Detailed Action
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. A request for continued examination under 37 CFR 1.114 was filed in this application after a decision by the Patent Trial and Appeal Board, but before the filing of a Notice of Appeal to the Court of Appeals for the Federal Circuit or the commencement of a civil action. 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examination under 37 CFR 1.114 and the fee set forth in 37 CFR 1.17(e) has been timely paid, the appeal has been withdrawn pursuant to 37 CFR 1.114 and prosecution in this application has been reopened pursuant to 37 CFR 1.114. Applicant’s submission filed on 02/11/2026 has been entered.
3. Claims 37-66 and 81-144 are pending.
Decision by Patent Trial and Appeal Board
4. On 08/29/2025, PTAB rendered a decision reversing the rejections under 35 U.S.C. 103 and entering a new ground of rejection pursuant to their authority under 37 C.F.R. 41.50(b). Specifically, PTAB introduced a new ground of rejection under 35 U.S.C. 101 rejecting claims 37 and 81 as being directed to an abstract idea.
Following a Request for Rehearing, PTAB denied the request for reconsideration reaffirming the new ground of rejection under 35 U.S.C. 101.
Claim Rejections - 35 USC § 101
5. 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.
6. Claims 37-66 and 81-144 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. This judicial exception is not integrated into a practical application and the claim(s) do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
As noted in the PTAB Decision:
For Prong 1 of USPTO Step 2A, with the exception of the “storing” step in both independent claims (“storing in a computer memory the model that meets the criteria, if the evaluation indicates the model satisfies the criteria”) and the preamble of claim 81 (“A non-transitory computer-readable medium storing computer-executable instructions executable to perform:”), the entirety of the claim can be performed in the human mind. For example, the human mind is capable of (1) obtaining a model; (2) performing a coupled analysis including “analyzing the model” using both a physics based analysis and cost analysis based on the value of a design variable; (3) evaluating the result of those analyses against criteria to obtain an evaluation…whether or not the model satisfies the criteria; and (4) determining a revised model and iterating the coupled analysis if the criteria is not satisfied. The claims are reicted at a high level of abstraction, and no computer or other tool is needed for those steps in the claims. Thus, the claims recite mental processes. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (“we have treated analyzing information by steps people go through in their mind, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category”).
For Prong 2 of USPTO Step 2A, the claims do not integrate the mental processes into a practical application. The final limitation ("storing in a computer memory the model that meets the criteria, if the evaluation indicates the model satisfies the criteria") constitutes insignificant post-solution activity analogous to outputting or displaying the result. As the Federal Circuit has explained, "merely presenting the results of abstract processes of collecting and analyzing information, without more (such as identifying a particular tool for presentation), is abstract as an ancillary part of such collection and analysis." Elec. Power, 830 F.3d at 1353. Similarly, even if we considered the "obtaining" step under Prong 2 of the USPTO's Step 2A rather than Prong 1, it would still constitute only insignificant pre-solution activity of data-gathering. FairWarning IP, LLC V. Iatric Sys., Inc., 839 F.3d 1089, 1093-94 (Fed. Cir. 2016) ("the 'realm of abstract ideas includes, 'collecting information, including when limited to particular content") (quoting Elec. Power, 830 F.3d at 1353). Finally, the preamble of claim 81 ("A non-transitory computer-readable medium storing computer- executable instructions executable to perform:") merely does the abstract idea on a generic computer. As the Supreme Court has said, "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention." Alice Corp. V. CLS Bank Int'l, 573 U.S. 208, 222-23 (2014). Thus, the additional recitations do not integrate the abstract idea into a practical application.
For USPTO Step 2B, the recited "computer memory" and "non- transitory computer-readable medium" are generic and high-level. The Specification describes them as well-understood, routine, and conventional computer components. E.g., '159 patent, 6:24-26 ("a computer memory 216, such as a RAM, computer storage disk, etc."), 31:43-53 ("Computer-readable instructions can be stored on a tangible non-transitory computer-readable medium, such as a flexible disk, a hard disk, a CD-ROM (compact disk-read only memory), and MO (magneto-optical), a DVD-ROM (digital versatile disk-read only memory), a DVD RAM (digital versatile disk-random access memory), or a semiconductor memory. Alternatively, the methods disclosed herein can be implemented in hardware components or combinations of hardware and software such as, for example, ASICs, special purpose computers, or general purpose computers."), 12:6-10 ("The device may include a processor and/or a memory. The memory may include non-transitory computer readable media including code, logic, or instructions for performing one or more actions, such as the design actions or computations."), 24:27-31 (same). Storing a result in memory, without more, was well-understood, routine, and conventional, and fails to provide significantly more than the abstract idea.”
Furthermore, the addition of the term “integrator” does nothing more than apply the abstract idea to a computer. The integrator as claimed is merely a generic computer component performing an abstract function without any specificity. Merely, reciting an integrator to apply the abstract idea to a computer fails to provide significantly more than the abstract idea. The integrator is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using an integrator amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Thus, independent claims 37 and 81 are directed to an abstract idea
without significantly more.
Dependent claims 38, 82, 111, 122-125 and 136-138 adds additional limitations with respect to obtaining a user selection or a user preference option. The claims do not integrate the mental processes into a practical application. The claims are directed to an abstract idea without significantly more. This judicial exception is not integrated into a practical application because it merely obtains a user selection. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 39-44 and 83-88 are drawn to storing the database. The claims are directed to an abstract idea without significantly more. This judicial exception is not integrated into a practical application because it merely stores a database. Storing in a database, without more, was well-understood, routine, and conventional, and fails to provide significantly more than the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 45-46 and 89-90 are drawn to determining whether to print and printing instructions for a vehicle component. This judicial exception is not integrated into a practical application because it merely determines whether to print the vehicle component and prints instructions if it is determined to 3D print the component. Printing, without more, was well-understood, routine, and conventional, and fails to provide significantly more than the abstract idea. Printing constitutes insignificant post-solution activity. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 47-51 and 91-95 are drawn to user selection of design tradeoffs. The claims do not integrate the mental processes into a practical application. This judicial exception is not integrated into a practical application and fails to provide significantly more than the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 52-58, 61, 96-102, and 105 are drawn to storing additional data in a database. Storing in a database, without more, was well-understood, routine, and conventional, and fails to provide significantly more than the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 59, 103, 107-108, 112-115, 119-120, 126-129, and 133-134 are drawn to what type of physics-based analysis factors and/or vehicle components can be included in the analysis. The claims do not integrate the mental processes into a practical application. The claim is directed to an abstract idea without significantly more. This judicial exception is not integrated into a practical application because it merely obtains a user selection. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 60 and 104 are drawn to presenting a visual representation of a model. Presenting data, without more, was well-understood, routine, and conventional, and fails to provide significantly more than the abstract idea. Presenting data constitutes insignificant post-solution activity. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 62, 106, 121 and 135 are drawn to the coupled analysis receiving information, analyzing and/or determining the cost. As noted with respect to claim 37, the human mind is capable of performing a coupled analysis including “analyzing the model” using both a physics based analysis and cost analysis based on the value of a design variable. The claims are recited at a high level of abstraction, and no computer or other tool is needed for those steps in the claims. Thus, the claims recite mental processes. Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1353-54 (Fed. Cir. 2016) (“we have treated analyzing information by steps people go through in their mind, or by mathematical algorithms, without more, as essentially mental processes within the abstract-idea category”). Thus, the additional recitations do not integrate the abstract idea into a practical application. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 63-64 are drawn to including additional cost analysis factors. The claims do not integrate the mental processes into a practical application. The claim is directed to an abstract idea without significantly more. This judicial exception is not integrated into a practical application because it merely includes additional factors for analysis. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 116-118 and 130-132 are drawn to revising the model by modifying or changing various factors. The claims do not integrate the mental processes into a practical application. The claim is directed to an abstract idea without significantly more. This judicial exception is not integrated into a practical application because it merely includes additional factors for analysis. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 139 and 142 are drawn to including design criteria. The claims do not integrate the mental processes into a practical application. The claim is directed to an abstract idea without significantly more. This judicial exception is not integrated into a practical application because it merely includes design criteria. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Dependent claims 65-66, 109-110, 140-141 and 143-144 are drawn to performing further evaluation and/or analysis. The claims do not integrate the mental processes into a practical application. The claim is directed to an abstract idea without significantly more. This judicial exception is not integrated into a practical application because it merely evaluates the results. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Response to Arguments
Regarding the rejections of claims 37 and 81 under 35 U.S.C. 101, Applicant argues the amendments including an integrator overcome the rejections; however, for reasons articulated above, Examiner does not find the addition of the integrator alone to overcome the rejections under 35 U.S.C. 101. Specifically, the addition of the term “integrator” does nothing more than apply the abstract idea to a computer. The integrator as claimed is merely a generic computer component performing an abstract function without any specificity. Merely, reciting an integrator to apply the abstract idea to a computer fails to provide significantly more than the abstract idea. The integrator is recited at a high-level of generality such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. Thus, the claim is directed to an abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, the additional element of using an integrator amounts to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible.
Conclusion
7. Any inquiry concerning this communication or earlier communications from the examiner should be directed to RACHNA SINGH DESAI whose telephone number is (571)272-4099. The examiner can normally be reached M-F 7:30-4PM EST.
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/RACHNA S DESAI/Reexamination Specialist, Art Unit 3992
Conferees:
/C. Michelle Tarae/Reexamination Specialist, Art Unit 3992
/ALEXANDER J KOSOWSKI/Supervisory Patent Examiner, Art Unit 3992
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