DETAILED ACTION
This action is in response to the amendments filed on Jan. 20th, 2026. A summary of this action:
Claims 1-3, 5-7, 9-10 have been presented for examination.
Claims 1-3, 5-7, 9-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement
Claims 1-3, 5-7, 9-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of a mental process without significantly more.
This action is Final
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 .
Response to Arguments/Amendments
Regarding the § 112(a) Rejection
Withdrawn, new grounds as necessitated by amendment.
With respect to the remarks, regarding BRI, these imply BRI requires importation of limitations into the claims with no express basis in the claim language itself. MPEP § 2111: “In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541, 550-51 (CCPA 1969) (Claim 9 was directed to a process of analyzing data generated by mass spectrographic analysis of a gas. The process comprised selecting the data to be analyzed by subjecting the data to a mathematical manipulation. The examiner made rejections under 35 U.S.C. 101 and 35 U.S.C. 102. In the 35 U.S.C. 102 rejection, the examiner explained that the claim was anticipated by a mental process augmented by pencil and paper markings. The court agreed that the claim was not limited to using a machine to carry out the process since the claim did not explicitly set forth the machine. The court explained that "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." The court found that applicant was advocating the latter, i.e., the impermissible importation of subject matter from the specification into the claim.).”
Rather, BRI is reasonably construing what the terms expressly recited in the claims themselves would have conveyed to POSITA. MPEP § 2111.01(I and III):” The ordinary and customary meaning of a term may be evidenced by a variety of sources, including the words of the claims themselves, the specification, drawings, and prior art. However, the best source for determining the meaning of a claim term is the specification - the greatest clarity is obtained when the specification serves as a glossary for the claim terms. Phillips v. AWH Corp., 415 F.3d 1303, 1315, 75 USPQ2d 1321, 1327 (Fed. Cir. 2005) (en banc) ("[T]he specification ‘is always highly relevant to the claim construction analysis. Usually, it is dispositive; it is the single best guide to the meaning of a disputed term.’" (quoting Vitronics Corp. v. Conceptronic Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996))…. "[T]he ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention, i.e., as of the effective filing date of the patent application." Phillips v. AWH Corp.,415 F.3d 1303, 1313, 75 USPQ2d 1321, 1326 (Fed. Cir. 2005) (en banc); Sunrace Roots Enter. Co. v. SRAM Corp., 336 F.3d 1298, 1302, 67 USPQ2d 1438, 1441 (Fed. Cir. 2003); Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1298, 67 USPQ2d 1132, 1136 (Fed. Cir. 2003) ("In the absence of an express intent to impart a novel meaning to the claim terms, the words are presumed to take on the ordinary and customary meanings attributed to them by those of ordinary skill in the art.")….” - emphasis by Examiner on “meaning of a claim term”, i.e. definition of a claim term expressly recited, hence one is to use the specification as a “glossary” when the specification “serves” as such.
Claim recites: “identifying one or more elements of the product based on the 3D representation in the assembly file;”
Specification recites at ¶ 43: “Successively, features of the one or more elements of the product may be determined using a feature recognition technique. The feature recognition technique operates on boundary representation models of products…”
The claim does not expressly recite that the identifying step is “using a feature recognition technique”, and thus there is no express basis to import this feature into claim construction.
Rather, see ¶ 52: “In accordance with the above defined priority of identifying elements, the system 102 may firstly identify the Bush 700 from its 3D representation, as illustrated in Figure 7a.” – which is entirely silent as to how this is done, but rather simply says to do the identification from the 3D representation.
Of particular note, ¶ 43 makes no mention of the 3D representation. Rather, that is in ¶ 42: “In one implementation, at first, a 3-Dimensional (3D) representation of the product is obtained. Alternatively, a 3D model of the product may be inputted to the system”.
Instead, ¶ 43 recites: “The feature recognition technique operates on boundary
representation models of products.” Which is the sole disclosure of boundary representation models, with no link back expressly in the specification to the 3D representation.
Furthermore:
Claim recites: “determining a geometric symmetry of each of the identified one or more elements using the 2D representation determined from its 3D representation based on the 3D
representation”
This requires 3 things in the following exact order by the order expressly recited in the claim:
1) First determine a 2D representation from a 3D representation;
2) Identify the elements using the 2D representation; and
3) Determine a geometry symmetry of the identified elements.
¶ 52: “In accordance with the above defined priority of identifying elements, the system 102 may firstly identify the Bush 700 from its 3D representation, as illustrated in Figure 7a. From the 3D representation, the system 102 may determine a 2D representation of the Bush 700, as illustrated in Figure 7a. The system 102 may determine that the Bush 700 will be manufactured using the turn operation, as the Bush 700 is axis symmetric and has cylindrical faces”
¶ 53: “Successively, the system 102 may identify the Pivot 702 from its 3D representation, as illustrated in Figure 7b. From the 3D representation, the system 102 may determine a 2D representation of the Pivot 702, as illustrated in Figure 7b'. The system 102 may determine that the Pivot 702 will be manufactured using the machining operation, as the Pivot 702 comprises 5-hole features and 2 -slot features.”
¶¶ 54-56.
Note, in particular, that there are two entirely separate disjoint acts in the specification, i.e. “In accordance with the above defined priority of identifying elements, the system 102 may firstly identify the Bush 700 from its 3D representation, as illustrated in Figure 7a.” and the separate act of “From the 3D representation, the system 102 may determine a 2D representation of the Bush 700, as illustrated in Figure 7a”
There is no disclosure that sufficiently conveys that one act uses another, i.e. # 1 is the second act, and # 2 in the above claim is entirely unsupported because the specification expressly recites that it is to “identify the Bush 700 [an element] from its 3D representation”, not its 2D representation.
As was stated in shorter form in the prior § 112(a) rejection.
To be clear, MPEP 2173.05(I): “Ex parte Parks, 30 USPQ2d 1234, 1236 (Bd. Pat. App. & Inter. 1993). "Rather, as with positive limitations, the disclosure must only 'reasonably convey[] to those skilled in the art that the inventor had possession of the claimed subject matter as of the filing date.' ... While silence will not generally suffice to support a negative claim limitation, there may be circumstances in which it can be established that a skilled artisan would understand a negative limitation to necessarily be present in a disclosure." Novartis Pharms. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013, 2022 USPQ2d 569 (Fed. Cir. 2022) (quoting Ariad Pharm. Inc. v. Eli Lilly & Co., 589 F.3d 1336, 1351, 94 USPQ2d 1161, 1172).” MPEP § 2163(II)(A): “Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007), the examiner made a prima facie case by clearly and specifically explaining why applicant’s specification did not support the particular claimed combination of elements, even though applicant’s specification listed each and every element in the claimed combination. The court found the "examiner was explicit that while each element may be individually described in the specification, the deficiency was lack of adequate description of their combination" and, thus, "[t]he burden was then properly shifted to [inventor] to cite to the examiner where adequate written description could be found or to make an amendment to address the deficiency."”
The remarks submit that: “After identification, the system determines a 2D representation "from the 3D representation" of that same" of that same element, and then classifies the element, and then classifies the element's manufacturing operation based on geometric and feature information” – but that is not the language of the specification, for there is no express linkage to be found in the specification from “determine a 2D representation” (¶¶ 52-56) to the act of “classifying elements” (¶ 51).
See above.
It is entirely improper to attempt to use claim construction to import wholly unsupported features in the claims themselves.
E.g. at 7 in the remarks: “Accordingly, under a reasonable construction informed by the specification, "identifying ... based on the 3D representation" means: recognizing and isolating individual product elements by directly analyzing their three-dimensional geometric characteristics contained in the assembly file.” – in contrast, see ¶ 7, and ¶¶ 52-56, which make no mention of such an analysis.
E.g. page 8: “Thus, the later "based on the 3D representation" language clarifies the data lineage (3D assembly - identified element - 2D view - symmetry - manufacturing operation), rather than imposing a new or different identification condition.” – this is an entirely supported combination of distinct elements in the specification with no clear linkage between the elements. See Hyatt v. Dudas as cited above.
Furthermore, these appear to be under the impression that obviousness is sufficient for support.
Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997), as cited in the Non-final Act. at 15-16, in its opinion text surrounding the textual citation in the MPEP: “The question is not whether a claimed invention is an obvious variant of that which is disclosed in the specification. Rather, a prior application itself must describe an invention, and do so in sufficient detail that one skilled in the art can clearly conclude that the inventor invented the claimed invention as of the filing date sought. See Martin v. Mayer, 823 F.2d 500, 504, 3 USPQ2d 1333, 1337 (Fed.Cir.1987) (stating that it is "not a question of whether one skilled in the art might be able to construct the patentee's device from the teachings of the disclosure.... Rather, it is a question whether the application necessarily discloses that particular device.") (quoting Jepson v. Coleman, 50 C.C.P.A. 1051, 314 F.2d 533, 536, 136 USPQ 647, 649-50 (1963)). Lockwood argues that all that is necessary to satisfy the description requirement is to show that one is "in possession" of the invention. Lockwood accurately states the test, see Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64, 19 USPQ2d 1111, 1117 (Fed.Cir.1991), but fails to state how it is satisfied. One shows that one is "in possession" of the invention by describing the invention, with all its claimed limitations, not that which makes it obvious. Id. ( "[T]he applicant must also convey to those skilled in the art that, as of the filing date sought, he or she was in possession of the invention. The invention is, for purposes of the 'written description' inquiry, whatever is now claimed.") (emphasis in original). One does that by such descriptive means as words, structures, figures, diagrams, formulas, etc., that fully set forth the claimed invention. Although the exact terms need not be used in haec verba, see Eiselstein v. Frank, 52 F.3d 1035, 1038, 34 USPQ2d 1467, 1470 (Fed.Cir.1995)”
Regarding the § 101 Rejection
Maintained, updated as necessitated by amendment.
Remarks at prong 1 submit an element that was considered an additional element (the “using a feature recognition technique”, Non-final Act. at 26-29) as being not abstract. These do not respond to the rationale set forth in the rejection itself, for the element at issue was not considered abstract, but rather in addition to the abstract idea recited in the claims.
Furthermore, these remarks have no basis in the specification – see ¶ 43, thus are entirely moot, because they have no evidence pointed to to support how these remarks are construing the terms expressly recited in ¶ 43. MPEP § 2145(I): “Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of applicant statements which are not evidence and which must be supported by an appropriate affidavit or declaration
Furthermore, these remarks keep mention “rules”, McRo is no reasonably analogous here, and not all “rules” can render a claim eligible. MPEP § 2106.04(a)(2)(III)(C): “Another example is FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 120 USPQ2d 1293 (Fed. Cir. 2016). The patentee in FairWarning claimed a system and method of detecting fraud and/or misuse in a computer environment, in which information regarding accesses of a patient’s personal health information was analyzed according to one of several rules (i.e., related to accesses in excess of a specific volume, accesses during a pre-determined time interval, or accesses by a specific user) to determine if the activity indicates improper access. 839 F.3d. at 1092, 120 USPQ2d at 1294. The court determined that these claims were directed to a mental process of detecting misuse, and that the claimed rules here were "the same questions (though perhaps phrased with different words) that humans in analogous situations detecting fraud have asked for decades, if not centuries." 839 F.3d. at 1094-95, 120 USPQ2d at 1296”
Remarks at prong 2:
First, remarks at prong 2 submit: “Applicant submits that, even assuming arguendo that claim 1 recites an abstract idea, the claims are nevertheless patent eligible because the claimed invention integrate any such idea into a practical application that provides significantly more than the alleged abstract concept.” – this is the wrong legal test at prong 2.
MPEP § 2106.04(d)(III): “Finjan Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299, 125 USPQ2d 1282 (Fed. Cir. 2018), the claimed invention was a method of virus scanning that scans an application program, generates a security profile identifying any potentially suspicious code in the program, and links the security profile to the application program. 879 F.3d at 1303-04, 125 USPQ2d at 1285-86. The Federal Circuit noted that the recited virus screening was an abstract idea, and that merely performing virus screening on a computer does not render the claim eligible. 879 F.3d at 1304, 125 USPQ2d at 1286. The court then continued with its analysis under part one of the Alice/Mayo test by reviewing the patent’s specification, which described the claimed security profile as identifying both hostile and potentially hostile operations. The court noted that the security profile thus enables the invention to protect the user against both previously unknown viruses and "obfuscated code," as compared to traditional virus scanning, which only recognized the presence of previously-identified viruses. The security profile also enables more flexible virus filtering and greater user customization. 879 F.3d at 1304, 125 USPQ2d at 1286. The court identified these benefits as improving computer functionality, and verified that the claims recite additional elements (e.g., specific steps of using the security profile in a particular way) that reflect this improvement. Accordingly, the court held the claims eligible as not being directed to the recited abstract idea. 879 F.3d at 1304-05, 125 USPQ2d at 1286-87. This analysis is equivalent to the Office’s analysis of determining that the additional elements integrate the judicial exception into a practical application at Step 2A Prong Two, and thus that the claims were not directed to the judicial exception (Step 2A: NO).”
MPEP § 2106.05(I): “An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016). See also Alice Corp., 573 U.S. at 21-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 78, 101 USPQ2d at 1968 (after determining that a claim is directed to a judicial exception, "we then ask, ‘[w]hat else is there in the claims before us?") (emphasis added)); RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"). Instead, an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966).”
Next, ¶ 43 does not support what is described here, for it is silent to how this feature even works: “Successively, features of the one or more elements of the product may be determined using a feature recognition technique. The feature recognition technique operates on boundary representation models of products [data to be manipulated]. The features may correspond to manufacturing operations required for manufacturing the one or more elements. Such manufacturing operations may include sheet metal operations, turn operations, injection moulding operations, and machining operations. In one preferred embodiment, the manufacturing operations are determined in a priority order with the sheet metal operation having a highest priority and the machining operation having a least priority, amongst the listed four operations.”
MPEP § 2145(I): “Arguments presented by applicant cannot take the place of evidence in the record. See In re De Blauwe, 736 F.2d 699, 705, 222 USPQ 191, 196 (Fed. Cir. 1984); In re Schulze, 346 F.2d 600, 602, 145 USPQ 716, 718 (CCPA 1965); In re Geisler, 116 F.3d 1465, 43 USPQ2d 1362 (Fed. Cir. 1997) ("An assertion of what seems to follow from common experience is just attorney argument and not the kind of factual evidence that is required to rebut a prima facie case of obviousness."). See MPEP § 716.01(c) for examples of applicant statements which are not evidence and which must be supported by an appropriate affidavit or declaration” – and the improvements consideration is an evidentiary one from the specification itself – MPEP § 2106.05(a): “That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement.”
Next, to the manufacturing step, see In re Brown in MPEP 2106.05(f): “Other examples where the courts have found the additional elements to be mere instructions to apply an exception, because they do no more than merely invoke computers or machinery as a tool to perform an existing process include: vi. A method of assigning hair designs to balance head shape with a final step of using a tool (scissors) to cut the hair, In re Brown, 645 Fed. App'x 1014, 1017 (Fed. Cir. 2016) (non-precedential).” And MPEP 2106.05(g): “Insignificant application: i. Cutting hair after first determining the hair style, In re Brown, 645 Fed. App'x 1014, 1016-1017 (Fed. Cir. 2016) (non-precedential);”
Cutting hair with scissors is a “real world” activity, but such an activity did not amount to significantly more than the abstract idea itself (again, Examiner emphasizing 2B on this consideration), and the claims have no express basis (MPEP § 2111 for In re Prater) for actually requiring the “manufacturing” to be performed, rather they simply determine the order of manufacturing operations that could (but are not required to) later be performed.
Remarks at 2B:
These remarks seem to imply the 2B question is to consider the novelty of the abstract idea itself, but such is improper. MPEP § 2106.05(I): “An inventive concept "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016). See also Alice Corp., 573 U.S. at 21-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 78, 101 USPQ2d at 1968 (after determining that a claim is directed to a judicial exception, "we then ask, ‘[w]hat else [i.e. that is not the abstract idea itself] is there in the claims before us?") (emphasis added)); RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"). Instead, an "inventive concept" is furnished by an element or combination of elements that is recited in the claim in addition to (beyond) the judicial exception, and is sufficient to ensure that the claim as a whole amounts to significantly more than the judicial exception itself. Alice Corp., 573 U.S. at 27-18, 110 USPQ2d at 1981 (citing Mayo, 566 U.S. at 72-73, 101 USPQ2d at 1966)… Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a claim for a new abstract idea is still an abstract idea. The search for a § 101 inventive concept is thus distinct from demonstrating § 102 novelty."). In addition, the search for an inventive concept is different from an obviousness analysis under 35 U.S.C. 103.” – e.g. see BSG Tech LLC v. Buyseasons, Inc., 899 F.3d 1281, 1287-88, 127 USPQ2d 1688, 1693-94 (Fed. Cir. 2018) as cited to in MPEP § 2106.05(a).
To clarify, these remarks continue the litany of entirely unevidenced arguments as before that have no clear basis in the disclosure for ¶ 43, and entirely ignore the WURC evidence of record on this feature which has long and routinely been used in this field (e.g. first reference at 36 of the Non-final Act. Nov. 2025; and the rest).
In other words, these remarks submit unconventionality, but do not even address the fact finding of record for the 2B WURC analysis and the evidence therein, i.e. they are not responding to the rationale of the rejection itself.
As a final point for compact prosecution, in the event that an amendment is made to require the manufacturing itself to be performed to manufacture a product, then in view of MPEP § 2106.07: “When evaluating a claimed invention for compliance with the substantive law on eligibility, examiners should review the record as a whole (e.g., the specification, claims, the prosecution history, and any relevant case law precedent or prior art) before reaching a conclusion with regard to whether the claimed invention sets forth patent eligible subject matter.” – the Examiner suggest the applicant review (non-precedential) Ficep Corp. v. Peddinghaus Corp., 2023 U.S.P.Q.2d 976 (Fed. Cir. 2023), in particular for its manufacturing step.
Claim Interpretation
The present claims recite: “identifying one or more elements of the product based on the 3D representation in the assembly file” - e.g. ¶¶ 52-55, wherein the element is to be identified first “from its 3D representation”.
The claims later recite “based on the 3D representation…” – this merely conveys, under the BRI in view of ¶¶ 52-55, that it is “based on” because the identification occurred “from” the 3D representation. As such, little weight is given to these recitations, as they are merely simply restating what is already in the claim (that the elements are identified from the 3D representation).
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 1-3, 5-7, 9-10 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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 applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The dependent claims inherit the deficiencies of the claims they depend upon.
See MPEP 2163(II)(A): "For example, in Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007), the examiner made a prima facie case by clearly and specifically explaining why applicant’s specification did not support the particular claimed combination of elements, even though applicant’s specification listed each and every element in the claimed combination. The court found the "examiner was explicit that while each element may be individually described in the specification, the deficiency was lack of adequate description of their combination" and, thus, "[t]he burden was then properly shifted to [inventor] to cite to the examiner where adequate written description could be found or to make an amendment to address the deficiency.""
Also, see MPEP 2163(I) for Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997).
Independent claims (claim 1 as representative) recite:
[a] determining a geometric symmetry of each of the [b] identified one or more elements using the 2D representation [c] determined from its 3D representation based on the 3D representation;
The above requires a particular ordered combination of three separate acts in sequence, i.e. [c] then [b] then [a], wherein each precursor act is used in the later act, i.e. do [c] so as to do [b] so as to do [a].
This is not sufficiently described in such a particular combination. ¶¶ 52-56 of the instant specification: “In accordance with the above defined priority of identifying elements, the system 102 may firstly [x] identify the Bush 700 from its 3D representation, as illustrated in Figure 7a. [y] From the 3D representation, the system 102 may determine a 2D representation of the Bush 700, as illustrated in Figure 7a'. [z]The system 102 may determine that the Bush 700 will be manufactured using the turn operation, as the Bush 700 is axis symmetric and has cylindrical faces.”
In particular note in [y] that this 2D representation is not linked to the performance of any other act in the paragraph, i.e. there in no subsequent step to how it is used.
Rather, at most all there is for linkage is the antecedents of “the Bush”, i.e. the element was identified in the 3D representation.
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 1-3, 5-7, 9-10 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of a mental process without significantly more.
Step 1
Claim 1 is directed towards the statutory category of a process.
Claim 10 is directed towards the statutory category of an apparatus.
Claim 10 is rejected under a similar rationale as representative claim 1.
Step 2A – Prong 1
The claims recite an abstract idea of a mental process. See MPEP § 2106.04(a)(2).
The mental process recited in claim 1 is:
A method for classifying elements of a product, the method comprising: - a mental process with an intended use of a mental observation, e.g. a person mentally observing a product to classify elements of a product, such as by observing a product such as the one depicted in fig. 7, observing that this product includes elements such as a bracket # 708
identifying one or more elements of the product based on the 3D representation in the assembly file; - a mental observation performed as part of the mental process, but for the mere instructions to apply a computer as a tool to perform this step – e.g. observing a product such as the one shown in fig. 7, and identifying the bracket and other elements by observation, wherein a person would readily be able to perform this mental observation with a physical aid, e.g. by looking at a 3D being displayed on a computer screen, or a print-out on paper of such a 3D representation such as depicted in fig. 7, or by using a computer as a tool to perform this step. To clarify on the BRI, see ¶¶ 52-56 wherein the instant disclosure merely describes that the identification occurs but recites no particular steps in how the identification is performed.
determining, using a feature recognition technique, features of the one or more elements…; - a mental observation, but for the mere instructions to apply a computer as a tool to perform this step – e.g. when observing the bracket # 708 in fig. 7, a person observes that the bracket has “holes, slots, and island features” (¶ 56 of the instant disclosure) – to clarify on this example, see figures 7a-7e as discussed in ¶¶ 51-56 of the instant disclosure. With respect to the feature recognition technique, the Examiner notes ¶ 43 of the instant disclosure: “Successively, features of the one or more elements of the product may be determined using a feature recognition technique. The feature recognition technique operates on boundary representation models of products” – i.e. the instant disclosure does not detail what this technique is, only what it operates on – and a person would readily be able to use a computer as a tool or as a physical aid to perform this step, e.g. by using a computer as a physical aid by displaying a CAD/B-rep model on the display of a computer, or by using a computer as a physical aid to printout such a model, and making a visual observation of the displayed/printed version of the model, or by using a computer as a tool to perform this observation. To be clear, the Examiner considers that the “feature recognition technique” as recited in this limitation is part of the mental step of a mental observation as described above as a person is readily able to observe, and thus recognize, features such as discussed above (as the instant disclosure describes with no particularity what this is), and should it be found not to be part of the abstract idea that the recitation of “using a feature recognition technique” would be considered as mere instructions to implement this mental step by using a computer as a tool, as the claim does not recite any particular technological details on how the computer performs this step.
generating a two-dimensional (2D) representation of the identified one or more elements based on the 3D representation; - a mental step of a mental evaluation/judgment, e.g. a person having observed the elements to identify them, or having used a computer as a tool to perform the identification, as discussed above, and then mentally evaluates/provides a judgement on the identified elements by mentally visualizing the elements in 2D (e.g. mentally visualizing “holes, slots, and island features” (¶ 56 of the instant disclosure)), or by using a physical aid such as pen and paper to make 2D drawings of such features. For example, see figure 7, wherein the right-side figures are examples of the 2D representation (¶¶ 51-56) – a person would readily be able to observe the 3D representations in the left-side figures, and use pen and paper, and other physical aids such as rulers/protractors, to make such 2D representations (e.g. see fig. 7d for a very simple example, where the drawing is of a simple box representing the side-profile of the cylinder/”pin” (¶ 55))
determining a geometric symmetry of each of the identified one or more elements using the 2D representation determined from its 3D representation based on the 3D representation;- a mental series of steps of a mental observation/evaluation/judgment, e.g. a person mentally observing “holes, slots, and island features” (¶ 56 of the instant disclosure), and evaluating/judging whether or not it is symmetrical. For example, a person, such as a carpenter, or a machinist, would readily be able to observe a hole to be drilled in a product, such as in 2D drawings of the product (or a 2D/3D representation of the product on a computer display using the computer as a tool, or a print-out from a computer), or in a photograph of a physical product, and observe if the hole is symmetrical or not; or observe a slot, and observe that it is axi-symmetrical (that is, symmetrical along an axis), etc.
For deriving a 2D model from a 3D model, this is also a mental process, e.g. a person mentally observing a 3D model of a product, e.g. on the display of a computer, a prototype/scale model of the product (e.g. the scale models that were once submitted for all USPTO patent applications and publicly displayed), a simple physical model of the product (e.g. a LEGO model, or one made by hand from wood, clay, etc.), or simply mentally observing their own mental visualization of a product they desire to create (e.g. a train wheel in the 1800’s), and the person then using pen and paper to make 2D drawings as a 2D representation for manufacturing, e.g. shop drawings. A person is readily able to mentally observe/evaluate/judge symmetry in a drawing in 2D, e.g. instant fig. 7b and 7b’ is readily observed that it has a symmetry (the left-half is symmetrical with the right half, in both 2D and 3D views).
As a further point of clarity, 2D drawings have long been made from 3D geometry models. Specifically, see a world map, e.g. one based on the commonly used Mercator Projection from the 1500s, wherein such projections of the 3D geometry of the planet Earth onto a flat 2D drawing. And this claim conveys a much simpler geometry then an accurate model of the planet Earth’s surface (see fig. 7). And the claims and specification are entirely silent as to how the 2D representation is to be made from the 3D (¶¶ 52-56), e.g. one can simply make a mental observation (e.g. of a mental visualization of a production to be formed, as above) and create a drawing, and such drawings have long been required for all United States Patents for countless complex mechanical inventions, so presumably, such a mental process has been repeatedly done countless times for centuries, such as to produce drawings of the first patented induction motor, the first patented cotton gin, etc., or one can use historical mathematical projections that predate the US Constitution (or at least the computer, e.g. world maps in the early 1900’s were much more accurate as a result of better projection techniques) to do it by a mental process.
and determining manufacturing operations for each of the identified one or more elements based on the corresponding features and the geometric symmetry determined for each of the one or more elements, wherein the manufacturing operations include at least one of sheet metal operations, turn operations, injection moulding operations, or machining operations, wherein the turn operations include an external end profile feature comprising consecutive external element features with monotonically increasing or equal diameters and an internal end profile feature comprising consecutive internal element features with monotonically equal or decreasing diameters…; and wherein the manufacturing operations are determined in a priority order with the sheet metal operation having a highest priority and the machining operation having a least priority. – a series of mental judgements/evaluations performed by the person, such as performed by an engineer when determining how to manufacture a product, such as the one depicted in fig. 7, such as with the aid of pen and paper. For example, when the engineer looks at an element such as the bracket in fig. 7e and sees that there are “holes, slots, and island features” (¶ 56), the engineer would then mentally judge, or evaluate, the element to determine how to manufacture it, such as by judging to use a drill to drill out the holes.
To clarify, the Examiner notes that this limitation is not reciting that the product is manufactured, rather this is merely just determining what manufacturing operations are to be performed to manufacture the product (but the claim does not require that these are performed).
To give a clarifying analogy, the Examiner first notes that the claims require no complexity to the product, so the product may be a simple product such as a basic metal table with four legs. An engineer would readily be able to mentally visualize, or sketch out with pen and paper, a model of such a product, and then mentally judge/evaluate the product to ascertain how to assemble it. For example, suppose that the engineer has access to an inventory of flat sheets of sheet metal, and bolts/nuts/washers, and the like (e.g. an inventory of a storeroom, or by observing what is it a storeroom).
The engineer would first judge/evaluate that they need to perform sheet metal operations such as cutting and bending the sheet metal to create the top of the table, and the legs – and that for the legs to attached to the table that the 4 sides of the table should have a lip to affix the legs to (bend the sheet metal into a box-like shape, with the bottom of the box missing so the legs can attach to the table-top), and that the legs should be bent at 90 degree angles to provide rounded corners. They would then judge, or evaluate, that there needs to be holes drilled into the table as machining operations so as to attach the legs to the table, wherein this step would be judged to be performed after bending/cutting the metal. The engineer then writes out these manufacturing instructions with pen and paper (potentially along with shop drawings to visually depict the process), and provides these to a factory or workshop who then produces the table.
With respect to using the geometric symmetry in such a mental process, to give a clarifying analogy, suppose the table used slots for the legs as the holes, wherein the slots were axi-symmetric (e.g. an oval, or oval-like shape). A person would readily be able to judge/evaluate how to manufacture such a shape, e.g. by judging to drill it out wherein while drilling the drill bit, or the work-piece, is moved so as to drill out the slot (e.g. by judging to use a CNC machine for this process to achieve the final shape). As another example, the person would readily be able to observe that the table is a square table such as in a drawing, observe the symmetry, and then mentally judge/evaluate how the sheet metal should be manufactured in a manner to achieve a square table.
With respect to the turn operations that are mentally judged/evaluated to be used, this is readily able to be mentally determined and has routinely been, e.g. glassblowers mentally judging when and how to turn a vase in a glassblowing furnace, a blacksmith mentally judging when and how to turn a sword as they hammer away at it, etc.
To further clarify on the turning operation, the glassblower analogy is apt. A glassblower blowing a glass bottle is readily able to turn the bottle to create a neck in the glass by tapering (i.e. “monotonically increasing diameters”) the neck at an angle. Or they can blow a straight tube, e.g. a test tube – a test tube would have, for a sizable portion of the tube, substantially monotonically equal diameters on its interior and exterior (i.e. it’s cylindrical and hollow).
Under the broadest reasonable interpretation, these limitations are process steps that cover mental processes including an observation, evaluation, judgment or opinion that could be performed in the human mind or with the aid of pencil and paper but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the "Mental Process" grouping of abstract ideas. A person would readily be able to perform this process either mentally or with the assistance of pen and paper. See MPEP § 2106.04(a)(2).
To clarify, see the USPTO 101 training examples, available at https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility. In particular, with respect to the physical aids, see example # 45, analysis of claim 1 under step 2A prong 1, including: “Note that even if most humans would use a physical aid (e.g., pen and paper, a slide rule, or a calculator) to help them complete the recited calculation, the use of such physical aid does not negate the mental nature of this limitation.”; also see example # 49, analysis of claim 1, under step 2A prong 1: “Moreover, the recited mathematical calculation is simple enough that it can be practically performed in the human mind. Even if most humans would use a physical aid, like a pen and paper or a calculator, to make such calculations, the use of a physical aid would not negate the mental nature of this limitation.”.
As such, the claims recite a mental process.
Step 2A, prong 2
The claimed invention does not recite any additional elements that integrate the judicial exception into a practical application. Refer to MPEP §2106.04(d).
The following limitations are merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f), including the “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 fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more”:
Claim 10 - A system for classifying elements of a product, the system comprising: a processor; and a memory coupled to the processor, wherein the memory stores programmed instructions executable by the processor for:
identifying one or more elements of the product based on the 3D representation in the assembly file; - the recitation of this identification being based on “the 3D representation in the assembly file” is considered as mere instructions to perform this mental step by using a computer as a tool to implement the abstract idea, akin to “Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. 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. 850 F.3d at 1342; 121 USPQ2d at 1947-48. 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". 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims "so result focused, so functional, as to effectively cover any solution to an identified problem")).” As discussed in MPEP § 2106.05(f); wherein in the present claims the claims lack any recitations (i.e. “details”) “as to how the computer performed the” identification claimed, but rather merely that these steps are performed “in the context of” a 3D representation in an assembly file, akin to Intellectual Ventures I v. Capital One Fin. Corp as discussed above
determining, using a feature recognition technique, features of the one or more elements, - as discussed above in prong 1, the use of “feature recognition technique” as recited herein, was considered as part of the abstract idea. Should it not be found to be abstract, then this recitation is merely instructions to implement the abstract idea on a generic computer, akin to the recitation of “using the trained ANN” in the July 2024 101 guidance update from the USPTO, example 47.
wherein the feature recognition technique operates on boundary representation models; - mere instructions to do it on a computer/in a computer environment. See MPEP § 2106.05(f) for Intellectual Ventures as discussed above, i.e. operating on B-rep models is akin to doing it in the “context of XML” without any particular instructions on how the feature recognition is to be performed on B-rep models.
In addition, Claim 1 does not recite the use of a computer, as such it is given its BRI for each limitation recited in claim 1 in view of MPEPE § 2111: “Claim 9 was directed to a process of analyzing data generated by mass spectrographic analysis of a gas. The process comprised selecting the data to be analyzed by subjecting the data to a mathematical manipulation. The examiner made rejections under 35 U.S.C. 101 and 35 U.S.C. 102. In the 35 U.S.C. 102 rejection, the examiner explained that the claim was anticipated by a mental process augmented by pencil and paper markings. The court agreed that the claim was not limited to using a machine to carry out the process since the claim did not explicitly set forth the machine. The court explained that "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." The court found that applicant was advocating the latter, i.e., the impermissible importation of subject matter from the specification into the claim.”
The following limitations are generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h):
receiving a three-dimensional(3D) representation of a product in an assembly file; identifying one or more elements of the product based on the 3D representation in the assembly file – these are akin to “a data gathering step that is limited to a particular data source (such as the Internet) or a particular type of data (such as power grid data or XML tags) could be considered to be both insignificant extra-solution activity and a field of use limitation. See, e.g., Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (limiting use of abstract idea to the Internet); Electric Power, 830 F.3d at 1354, 119 USPQ2d at 1742 (limiting application of abstract idea to power grid data); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328-29, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017) (limiting use of abstract idea to use with XML tags).” As discussed in MPEP § 2106.05(h) as well as “iv. Specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, FairWarning v. Iatric Sys., 839 F.3d 1089, 1094-95, 120 USPQ2d 1293, 1295 (Fed. Cir. 2016);… x. Requiring that the abstract idea of creating a contractual relationship that guarantees performance of a transaction (a) be performed using a computer that receives and sends information over a network, or (b) be limited to guaranteeing online transactions, because these limitations simply attempted to limit the use of the abstract idea to computer environments, buySAFE Inc. v. Google, Inc., 765 F.3d 1350, 1354, 112 USPQ2d 1093, 1095-96 (Fed. Cir. 2014)”
determining, using a feature recognition technique, features of the one or more elements; - as discussed above in prong 1, the use of “feature recognition technique” as recited herein, was considered as part of the abstract idea. Should it not be found to be abstract, then this recitation is merely generally linking the abstract idea to a particular technological environment, akin to the recitation of “using the trained ANN” in the July 2024 101 guidance update from the USPTO, example 47.
wherein the feature recognition technique operates on boundary representation models; - generally linking to a particular technological environment/field of use
wherein the turn operations include an external end profile feature comprising consecutive external element features with monotonically increasing or equal diameters and an internal end profile feature comprising consecutive internal element features with monotonically equal or decreasing diameters, – should this be found not to be part of the abstract idea, then this is merely generally linking to a particular field of use with a particular product that has said profile features. It places no restriction on how these operations are to be performed, or how they are to be determined.
each formed at an end of the part using respective outer and inner turning operations toward the chuck – generally linking to a particular technological environment wherein there is a “chuck” on a machine performing the turning
The following limitations are adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g):
receiving a three-dimensional(3D) representation of a product in an assembly file; - mere data gathering
A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. See MPEP § 2106.04(d).
The claimed invention does not recite any additional elements that integrate the judicial exception into a practical application. Refer to MPEP §2106.04(d).
Step 2B
The claimed invention does not recite any additional elements/limitations that amount to significantly more.
The following limitations are merely reciting the words "apply it" (or an equivalent) with the judicial exception, or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea, as discussed in MPEP § 2106.05(f), including the “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 fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more”:
Claim 10 - A system for classifying elements of a product, the system comprising: a processor; and a memory coupled to the processor, wherein the memory stores programmed instructions executable by the processor for:
identifying one or more elements of the product based on the 3D representation in the assembly file; - the recitation of this identification being based on “the 3D representation in the assembly file” is considered as mere instructions to perform this mental step by using a computer as a tool to implement the abstract idea, akin to “Intellectual Ventures I v. Capital One Fin. Corp., 850 F.3d 1332, 121 USPQ2d 1940 (Fed. Cir. 2017), the steps in the claims described "the creation of a dynamic document based upon ‘management record types’ and ‘primary record types.’" 850 F.3d at 1339-40; 121 USPQ2d at 1945-46. The claims were found to be directed to the abstract idea of "collecting, displaying, and manipulating data." 850 F.3d at 1340; 121 USPQ2d at 1946. 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. 850 F.3d at 1342; 121 USPQ2d at 1947-48. 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". 850 F.3d at 1341-42; 121 USPQ2d at 1947-48 (citing Electric Power Group., 830 F.3d at 1356, 1356, USPQ2d at 1743-44 (cautioning against claims "so result focused, so functional, as to effectively cover any solution to an identified problem")).” As discussed in MPEP § 2106.05(f); wherein in the present claims the claims lack any recitations (i.e. “details”) “as to how the computer performed the” identification claimed, but rather merely that these steps are performed “in the context of” a 3D representation in an assembly file, akin to Intellectual Ventures I v. Capital One Fin. Corp as discussed above
determining, using a feature recognition technique, features of the one or more elements, - as discussed above in prong 1, the use of “feature recognition technique” as recited herein, was considered as part of the abstract idea. Should it not be found to be abstract, then this recitation is merely instructions to implement the abstract idea on a generic computer, akin to the recitation of “using the trained ANN” in the July 2024 101 guidance update from the USPTO, example 47.
wherein the feature recognition technique operates on boundary representation models; - mere instructions to do it on a computer/in a computer environment. See MPEP § 2106.05(f) for Intellectual Ventures as discussed above, i.e. operating on B-rep models is akin to doing it in the “context of XML” without any particular instructions on how the feature recognition is to be performed on B-rep models.
In addition, Claim 1 does not recite the use of a computer, as such it is given its BRI for each limitation recited in claim 1 in view of MPEPE § 2111: “Claim 9 was directed to a process of analyzing data generated by mass spectrographic analysis of a gas. The process comprised selecting the data to be analyzed by subjecting the data to a mathematical manipulation. The examiner made rejections under 35 U.S.C. 101 and 35 U.S.C. 102. In the 35 U.S.C. 102 rejection, the examiner explained that the claim was anticipated by a mental process augmented by pencil and paper markings. The court agreed that the claim was not limited to using a machine to carry out the process since the claim did not explicitly set forth the machine. The court explained that "reading a claim in light of the specification, to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by implicitly adding disclosed limitations which have no express basis in the claim." The court found that applicant was advocating the latter, i.e., the impermissible importation of subject matter from the specification into the claim.”
The following limitations are generally linking the use of a judicial exception to a particular technological environment or field of use, as discussed in MPEP § 2106.05(h):
receiving a three-dimensional(3D) representation of a product in an assembly file; identifying one or more elements of the product based on the 3D representation in the assembly file – these are akin to “a data gathering step that is limited to a particular data source (such as the Internet) or a particular type of data (such as power grid data or XML tags) could be considered to be both insignificant extra-solution activity and a field of use limitation. See, e.g., Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (limiting use of abstract idea to the Internet); Electric Power, 830 F.3d at 1354, 119 USPQ2d at 1742 (limiting application of abstract idea to power grid data); Intellectual Ventures I LLC v. Erie Indem. Co., 850 F.3d 1315, 1328-29, 121 USPQ2d 1928, 1939 (Fed. Cir. 2017) (limiting use of abstract idea to use with XML tags).” As discussed in MPEP § 2106.05(h) as well as “iv. Specifying that the abstract idea of monitoring audit log data relates to transactions or activities that are executed in a computer environment, because this requirement merely limits the claims to the computer field, i.e., to execution on a generic computer, FairWarning v. Iatric Sys., 839 F.3d 1089, 1094-95, 120 USPQ2d 1293, 1295 (Fed. Cir. 2016);… x. Requiring that the abstract idea of creating a contractual relationship that guarantees performance of a transaction (a) be performed using a computer that receives and sends information over a network, or (b) be limited to guaranteeing online transactions, because these limitations simply attempted to limit the use of the abstract idea to computer environments, buySAFE Inc. v. Google, Inc., 765 F.3d 1350, 1354, 112 USPQ2d 1093, 1095-96 (Fed. Cir. 2014)”
determining, using a feature recognition technique, features of the one or more elements; - as discussed above in prong 1, the use of “feature recognition technique” as recited herein, was considered as part of the abstract idea. Should it not be found to be abstract, then this recitation is merely generally linking the abstract idea to a particular technological environment, akin to the recitation of “using the trained ANN” in the July 2024 101 guidance update from the USPTO, example 47.
wherein the feature recognition technique operates on boundary representation models; - generally linking to a particular technological environment/field of use
wherein the turn operations include an external end profile feature comprising consecutive external element features with monotonically increasing or equal diameters and an internal end profile feature comprising consecutive internal element features with monotonically equal or decreasing diameters, – should this be found not to be part of the abstract idea, then this is merely generally linking to a particular field of use with a particular product that has said profile features. It places no restriction on how these operations are to be performed, or how they are to be determined.
each formed at an end of the part using respective outer and inner turning operations toward the chuck – generally linking to a particular technological environment wherein there is a “chuck” on a machine performing the turning
The following limitations are adding insignificant extra-solution activity to the judicial exception, as discussed in MPEP § 2106.05(g):
receiving a three-dimensional(3D) representation of a product in an assembly file; - mere data gathering
In addition, the above insignificant extra-solution activities are also considered as well-understood, routine, and conventional activities, as discussed in MPEP § 2106.05(d):
receiving a three-dimensional(3D) representation of a product in an assembly file; - this is considered similar to the example WURC activity as discussed in MPEP § 2106.05(d)(II) of: “iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;”
receiving a three-dimensional(3D) representation of a product in an assembly file; identifying one or more elements of the product based on the 3D representation in the assembly file; determining, using a feature recognition technique, features of the one or more elements, wherein the feature recognition technique operates on boundary representation models; - these are considered WURC in view of:
The instant disclosure, ¶ 44, given the generic nature of the feature recognition technique in ¶ 44 and the generic description of the data it operates on, indicating this is well known to POSITA; e.g. in existing modeling tools such as those described in ¶ 4
Vandenbrane et al., “Spatial Reasoning for the Automatic Recognition of Machinable Features in Solid Models”, 1993 – page 1270, col. 1, ¶ 3: “Much has been written on feature recognition for machining-see [20] for a critical discussion of the literature prior to 1989…” – and see § 1 ¶ 1: “FORM features such as holes and slots provide a convenient, high-level language for specifying mechanical parts, and facilitate automatic manufacturing planning and other downstream activities in the life cycle of mechanical products. Form features, or simply features, are informally defined in this paper as regions of an object that are meaningful for a specific activity or application…. In another landmark thesis Henderson showed that volumetric features could be extracted from solid models by searching for certain face and edge patterns in a solid’s boundary representation (BRep), and introduced accessibility considerations [7].”
Joshi, “Feature extraction and feature based design approaches in the development of design interface for process planning”, 1990 – abstract: “The quest for completely automated process planning systems has exposed the lack of techniques capable of automatically understanding the stored CAD models in a manner suitable for process planning. Most current generations of process planning systems have used the ability of humans to translate the part drawing requirements into a form suitable for computer aided process planning. Recently, research advances have been made to improve the understanding of computer stored 3-D part models. The two approaches used are feature recognition and feature based design. This paper presents a state of the art review of feature recognition techniques developed and presents feature based design as an alternative.“ – see § 3 to clarify incl.: “The current generation of CAD systems place emphasis on geometric shapes and designs are created primarily by Boolean operations on a set of primitive solids, and the notion of features does not exist explicitly. The problem of feature extraction involves recognition of the higher level features from the set of lower level entities in the geometric model. Depending on the representation scheme used (CSG or BREP) the lower level entities are primitive solids, faces, edges, vertices.”
Chang et al., “MACHINING PROCESS PLANNING OF PRISMATIC PARTS USING CASE-BASED REASONING AND PAST PROCESS KNOWLEDGE”, 2002 – see the introduction including: “A machining process plan for a part contains a sequence of cutting operations, which includes machine cutting (such as turning and drilling) and non-machine cutting (such as heat treatment). Since the process plan strongly influences the overall cost of the product, the major task of a process planner is to arrange the sequence of machining operations such that a given workpiece can be fabricated inexpensively. Typically, an experienced manufacturer generates a process plan for a new part based on his/her past working experiences or old plans…” then see the section “Feature-Based Representation” starting on page 308, including: “…The representation of a part in terms of features is called a feature model. There are two main approaches to creating a feature model: feature recognition and design by features. Use of the feature recognition approach for building feature models allows the designers to create general geometric models by using conventional CAD systems such as 2-D drafting systems and wireframe modelers. Feature models are then extracted from the geometric models utilizing a feature recognizer. Several distinguished approaches to feature recognition are briefly described below…”
Elinson et al., “Feature-based Similarity Assessment of Solid Models”, 1997, see §§ 1 and 2.1; then see § 2.1.3: “ During last several years, a number of efforts have been made to develop algorithms to examine CAD designs and extract features that correspond to manufacturing operations…”
Ip et al., “Content-Based Classification of CAD Models with Supervised Learning”, 2005, § 1, ¶¶ 1-2: “…There are two basic types of approaches for matching and retrieval of 3D CAD data: (1) feature-based techniques and (2) shape-based techniques. The feature-based techniques [7,18], going back at least as far as the late 1970s [14], extract engineering features e.g. machining features, and form features, from a solid model of a mechanical part for use in database storage, and automated GT coding. Elinson et al. [6] used feature-based reasoning for retrieval of solid models for use in variant process planning. Cicirello and Regli [5] examined how to develop graph-based data structures and create heuristic similarity measures among artifacts; this work was extended in [4] to manufacturing feature-based similarity measurements. McWherter et al. [15] have integrated these ideas with database techniques to enable indexing and clustering of CAD models based on shape and engineering properties.”
Cicirello et al., “Machining Feature-based Comparisons of Mechanical Parts”, 2001 – see the abstract, then see §§ 2-2.1 including: “…Primarily in the areas of manufacturing process planning and solid modeling, past research efforts have developed a variety of techniques for reasoning about geometric and topological information. Much research has been done in the area of automatic feature recognition from three dimensional solid models [22, 33, 24, 25, 461]…”
Cadalyst Videos, “SOLIDWORKS File Structure Explained”, YouTube Video, Jan. 23rd, 2017, URL: www(dot)youtube(dot)com/watch?v=FgMtmNPQYGk – see the 26 second time which depicts that the “Assembly” file is part of the file structure of Solidworks (a commercially available CAD software tool), then see the 1:30-3:30 timeframe which depicts the narrator of the video using a computer as a tool to navigate the assembly file, wherein this visually depicts the tree of the assembly file on the GUI around the 2-2:30 minute timeframe.
Boyd et al., US 2021/0270591, ¶ 21: “SolidWorks part file (.SLDPRT), several SolidWorks part files organized into a single assembly (.SLDASM), 3D assembly file supported by various mechanical design programs (.STP), graphics file saved in a solid modeling format based on the Initial Graphics Exchange Specification (.IGS) and/or the like”; also see ¶ 48
Carek et al., US 2005/0203718A1, ¶¶ 2-4 and 83
Blair et al., US 2006/0041840, fig. 11A, # 1110-20 to 1110-27; fig. 11B # 1110-32, see ¶¶ 186, 188, 190, 192
Usui, US 2021/0174408, ¶¶ 2-3, 21; 27
wherein the turn operations include an external end profile feature comprising consecutive external element features with monotonically increasing or equal diameters and an internal end profile feature comprising consecutive internal element features with monotonically equal or decreasing diameters, each formed at an end of the part using respective outer and inner turning operations toward the chuck - see the instant disclosure, ¶¶ 46-46, for its generically recited description of this step with no particular machine identified for use in the turning operation, but rather merely discusses the desired resulting shape, where it notes that it is “usually machined with a face down process or outer turning operation towards chuck”. For additional evidence, the Examiner notes that the turning operations to produce the desired shape (as claimed) are WURC, e.g. by the use of a lathe with either step or taper turning to have the changing diameters, or straight turning operations to produce constant diameters. See:
Madireddy, Jahnavi. "Importance of Lathe Machine in Engineering Field and its usage." Global Journal of Researches in Engineering: A Mechanical and Mechanics Engineering 14.6 (2014). Introduction: “The lathe, probably one of the earliest machine tools, is one of the most versatile and widely used machine tool, so also known as mother machine tool… Some of the common operations performed on a lathe are facing, turning, drilling, threading, knurling, and boring etc” – then see § I incl.: “The job to be machined is held and rotated in a lathe chuck; a cutting tool is advanced which is stationary against the rotating job. Since the cutting tool material is harder than the work piece, so metal is easily removed from the job.” – then see § III for a visual depiction of the common Lathe Operations , including see (a) and (b); then see § V including subsections (d) and (e): “Step Turning - Is the operation of making different diameters of desired length. The diameters and lengths are measured by means of outside caliper and steel rule respectively [i.e. steps of a staircase, see fig. 4 which shows staircase profiles]…Taper Turning… A taper may be defined as a uniform increase or decrease in diameter of a piece of work measured along its length [given the breadth of the claim limitation]. In a lathe, taper turning means to produce a conical surface by gradual reduction in diameter from a cylindrical work piece.” – and see in § III (a) which shows “Straight turning” to produce equal diameters as the tool progresses (note the arrow for the “Tool” direction) across the metal toward the chuck
As such, the claims are directed towards a mental process without significantly more.
Regarding the dependent claims
Claim 2 is considered as further limiting the mental process, and is rejected under a similar rationale as the identifying limitation recited in claim 1. For example, a person may readily mentally observe a 3D representation of the product, such as by observing a real-world 3D prototype of the product on a workbench, or by mentally visualizing a desired product to be manufactured, and during the observation observing certain elements of the product (e.g. mentally visualize a common door hinge, and observe where holes need to be drilled during manufacture for later mounting the hinge to a door frame). A person may readily use physical aids in this process, e.g. a display of a computer displaying the 3D representation to conduct the observation on, or a print-out (or a series of print-outs) from a computer, or by observing a series of 2D drawings/pictures/photos depicting various angles/viewpoints of the product, and then mentally visualizing in their own mind what that product would look like in 3D based on observing the 2D drawings, and perform a mental observation of the mental visualization so as to perform the identification
Claims 3, 5-7 are further limiting the mental process by limiting what the mental judgements/evaluations include, e.g. limiting the machining operations to include “holes, pockets, slots, and islands” (claim 6) because the product has such features (e.g. the bracket as discussed above, as shown in fig. 7e, as described in ¶ 56). Should these be found not to be abstract, then the Examiner submits that these would be generally linking to a particular field of use, as they merely provide a general listing of manufacturing operations which may be determined
Claim 9 recites an insignificant extra-solution activity akin to “a final step of storing data to a process that only recites computing the area of a space” as discussed in MPEP § 2106.05(g).
In addition, this is also considered as well-understood, routine, and conventional activities, as discussed in MPEP § 2106.05(d)(II): “iv. Storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93;”
The recitation of “for later execution by different units of a manufacturing plant for manufacturing the product” is considered, under the BRI, as an intended result of the storing (MPEP 2111.04(I)) as the limitation does not require the performance of the “later execution”, but rather is describing the intended result of storing the data. Should it be found that this step is required (i.e. that the claim requires the execution to be performed, rather than just being an intended result), then the later execution would be considered as both an insignificant extra-solution activity of an insignificant application akin to “i. Cutting hair after first determining the hair style, In re Brown, 645 Fed. App'x 1014, 1016-1017 (Fed. Cir. 2016) (non-precedential); and ii. Printing or downloading generated menus, Ameranth, 842 F.3d at 1241-42, 120 USPQ2d at 1854-55” and as part of the mere instructions to apply the exception recited in a high degree of generality, wherein this is also considered as well-understood, routine, and conventional in view of:
Vandenbrane et al., “Spatial Reasoning for the Automatic Recognition of Machinable Features in Solid Models”, 1993 – page 1270, col. 1, ¶ 3: “Much has been written on feature recognition for machining-see [20] for a critical discussion of the literature prior to 1989…” – and see § 1 ¶ 1: “FORM features such as holes and slots provide a convenient, high-level language for specifying mechanical parts, and facilitate automatic manufacturing planning and other downstream activities in the life cycle of mechanical products. Form features, or simply features, are informally defined in this paper as regions of an object that are meaningful for a specific activity or application.”
Joshi, “Feature extraction and feature based design approaches in the development of design interface for process planning”, 1990 – abstract: “The quest for completely automated process planning systems has exposed the lack of techniques capable of automatically understanding the stored CAD models in a manner suitable for process planning. Most current generations of process planning systems have used the ability of humans to translate the part drawing requirements into a form suitable for computer aided process planning. Recently, research advances have been made to improve the understanding of computer stored 3-D part models. The two approaches used are feature recognition and feature based design. This paper presents a state of the art review of feature recognition techniques developed and presents feature based design as an alternative.“ – see § 3 to clarify
Chang et al., “MACHINING PROCESS PLANNING OF PRISMATIC PARTS USING CASE-BASED REASONING AND PAST PROCESS KNOWLEDGE”, 2002 – see the introduction including: “A machining process plan for a part contains a sequence of cutting operations, which includes machine cutting (such as turning and drilling) and non-machine cutting (such as heat treatment). Since the process plan strongly influences the overall cost of the product, the major task of a process planner is to arrange the sequence of machining operations such that a given workpiece can be fabricated inexpensively. Typically, an experienced manufacturer generates a process plan for a new part based on his/her past working experiences or old plans…” then see the section “Feature-Based Representation” starting on page 308, including: “…The representation of a part in terms of features is called a feature model. There are two main approaches to creating a feature model: feature recognition and design by features. Use of the feature recognition approach for building feature models allows the designers to create general geometric models by using conventional CAD systems such as 2-D drafting systems and wireframe modelers. Feature models are then extracted from the geometric models utilizing a feature recognizer. Several distinguished approaches to feature recognition are briefly described below…”
Elinson et al., “Feature-based Similarity Assessment of Solid Models”, 1997, see §§ 1 and 2.1; then see § 2.1.3: “ During last several years, a number of efforts have been made to develop algorithms to examine CAD designs and extract features that correspond to manufacturing operations…”
Ip et al., “Content-Based Classification of CAD Models with Supervised Learning”, 2005, § 1, ¶¶ 1-2: “…There are two basic types of approaches for matching and retrieval of 3D CAD data: (1) feature-based techniques and (2) shape-based techniques. The feature-based techniques [7,18], going back at least as far as the late 1970s [14], extract engineering features e.g. machining features, and form features, from a solid model of a mechanical part for use in database storage, and automated GT coding. Elinson et al. [6] used feature-based reasoning for retrieval of solid models for use in variant process planning. Cicirello and Regli [5] examined how to develop graph-based data structures and create heuristic similarity measures among artifacts; this work was extended in [4] to manufacturing feature-based similarity measurements. McWherter et al. [15] have integrated these ideas with database techniques to enable indexing and clustering of CAD models based on shape and engineering properties.”
Cicirello et al., “Machining Feature-based Comparisons of Mechanical Parts”, 2001 – see the abstract, then see §§ 2-2.1 including: “…Primarily in the areas of manufacturing process planning and solid modeling, past research efforts have developed a variety of techniques for reasoning about geometric and topological information. Much research has been done in the area of automatic feature recognition from three dimensional solid models [22, 33, 24, 25, 461]…”
As such, the claims are directed towards a mental process without significantly more.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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/David A Hopkins/Primary Examiner, Art Unit 2188