DETAILED ACTION
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . The amendment filed 01/21/2026 has been received and considered. Claim 19 is withdrawn from further consideration. Claims 1-3, 6, 7, 9, 10, 12-15, 18-20, and 22-27 are pending and presented for examination.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 01/21/2026 has been entered.
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, 6, 7, 9, 10, 12-15, 18, 20, and 22-27 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent claim 1, Step 1: a method (process = 2019 PEG Step 1 = yes).
Independent claim 1, Step 2A, Prong One: claim recites:
comparing the secondary deformed surface model of the first mating surface to the surface model of the second mating surface.
The limitations are substantially drawn to mental concepts: observation, evaluation, judgment, opinion. Information and/or data also fall within the realm of abstract ideas because information and data are intangible. See Electric Power Group1 (Electric Power hereinafter): “Information… is an intangible”. These limitations, as drafted and under their broadest reasonable interpretation, cover performance of the limitations in the mind. For example, the claim language encompasses a user simply comparing surface models (data processing) in his/her mind. Examiner notes that "comparing" is not elaborated but merely repeated in the Application description.
If a claim limitation, under its broadest reasonable interpretation, covers mental processes, then it falls within the "(c) Mental processes" grouping of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes, (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Independent claim 1, Step 2A Prong two: As to the limitations “for assembling a first mating surface of a first part with a second mating surface of a second part" and "for manufacture of a shim to be assembled between the first mating surface and the second mating surface", they are no more than intended use.
As to the limitations “obtaining a first baseline surface model of the first mating surface of the first part; scanning the first mating surface of the first part when the first part is in a deviated configuration”, these limitations describe the concept of “mere data gathering”, which corresponds to the concepts identified as abstract ideas by the courts. Data gathering, including when limited to particular content does not change its character as information, is also within the realm of abstract ideas. Data gathering has not been held by the courts to be enough to qualify as “significantly more”. It is considered insignificant extra-solution activity. See Electric Power.
As to the limitations "for determining a shim profile… generate a first scan-based surface model of the first mating surface; deforming the first scan-based surface model of the first mating surface relative to the first baseline surface model of the first mating surface to generate a first deformed surface model of the first mating surface; further deforming the first deformed surface model of the first mating surface relative to a surface model of the second mating surface of the second part to generate a secondary deformed surface model of the first mating surface… creating the shim profile based on the comparing the secondary deformed surface model of the first mating surface to the surface model of the second mating surface, the shim profile representing gaps between as-built conditions of the first mating surface and the second mating surface”, the limitations appear to be just “apply it” limitations, because the limitations invoke computers merely as a tool to perform an existing process.
This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Independent claim 1, Step 2B: As discussed with respect to Step 2A, Prong two, the limitations “for assembling a first mating surface of a first part with a second mating surface of a second part" and "for manufacture of a shim to be assembled between the first mating surface and the second mating surface" are no more than intended use, because no actual assembling or manufacturing of a shim are performed in the body of the claim.
As discussed with respect to Step 2A, Prong two, claim 1 recites data gathering, these limitations are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration.
As discussed with respect to Step 2A, Prong two, limitations invoking computers or other machinery merely as a tool to perform an existing process are just “apply it” limitations. See MPEP 2106.05(f)(2). See for example in the Specification (underline emphasis added):
"[0033]… deforming 140 the first scan-based surface model 310 of the first mating surface 215 relative to the first baseline surface model 300 of the first mating surface 215 comprises performing finite element analysis… [0034]… deforming 140 the second scan-based surface model 315 relative to the second baseline surface model 340 of the second mating surface 225 comprises performing finite element analysis… [0051]… analyzer 520 utilizes a computer 530 and processor 535 to generate the shim profile 250 based upon comparison of the secondary deformed surface model 370 to the surface model 330“.
Thus, taken alone the individual additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the additional elements taken individually. There is no indication that the combination of additional elements improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claims do not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Independent claim 24, Step 1: a method (process = 2019 PEG Step 1 = yes).
Independent claim 24, Step 2A, Prong One: claim recites:
comparing the secondary deformed surface model of the first mating surface to the surface model of the second mating surface.
The limitations are substantially drawn to mental concepts. (See Independent claim 1, Step 2A Prong One above).
If a claim limitation, under its broadest reasonable interpretation, covers mental processes, then it falls within the "(c) Mental processes" grouping of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes, (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Independent claim 24, Step 2A Prong two: As to the limitations “for assembling a first mating surface of a first part with a second mating surface of a second part" and "for manufacture of a shim to be assembled between the first mating surface and the second mating surface", they are no more than intended use.
As to the limitations “obtaining a first baseline surface model and a second baseline surface model; scanning the first mating surface when the first part is in a deviated configuration”, these limitations describe the concept of “mere data gathering”. (See Independent claim 1, Step 2A Prong two above).
As to the limitations "for determining a shim profile… generate a first scan-based surface model of the first mating surface, and the second mating surface of when the second part is in a deviated configuration to generate a second scan-based surface model of the second mating surface; deforming the first scan-based surface model of the first mating surface relative to the first baseline surface model of the first mating surface to generate a first deformed surface model of the first mating surface, and deforming the second scan-based surface model of the second mating surface relative to the second baseline surface model of the second mating surface to generate a deformed surface model of the second mating surface; further deforming the first deformed surface model of the first mating surface relative to the deformed surface model of the second mating surface of the second part to generate a secondary deformed surface model of the first mating surface, and further deforming the deformed surface model of the second mating surface relative to the first deformed surface model of the first mating surface of the first part to generate a second deformed surface model of the second mating surface… creating the shim profile based on the comparing the secondary deformed surface model of the first mating surface to the second deformed surface model of the second mating surface, the shim profile representing gaps between as-built conditions of the first mating surface and the second mating surface", the limitations appear to be just “apply it” limitations, because the limitations invoke computers merely as a tool to perform an existing process.
This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Independent claim 24, Step 2B: As discussed with respect to Step 2A, Prong two, the limitations “for assembling a first mating surface of a first part with a second mating surface of a second part" and "for manufacture of a shim to be assembled between the first mating surface and the second mating surface" are no more than intended use, because no actual assembling or manufacturing of a shim are performed in the body of the claim.
As discussed with respect to Step 2A, Prong two, claim 24 recites data gathering, these limitations are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration.
As discussed with respect to Step 2A, Prong two, limitations invoking computers or other machinery merely as a tool to perform an existing process are just “apply it” limitations. (See Independent claim 1, Step 2B above).
Thus, taken alone the individual additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the additional elements taken individually. There is no indication that the combination of additional elements improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claims do not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Independent claim 25, Step 1: an apparatus (system = 2019 PEG Step 1 = yes).
Independent claim 25, Step 2A, Prong One: claim recites:
compare the secondary deformed surface model of the first mating surface to the surface model of the second mating surface.
The limitations are substantially drawn to mental concepts. (See Independent claim 1, Step 2A Prong One above). These limitations, as drafted and under their broadest reasonable interpretation, cover performance of the limitations in the mind but for the recitation of generic computer components. That is, other than reciting generic computer components nothing claimed precludes these limitations from practically being performed in the mind.
If a claim limitation, under its broadest reasonable interpretation, covers mental processes, then it falls within the "(c) Mental processes" grouping of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes, (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Independent claim 25, Step 2A Prong two: The claim recites the additional elements "an analyzer comprising a computer with a processor", they are interpreted as drawn to a generic computer.
As to the limitations “for assembling a first mating surface of a first part with a second mating surface of a second part" and "for manufacture of a shim to be assembled between the first mating surface and the second mating surface", they are no more than intended use.
As to the limitations “receives captured images of the first mating surface of the first part when the first part is in a deviated configuration”, these limitations describe the concept of “mere data gathering”. (See Independent claim 1, Step 2A Prong two above).
As to the limitations "for determining a shim profile… a surface model generator… generates a first scan-based surface model of the first mating surface… deform the first scan-based surface model of the first mating surface relative to a first baseline surface model of the first mating surface to generate a first deformed surface model of the first mating surface; further deform the first deformed surface model of the first mating surface relative to a surface model of the second mating surface of the second part to generate a secondary deformed surface model of the first mating surface… create the shim profile based on comparing the secondary deformed surface model of the first mating surface to the surface model of the second mating surface, the shim profile representing gaps between as-built conditions of the first mating surface and the second mating surface", the limitations appear to be just “apply it” limitations, because the limitations invoke computers or other machinery merely as a tool to perform an existing process.
This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Independent claim 25, Step 2B: As discussed with respect to Step 2A, the claim recites the additional elements "an analyzer comprising a computer with a processor". They are recited at a high level of generality and are recited as performing generic computer functions routinely used in computer applications. Generic computer components recited as performing generic computer functions that are well-understood, routine and conventional activities amount to no more than implementing the abstract idea with computers. Their collective functions merely provide conventional computer implementation. The computer implementation is described in the specification: ‘[0051]… analyzer 520 utilizes a computer 530 and processor 535’. The use of computers to implement the abstract idea of a mental algorithm has not been held by the courts to be enough to qualify as “significantly more”.
As discussed with respect to Step 2A, Prong two, the limitations “for assembling a first mating surface of a first part with a second mating surface of a second part" and "for manufacture of a shim to be assembled between the first mating surface and the second mating surface" are no more than intended use, because no actual assembling or manufacturing of a shim are performed in the body of the claim.
As discussed with respect to Step 2A, Prong two, claim 25 recites data gathering, these limitations are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration.
As discussed with respect to Step 2A, Prong two, limitations invoking computers or other machinery merely as a tool to perform an existing process are just “apply it” limitations. (See Independent claim 1, Step 2B above).
Thus, taken alone the individual additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the additional elements taken individually. There is no indication that the combination of additional elements improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claims do not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
The dependent claims, Step 2A, Prong One: Their claim limitations further the mental concepts of their independent claim. (See Independent claim 1, Step 2A, Prong One above). If a claim limitation, under its broadest reasonable interpretation, covers mental processes, then it falls within the "(c) Mental processes" grouping of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes, (c) Mental processes—concepts performed in the human mind (including an observation, evaluation, judgment, opinion).
Dependent claims, Step 2A Prong Two: As to the limitations "2… wherein the first baseline surface model comprises a CAD model", "14… wherein the second baseline surface model of the second mating surface comprises a CAD model", and "20… wherein the first part and the second part are both components of an aircraft". They amount to generally linking the use of a judicial exception to a particular technological environment.
As to the limitations “3… wherein the first baseline surface model comprises a scan of the first mating surface”, “10… wherein the second scan-based surface model of the second mating surface is obtained by scanning the second mating surface”, “12/13… scanning the second mating surface of the second part when the second part is in a deviated configuration to obtain a second scan-based surface model of the second mating surface”, “15… wherein the second baseline surface model of the second mating surface comprises a scan of the second mating surface”, “22… obtaining a second baseline surface model of the second mating surface of the second part; scanning the second mating surface of the second part when the second part is in a deviated configuration”, and "27… wherein the first part is a flexible part", these limitations describe the concept of “mere data gathering”. (See Independent claim 1, Step 2A Prong two above).
As to the limitations "6… supporting the first part on a fixture prior to the scanning of the first mating surface of the first part”, "7… wherein the fixture comprises a mechanical restraint to at least partially secure the first part to the fixture”, and "18… manufacturing a shim based on the shim profile", they are insignificant extra-solution activity.
As to the limitations “9… wherein the surface model of the second mating surface of the second part is a second baseline surface model of the second mating surface”, "12… wherein the surface model of the second mating surface of the second part is a deformed surface model of the second mating surface, and wherein the deformed surface model of the second mating surface is obtained by… deforming the second scan-based surface model of the second mating surface relative to a second baseline surface model of the second mating surface”, "13… wherein the surface model of the second mating surface of the second part is a second deformed surface model of the second mating surface, and wherein the second deformed surface model of the second mating surface is obtained by… deforming the second scan-based surface model of the second mating surface relative to a second baseline surface model of the second mating surface to obtain a deformed surface model; and further deforming the deformed surface model of the second mating surface relative to the first deformed surface model of the first mating surface of the first part to generate the second deformed surface model of the second mating surface”, "22… generate a second scan-based surface model of the second mating surface; deforming the second scan-based surface model of the second mating surface relative to the second baseline surface model of the second mating surface to generate a deformed surface model of the second mating surface; and further deforming the deformed surface model of the second mating surface relative to the first deformed surface model of the first mating surface of the first part to generate a second deformed surface model of the second mating surface”, "26… generate the shim profile based on a comparison of the secondary deformed surface model of the first mating surface to the surface model of the second mating surface", and "27… wherein… the deforming of the first scan-based surface model comprises simulating a physical response of the flexible part", the limitations appear to be just “apply it” limitations, because the limitations invoke computers merely as a tool to perform an existing process.
This judicial exception is not integrated into a practical application of the exception (2019 PEG Step 2A, Prong Two: Additional elements that integrate the Judicial exception/Abstract idea into a practical application? = NO).
Dependent claims, Step 2B: As to the limitations identified as generally linking the use of a judicial exception to a particular technological environment, see MPEP 2106.05(h) Field of Use and Technological Environment, 2106.05(e) Other Meaningful Limitations.
As discussed with respect to Step 2A, Prong two, claims recite data gathering, these limitations are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration.
As discussed with respect to Step 2A, Prong two, the limitations "6… supporting the first part on a fixture prior to the scanning of the first mating surface of the first part”, "7… wherein the fixture comprises a mechanical restraint to at least partially secure the first part to the fixture”, and "18… manufacturing a shim based on the shim profile" are insignificant extra-solution activity. The Examiner notes that MPEP 2106.05(g) Insignificant Extra-Solution Activity [R-10.2019] reads: “When determining whether an additional element is insignificant extra-solution activity, examiners may consider the following: (1) Whether the extra-solution limitation is well known". Clark et al., (Clark hereinafter), U.S. Pre–Grant publication 20170138385 (see IDS dated 12/02/2022), discloses "[0051]… aspects of the finite element model may be adjusted over a range, such as… restraints, supports" and "[0045]… a shim (e.g., shim 220) is fabricated using shim dimensions determined". Dario Valenzuela, U.S. Patent 10488185, discloses “analyze an inner radial surface of the female end 113 and an outer radial surface of the male end 115 to determine parameters for manufacturing the shim" (see col. 6, lines 2-24). Dario Valenzuela, (Valenzuela hereinafter), U.S. Patent 9599983, discloses “surfaces that form interface 125 may include several structural features configured to provide increased coupling between first structure 122 and second structure 124, as well as additional structural support for each respective structure… second structure 124 may be coupled to several structural members which may be longerons, stiffeners, or stringers, such as stringer 128, which may attached or coupled to an internal surface of second structure 124 which, in this example, may be the lower surface of an airplane wing” (see col. 10, lines 40-49) and "manufacture the shims and place them in the gaps to ensure mechanical coupling between the structures" (see col. 11, lines 3-4). As to “18… manufacturing a shim based on the shim profile”, there is no elaboration of any special meanings for “manufacturing a shim based on the shim profile” in the claims and Specification. The specification merely reads (underline emphasis added):
'[0020]… during assembly of an aircraft, gaps may be formed between mating surfaces of parts of an airframe due to manufacturing tolerances. Shims may be fabricated and placed within gaps that have dimensions outside of a predetermined tolerance…
[0045]… method 100 further comprises manufacturing one or more shim based on the shim profile 250'.
As discussed with respect to Step 2A, Prong two, the limitations identified as just “apply it” limitations are “apply it” limitations because they invoke computers merely as a tool to perform an existing process. (See Independent claim 1, Step 2B above).
Thus, taken alone the individual additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the additional elements as an ordered combination adds nothing that is not already present when looking at the additional elements taken individually. There is no indication that the combination of additional elements improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claims do not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103(a) are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
Examiner would like to point out that any reference to specific figures, columns and lines should not be considered limiting in any way, the entire reference is considered to provide disclosure relating to the claimed invention.
Claims 1-3, 6, 7, 9, 10, 12-15, 18, 19, 20, and 22-27 are rejected under 35 U.S.C. 103(a) as being unpatentable over Clark taken in view of Valenzuela.
As to claim 1, Clark discloses a method for determining a shim profile for assembling a first mating surface of a first part with a second mating surface of a second part (see "[0025]… first , the method comprising: obtaining a first baseline surface model of the first mating surface of the first part (see "[0028]… digital representations of the first ; scanning (see "[0029]… first member the first mating surface of the first part (see "[0025]… first member 210 and the second member 230") when the first part is in a deviated configuration to generate a first scan-based surface model of the first mating surface (see "[0038]… difference between the first digital representation 410 and the nominal mating surface 650 corresponds to the variance or deviation in the actual first member 210 from a theoretical design target"); deforming the first scan-based surface model of the first mating surface relative to the first baseline surface model of the first mating surface to generate a first deformed surface model of the first mating surface (see "baseline surface" as "idealized or nominal surface", "[0033]… a virtual deformation corresponding to ; further deforming the first deformed surface model of the first mating surface relative to a surface model of the second mating surface of the second part to generate a secondary deformed surface model of the first mating surface (see "[0033]… virtual deformation may be determined for both of the first and second digital representations"; "deforming the first deformed surface model" as FIG. 11, item No. 1108 & "[0053] At 1108, the mathematical model is applied to a parameterized surface representing a part (e.g. a CAD surface representing a part)"); comparing the secondary deformed surface model of the first mating surface to the surface model of the second mating surface (see "comparing" as "different techniques for determining the shim dimensions may be utilized", "[0036]… by accounting for, modeling, or predicting the amount of deformation that the first and/or second members will be subject to when joined, a more accurately sized and dimensioned shim may be provided. Various different techniques for determining the shim dimensions may be utilized"); and creating the shim profile based on the comparing the secondary deformed surface model of the first mating surface to the surface model of the second mating surface (see "comparing" as "different techniques for determining the shim dimensions may be utilized", "[0036] At 120, shim dimensions are determined for a shim to be interposed between the first member and the second member based on the virtual deformation… by accounting for, modeling, or predicting the amount of deformation that the first and/or second members will be subject to when joined, a more accurately sized and dimensioned shim may be provided. Various different techniques for determining the shim dimensions may be utilized"), the shim profile representing gaps between as-built conditions of the first mating surface and the second mating surface (see "[0026]… the shim 220 may be employed to help ensure a correct fit or interaction between the first member 210 and the second member 230. For example, the first member 210 and/or second member 230 may include a surface that deviates from a targeted design state, resulting in gaps between the first member 210 and second member 230 if joined directly. The shim 220 may be sized and configured to eliminate, reduce, or minimize any internal gaps in the structure 200 after the first member 210 and the second member 230 are joined") for manufacture of a shim to be assembled between the first mating surface and the second mating surface (see "[0045] At 126, a shim (e.g., shim 220) is fabricated using shim dimensions determined at 120. The shim, for example, may be machined out of fiberglass").
While Clark discloses "comparing" as "different techniques for determining the shim dimensions may be utilized", Clark fails to expressly disclose comparing.
Valenzuela expressly discloses comparing. (See “shim dimensions may be determined based, at least in part, on the generated measurement data… controller… may determine the shim dimensions by comparing the received measurement data to other measurement data. For example, the received measurement data may include a first set of measurements identifying surface features, such as height, depth, and relative position of a first surface which may be the top of a rib of an airplane… compare the first set of measurements with a second set of measurements identifying surface features of a second surface which may be the underside of an upper surface panel that is to be placed on top of the rib” in col. 17, line 61 to col. 18, line 8).
Clark and Valenzuela are analogous art because they are related to predictive shimming of gaps.
Therefore, it would have been obvious to one of ordinary skill in this art before the effective filing date of the claimed invention to use Valenzuela with Clark, because Valenzuela discloses "an automated shimming system… to automatically scan and measure various surfaces and interfaces of a large structure and/or components of the large structure to determine the precise dimensions of gaps that may be present at such interfaces, as well as the appropriate dimensions of shims that may be manufactured and used to fill the gaps and ensure proper mechanical coupling among components of the large structure", and as a result, Valenzuela reports to "further… determine that no gap exists and no shim should be manufactured. In this way, system 100 may be implemented to determine the dimensions of the shims efficiently and accurately for any suitable large structure" (see col. 5, lines 3-18).
As to claim 2, Clark discloses wherein the first baseline surface model comprises a CAD model (see "[0053]… mathematical model is applied to a parameterized surface representing a part (e.g. a CAD surface representing a part). For example, a nominal or measured CAD surface may be utilized, with the mathematical model applied to the CAD surface to provide a parameterized deflected or deformed surface").
As to claim 3, Clark discloses wherein the first baseline surface model comprises a scan (see "[0029]… first member of the first mating surface (see "[0025]… first airplane fuselage or wing… structure 200 includes a first member 210
As to claim 6, Clark discloses supporting the first part on a fixture prior to the scanning of the first mating surface of the first part (see "[0051]… aspects of the finite element model may be adjusted over a range, such as… restraints, supports").
As to claim 7, Clark discloses wherein the fixture comprises a mechanical restraint to at least partially secure the first part to the fixture (see "[0051]… other aspects of the finite element model may be adjusted over a range, such as… restraints, supports").
As to claim 9, Clark discloses wherein the surface model of the second mating surface of the second part is a second baseline surface model of the second mating surface (see "baseline surface" as "idealized or nominal surface", "[0033]… a virtual deformation corresponding to .
As to claim 10, Clark discloses wherein the surface model of the second mating surface of the second part (see "[0025]… is a second scan-based surface model of the second mating surface, and wherein the second scan-based surface model of the second mating surface is obtained by scanning the second mating surface (see "[0029]… are measured to provide .
As to claim 12, Clark discloses wherein the surface model of the second mating surface of the second part is a deformed surface model of the second mating surface (see "baseline surface" as "idealized or nominal surface", "[0033]… a virtual deformation corresponding to , and wherein the deformed surface model of the second mating surface is obtained by: scanning the second mating surface of the second part when the second part is in a deviated configuration (see "[0038]… difference between the second digital representation 430 and the nominal mating surface 650 corresponds to the variance or deviation in the actual second member 230 from the theoretical design target") to obtain a second scan-based surface model of the second mating surface (see "[0029]… ; and deforming the second scan-based surface model of the second mating surface relative to a second baseline surface model of the second mating surface (see "baseline surface" as "idealized or nominal surface", "[0033]… a virtual deformation corresponding to .
As to claim 13, Clark discloses wherein the surface model of the second mating surface of the second part is a second deformed surface model of the second mating surface (see "[0049]… a parameterized model of , and wherein the second deformed surface model of the second mating surface is obtained by: scanning (see "[0029]… the second mating surface of the second part when the second part is in a deviated configuration (see "[0038]… difference between the second digital representation 430 and the nominal mating surface 650 corresponds to the variance or deviation in the actual second member 230 from the theoretical design target") to obtain a second scan-based surface model of the second mating surface (see "[0029]… ; deforming the second scan-based surface model of the second mating surface relative to a second baseline surface model of the second mating surface to obtain a deformed surface model (see "baseline surface" as "idealized or nominal surface", "[0033]… a virtual deformation corresponding to ; and further deforming the deformed surface model of the second mating surface relative to the first deformed surface model of the first mating surface of the first part to generate the second deformed surface model of the second mating surface (see "[0049]… a parameterized model of
As to claim 14, Clark discloses wherein the second baseline surface model of the second mating surface comprises a CAD model (see "[0053]… mathematical model is applied to a parameterized surface representing a part (e.g. a CAD surface representing a part). For example, a nominal or measured CAD surface may be utilized, with the mathematical model applied to the CAD surface to provide a parameterized deflected or deformed surface").
As to claim 15, Clark discloses wherein the second baseline surface model of the second mating surface comprises a scan of the second mating surface (see "[0029]… .
As to claim 18, Clark discloses manufacturing a shim based on the shim profile (see "[0045]… a shim (e.g., shim 220) is fabricated using shim dimensions determined").
As to claim 20, Clark discloses wherein the first part and the second part are both components of an aircraft (see "[0025]… first and second members may be joined… to form a structure that may be used as part of an airplane fuselage or wing").
As to claim 22, Clark discloses obtaining a second baseline surface model of the second mating surface of the second part (see "[0050]… a finite element model of ; scanning (see "[0029]… the second mating surface of the second part when the second part is in a deviated configuration (see "[0038]… difference between the second digital representation 430 and the nominal mating surface 650 corresponds to the variance or deviation in the actual second member 230 from the theoretical design target") to generate a second scan-based surface model of the second mating surface (see "[0029]… ; deforming the second scan-based surface model of the second mating surface relative to the second baseline surface model of the second mating surface to generate a deformed surface model of the second mating surface (see "baseline surface" as "idealized or nominal surface", "[0033]… a virtual deformation corresponding to ; and further deforming the deformed surface model of the second mating surface relative to the first deformed surface model of the first mating surface of the first part to generate a second deformed surface model of the second mating surface (see "deforming the deformed surface model" as FIG. 11, item No. 1108 & "[0053] At 1108, the mathematical model is applied to a parameterized surface representing a part (e.g. a CAD surface representing a part)", "[0049]… a parameterized model of .
As to claim 23, Clark discloses wherein the comparing the secondary deformed surface model of the first mating surface to the surface model of the second mating surface comprises comparing the secondary deformed surface model of the first mating surface to the second deformed surface model of the second mating surface (see "comparing" as "different techniques for determining the shim dimensions may be utilized", "[0036]… by accounting for, modeling, or predicting the amount of deformation that the first and/or second members will be subject to when joined, a more accurately sized and dimensioned shim may be provided. Various different techniques for determining the shim dimensions may be utilized"). Valenzuela expressly discloses comparing (see “shim dimensions may be determined based, at least in part, on the generated measurement data… controller… may determine the shim dimensions by comparing the received measurement data to other measurement data. For example, the received measurement data may include a first set of measurements identifying surface features, such as height, depth, and relative position of a first surface which may be the top of a rib of an airplane… compare the first set of measurements with a second set of measurements identifying surface features of a second surface which may be the underside of an upper surface panel that is to be placed on top of the rib” in col. 17, line 61 to col. 18, line 8).
As to claim 24, Clark discloses a method for determining a shim profile for assembling a first mating surface of a first part with a second mating surface of a second part (see "[0025]… first , the method comprising: obtaining a first baseline surface model and a second baseline surface model (see "[0028]… digital representations of the first ; scanning (see "[0029]… first member the first mating surface when the first part (see "[0025]… first is in a deviated configuration to generate a first scan-based surface model of the first mating surface (see "[0038]… difference between the first digital representation 410 and the nominal mating surface 650 corresponds to the variance or deviation in the actual first member 210 from a theoretical design target"), and the second mating surface of when the second part is in a deviated configuration to generate a second scan-based surface model of the second mating surface (see "[0029]… ; deforming the first scan-based surface model of the first mating surface relative to the first baseline surface model of the first mating surface to generate a first deformed surface model of the first mating surface, and deforming the second scan-based surface model of the second mating surface relative to the second baseline surface model of the second mating surface to generate a deformed surface model of the second mating surface (see "baseline surface" as "idealized or nominal surface", "[0033]… virtual deformation may be determined for both of the first and second digital representations… virtual deformation may be determined for flexing of ; further deforming the first deformed surface model of the first mating surface relative to the deformed surface model of the second mating surface of the second part to generate a secondary deformed surface model of the first mating surface, and further deforming the deformed surface model of the second mating surface relative to the first deformed surface model of the first mating surface of the first part to generate a second deformed surface model of the second mating surface (see "[0033]… virtual deformation may be determined for both of the first and second digital representations"; "deforming the first deformed surface model" as FIG. 11, item No. 1108 & "[0053] At 1108, the mathematical model is applied to a parameterized surface representing a part (e.g. a CAD surface representing a part)"); comparing the secondary deformed surface model of the first mating surface to the second deformed surface model of the second mating surface; and creating the shim profile based on the comparing the secondary deformed surface model of the first mating surface to the second deformed surface model of the second mating surface (see "comparing" as "different techniques for determining the shim dimensions may be utilized", "[0036] At 120, shim dimensions are determined for a shim to be interposed between the first member and the second member based on the virtual deformation… by accounting for, modeling, or predicting the amount of deformation that the first and/or second members will be subject to when joined, a more accurately sized and dimensioned shim may be provided. Various different techniques for determining the shim dimensions may be utilized"), the shim profile representing gaps between as-built conditions of the first mating surface and the second mating surface (see "[0026]… the shim 220 may be employed to help ensure a correct fit or interaction between the first member 210 and the second member 230. For example, the first member 210 and/or second member 230 may include a surface that deviates from a targeted design state, resulting in gaps between the first member 210 and second member 230 if joined directly. The shim 220 may be sized and configured to eliminate, reduce, or minimize any internal gaps in the structure 200 after the first member 210 and the second member 230 are joined") for manufacture of a shim to be assembled between the first mating surface and the second mating surface (see "[0045] At 126, a shim (e.g., shim 220) is fabricated using shim dimensions determined at 120. The shim, for example, may be machined out of fiberglass").
Valenzuela expressly discloses comparing (see “shim dimensions may be determined based, at least in part, on the generated measurement data… controller… may determine the shim dimensions by comparing the received measurement data to other measurement data. For example, the received measurement data may include a first set of measurements identifying surface features, such as height, depth, and relative position of a first surface which may be the top of a rib of an airplane… compare the first set of measurements with a second set of measurements identifying surface features of a second surface which may be the underside of an upper surface panel that is to be placed on top of the rib” in col. 17, line 61 to col. 18, line 8).
As to claim 25, Clark discloses an apparatus for determining a shim profile for assembling a first mating surface of a first part with a second mating surface of a second part (see "[0025]… first , the apparatus comprising: a surface model generator that receives captured images of (see "[0033]… finite element analysis (FEA) or other computational techniques may be employed to determine the virtual deformation"; "[0029]… first member and the second member are measured to provide the first digital representation and the second digital representation… with a 3-D scanning device to provide a point cloud or map of at least one surface of each of the first and second members") the first mating surface of the first part (see "[0025]… first when the first part is in a deviated configuration and generates a first scan-based surface model of the first mating surface (see "[0038]… difference between the first digital representation 410 and the nominal mating surface 650 corresponds to the variance or deviation in the actual first member 210 from a theoretical design target"); and an analyzer comprising a computer with a processor and configured to (see "[0033]… FEA) or other computational techniques may be employed to determine the virtual deformation"): deform the first scan-based surface model of the first mating surface relative to a first baseline surface model of the first mating surface to generate a first deformed surface model of the first mating surface (see "baseline surface" as "idealized or nominal surface", "[0033]… a virtual deformation corresponding to ; further deform the first deformed surface model of the first mating surface relative to a surface model of the second mating surface of the second part to generate a secondary deformed surface model of the first mating surface (see "[0033]… virtual deformation may be determined for both of the first and second digital representations"; "deform the first deformed surface model" as FIG. 11, item No. 1108 & "[0053] At 1108, the mathematical model is applied to a parameterized surface representing a part (e.g. a CAD surface representing a part)"); and compare the secondary deformed surface model of the first mating surface to the surface model of the second mating surface (see "comparing" as "different techniques for determining the shim dimensions may be utilized", "[0036]… by accounting for, modeling, or predicting the amount of deformation that the first and/or second members will be subject to when joined, a more accurately sized and dimensioned shim may be provided. Various different techniques for determining the shim dimensions may be utilized"); create the shim profile based on comparing the secondary deformed surface model of the first mating surface to the surface model of the second mating surface (see "comparing" as "different techniques for determining the shim dimensions may be utilized", "[0036] At 120, shim dimensions are determined for a shim to be interposed between the first member and the second member based on the virtual deformation… by accounting for, modeling, or predicting the amount of deformation that the first and/or second members will be subject to when joined, a more accurately sized and dimensioned shim may be provided. Various different techniques for determining the shim dimensions may be utilized"), the shim profile representing gaps between as-built conditions of the first mating surface and the second mating surface (see "[0026]… the shim 220 may be employed to help ensure a correct fit or interaction between the first member 210 and the second member 230. For example, the first member 210 and/or second member 230 may include a surface that deviates from a targeted design state, resulting in gaps between the first member 210 and second member 230 if joined directly. The shim 220 may be sized and configured to eliminate, reduce, or minimize any internal gaps in the structure 200 after the first member 210 and the second member 230 are joined") for manufacture of a shim to be assembled between the first mating surface and the second mating surface (see "[0045] At 126, a shim (e.g., shim 220) is fabricated using shim dimensions determined at 120. The shim, for example, may be machined out of fiberglass").
Valenzuela expressly discloses comparing (see “shim dimensions may be determined based, at least in part, on the generated measurement data… controller… may determine the shim dimensions by comparing the received measurement data to other measurement data. For example, the received measurement data may include a first set of measurements identifying surface features, such as height, depth, and relative position of a first surface which may be the top of a rib of an airplane… compare the first set of measurements with a second set of measurements identifying surface features of a second surface which may be the underside of an upper surface panel that is to be placed on top of the rib” in col. 17, line 61 to col. 18, line 8).
As to claim 26, Clark discloses wherein the analyzer is further configured to generate the shim profile based on a comparison of the secondary deformed surface model of the first mating surface to the surface model of the second mating surface (see "comparing" as "different techniques for determining the shim dimensions may be utilized", "[0036] At 120, shim dimensions are determined for a shim to be interposed between the first member and the second member based on the virtual deformation… by accounting for, modeling, or predicting the amount of deformation that the first and/or second members will be subject to when joined, a more accurately sized and dimensioned shim may be provided. Various different techniques for determining the shim dimensions may be utilized"). Valenzuela expressly discloses comparing (see “shim dimensions may be determined based, at least in part, on the generated measurement data… controller… may determine the shim dimensions by comparing the received measurement data to other measurement data. For example, the received measurement data may include a first set of measurements identifying surface features, such as height, depth, and relative position of a first surface which may be the top of a rib of an airplane… compare the first set of measurements with a second set of measurements identifying surface features of a second surface which may be the underside of an upper surface panel that is to be placed on top of the rib” in col. 17, line 61 to col. 18, line 8).
As to claim 27, Clark discloses wherein the first part is a flexible part (see "[0025]… first and second members may be joined… to form a structure that may be used as part of an airplane fuselage or wing"; "[0023] Embodiments… provide improved joining of flexible bodies, for example improved design and fabrication of shims to be used for joining flexible bodies"), and the deforming of the first scan-based surface model comprises simulating a physical response of the flexible part (see "simulating" as "an applied load 632 (e.g., a load applied to the finite element model) is adjusted", "[0051] At 1104, an applied load 632 (e.g., a load applied to the finite element model) is adjusted through an allowable range, with the results (e.g., deflection or deformation of the finite element model under each load adjustment) collected, tabulated, and/or exported for further analysis").
Response to Arguments
Regarding the Claim Objections, the amendment corrected the deficiencies pointed out, and those objections are withdrawn.
Regarding the 112(b) rejections, the amendment corrected the deficiencies pointed out, and those objections are withdrawn.
Regarding the rejections under 101, Applicant's arguments have been considered, but they are not persuasive. Applicant argues, (see page 8, next to last paragraph to page 10, 3rd paragraph):
‘… claims include elements that amount to significantly more than the mental processes grouping of the abstract idea judicial exception (e.g., "scanning," "deforming," "further deforming" and "creating" elements). Additionally, or in the alternative, the claims include limitations that integrate the abstract idea into a practical application (e.g., "creating" element).
For example, the Office action (see, e.g., pg. 3, 11. 22-25) alleges that the "scanning" element is mere data gathering. The Applicant respectfully disagrees. Rather, the "scanning" element requires the first mating surface of the first part to be scanned to generate a first scan-based surface model. The Applicant submits that the claimed scanning cannot be performed as a mental process. Rather, the "scanning" element amounts to significantly more than the alleged "abstract idea" judicial exception. Thus, on this ground alone Claims 1, 24 and 25 are directed to patent-eligible subject matter.
Similarly, the Office action (see, e.g., p. 3, 11. 22-25) alleges that the "deforming" and "creating" element are "apply it" limitations that are not integrated into a practical application of the abstract idea judicial exception. The Applicant respectfully disagrees. Rather, the "deforming" element is required to generate a first deformed surface model. The "further deforming" element is required to generate a secondary deformed surface model. Additionally, the "creating" element is required to create the shim profile based on models of the first mating surface and the second mating surface. The Applicant submits that the claimed deforming, further deforming and creating cannot be performed as mental processes. Rather, the "deforming," "further deforming" and "creating" elements amount to significantly more than the alleged "abstract idea" judicial exception…’
The MPEP reads (underline emphasis added):
‘2106.04… II… A… 2. Prong Two asks does the claim recite additional elements that integrate the judicial exception into a practical application?… If the additional elements in the claim integrate the recited exception into a practical application of the exception, then the claim is not directed to the judicial exception (Step 2A: NO) and thus is eligible at Pathway B… For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice… either at Prong Two or in Step 2B’
‘2106.05(f) Mere Instructions To Apply An Exception [R-10.2019]… In addition to the abstract idea, the claims also recited the additional element of…’.
‘2106.07(a)… II… After identifying the judicial exception in the rejection, identify any additional elements (features/limitations/steps) recited in the claim beyond the judicial exception and explain why they do not integrate the judicial exception into a practical application and do not add significantly more to the exception’
About "additional elements", BASCOM2, (BASCOM hereinafter) reads:
“the ‘elements of each claim both individually and ‘as an ordered combination’ to determine whether the additional elements [beyond those that recite the abstract idea”.
Examiner's response: Applicant’s argument is not persuasive, because Applicant’s arguments conflate judicial exception(s) or abstract idea(s) (Step 2A, Prong One) with additional elements (Step 2A, Prong Two or Step 2B). Throughout the prosecution of this application, in accordance with the guidance set forth in MPEP (supra) and in several decisions, BASCOM (supra) for example, the Examiner does not conflate judicial exception(s) or abstract idea(s) (Step 2A, Prong One) with additional elements (Step 2A, Prong Two or Step 2B).
Applicant argues that the additional elements are not judicial exception(s) or abstract idea(s), but the additional elements were addressed in Examiner's rejection Step 2A, Prong Two and/or Step 2B. Applicant's arguments do not address these limitations as additional elements, as pointed out by the Examiner.
Regarding the rejection under 103 of the independent claims, Applicant's arguments have been considered but they are not persuasive. Applicant argues, (see page 10, last paragraph to page 16, 2nd paragraph):
‘… The combination of Clark and Valenzuela fails to disclose or suggest the deforming feature followed by the further deforming feature recited in amended Claims 1, 24 and 25…
… This is a second deformation relative to the first mating surface 215…
In contrast to the combination of Clark and Valenzuela, Claims 1, 24 and 25 require a deforming step that deforms a first scan-based surface model to generate a first deformed surface model and a further deforming step that deforms the first deformed surface model to generate a secondary deformed surface model. The deforming 140 results in generation of a first deformed surface model of the first mating surface. The further deforming 180 is performed on the first deformed surface model and results in generation of a secondary deformed surface model of the first mating surface…’
Examiner's response: Applicant's argument is not persuasive, because Applicant's arguments are more specific than the claims language and are therefore not persuasive. Claims do not read ‘a second deformation relative to the first mating surface'. Claims do read (underline emphasis added) ‘1/25… further deforming the first deformed surface model of the first mating surface relative to a surface model of the second mating surface of the second part'.
Applicant's analysis of the reference falls short. Applicant only argues a small subset of the Examiner's mappings (Clark's Figs. 1 & 2) without considering all mappings (Clark's Figs. 1 2, 11, & others). Clark indeed discloses the added/amended/argued limitations "the deforming feature followed by the further deforming feature recited in amended Claims 1, 24 and 25" (see 'further' "deforming the first deformed surface model" as FIG. 11, item No. 1108 & "[0053] At 1108, the mathematical model is applied to a parameterized surface representing a part (e.g. a CAD surface representing a part)"). About FIG. 11, Clark discloses (underline emphasis added):
"[0049]… FIG. 11 provides a flowchart of a method 1100 in accordance with various embodiments. The method 1100, for example, may employ or be performed by structures or aspects of various embodiments (e.g., systems and/or methods and/or process flows) discussed herein. In various embodiments, certain steps may be omitted or added, certain steps may be combined, certain steps may be performed concurrently, certain steps may be split into multiple steps, certain steps may be performed in a different order, or certain steps or series of steps may be re-performed in an iterative fashion".
Conclusion
Examiner would like to point out that any reference to specific figures, columns and lines should not be considered limiting in any way, the entire reference is considered to provide disclosure relating to the claimed invention.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JUAN CARLOS OCHOA whose telephone number is (571)272-2625. The examiner can normally be reached Mondays, Tuesdays, Thursdays, and Fridays 9:30AM - 7:00 PM.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Renee Chavez can be reached at 571-270-1104. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUAN C OCHOA/Primary Examiner, Art Unit 2186
1 Electric Power Group, LLC v. Alstom S.A., 119 USPQ2d 1739 Fed. Cir. 2016
2 BASCOM Global Internet Services, Inc. v. AT&T Mobility LLC, U.S. Court of Appeals for the Federal Circuit, No. 2015-1763 (June 27, 2016)