invention as a whole). Neither the specification nor the drawings disclose in detail the specific steps or algorithm needed to perform the operation. If the specification does not provide a disclosure of the computer and algorithm in sufficient detail to demonstrate to one of ordinary skill in the art that the inventor possessed the invention including how to program the disclosed computer to perform the claimed function, a rejection under 35 U.S.C. 112(a), for lack of written description must be made. For more information regarding the written description requirement, see MPEP §2161.01- §2163.07(b).
Dependent claims 2-12 are rejected by virtue of dependency on Independent Claim 1.
Appropriate correction is required.
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 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of trading packages’ right of use between entities, without significantly more.
Claim 1 is directed to a method, which is one of the statutory categories of invention (Step 1: YES).
Claim 1 is directed to a method of managing quantum computing resources, the method comprising: defining, by one or a plurality of provider entities, packages and Quantum Utility Exchange Traded Resources (QU-ETRs) that grant package right of use for one or a plurality of quantum computing utilities or classes of quantum computing utilities, each provider entity having direct control over the computing resources or classes of computing resources defined in each said package or said QU-ETR; recording, for each defined package or QU-ETR, a specific entity that has package right of use for said package or said QU-ETR; trading, via a Quantum Utility Exchange packages or QU-ETRs between entities, the trading conveying package right of use of one or a plurality of packages or QU- ETRs between a seller and entity in exchange for monetary compensation, the permission to access the QUE, QU-ETRs, and communications are through an internal blockchain module; dynamically reassigning active quantum computing utilities by substituting physical quantum hardware during a specified time window; and automatically cutting off access to the physical quantum hardware when a resource limit is reached. These series of steps describe the abstract idea of trading packages’ right of use between entities (with the exception of the italicized and bolded terms above), which is mitigating risk by verifying permission to access packages, in which the right of use have been conveyed; therefore, corresponding to a fundamental economic principle or practice (including mitigating risk). Hence, a fundamental economic principle or practice (mitigating risk) is a Certain Methods of Organizing Human Activity. The abstract idea is also the conveying of a package right of use by a seller to an entity in exchange for monetary compensation, which is a commercial interaction. Therefore, a commercial interaction is also a Certain Methods of Organizing Human Activity. The system limitations, e.g., quantum computing resources, packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, and physical quantum hardware, do not necessarily restrict the claim from reciting an abstract idea. Thus, claim 1 recites an abstract idea (Step 2A-Prong 1: YES).
This judicial exception is not integrated into a practical application because the additional elements of quantum computing resources, packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, and physical quantum hardware, are no more than simply applying the abstract idea using generic computer elements. The additional elements listed above are all recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computing arrangement. Merely invoking quantum computing resources, packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, and physical quantum hardware is similar to invoking software and software components. The presence of a generic computer arrangement is nothing more than to implement the claimed invention (MPEP 2106.05(f)). The computer network limitations are a field of use limitations (MPEP 2106.05(h)). Therefore, the recitations of additional elements do not meaningfully apply the abstract idea and hence do not integrate the abstract idea into a practical application. Thus, claim 1 does not integrate the abstract idea into a practical application (Step 2A-Prong 2: NO).
Claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of quantum computing resources, packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, and physical quantum hardware, are recited at a high level of generality in that it results in no more than simply applying the abstract idea using generic computer elements. The computer network limitations are a field of use limitations (MPEP 2106.05(h)). The additional elements when considered separately and as an ordered combination do not amount to add significantly more as these limitations provide nothing more than to simply apply the exception in a generic computer environment (Step 2B: NO). Thus, claim 1 is not patent eligible.
Dependent claims 2-12 are directed to a method that recites a series steps that describe the abstract idea of trading packages’ right of use between entities. Specifically, dependent claims 6-9 are directed to a method, which recite: wherein: as they are defined by one or a plurality of provider entities, packages or QU-ETRs are listed in a Recorded Database; after the time window for any listed package or QU-ETR expires or when any utility limit for said listed package or QU-ETR is reached through use of a utility defined in said listed package or QU-ETR, said listed package or QU-ETR is delisted from said Recorded Database; wherein each listed package or QU-ETR record in a Recorded Database specifies a single entity that, at any given time, is the only entity having package right of use for said package or QU-ETR and specifies a complete description of the utility or classes of utilities in said listed package or QU-ETR, any time window for said package or QU-ETR, and any resource limits on one or a plurality of the utility or utilities classes in said package or QU-ETR; and wherein: packages or QU-ETRs offered for sale are listed in a Pending Database; packages or QU-ETRs offered for purchase are listed in said Pending Database; packages or QU-ETRs traded between buyer and seller entities are delisted from said Pending Database; and packages or QU-ETRs can be searched by a prompt from users where a generative Artificial Intelligence-Machine Learning (AI-ML) engine provides the information for the search, wherein the AI-ML engine receives an input comprising the prompt and package configuration data for the listed packages or QU-ETRs, the listed packages or QU-ETRs being restricted to those for which the internal blockchain module verifies a permission to access for the user that issued the prompt; and wherein each listed package or QU-ETR in a Pending Database specifies an entity that caused the listing to come into existence, whether said listing is an offer to purchase or an offer to sell the package or QU-ETR in said listing, and a constraint of the price of said listing (with the exception of the italicized and bolded terms above), which is mitigating risk by verifying permission to access packages, in which the right of use have been conveyed; therefore, corresponding to a fundamental economic principle or practice (including mitigating risk). Hence, a fundamental economic principle or practice (mitigating risk) is a Certain Methods of Organizing Human Activity. The abstract idea is also the conveying of a package right of use by a seller to an entity in exchange for monetary compensation, which is a commercial interaction. Therefore, a commercial interaction is also a Certain Methods of Organizing Human Activity. The system limitations, e.g., quantum computing resources, one or a plurality of provider entities defining packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, recorded database, listed package or QU-ETR, utility, Pending Database, and generative Artificial Intelligence-Machine Learning (AI-ML) engine, do not necessarily restrict the claim from reciting an abstract idea. Thus, claims 2-12 recite an abstract idea. The additional elements of quantum computing resources, one or a plurality of provider entities defining packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, recorded database, listed package or QU-ETR, utility, Pending Database, and generative Artificial Intelligence-Machine Learning (AI-ML) engine are no more than simply applying the abstract idea using generic computer elements. The additional elements listed above are all recited at a high level of generality and under their broadest reasonable interpretation comprises a generic computing arrangement. The presence of a generic computer arrangement is nothing more than to implement the claimed invention (MPEP 2106.05(f)). The computer network limitations are a field of use limitations (MPEP 2106.05(h)). Therefore, the recitations of additional elements do not meaningfully apply the abstract idea, and hence do not integrate the abstract idea into a practical application. Furthermore, the additional elements: quantum computing resources, one or a plurality of provider entities defining packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, recorded database, listed package or QU-ETR, utility, Pending Database, and generative Artificial Intelligence-Machine Learning (AI-ML) engine do not amount to add significantly more as these limitations provide nothing more than to simply apply the exception in a generic computer environment.
Dependent claims 2-12 have further defined the abstract idea that is present in their respective independent claim, claim 1; and thus correspond to Certain Methods of Organizing Human Activity, and hence are abstract in nature for the reason presented above. The dependent claims 2-12 do not include any additional elements that integrate the abstract idea into a practical application or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination. Therefore, claims 2-12 are directed to an abstract idea, without significantly more.
Thus, claims 1-12 are not patent-eligible.
Response to Arguments
With respect to the objection of claims 1, 6, 8, 9, and 12, the objections are withdrawn in view of Applicant’s arguments/remarks made in an amendment filed on 05/24/2026. However, new claim objections have been given with regards to Claims 1-10 and 12. In view of the grounds for the claim objection presented above in this office action, appropriate correction is required.
With respect to the drawing objection of Figure 1, the objection is withdrawn in view of Applicant’s arguments/remarks made in an amendment filed on 05/24/2026. Hence, the amended drawing, filed on 05/24/2026, is hereby entered.
Applicant's arguments filed on 05/24/2026 have been fully considered, but are not persuasive due to the following reasons:
With respect to the rejection of 1-12 under 35 U.S.C. 101, Applicant arguments are moot in view of the grounds of rejections presented above in this office action. The arguments are addressed to the extent they apply to the amended claims.
Applicant argues that “Claim 1 as amended recites two positive operations that are mechanism-level and not abstract: (i) dynamically reassigning active quantum computing utilities by substituting physical quantum hardware during a specified time window, and (ii) automatically cutting off access to the physical quantum hardware when a resource limit is reached. Neither operation is performable in the human mind or with pen and paper. The substitution of physical quantum hardware is a hardware-control operation. The automatic cutoff of access on resource-limit reach is a state-dependent boundary enforcement operation. Both are technological mechanisms that act on physical computing infrastructure (see specification at paragraph [0019] (entity having “direct control” over physical utilities means “physical control and/or responsibility for a utility”) and paragraph [0047] (provider-controlled Access Control gates implemented as “a combination of hardware and software or just hardware or software alone” to “prevent improper use of a resource by an entity without package right of use”)). The Office Action’s characterization of the claim as directed to “trading packages’ right of use between entities” abstracts away these two operations and characterizes only the commercial context. The amended claim is not directed to a fundamental economic principle within the meaning of Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014); it is directed to a quantum-resource orchestration method whose two operative steps act on physical quantum hardware.”
Examiner respectfully disagrees.
Under Step 2A: Prong I, Examiner respectfully notes that claims, as amended, are rejected under 35 U.S.C. 101 because the claimed invention is directed to the abstract idea; without significantly more. The series of steps recited in claims 1-12, as amended, describe the abstract idea of trading packages’ right of use between entities, which is mitigating risk by verifying permission to access packages, in which the right of use have been conveyed; therefore, corresponding to a fundamental economic principle or practice (including mitigating risk). Hence, a fundamental economic principle or practice (mitigating risk) is a Certain Methods of Organizing Human Activity. The abstract idea is also the conveying of a package right of use by a seller to an entity in exchange for monetary compensation, which is a commercial interaction. Therefore, a commercial interaction is also a Certain Methods of Organizing Human Activity. Furthermore, the system limitations (amended claim 1), e.g., quantum computing resources, packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, and physical quantum hardware do not necessarily restrict the claim from reciting an abstract idea. Examiner respectfully notes that the claims are first analyzed in the absence of technology to determine if it recites an abstract idea. The additional limitations of technology are then considered to determine if it restricts the claim from reciting an abstract idea. In this case, it is determined that the additional limitations of technology do not necessarily restrict the claim from reciting an abstract idea. Furthermore, Examiner respectfully notes that the recited features in the limitations: “defining, by one or a plurality of provider entities, packages and Quantum Utility Exchange Traded Resources (QU-ETRs) that grant package right of use for one or a plurality of quantum computing utilities or classes of quantum computing utilities, each provider entity having direct control over the computing resources or classes of computing resources defined in each said package or said QU-ETR; recording, for each defined package or QU-ETR, a specific entity that has package right of use for said package or said QU-ETR; trading, via a Quantum Utility Exchange packages or QU-ETRs between entities, the trading conveying package right of use of one or a plurality of packages or QU- ETRs between a seller and entity in exchange for monetary compensation, the permission to access the QUE, QU-ETRs, and communications are through an internal blockchain module; dynamically reassigning active quantum computing utilities by substituting physical quantum hardware during a specified time window; and automatically cutting off access to the physical quantum hardware when a resource limit is reached” are simply making use of a computer and the computer limitations do not necessarily restrict the claim from reciting an abstract idea as discussed above under Step 2A-Prong I of the 35 U.S.C. 101 rejection.
Examiner has also considered each and every arguments under Step 2A-Prong I and concludes that these arguments are not persuasive. For example, under Step 2A-Prong I, Examiner considers each and every limitation to determine if the claim recites an abstract idea. In this case, it is determined that the claim recites an abstract idea and the additional limitations of a computer device does not necessarily restrict the claim from reciting an abstract idea. The recited steps, as amended, are abstract in nature as there are no technical/technology improvements as a result of these steps. Thus, the claim recites an abstract idea. Whether the claim integrates the abstract idea into a practical application by providing technical/technology improvements are considered under Step 2A-Prong II.
Applicant argues that “the technical improvements are in the claim language…. Amended Claim 1 recites this as a positive method step: “dynamically reassigning active quantum computing utilities by substituting physical quantum hardware during a specified time window.” This is a mid-runtime physical-resource reassignment operation, a technical improvement to system operation within Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), and McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016)….. Amended Claim 1 recites this as a positive method step: “automatically cutting off access to the physical quantum hardware when a resource limit is reached.” This is a state-dependent boundary enforcement mechanism, not a commercial act…Amended Claim 7 recites that each listed package or QU-ETR record specifies a single entity that, at any given time, is the only entity having package right of use for the package or QU-ETR. See specification at paragraph [0042] (the Recorded Database is implemented such that “any one package be shown as having only one controlling entity at a time, the entity with current package right of use,” with “many such techniques to accomplish uniqueness in a DB” available to one skilled in the art); see also paragraph [0023] (the package definition “guarantees that a utility will not be over-allocated or used by more than one entity during that time window”). This is a concurrency-control invariant that physically prevents over-allocation of quantum computing utilities across provider entities at the database-state level, which is a technological improvement to how the system manages distributed quantum resources…. Amended Claim 8 recites that the AI-ML engine receives an input comprising the prompt and package configuration data for the listed packages or QU-ETRs, with those listed packages restricted to those for which the internal blockchain module verifies a permission to access for the user that issued the prompt. See specification at paragraph [0010] (the blockchain is used to “store, manage, and retrieve permissions, and access for information,” “verifies permissions and identities,” and “blocks access from unwanted and unidentified entities”) and paragraph [0011] (“Buyers of quantum utilities can invoke AI prompt action to request package type and its information” including search based on “package configuration types, cost, date, and more”); see also paragraph [0048] (validation requirement prevents access by “impostor entit[ies] such as botnets”). This is a specific architectural composition of the AI-ML engine’s input, structured by the package data schema and bounded by blockchain-verified permission, that is itself a technical improvement to how the search is conducted. It is therefore distinguishable from Recentive Analytics, Inc. v. Fox Corp., 134 F.4th 1205 (Fed. Cir. 2025), in which generic machine learning was applied to a new data environment without architectural modification.”
Examiner respectfully disagrees.
Under Step 2A: Prong II, Examiner respectfully notes that there is no improved technology in simply defining, receiving, inputting, recording, defining, using, trading, accessing, communicating, conveying, processing, reassigning, and outputting data (i.e., right of use information, entity data, monetary compensation data, permissions data, time data, seller data, and etc.). Unlike Ex Parte Desjardins, the disclosed invention simply cannot be equated to improvement to technological practices or computers. There is no technical improvement at all. Instead, Applicant recites “defining, by one or a plurality of provider entities, packages and Quantum Utility Exchange Traded Resources (QU-ETRs) that grant package right of use for one or a plurality of quantum computing utilities or classes of quantum computing utilities, each provider entity having direct control over the computing resources or classes of computing resources defined in each said package or said QU-ETR; recording, for each defined package or QU-ETR, a specific entity that has package right of use for said package or said QU-ETR; trading, via a Quantum Utility Exchange packages or QU-ETRs between entities, the trading conveying package right of use of one or a plurality of packages or QU- ETRs between a seller and entity in exchange for monetary compensation, the permission to access the QUE, QU-ETRs, and communications are through an internal blockchain module; dynamically reassigning active quantum computing utilities by substituting physical quantum hardware during a specified time window; and automatically cutting off access to the physical quantum hardware when a resource limit is reached.” Unlike Ex Parte Desjardins, Enfish, and McRO, the recited features in the limitations do not result in computer functionality or technical improvement. Specifically, Examiner respectfully notes that Applicant is simply using a computer to input, process, and output data. The recited features in the limitations does not disclose a technical solution to technical problem, but simply a business solution. Specifically, the recited steps, as amended, are merely managing/processing data (MPEP 2106.05(d)(II)) and does not result in computer functionality or technical improvement. Thus, Applicant has simply provided a business method practice of processing trading data (right of use information, entity data, monetary compensation data, permissions data, time data, seller data, and etc.), and no technical solution or improvement has been disclosed.
Additionally, there is no technology/technical improvement as a result of implementing the abstract idea. Unlike Ex Parte Desjardins, Enfish, and McRO, the recited limitations in the pending claims simply amount to the abstract idea of trading packages’ right of use between entities. There is no computer functionality improvement or technology improvement. The claim does not provide a technical solution to a technical problem. If there is an improvement, it is to the abstract idea and not to technology. Additionally, Examiner notes that it is important to keep in mind that an improvement in the judicial exception itself (e.g., recited fundamental economic principle or practice) is not an improvement in technology (See, MPEP 2106.05(a)(II)). Furthermore, unlike Ex Parte Desjardins, Enfish, and McRO, the amended claims recite steps at a high level of generality. See MPEP 2106.05(g). In addition, all uses of the recited judicial exceptions require such data gathering, inputting, and outputting, and, as such, these limitations do not impose any meaningful limits on the claim. These limitations amount to necessary data gathering, inputting, and outputting. See MPEP 2106.05. The claim simply makes use of a computer as a tool to apply the abstract idea without transforming the abstract idea into a patent eligible subject matter. Thus, the claim does not integrate the abstract idea into a practical application; and these arguments are not persuasive.
Moreover, these steps, as amended, are recited as being performed by quantum computing resources, packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, and physical quantum hardware, which are used as tools to perform the generic computer function of receiving, processing, and outputting trading data. See MPEP 2106.05(f). The claims as amended, recites quantum computing resources, packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, and physical quantum hardware, which are simply used to perform an abstract idea, as discussed above in Step 2A, Prong I, such that it amounts to no more than mere instructions to apply the exception using a generic computer. See MPEP 2106.05(f). Specifically, the recitation of “quantum computing resources, packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, and physical quantum hardware” in the limitations merely indicates a field of use or technological environment in which the judicial exception is performed. Additionally, the ‘automated’ features simply amounts to mere automation of manual processes, such as using a generic computer to process an application for financing a purchase, Credit Acceptance Corp. v. Westlake Services, 859 F.3d 1044, 1055, 123 USPQ2d 1100, 1108-09 (Fed. Cir. 2017). Thus, the automation feature is not sufficient to show an improvement in computer-functionality or technology/technical improvements (see MPEP 2106.05(a)(1)). The claim simply makes use of a computer as a tool to apply the abstract idea without transforming the abstract idea into a patent eligible subject matter. The claims, as amended, merely confines the use of the abstract idea to a particular technological environment; and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h). Even when viewed in combination, these additional elements do not integrate the recited judicial exception into a practical application, and the claim is directed to the judicial exception.. Hence , the claims as amended, do not integrate the abstract idea into a practical application. Thus, these arguments are not persuasive.
Applicant argues that “the ordered combination amounts to significantly more. The Examiner has expressly found in the Statement of Allowable Subject Matter that no combination of the prior art renders the claims obvious without improper hindsight, and that the claims as a whole are novel and non-obvious. ….The amended claim set's ordered combination is supplied by the following six claim-recited elements, each anchored in the specification: (i) blockchain-permissioned trading of QU-ETR packages, as recited in the trading limitation of amended Claim 1… (ii) dynamic mid-session reassignment of physical quantum hardware under the QU-ETR template, as recited in the new positive method step of amended Claim 1…. (v) structured and blockchain-permission-bounded AI-ML input, as recited in amended Claim 8 ("the AI-ML engine receives an input comprising the prompt and package configuration data for the listed packages or QU-ETRs, the listed packages or QU-ETRs being restricted to those for which the internal blockchain module verifies a permission to access for the user that issued the prompt")… Each of these six elements is a positive limitation recited in the claim language, not an inference from the specification and together they form a coordinated concurrency-control and access-control architecture for distributed quantum computing resources. The Examiner has affirmatively found this combination to be novel and non-obvious, which under BASCOM the non-conventional arrangement itself supplies the inventive concept. The ordered combination accordingly amounts to significantly more than any alleged abstract idea. Withdrawal of the § 101 rejection is respectfully requested.”
Examiner respectfully disagrees.
Under Step 2B, Examiner respectfully notes that all of Applicant's arguments have been reviewed, and the inventive concept cannot be furnished by a judicial exception. The improvements argued are to the abstract idea and not to technology. The technical limitations are simply utilized as a tool to implement the abstract idea without adding significantly more. Thus, the claim is directed to an abstract idea; and hence, these arguments are not persuasive. The presence of a computer does not make the claimed solution necessarily rooted in computer technology. As noted above, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements of quantum computing resources, packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, and physical quantum hardware are recited at a high level of generality in that it results in no more than simply applying the abstract idea using generic computer elements. As noted above, the recitation of “quantum computing resources, packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, and physical quantum hardware” in the limitations merely indicates a field of use or technological environment in which the judicial exception is performed. Thus, the automation feature is not sufficient to show an improvement in computer-functionality or technology/technical improvements (see MPEP 2106.05(a)(1)). The claim simply makes use of a computer as a tool to apply the abstract idea without transforming the abstract idea into a patent eligible subject matter. The claims, as amended, merely confines the use of the abstract idea to a particular technological environment; and thus fails to add an inventive concept to the claims. See MPEP 2106.05(h). The additional elements when considered separately and as an ordered combination do not amount to add significantly more as these limitations provide nothing more than to simply apply the exception in a generic computer environment.
Furthermore, Examiner respectfully disagrees and notes that the search for an inventive concept should not be confused with a novelty or non-obviousness determination. See Mayo, 566 U.S. at 91,101 USPQ2d at 1973 (MPEP 2106.05(1)). As made clear by the courts, the "'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." A claim for a new abstract idea is still an abstract idea (see MPEP 2106.05(1)). Thus, these arguments are not persuasive.
Moreover, applying the Patent Subject Matter Eligibility Guidance here and the Applicant’s cited cases (Ex Parte Desjardins, Enfish, and McRO), as discussed above with respect to Step 2A, Prong II, the additional elements: quantum computing resources, packages, Quantum Utility Exchange Traded Resources (QU-ETRs), one or a plurality of quantum computing utilities, classes of quantum computing utilities, computing resources, classes of computing resources, defined package, Quantum Utility Exchange, quantum technology, communications, internal blockchain module, and physical quantum hardware, are at best mere instructions to “apply” the abstract idea, which cannot provide an inventive concept. See MPEP 2106.05(f). As discussed in Step 2A, Prong II above, the claims’ limitations are recited at a high level of generality. These elements simply amount to receiving, inputting, and outputting data and are well-understood, routine, conventional activity. See MPEP 2106.05(d)(II). As discussed in Step 2A, Prong Two above, the recitation of a computer/processor to perform recited limitations, as amended, amounts to no more than mere instructions to apply the exception using a generic computer component. Even when considered in combination, these additional elements represent mere instructions to implement an abstract idea or other exception on a computer, which do not provide an inventive concept. (Step 2B: NO).
Hence, Examiner respectfully declines Applicant’s request to withdraw the 35 U.S.C. 101 rejection of claims 1-12.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure are the following:
Cella (U.S. Patent Publication No. US 2022/0366494-A1) - “Market orchestration system for facilitating electronic marketplace transactions”
Ibrahim (U.S. Patent Publication No. US 2023/0126764-A1) - “Mixed quantum-classical method for fraud detection with quantum feature selection”
Ajagekar (U.S. Patent Publication No. US 2023/0298101-A1) - “Systems and methods for quantum computing-assisted portfolio selection”
Griffin (U.S. Patent Publication No. US 2024/0362018-A1) - “Deriving a custom version of a software package from super positioned qubits”
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 MOHAMMED H MUSTAFA whose telephone number is (571)270-7978. The examiner can normally be reached M-F 8:00 - 5:00.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, MICHAEL W. ANDERSON can be reached on 571-270-0508. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at 866-217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call 800-786-9199 (IN USA OR CANADA) or 571-272-1000.
/MOHAMMED H MUSTAFA/Examiner, Art Unit 3693
/Mike Anderson/Supervisory Patent Examiner, Art Unit 3693
Prosecution Insights