DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The amendment filed 03/03/2026 has been received and considered. Claims 1-20 are presented for examination.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 03/03/2026 has been entered.
Priority
This application repeats a substantial portion of prior Application No. 16802645, filed 02/27/2020, and adds disclosure not presented in the prior application. The Specification reads "CROSS-REFERENCE TO RELATED APPLICATIONS [0001] This application is a continuation-in-part (and claims the benefit of priority under 35 USC 120) of U.S. application No. 16/802645 filed February 27, 2020". However, the filed ADS and thus PALM reads "the application, filed 03/19/2020 is a continuation of 16802645, filed 02/27/2020". Applicant needs to file a New Marked ADS. Regarding the Claim of Priority as a continuation of 16802645, claims 1-20 are not entitled to the benefit of the prior application.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 8-14, 18, and 19 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention.
Claim 8 recites the limitation "the bundle" in line(s) 13. There is insufficient antecedent basis for this limitation in the claim. There is a plurality of "bundles" anteceding this limitation. The recitation of “the bundle” is unclear because it is uncertain which of the plurality was intended.
Claim 8 recites the limitation "the manipulated bundles" in line(s) 20-21. There is insufficient antecedent basis for this limitation in the claim. There are no "manipulated bundles" anteceding this limitation.
Claim 11 recites the limitation "the manipulation of the bundles" in line(s) 1-2. There is insufficient antecedent basis for this limitation in the claim. There is no "manipulation of the bundles" anteceding this limitation.
Claim 18 recites the limitation "the manipulation of the bundle" in line(s) 1-2. There is insufficient antecedent basis for this limitation in the claim. There is no "manipulation of the bundle" anteceding this limitation.
Dependent claims inherit the defect of the claim from which they depend.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent claim 1, Step 1: a method (process = 2019 PEG Step 1 = yes).
Independent claim 1, Step 2A, Prong One: Claim 1 recites:
detecting, by at least one processor, a series of assemblies which comprise a building model, wherein a set of roof trusses are identified based on a set of properties which are associated with roof trusses and isolated from other assemblies within the building model;
processing, by at least one processor, a first set of data related to each of the set of roof trusses in a first configuration, wherein the first set of data is related to members of each of the roof trusses and the interface between these members;
grouping, by at least one processor, a first group of the set of roof trusses into a bundle in a second configuration, wherein the first group of the set of roof trusses is based on the processed first set of data;
analyzing, by at least one processor, the bundle relative to the volume of a shipping vessel, wherein it is determined if the bundle can fit within the shipping vessel;
manipulating, by at least one processor, the bundle of set of roof trusses based on limitations of the shipping vessel into a third configuration, and formulating, by at least one processor, a manufacturing order of the members of the manipulated bundle…
Claim 1 is substantially drawn to mental concepts: observation, evaluation, judgment, opinion. Information and/or data also fall within the realm of abstract ideas because information and data are intangible. See Electric Power Group1 (Electric Power hereinafter): “Information… is an intangible”. The limitations, as drafted and under their broadest reasonable interpretation, cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting computer and at least one processor nothing precludes the claimed limitations from practically being performed in the mind.
As to the limitations “detecting, by at least one processor, a series of assemblies which comprise a building model, wherein a set of roof trusses are identified based on a set of properties which are associated with roof trusses and isolated from other assemblies within the building model” and “analyze the bundles relative to the volume of a shipping vessel, wherein it is determined if the bundles can fit within the shipping vessel”, these limitations, as drafted and under a broadest reasonable interpretation, can be characterized as entailing a user identifying/analyzing (observations, evaluations) and deciding/determining (judgments), i.e., processing information and/or data, considering vessel dimensions, i.e. whether bundles fit within a vessel, that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “processing, by at least one processor, a first set of data related to each of the set of roof trusses in a first configuration, wherein the first set of data is related to members of each of the roof trusses and the interface between these members", these activities can be characterized as entailing a user judging, i.e. processing, information and/or data, that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “grouping, by at least one processor, a first group of the set of roof trusses into a bundle in a second configuration, wherein the first group of the set of roof trusses is based on the processed first set of data”, these limitations, as drafted and under a broadest reasonable interpretation, can be characterized as entailing a user deciding/determining (judgments) which roof trusses are to be grouped/bundled, i.e., processing information and/or data, that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “manipulating, by at least one processor, the bundle of set of roof trusses based on limitations of the shipping vessel into a third configuration”, these limitations, as drafted and under a broadest reasonable interpretation, can be characterized as entailing a user deciding/determining (judgments) which roof trusses can be grouped/bundled, i.e., processing information and/or data, considering vessel dimensions, i.e. whether bundles fit within a vessel, that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “formulating, by at least one processor, a manufacturing order of the members of the manipulated bundle", these activities can be characterized as entailing a user judging, i.e. processing, information and/or data, that can be performed in the human mind or by a human using a pen and paper.
If a claim limitation, under its broadest reasonable interpretation, covers mental processes, then it falls within the "(c) Mental processes" grouping of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes, (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Independent claim 1, Step 2A, Prong two: The claim recites the additional elements computer and at least one processor.
As to the limitations, “for optimizing the shipping of roof trusses”, this is intended use.
As to the limitations “generating, by at least one processor, an output in the form of a graphical representation of the bundle and the position of the bundle within the shipping vessel and displaying the graphical representation of the bundle”, these limitations describe the concept of generic displaying. Displaying has not been held by the courts to be enough to integrate the abstract idea into a practical application or qualify as “significantly more”. See Electric Power.
As to the limitations "in a user interface", a GUI is a well-known graphical modeling means, and it is well-understood, routine, and conventional in the art.
As to the limitations "wherein the graphical representation of the bundle is readable by a roll forming machine; manufacturing, by at least one processor, the members by the roll forming machine, wherein the roll forming machine creates the members based on the manufacturing order", the limitations appear to be just “apply it” limitations, because the claim recites only the idea of a solution or outcome, i.e. the claim fails to recite details of how a solution to a problem is accomplished.
This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Independent claim 1, Step 2B: As discussed with respect to Step 2A, Prong two, the claim recites the additional elements computer and at least one processor; they are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with a computerized system. Their collective functions merely provide conventional computer implementation. The use of a computer to implement the abstract idea of a mental algorithm has not been held by the courts to be enough to qualify as “significantly more”. The implementation on a computing system is described in the specification (underline emphasis added):
"[0056] Computing device 104 may be a management server, a web server, or any other electronic device or computing system capable of processing program instructions and receiving and sending data. In other embodiments, computing device 104 may be a laptop computer, tablet computer, netbook computer, personal computer (PC), a desktop computer, or any programmable electronic device… [0088] The computer readable program instructions may also be loaded onto a computer, other programmable data processing apparatus, or other device to cause a series of operational steps to be performed on the computer, other programmable apparatus or other device to produce a computer implemented process".
As discussed with respect to Step 2A, Prong two, the intended use limitations remain intended use even upon reconsideration, because no actual optimization of shipping is performed in the body of the claim.
As discussed with respect to Step 2A, Prong two, claim recites displaying, these limitations are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration.
As discussed with respect to Step 2A, Prong two, the additional element “in a user interface” is a well-known graphical modeling means, and it is well-understood, routine, and conventional in the art. GUIs have been found by the courts as not adding an inventive component/concept to claims to render them patentable. The GUI is described in the specification (underline emphasis added):
"[0044] Software as a Service (SaaS): the capability provided to the consumer is to use the provider's applications running on a cloud infrastructure. The applications are accessible from various client devices through a thin client interface such as a web browser (e.g., web-based e-mail)".
As discussed with respect to Step 2A, Prong two, limitations reciting only the idea of a solution or outcome are just “apply it” limitations, because they fail to recite details of how a solution to a problem is accomplished. See MPEP 2106.05(f)(1). The limitations are so broad that nothing is known about how the claimed "manufacturing, by at least one processor, the members by the roll forming machine, wherein the roll forming machine creates the members based on the manufacturing order” is performed. Examiner notes that the claimed "manufacturing, by at least one processor, the members” is dissonant with "manufacturing
"[0004] Cold formed steel members are manufactured from the roll forming machines in various lengths as per the user inputs and the member designs”.
See also for example in the Specification of the parent U.S. application No. 16802645 (underline emphasis added):
"[0025] In the typical construction process a model of the building (e.g. structure, home, office building, hospital, garage, barn, apartment building, etc.) is created. This model is comprised of all the members which form the frame of the building. The members form assemblies (e.g. panels, joists, trusses, etc.) which them form the walls, floors, and roof. The next step is to generate the manufacturing files for the roll forming machine to produce these members to the design specifications“.
Thus, taken alone the individual additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the additional elements taken individually. There is no indication that their combination improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claim does not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Independent claim 8, Step 1: a computer program product (manufacture = 2019 PEG Step 1 = yes).
Independent claim 8, Step 2A, Prong One: Claim 8 recites:
analyze a building model, wherein a set of roof trusses are isolated;
process a first set of data related to each of the set of roof trusses, wherein the first set of data is related to members of each of the roof trusses and the interface between these members;
group a first group of the set of roof trusses into bundles, wherein the first group of the set of roof trusses is based on the processed first set of data and the bundle forms a first configuration;
analyze the bundles relative to the volume of a shipping vessel, wherein it is determined if the bundles can fit within the shipping vessel;
transform the bundles of roof trusses based on limitations of the shipping vessel, wherein the bundles fit within the shipping vessel with the least amount of dead space, and wherein a bundling process is determined and a second configuration of the set of roof trusses is formed;
formulate a manufacturing order of the members in the manipulated bundles, wherein the manufacturing order is readable by a roll forming machine…
Claim 8 is substantially drawn to mental concepts. The limitations, as drafted and under their broadest reasonable interpretation, cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting one or more computer readable storage media nothing precludes the claimed limitations from practically being performed in the mind.
As to the limitations “analyze a building model, wherein a set of roof trusses are isolated” and “analyze the bundles relative to the volume of a shipping vessel, wherein it is determined if the bundles can fit within the shipping vessel”, these limitations, as drafted and under a broadest reasonable interpretation, can be characterized as entailing a user analyzing (observations, evaluations) and deciding/determining (judgments), i.e., processing information and/or data, considering vessel dimensions, i.e. whether bundles fit within a vessel, that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “process a first set of data related to each of the set of roof trusses, wherein the first set of data is related to members of each of the roof trusses and the interface between these members", these activities can be characterized as entailing a user judging, i.e. processing, information and/or data, that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “group a first group of the set of roof trusses into bundles, wherein the first group of the set of roof trusses is based on the processed first set of data and the bundle forms a first configuration”, these limitations, as drafted and under a broadest reasonable interpretation, can be characterized as entailing a user deciding/determining (judgments) which roof trusses are to be grouped/bundled, i.e., processing information and/or data, that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “transform the bundles of roof trusses based on limitations of the shipping vessel, wherein the bundles fit within the shipping vessel with the least amount of dead space, and wherein a bundling process is determined and a second configuration of the set of roof trusses is formed”, these limitations, as drafted and under a broadest reasonable interpretation, can be characterized as entailing a user deciding/determining (judgments) which roof trusses can be grouped/bundled, i.e., processing information and/or data, considering vessel dimensions, i.e. whether bundles fit within a vessel, that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “formulate a manufacturing order of the members in the manipulated bundles, wherein the manufacturing order is readable by a roll forming machine", these activities can be characterized as entailing a user judging, i.e. processing, information and/or data, that can be performed in the human mind or by a human using a pen and paper.
If a claim limitation, under its broadest reasonable interpretation, covers mental processes, then it falls within the "(c) Mental processes" grouping of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes, (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Independent claim 8, Step 2A, Prong two: The claim recites the additional elements one or more computer readable storage media.
As to the limitations, “for optimizing the shipping of roof trusses”, this is intended use.
As to the limitations “generate a graphical representation of the bundles and the position of the bundles within the shipping vessel and present the graphical representation of the bundles”, these limitations describe the concept of generic displaying. Displaying has not been held by the courts to be enough to integrate the abstract idea into a practical application or qualify as “significantly more”. See Electric Power.
As to the limitations "within a user interface", a GUI is a well-known graphical modeling means, and it is well-understood, routine, and conventional in the art.
As to the limitations "program instructions to generate an output data set which is readable by the roll forming machine and wherein the output data set is used for the manufacture the members using the roll forming machine, and wherein the members are manufactured in an order which coincides with the bundles", the limitations appear to be just “apply it” limitations, because the claim recites only the idea of a solution or outcome, i.e. the claim fails to recite details of how a solution to a problem is accomplished.
This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Independent claim 8, Step 2B: As discussed with respect to Step 2A, Prong two, the claim recites the additional elements one or more computer readable storage media; the use of a computer to implement the abstract idea of a mental algorithm has not been held by the courts to be enough to qualify as “significantly more”. (See Independent claim 1, Step 2B above).
As discussed with respect to Step 2A, Prong two, the intended use limitations remain intended use even upon reconsideration, because no actual optimization of shipping is performed in the body of the claim.
As discussed with respect to Step 2A, Prong two, claim recites displaying, these limitations are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration.
As discussed with respect to Step 2A, Prong two, the GUI limitations have been found by the courts as not adding an inventive component/concept to claims to render them patentable. (See Independent claim 1, Step 2B above).
As discussed with respect to Step 2A, Prong two, limitations reciting only the idea of a solution or outcome are just “apply it” limitations, because they fail to recite details of how a solution to a problem is accomplished. (See Independent claim 1, Step 2B above).
Thus, taken alone the individual additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the additional elements taken individually. There is no indication that their combination improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claim does not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Independent claim 15, Step 1: a system (machine = 2019 PEG Step 1 = yes).
Independent claim 15, Step 2A, Prong One: Claim recites:
analyzing a building model, wherein a set of roof trusses are isolated;
processing a first set of data related to each of the set of roof trusses, wherein the first set of data is related to members of each of the roof trusses and the interface between these members and a first configuration of the roof trusses is formed;
grouping a first group of the set of roof trusses into a bundle, wherein the first group of the set of roof trusses is based on the processed first set of data and a second configuration of the roof trusses is formed;
analyzing the bundle relative to the volume of a shipping vessel, wherein it is determined if the bundle can fit within the shipping vessel;
transforming, by at least one processor the members of the first group of the set of roof trusses of the bundle based on limitations of the shipping vessel, wherein the space within the shipping vessel is maximized and wherein a third configuration of the roof trusses is formed;
formulating a manufacturing order of the members in the bundle, wherein the manufacturing order is readable by a roll forming machine
Claim 15 is substantially drawn to mental concepts. The limitations, as drafted and under their broadest reasonable interpretation, cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting one or more computer processors and one or more computer readable storage media nothing precludes the claimed limitations from practically being performed in the mind.
As to the limitations “analyzing a building model, wherein a set of roof trusses are isolated” and “analyzing the bundle relative to the volume of a shipping vessel, wherein it is determined if the bundle can fit within the shipping vessel”, these limitations, as drafted and under a broadest reasonable interpretation, can be characterized as entailing a user analyzing (observations, evaluations) and deciding/determining (judgments), i.e., processing information and/or data, considering vessel dimensions, i.e. whether bundles fit within a vessel, that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “processing a first set of data related to each of the set of roof trusses, wherein the first set of data is related to members of each of the roof trusses and the interface between these members and a first configuration of the roof trusses is formed", these activities can be characterized as entailing a user judging, i.e. processing, information and/or data, that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “grouping a first group of the set of roof trusses into a bundle, wherein the first group of the set of roof trusses is based on the processed first set of data and a second configuration of the roof trusses is formed”, these limitations, as drafted and under a broadest reasonable interpretation, can be characterized as entailing a user deciding/determining (judgments) which roof trusses are to be grouped/bundled, i.e., processing information and/or data, that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “transforming, by at least one processor the members of the first group of the set of roof trusses of the bundle based on limitations of the shipping vessel, wherein the space within the shipping vessel is maximized and wherein a third configuration of the roof trusses is formed”, these limitations, as drafted and under a broadest reasonable interpretation, can be characterized as entailing a user deciding/determining (judgments) which roof trusses can be grouped/bundled, i.e., processing information and/or data, considering vessel dimensions, i.e. whether trusses fit within a vessel, that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “formulating a manufacturing order of the members in the bundle, wherein the manufacturing order is readable by a roll forming machine", these activities can be characterized as entailing a user judging, i.e. processing, information and/or data, that can be performed in the human mind or by a human using a pen and paper.
If a claim limitation, under its broadest reasonable interpretation, covers mental processes, then it falls within the "(c) Mental processes" grouping of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes, (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Independent claim 15, Step 2A, Prong two: The claim recites the additional elements one or more computer processors and one or more computer readable storage media.
As to the limitations, “for optimizing the shipping of roof trusses”, this is intended use.
As to the limitations "creating an output data set based on the manufacturing order which is readable by a roll forming machine; and manufacturing the members using the roll forming machine, wherein the members are manufactured in a predetermined order to form the bundle", the limitations appear to be just “apply it” limitations, because the claim recites only the idea of a solution or outcome, i.e. the claim fails to recite details of how a solution to a problem is accomplished.
This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Independent claim 15, Step 2B: As discussed with respect to Step 2A, Prong two, the claim recites the additional elements one or more computer processors and one or more computer readable storage media; the use of a computer to implement the abstract idea of a mental algorithm has not been held by the courts to be enough to qualify as “significantly more”. (See Independent claim 1, Step 2B above).
As discussed with respect to Step 2A, Prong two, the intended use limitations remain intended use even upon reconsideration, because no actual optimization of shipping is performed in the body of the claim.
As discussed with respect to Step 2A, Prong two, limitations reciting only the idea of a solution or outcome are just “apply it” limitations, because they fail to recite details of how a solution to a problem is accomplished. (See Independent claim 1, Step 2B above).
Thus, taken alone the individual additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the additional elements taken individually. There is no indication that their combination improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claim does not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Dependent claims, Step 2A, Prong One: Dependent claims are substantially drawn to mental processes as their independent claims but for the recitation of generic computer components. (See Independent claims, Step 2A Prong One above). If a claim limitation, under its broadest reasonable interpretation, covers mental processes, then it falls within the "(c) Mental processes" grouping of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes, (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Dependent claims, Step 2A Prong two: The claims do not include additional elements that integrate the abstract idea into a practical application.
As to the simulating limitations of dependent claims 2, 9, and 16, the limitations appear to be just “apply it” limitations, because the claims recite only the idea of a solution or outcome, i.e. the claims fail to recite details of how a solution to a problem is accomplished.
This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Dependent claims, Step 2B: As discussed with respect to Step 2A, Prong two, in these claims, no additional elements are provided that are sufficient to amount to significantly more than the judicial exception when considered individually and in combination and therefore the claims do not provide an inventive concept in Step 2B.
As discussed with respect to Step 2A, Prong two, the simulating limitations of dependent claims 2, 9, and 16 appear to be just “apply it” limitations, because the claims recite only the idea of a solution or outcome, i.e. the claims fail to recite details of how a solution to a problem is accomplished. The limitations are so broad that nothing is known about how the claimed simulating is performed. Simulating or modeling is not even mentioned the original specification and merely repeated once in the parent U.S. application No. 16802645:
"[0029]… Required position means the Global position of the member in reference to the modeling software x, y, and z, axes".
Therefore, the claims do not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Allowable Subject Matter
Claims 1-20 are allowable over prior art of record. They will be allowed once all outstanding rejections/objections are traversed.
A reason for the indication of allowable subject matter was provided in the Office Action dated 09/03/2025.
Response to Arguments
Regarding the Claim of Priority, Applicant provided no arguments. Claims 1-20 are not entitled to the benefit of the prior application as a continuation. (See above).
Regarding the rejections under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, Applicant's arguments have been considered and they are persuasive, the rejections are withdrawn.
Regarding the rejections under 112(b), the amendment corrected no deficiencies.
Regarding the claims rejections under 101, Applicant's arguments have been considered but they are not persuasive. Claim rejections remain. Applicant argues, (see 1st page, last paragraph to third page, 1st paragraph; third page, third paragraph):
‘… the claimed subject matter is physical rather than being a mere mental process, and thus is not an abstract idea. They require the use of a computing device, and are of a nature which could not be performed as a mental process…
The claimed invention transforms/manipulates the roof trusses from a first form to a second form (and in some instances a third form) where the assembled roof truss is transformed into a bundle, and then the bundle is transformed again to fit within the shipping container. This is important because the main issue this patent is designed to overcome is that once a roof truss is created in a 3D model, there is no software or method to transfer that 3D model to a real world roof truss AND then how to ship that real world roof truss for assembly.
The present invention also transforms the 3D model to create a new 3D model of the bundle and may even further modify the new 3D model of the bundle. Thus there are multiple new files/drawings/models which are created included as well as creates the illustrations of the model, assemblies, in both an assembled and disassembled view, that previously did not exist. Thus, there is an advanced computing technique being used as well as newly created data sets related to the illustrations and models. The members or models of the members are modified, and a new final product is formed that previously did not exist. The present invention also highlights or identifies further the conflicting members for easy visual access for the user. This is a modification to members within the present model that were not previously present.
The components of the claims do limit the claims, as the claims are designed to work with a computer program or a computer program product that is able to create these initial 3D models or locate a previously created 3D model. Thus, it is a specific piece of software or programing which is required and the computer is the means to access this software…
The claimed invention provides for an inventive concept… invention manipulates a model using a set of construction requirements to create illustrations for the many sections of the model that provide a clear and corrected image of all the section members’
Examiner's response: Applicant's argument is not persuasive, because as to Applicant’s argument 'claimed invention transforms/manipulates the roof trusses from a first form to a second form (and in some instances a third form)', the specification merely reads: “[0008]… manipulating, by at least one processor the bundle of roof trusses based on limitations of the shipping vessel”. Merely repeating the term "manipulating" throughout the Specification does not rise to a level of a definition of a term. In the absence of an elaboration of any special meanings for this term in the claims and Application description, there are no distinguishing features claimed. Therefore throughout the prosecution of this application, the claims have been given a broad reasonable interpretation in light of the Application description according to definitions of this term well known to any one of ordinary skill in the pertinent art.
A transformation of one data form to another data form is not statutory. This idea is similar to the basic concept of manipulating information using mathematical relationships, e.g., converting numerical representation in Gottschalk v. Benson2 (Benson hereinafter), which has been found by the courts to be an abstract idea. Transformation of data is not a transformation or reduction of a particular article to a different state or thing – (underline emphasis added). Therefore, the claims are directed to an abstract idea. Applicant argues ‘there are multiple new files/drawings/models which are created included as well as creates the illustrations of the model, assemblies, in both an assembled and disassembled view, that previously did not exist’, but transformation of information and/or data is not statutory, since it is not a transformation or reduction of a particular article to a different state or thing – (underline emphasis added). Information and/or data also fall within the realm of abstract ideas because information and data are intangible. Claims do not transform an article, i.e., some type of tangible or physical object, but instead transform an intangible concept, i.e., information, from one form to another. See MPEP § 2106.05(c) ‘An "article" includes a physical object or substance. The physical object or substance must be particular, meaning it can be specifically identified. "Transformation" of an article means that the "article" has changed to a different state or thing’; see also Benson (holding that an algorithm that merely transforms data from one form to another is not patent-eligible). See Applicant's arguments, (1st page, second to fifth paragraphs) – underline emphasis added:
‘… The transformation of the roof truss into a bundle is clearly defined in paragraphs [0073] - [0081].
... The bundle optimization program 108 is able to process the construction of each roof truss, determine the maximum dimension of the construction process at each stage, compare this to the shipping vessel limitations, and determine at what stage the construction of the roof truss should be suspended so that the roof truss will fit within the shipping vessel… the bundle optimization program 108 may alter the bundles based on the overall sequence of which the bundles are loaded into the container. This may include adjusting the overall length of the bundles, the order of the roof trusses within the bundles, or possibly combining bundles based on the benefits that the combination may produce...
This describes the transformation of the steel material into the "C" channel members, the creation of the members that are used to construct the trusses, and then the transformation of the truss into a bundle. This is the first, second, and third configurations of the members from the beginning to the end of the process…'
At the end of each amended independent claim, in the manufacturing limitations there may be formation but no transformation of an article (a physical truss of members) into a different thing. The claims do not effect any transformation of members from a physical initial configuration to a physical final configuration. The claims lack a physical initial configuration. The claims may model bundling a virtual initial configuration to a virtual final configuration, and towards their ends, they manufacture or form physical members of a truss based on the virtual final configuration. The manufacturing limitations appear to be just “apply it” limitations. (See Independent claim 1, Step 2B above).
Applicant further argues (see third page, second paragraph; third page, next to last paragraph to fourth page, fifth paragraph):
‘… invention provides a clear practical application of the judicial exception the purpose of the invention is designed based on known issues with fitting items in a shipping container especially long before the items are ever put in the shipping container. This invention reduces the chances of over or under packing a shipping container or having to make changes that could damage the items when trying to fit them in. Through the design and redesign of the bundles the items fit in easily and securing without the need to do any thing. The present invention simulates the real-world assembly process to correcting the issues at the 3D model stage, correct the members so no conflicts exist, generate an assembly process of the assemblies, and identify and incorporate into the 3D model the fastening locations, through an understanding of a set of construction requirements which are used by the machine learning model…
… invention provides both the process and a tangible final product (e.g. the data set or the drawings/models related to the data set) for reaching the solution to this problem, and not just the outcome. The method of the technical solutions are identified in the amended claims to improve the functioning of a computer, is beyond a mere mental process, and provides a process which is novel in light of the prior art…
In determining patent eligibility, examiners should consider whether the claim "purport(s) to improve the functioning of the computer itself" or "any other technology or technical field…
… claims provide for the inclusion of a roll forming machine to manufacture the members in an order to create the bundle as described in paragraph 0058. As well as design the bundles so as to maximize the use of the space within the shipping vessel (e.g. as little dead space as possible), as describe in paragraph 0081…’
As pointed out by Applicant, the application description reads (underline emphasis added):
'[0058] Bundle optimization program 108 has the unique features to take all members of a roof joist group of these building roof trusses and determine a preferred manufacturing order and bundling process to maximize the number of members which can be placed within a single shipping container. The bundling process is further simplified by determining the preferred manufacturing order so that each member that comes out of the forming machine can be bundled one after the next and the workers do not need to bundle the members in a random or more complicated order. This also further assists with the unpacking at the work site in that the members are bundled in a way the workers can easily remove the bundles and assemble the roof trusses in a methodical and efficient order…
[0081] Figure 9 depicts an illustration of a bundle 800 placed on a vehicle for shipping. The bundle, in this embodiment are placed on the vehicle bed… the roof trusses and thus the bundle may not form a perfect rectangle, but may be designed to integrate with another bundle to create as little dead space as possible within the shipping vessel'.
The MPEP reads (underline emphasis added):
‘2106.05(f) Mere Instructions To Apply An Exception [R-10.2019]… (1) Whether the claim recites only the idea of a solution or outcome i.e., the claim fails to recite details of how a solution to a problem is accomplished. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words "apply it"…
By way of example, in Intellectual Ventures… In addition to the abstract idea, the claims also recited the additional element of modifying the underlying XML document in response to modifications made in the dynamic document.… Although the claims purported to modify the underlying XML document in response to modifications made in the dynamic document, nothing in the claims indicated what specific steps were undertaken other than merely using the abstract idea in the context of XML documents. The court thus held the claims ineligible, because the additional limitations provided only a result-oriented solution and lacked details as to how the computer performed the modifications, which was equivalent to the words "apply it"’.
Examiner's response: Applicant's argument is not persuasive, because contrary to Applicant's argument 'improve the functioning of the computer itself', there is no combination of additional elements such that an improvement to the computer itself is realized. The specification (see supra paragraphs [0058] and [0081]) does not back up Applicant's assertion that 'the claim "purport(s) to improve the functioning of the computer itself'.
The computer additional elements are recited at a high level of generality and as performing generic computer functions routinely used in computer applications. The use of a computer to implement the abstract idea of a mental algorithm has not been held by the courts to be enough to qualify as “significantly more”. The claimed invention invokes computers merely as a tool to perform a mental process. Use of a computer in its ordinary capacity or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not provide significantly more. See MPEP "2106.04(a)(2) Abstract Idea Groupings [R-07.2022]… III. MENTAL PROCESSES… C. A Claim That Requires a Computer May Still Recite a Mental Process. Claims can recite a mental process even if they are claimed as being performed on a computer…”
As to Applicant’s argument 'invention simulates the real-world assembly process to correcting the issues at the 3D model stage, correct the members so no conflicts exist, generate an assembly process of the assemblies, and identify and incorporate into the 3D model the fastening locations, through an understanding of a set of construction requirements which are used by the machine learning model', the simulating limitations of dependent claims 2, 9, and 16 appear to be just “apply it” limitations, because the claims recite only the idea of a solution or outcome, i.e. the claims fail to recite details of how a solution to a problem is accomplished. The limitations are so broad that nothing is known about how the claimed simulating is performed. Simulating or modeling is not even mentioned the original specification and merely repeated once in the parent U.S. application No. 16802645: "[0029]… Required position means the Global position of the member in reference to the modeling software x, y, and z, axes". Claims are mute about "machine learning model", as argued
As to the independent claims manufacturing limitations, they are recited so generically (no details whatsoever are provided) that they represent no more than just “apply it” limitations. These claim limitations recite only the idea of a solution or outcome i.e., these claim limitations fail to recite details of how a solution to a problem is accomplished. There is no elaboration of any special meanings for these amended limitations in the claims and Application description. (See MPEP 2106.05(f)(1) supra and Independent claims, Step 2B above). Examiner notes that the claimed "1… manufacturing, by at least one processor, the members” is dissonant with "1… manufacturingIndependent claim 1, Step 2B above). There is no combination of additional elements that improves the functioning of a computer itself or improves any other technology.
Conclusion
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/JUAN C OCHOA/Primary Examiner, Art Unit 2186
1 Electric Power Group, LLC v. Alstom S.A., 119 USPQ2d 1739 Fed. Cir. 2016
2 Gottschalk v. Benson, 409 U.S. 63, 67 (1972)