DETAILED ACTION
Claims 1,3-4,7-9,13-15,17-18, 23-24 and 27-33 are pending in the application and have been examined.
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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 4/30/2026 has been entered.
Response to Applicant’s arguments
Following Applicants arguments and amendments, and in light of the Board Decision dated 3/17/2025, the previous 101 rejection of the claims is Maintained.
Applicant’s Argument: The claims cannot be performed mentally citing the components that are argued to be a special purpose computing device.
Examiner’s Response: The Examiner disagrees as the use of a special purpose computer is still patent-ineligible as the invention can be performed via pen and paper or in a person’s mind MPEP2106.04(III). Here, Applicant has not argued what steps cannot be performed in the human mind, and the Examiner has pointed to multiple steps that can be performed in the human mind. As well as, providing a reasoned statement as to why the claimed limitation can be performed in the human mind. An abstract idea does not become nonabstract by limiting the invention to a particular field of use or technological environment, such as the Internet [or] a computer. Also the “computing device” is only taking in design information and is not being programmed by the limitations of the claim. Nowhere in the claim is the “computing device” transformed to a special purpose computing device. Therefore, Applicant’s argument is not persuasive.
Applicant’s Argument: The claims are analogous to Diamond v Diehr.
Examiner’s Response: The Examiner disagrees as the claimed invention is not analogous to the invention in Diehr. The invention in Diehr used a math formula to control a ruber molding process, that produced a physical object in the rubber. Here, the claims merely present alternative design information, that in and of itself is abstract. Therefore, the claims are not analogous to Diehr.
Applicant’s Argument: The claims are integrated into a practical application as they identify alternative building materials.
Examiner’s Response: The Examiner disagrees as the abstract idea of identifying alternative building materials is an abstract idea. MPEP 2106.05(a): “It is important to note, the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements...” Additionally, as discussed in 2106.05(a)(II) improvements to technology or technical fields, “an improvement in the abstract idea itself … is not an improvement in technology”. Also the increase in speed gained by using a computer is not sufficient to prove integration into a practical application. As seen in MPEP § 2106.05(a)(I) and § 2106.05(f)(2), the court found that accelerating a process when the increased speed solely comes from the capabilities of a general-purpose computer is not sufficient to show an improvement in computer-functionality and it amounts to a mere invocation of computers or machinery as a tool to perform an existing process (see FairWarning IP, LLC v. Iatric Sys., 839 F.3d 1089, 1095, 120 USPQ2d 1293, 1296 (Fed. Cir. 2016)). MPEP 2106.05(f): “Similarly, "claiming the improved speed or efficiency inherent with applying the abstract idea on a computer" does not integrate a judicial exception into a practical application or provide an inventive concept” and see MPEP § 2106.05(a)(I): “ii. Accelerating a process of analyzing audit log data when the increased speed comes solely from the capabilities of a general-purpose computer… iii. Mere automation of manual processes, such as using a generic computer to process an application for financing a purchase…”
Applicant’s Argument: The claims are similar to Bascom.
Examiner’s Response: The Examiner disagrees as The claims of Bascom “presented a "technology-based solution" of filtering content on the Internet that overcame the disadvantages of prior art filtering systems and that amounted to significantly more than the recited abstract idea, it also would be reasonable for an examiner to have found these claims eligible at Pathway A or B if the examiner had considered the technology-based solution to be an improvement to computer functionality (See MPEP 2106.06(b)).” The present claims do not provide an analogous improvement over prior art systems. The present claims, as drafted, are directed to a generic computing system. The present claims, as drafted, recite abstract limitations performed “by a computing device”. There is no particular arrangement within the claims such that the claims recite a technical improvement. Therefore, Examiner respectfully disagrees with Applicant’s assertions in view of Bascom.
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.
Regarding claims 1,3-4,7-9,13-15,17-18, 23-24 and 27-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. abstract idea) without anything significantly more.
Step 1: Claims 1, 3-4, 7, 23-24, 27-28 and 33 are directed to a method, which is a process, which is a statutory category of invention. Claims 8-9, 13-14, 29-32 are directed to a method, which is a process, which is a statutory category of invention. Claims 15 and 17-18 are directed to a non-transitory computer readable medium, which is a manufacture, which is a statutory category of invention. Therefore, claims 1,3-4,7-9,13-15,17-18, 23-24 and 27-33 are directed to patent eligible categories of invention.
Step 2A, Prong 1: Claims 1, 8 and 15 recite the abstract idea of designing a structure, constituting an abstract idea based on Mathematical Concepts including mathematical formulas or equations as well as calculations or alternatively Mental Processes based on concepts performed in the human mind, or with the aid of pencil and paper. The limitation of "indication of a first material of a two-dimensional model object of the three-dimensional design model, wherein the two-dimensional model object corresponds to a face of the physical structure, and indication of a geometry of the two-dimensional model object;” covers mental processes including evaluating a dataset and judging how to model it or alternatively a mathematical concept in the form of crating mathematical representations or vectors to model an object (Spec [0142], [0149]). Additionally, the limitation of “generating, by the computing device plug-in and based on the design information, a first energy analysis model configured to model energy transmission through the two-dimensional model object when configured with the first material;” covers mental processes including making a judgement on how to represent the model, as well as a mathematical concept in the form of vertices information about the location and information for the mathematical model ([0154], [0181]). That is, but for the recitation of by the computing device plug-in or by the computing device, there is nothing that precludes operation of the claim in the human mind. This follows for each additional recitation. Additionally, the limitation of “searching, using a machine learning model and based on the one or more search criteria received via the interface, for one or more alternative designs for the two-dimensional model object, wherein each of the one or more alternative designs comprises: a material different from the first material; and an associated geometry, wherein at least one associated geometry is different from the geometry of the two-dimensional model object;” covers mental processes including making an evaluation of one or more search criteria with respect to a material and a geometry and a judgement about what a second material should be, as well as mathematical concepts in the form of performing a manipulation of a mathematical model as recited in [155] of the specification as filed (also noted in Board decision 3/17/2025). That is, but for the recitation of using a machine learning model, there is nothing that precludes operation of the claim in the human mind. This follows for each additional recitation. Additionally, the limitation of “generating, by the computing device and based on alternative design information comprising indication of a second material different from the first material and based on the location information, a second energy analysis model configured to model energy transmission through the two-dimensional model object when configured with the second material;” covers mental processes including making a judgement about what a second material should be and evaluating a dataset to determine the change of the second material, as well as mathematical concepts in the form of performing a second calculation with different variables. Additionally, the limitation of “generating, based on a comparison of the first energy analysis model stored in the design cache and the second energy analysis model …, a navigable energy chronology comprising a plurality of graphical representations of energy transmission, over a time period, through the two-dimensional model object, wherein the plurality of graphical representations comprises: a first graphical representation of energy transmission through the two-dimensional model object configured with the first material; and a second graphical representation of energy transmission through the two dimensional the two-dimensional model object configured with the second material; and” covers mental processes including evaluating two models and visualizing or drawing a representation of the results, as well as mathematical concepts in the form of calculating a comparison of the two different models. Additionally, the limitation of “based on the first alternative design information, indicating how energy transmission changes through the two-dimensional model object updating at least one of the first graphical representation of the energy chronology or the second graphical representation of the energy chronology” covers mental processes including evaluating how a modification changes the two models and visualizing or drawing a representation of the results, as well as mathematical concepts in the form of calculating how the modification changes the two different models. In claim 8, the locating limitation is also a mental process in the form of evaluating different materials. Thus, the claims recite the abstract idea of a mental process performed in the human mind, or with the aid of pencil and paper.
Dependent claims 3-4, 7, 9, 13-14, 17-18, 23-24 and 27-33 further narrow the abstract ideas, identified in the independent claims.
Step 2A, Prong 2: The judicial exception is not integrated into a practical application. The limitations of “receiving, by a plug-in for a computer-aided design (CAD) application executing on a computing device and for a three-dimensional design model of a physical structure, design information comprising:”, “storing, by the plug-in and in a design cache, the first energy analysis model;”, “storing, by the plug-in and in the design cache, the second energy analysis model;”, “stored in the design cache” in claim 1, and similarly recited in 8 and 15, as well as reciting “receiving indication of a material type; and” in claim 29 are mere instructions to implement an abstract idea using a computer in its ordinary capacity, or merely uses the computer as a tool to perform the identified abstract idea. See MPEP (2106.05(f)) Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a mental process or mathematical concepts) does not integrate a judicial exception into a practical application. (MPEP 2106.05(f)(2)) The additional limitation of “displaying, by the computing device, the first energy analysis model;”, “displaying, by the computing device, the first energy analysis model;” similarly recited in claims 1, 8 and 15, “causing, at a display device based on input received from a user during navigation of the energy chronology, presentation of one of the plurality of graphical representations of the energy chronology; and” in claim 8, as well as “simultaneously presenting the first graphical representation and the second graphical representation” in claim 28 can be viewed as is insignificant extra-solution activity, specifically pertaining to mere data gathering/output necessary to perform the abstract idea (MPEP 2106.05(g)) and is not sufficient to integrate the judicial exception into a practical application. This is akin to selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, which has been identified as extra solution activity. Therefore, the judicial exception is not integrated into a practical application.
Dependent claims 3-4, 7, 9, 13-14, 17-18, 23-24 and 27-33 further narrow the abstract ideas, identified in the independent claims, and do not introduce further additional elements for consideration beyond those addressed above.
Step 2B: Claims 1, 8 and 15 do not include additional elements that are sufficient to amount to significantly more than the judicial exception. The limitations of “receiving, by a plug-in for a computer-aided design (CAD) application executing on a computing device and for a three-dimensional design model of a physical structure, design information comprising:”, “storing, by the plug-in and in a design cache, the first energy analysis model;”, “storing, by the plug-in and in the design cache, the second energy analysis model;”, “stored in the design cache” in claim 1, and similarly recited in 8 and 15, as well as reciting “receiving indication of a material type; and” in claim 29 are mere instructions to implement an abstract idea using a computer in its ordinary capacity, or merely uses the computer as a tool to perform the identified abstract idea. See MPEP (2106.05(f)) Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a mental process or mathematical concepts) does not integrate a judicial exception into a practical application. (MPEP 2106.05(f)(2)) The additional limitation of “displaying, by the computing device, the first energy analysis model;”, “displaying, by the computing device, the first energy analysis model;” similarly recited in claims 1, 8 and 15, “causing, at a display device based on input received from a user during navigation of the energy chronology, presentation of one of the plurality of graphical representations of the energy chronology; and” in claim 8, as well as “simultaneously presenting the first graphical representation and the second graphical representation” in claim 28 can be viewed as is insignificant extra-solution activity, specifically pertaining to mere data gathering/output necessary to perform the abstract idea (MPEP 2106.05(g)) and is not sufficient to integrate the judicial exception into a practical application. This is akin to selecting information, based on types of information and availability of information in a power-grid environment, for collection, analysis and display, which has been identified as extra solution activity. Therefore, the claim as a whole does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional elements, when considered alone or in combination, do not amount to significantly more than the judicial exception. As stated in Section I.B. of the December 16, 2014 101 Examination Guidelines, “[t]o be patent-eligible, a claim that is directed to a judicial exception must include additional features to ensure that the claim describes a process or product that applies the exception in a meaningful way, such that it is more than a drafting effort designed to monopolize the exception.”
The dependent claims include the same abstract ideas recited as recited in the independent claims, and merely incorporate additional details that narrow the abstract ideas and fail to add significantly more to the claims.
Dependent claim 3 is directed to further defining the indication of the geometry, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claim 3 is directed to further defining the indication of the geometry, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claims 4 and 13 are directed to further defining the quantification of a variance and determining if the variance satisfies a threshold, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claim 7 is directed to further defining the presentation of the energy chronology, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claim 9 is directed to further defining an identifier of a manufacturer, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claims 14 and 18 are directed to aggregating energy transmissions, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claim 17 is directed to further defining a determination of a quantified variance, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claims 23 and 24 are directed to further defining an incomplete design and adding an additional two-dimensional face, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claim 27 is directed to further defining the time period, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claim 29 is directed to further defining the constraints on the material, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claim 30 is directed to further defining the different materials, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claim 31 is directed to further defining obtaining of an indication, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claim 32 is directed to further defining the search criteria, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Dependent claim 33 is directed to further defining the providing of a recommendation, which further narrows the abstract idea identified in the independent claim, which is directed to “Mathematical Concepts” or alternatively “Mental Processes.”
Accordingly, claims 1,3-4,7-9,13-15,17-18, 23-24 and 27-33 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e. an abstract idea) without anything significantly more.
Allowable Subject Matter
See Final Rejection dated 11/26/2025.
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Lindberg et al. “Five-year data of measured weather, energy consumption, and time-dependent temperature variations within different exterior wall structures”: Also teaches modeling the transmission of heat through different exterior wall structures.
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/MICHAEL EDWARD COCCHI/Primary Examiner, Art Unit 2188
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