DETAILED ACTION
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 1/22/2026 has been entered.
Claims 1, 3-8, 10-14, 16-21 are presented for examination.
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- 35 USC § 101
Applicant's arguments filed 1/22/2026 have been fully considered but they are not persuasive.
The claims have been amended to recite receiving user input via a user interface to modify design parameters. Unfortunately however, the claim language amounts to insignificant extra-solution activity - mere data gathering (MPEP 2106.05(g) - receiving input) using a generic computing component (MPEP § 2106.05(f) and (b) – generic user interface) for carrying out the abstract idea of modifying design parameters.
The rejection is updated to reflect the amended claim language.
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, 3-8, 10-14, 16-21 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. To determine if a claim is directed to patent ineligible subject matter, the Court has guided the Office to apply the Alice/Mayo test, which requires:
1. Determining if the claim falls within a statutory category;
2A. Determining if the claim is directed to a patent ineligible judicial exception consisting of a law of
nature, a natural phenomenon, or abstract idea; and
2B. If the claim is directed to a judicial exception, determining if the claim recites limitations or elements
that amount to significantly more than the judicial exception. (See MPEP 2106).
Step 1: With respect to claims 1, 3-8, 10-14, 16-21, applying step 1, the preamble of independent claims 1, 8 and 14 claim a method, a non-transitory computer readable medium and a computing device. As such these claims fall within the statutory categories of process, article of manufacture and machine.
Step 2A, prong one: In order to apply step 2A, a recitation of claim 1 is copied below. The limitations of the claim that describe an abstract idea are bolded.
A method, comprising:
a) receiving a drill bit design, the drill bit design specifying design parameters related to a plurality of cutter elements of the drill bit;
b) estimating an associated thermal impact value for each of the cutter elements based on the design parameters and one or more drilling parameters (mental process – observation, evaluation, judgement, opinion);
c) estimating an associated cooling capacity value for each of the cutter elements based on the design parameters and one or more cooling parameters (mental process – observation, evaluation, judgement, opinion);
d) identifying one or more cutter elements for which the associated thermal impact value differs from the associated cooling capacity value by more than a threshold amount (mental process – observation, evaluation, judgement, opinion);
e) presenting one or more of the thermal impact values and the cooling capacity values on a user interface responsive to a user input selecting one of a presentation on a per cutter element basis or as a function of a property of the cutter elements;
f) receiving a first user input via the user interface to modify one or more design parameters that affect the identified one or more cutter elements, thereby creating one or more modified design parameters (mental process – observation, evaluation, judgement, opinion); and
g) iteratively performing steps b) through e) based on the modified design parameters (mental process – observation, evaluation, judgement, opinion).
The limitations as analyzed include concepts directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The claim involves estimating, identifying and modifying design parameter steps. The estimating and identifying steps are simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas.
Step 2A, prong two: Under step 2A prong two, this judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present insignificant extra-solution activity and generic computing components. In particular, the claim recites the additional limitations: “a) receiving a drill bit design, the drill bit design specifying design parameters related to a plurality of cutter elements of the drill bit” (insignificant extra-solution activity - mere data gathering/output MPEP 2106.05(g)), “e) presenting one or more of the thermal impact values and the cooling capacity values on a user interface responsive to a user input selecting one of a presentation on a per cutter element basis or as a function of a property of the cutter elements” (insignificant extra-solution activity - mere data gathering/output MPEP 2106.05(g)), “f) receiving a first user input” (insignificant extra-solution activity - mere data gathering/output MPEP 2106.05(g)), “via the user interface to modify” (generic computing components merely carrying out the abstract idea - see MPEP § 2106.05(f) and (b)).
When viewed in combination or as a whole, the recited additional elements do no more
than automate the mental process as recited in the judicial exception, using the computer components as a tooI. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Step 2B: Moving on to step 2B of the analysis, the Examiner must consider whether each claim limitation individually or as an ordered combination amounts to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as "apply it" or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards data gathering and output. See MPEP 2106.04(d) referencing MPEP 2106.05(h). Furthermore, as Berkheimer evidence that the claim elements “a) receiving a drill bit design, the drill bit design specifying design parameters related to a plurality of cutter elements of the drill bit” and “e) presenting one or more of the thermal impact values and the cooling capacity values on a user interface responsive to a user input selecting one of a presentation on a per cutter element basis or as a function of a property of the cutter elements” and “via the user interface to modify” are Well-Understood, Routine, and Conventional, MPEP § 2106.05(d) (II) provides support that mere data collecting and data outputting is well understood, routine, and conventional: "The courts have recognized the following computer functions as well- understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra- solution activity:
• Receiving or transmitting data over a network, e.g., using the Internet to gather
data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary
computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d
607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image
transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d
1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives
and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
• 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
• Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115
USPQ2d at 1092-93
For the foregoing reasons, claim 1 is directed to an abstract idea without significantly more, and is rejected as not patent eligible under 35 U.S.C. 101. The same conclusion is reached for the dependent claims 3-7.
Claim 3 is further directed to updating design parameters, which is directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The updating design parameters step is simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas. This judicial exception is not integrated into a practical application because there are no additional claim limitations outside the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no additional limitations.
Claim 4 is further directed to presenting an improvement value responsive to a user input. The judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present insignificant extra-solution activity (mere data gathering/output MPEP 2106.05(g)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards data gathering and output.
Claim 5 is further directed to manufacturing a drill bit using the updated design parameter which is result oriented “apply it” language – MPE 2106.05(f)(1). The claim recites the idea of a solution or outcome without reciting any detail on how it is accomplished. The claim itself makes no attempt to explain what manufacturing is performed or how. It is entirely
result-oriented and coverts "any attempt to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result. 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. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards result oriented “apply it” language.
Claim 6 is further directed to design parameters, which is directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The updating design parameters step is simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas. This judicial exception is not integrated into a practical application because there are no additional claim limitations outside the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no additional limitations.
Claim 7 is further directed to estimating, which is directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The estimating step is simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas. This judicial exception is not integrated into a practical application because there are no additional claim limitations outside the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because there are no additional limitations.
Claim 20 is further directed towards receiving user input via a user interface and presenting via a user interface. The judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present insignificant extra-solution activity of data gathering and data output (MPEP 2106.05(g)) and generic computing components for carrying out the abstract idea (MPEP § 2106.05(f) and (b)). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards data gathering and output. See MPEP 2106.04(d) referencing MPEP 2106.05(h). Furthermore, as Berkheimer evidence that the claim elements are Well-Understood, Routine, and Conventional, MPEP § 2106.05(d) (II) provides support that mere data collecting and data outputting is well understood, routine, and conventional.
Claim 21 is further directed towards the "Mathematical Concepts" grouping of abstract ideas (including mathematical relationships, mathematical formulas or equations, mathematical calculations) (see MPEP § 2106.04(a)(2), subsection I). A claim that recites a mathematical calculation, when the claim is given its broadest reasonable interpretation in light of the specification, will be considered as falling within the "mathematical concepts" grouping. A mathematical calculation is a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation (see MPEP 2106.04(a)(2)(1)(C). The claim recites estimating using finite element analysis or finite volume analysis . Thus, limitations noted above also fall into the "Mathematical Concepts" groupings of abstract ideas. This judicial exception is not integrated into a practical application because there are no additional claim limitations outside the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Step 2A, prong one: In order to apply step 2A, a recitation of claim 8 is copied below. The limitations of the claim that describe an abstract idea are bolded.
A non-transitory, computer-readable medium containing instructions that, when executed by a processor, cause the processor to:
a) receive a drill bit design from a memory, the drill bit design specifying design parameters related to a plurality of cutter elements of the drill bit;
b) estimate an associated thermal impact value for each of the cutter elements based on the design parameters and one or more drilling parameters (mental process – observation, evaluation, judgement, opinion);
c) estimate an associated cooling capacity value for each of the cutter elements based on the design parameters and one or more cooling parameters (mental process – observation, evaluation, judgement, opinion);
d) identify one or more cutter elements for which the associated thermal impact value differs from the associated cooling capacity value by more than a threshold amount (mental process – observation, evaluation, judgement, opinion);
display one or more of the thermal impact values and the cooling capacity values on a user interface responsive to a user input selecting one of a presentation on a per cutter element basis or as a function of a property of the cutter elements;
f) receive a first user input via the user interface to modify one or more design parameters that affect the identified one or more cutter elements, thereby creating one or more modified design parameters (mental process – observation, evaluation, judgement, opinion); and
g) iteratively perform steps b) through e) based on the modified design parameters (mental process – observation, evaluation, judgement, opinion).
The limitations as analyzed include concepts directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The claim involves estimating, identifying and modifying design parameter steps. The estimating and identifying steps are simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas.
Step 2A, prong two: Under step 2A prong two, this judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present insignificant extra-solution activity and generic computing components. In particular, the claim recites the additional limitations: “A non-transitory, computer-readable medium containing instructions that, when executed by a processor, cause the processor to”, “a) receive a drill bit design from a memory, the drill bit design specifying design parameters related to a plurality of cutter elements of the drill bit” (insignificant extra-solution activity - mere data gathering/output MPEP 2106.05(g)), “display one or more of the thermal impact values and the cooling capacity values on a user interface responsive to a user input selecting one of a presentation on a per cutter element basis or as a function of a property of the cutter elements” (insignificant extra-solution activity - mere data gathering/output MPEP 2106.05(g)), “f) receive a first user input” (insignificant extra-solution activity - mere data gathering/output MPEP 2106.05(g)), “via the user interface to modify” (generic computing components merely carrying out the abstract idea - see MPEP § 2106.05(f) and (b)).
When viewed in combination or as a whole, the recited additional elements do no more
than automate the mental process as recited in the judicial exception, using the computer components as a tooI. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Step 2B: Moving on to step 2B of the analysis, the Examiner must consider whether each claim limitation individually or as an ordered combination amounts to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as "apply it" or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards data gathering and output. See MPEP 2106.04(d) referencing MPEP 2106.05(h). Furthermore, as Berkheimer evidence that the claim elements “a) receive a drill bit design from a memory, the drill bit design specifying design parameters related to a plurality of cutter elements of the drill bit”, “display one or more of the thermal impact values and the cooling capacity values on a user interface responsive to a user input selecting one of a presentation on a per cutter element basis or as a function of a property of the cutter elements” and “f) receive a first user input” are Well-Understood, Routine, and Conventional, MPEP § 2106.05(d) (II) provides support that mere data collecting and data outputting is well understood, routine, and conventional: "The courts have recognized the following computer functions as well- understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra- solution activity:
• Receiving or transmitting data over a network, e.g., using the Internet to gather
data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary
computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d
607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image
transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d
1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives
and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
• 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
• Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115
USPQ2d at 1092-93
For the foregoing reasons, claim 8 is directed to an abstract idea without significantly more, and is rejected as not patent eligible under 35 U.S.C. 101. The same conclusion is reached for the dependent claims 10-13.
Claim 10 is further directed to updating design parameters, which is directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The updating design parameters step is simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas. This judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present generic computing components (non-transitory computer-readable medium, processor). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards generic computing components.
Claim 11 is further directed to presenting an improvement value responsive to a user input. The judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present insignificant extra-solution activity (mere data gathering/output MPEP 2106.05(g)) and generic computing components (non-transitory computer-readable medium, processor). Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards generic computing components and data gathering and output.
Claim 12 is further directed to design parameters, which is directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The updating design parameters step is simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas. This judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present generic computing components (non-transitory computer-readable medium). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards generic computing components.
Claim 13 is further directed to estimating, which is directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The estimating step is simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas. This judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present generic computing components (non-transitory computer-readable medium). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards generic computing components.
Step 2A, prong one: In order to apply step 2A, a recitation of claim 14 is copied below. The limitations of the claim that describe an abstract idea are bolded.
A computing device, comprising:
a memory configured to store a drill bit design, the drill bit design specifying design parameters related to a plurality of cutter elements of the drill bit; and
a processor coupled to the memory, the processor configured to:
a) receive the drill bit design from the memory;
b)estimate an associated thermal impact value for each of the cutter elements based on the design parameters and one or more drilling parameters (mental process – observation, evaluation, judgement, opinion);
c)estimate an associated cooling capacity value for each of the cutter elements based on the design parameters and one or more cooling parameters (mental process – observation, evaluation, judgement, opinion);
d) identify one or more cutter elements for which the associated thermal impact value differs from the associated cooling capacity value by more than a threshold amount (mental process – observation, evaluation, judgement, opinion);
e)display, on a user interface of a display device, one or more of the thermal impact values and the cooling capacity values responsive to a user input selecting one of a presentation on a per cutter element basis or as a function of a property of the cutter elements;
f) receive a first user input via the user interface to modify one or more design parameters that affect the identified one or more cutter elements, thereby creating one or more modified design parameters (mental process – observation, evaluation, judgement, opinion); and
g) iteratively perform steps b) through e) based on the modified design parameters (mental process – observation, evaluation, judgement, opinion).
The limitations as analyzed include concepts directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The claim involves estimating, identifying and modifying design parameter steps. The estimating and identifying steps are simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas.
Step 2A, prong two: Under step 2A prong two, this judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present insignificant extra-solution activity and generic computing components.. In particular, the claim recites the additional limitations: “A computing device, comprising” (generic computing components merely carrying out the abstract idea - see MPEP § 2106.05(f) and (b)), “a memory configured to store a drill bit design, the drill bit design specifying design parameters related to a plurality of cutter elements of the drill bit” (generic computing components merely carrying out the abstract idea - see MPEP § 2106.05(f) and (b)), “a processor coupled to the memory, the processor configured to” (generic computing components merely carrying out the abstract idea - see MPEP § 2106.05(f) and (b)), “a) receive the drill bit design from the memory” (insignificant extra-solution activity - mere data gathering/output MPEP 2106.05(g)), “e) display” (insignificant extra-solution activity - mere data gathering/output MPEP 2106.05(g)), “on a user interface of a display device” (generic computing components merely carrying out the abstract idea - see MPEP § 2106.05(f) and (b)), “f) receive a first user input” (insignificant extra-solution activity - mere data gathering/output MPEP 2106.05(g)), “via the user interface” (generic computing components merely carrying out the abstract idea - see MPEP § 2106.05(f) and (b)).
When viewed in combination or as a whole, the recited additional elements do no more
than automate the mental process as recited in the judicial exception, using the computer components as a tooI. Accordingly, these additional elements do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
Step 2B: Moving on to step 2B of the analysis, the Examiner must consider whether each claim limitation individually or as an ordered combination amounts to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as "apply it" or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards data gathering and output. See MPEP 2106.04(d) referencing MPEP 2106.05(h). Furthermore, as Berkheimer evidence that the claim elements “a memory configured to store a drill bit design, the drill bit design specifying design parameters related to a plurality of cutter elements of the drill bit”, “a) receive the drill bit design from the memory”, “e) display”, “f) receive a first user input” are Well-Understood, Routine, and Conventional, MPEP § 2106.05(d) (II) provides support that mere data collecting and data outputting is well understood, routine, and conventional: "The courts have recognized the following computer functions as well- understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra- solution activity:
• Receiving or transmitting data over a network, e.g., using the Internet to gather
data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary
computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d
607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image
transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d
1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google,
Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives
and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P.,
773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014)
• 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
• Presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115
USPQ2d at 1092-93
For the foregoing reasons, claim 14 is directed to an abstract idea without significantly more, and is rejected as not patent eligible under 35 U.S.C. 101. The same conclusion is reached for the dependent claims 16-19.
Claim 16 is further directed to updating design parameters, which is directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The updating design parameters step is simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas. This judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present generic computing components (computing device, processor). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards generic computing components.
Claim 17 is further directed to displaying an improvement value responsive to a user input. The judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present generic computing components (computing device, processor) and insignificant extra-solution activity (mere data gathering/output MPEP 2106.05(g)). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards generic computing components and insignificant extra-solution activity.
Claim 18 is further directed to design parameters, which is directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The updating design parameters step is simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas. This judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present generic computing components (computing device, processor). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards generic computing components.
Claim 19 is further directed to estimating, which is directed to the "mental process" groupings of abstract ideas performed in the human mind (including an observation, evaluation, judgment, opinion) (see MPEP § 2106.04(a)(2), subsection III). The estimating step is simple enough/broadly claimed that they could be performed mentally or with pen and paper. Thus, limitations noted above also fall into the "mental process" groupings of abstract ideas. This judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present generic computing components (computing device, processor). The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations is considered directed towards generic computing components.
Allowable Subject Matter
Claims 1, 3-8, 10-14, 16-21 contain allowable subject matter.
The claims will be allowable if the rejections under 35 USC 101are overcome.
Prasad teaches a method for estimating and presenting thermal impact and cooling capacity for cutter elements. However, this reference and the remaining prior art of record, alone or in combination, fails to disclose or suggest
(claims 1, 8, 14)
“d) identifying one or more cutter element for which the associated thermal impact value differs from the associated cooling capacity value by more than a threshold amount”,
in combination with the remaining elements and features of the claimed invention. It is for these reasons that the applicant’s invention defines over the prior art of record.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to NITHYA J. MOLL whose telephone number is (571)270-1003. The examiner can normally be reached Monday-Friday 10am-6pm EST.
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/NITHYA J. MOLL/Primary Examiner, Art Unit 2189