DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
2. The amendment filed on 12/05/2025 has been received and fully considered.
3. Claims 1-2, 4, 6-12, 14, and 16-20 are presented for examination.
Response to Arguments
4. Applicant's arguments filed 12/05/2025 have been fully considered but they are not persuasive. The rejections under 35 USC 103 and 112 have been withdrawn, in view of amendment. Regarding applicant’s assertions that: “With this response, the independent claims have been amended to include transmitting the updated initial design to the fabrication system to cause the fabrication system to fabricate the physical device. Applicant respectfully submits that, even if the claims recite a judicial exception (which applicant expressly denies), this recitation of the control of a fabrication system to fabricate a physical device constitutes a practical application of any judicial exception recited therein. Accordingly, applicant respectfully submits that for at least these reasons (as well for the other improvements to technology provided by the claimed subject matter), the amended claims constitute patent eligible subject matter, and requests that the rejections under Section 101 be withdrawn.”, the Examiner respectfully disagrees and asserts that the claims, as currently constructed, are clearly directed to an abstract idea and do not recite anything that goes beyond the recited judicial exception. the additional step of transmitting the updated initial design to a fabrication system could clearly amount to post-solution activities and that no fabrication is performed by the claims. It is further noted by the Examiner that to transform an abstract idea, law of nature or natural phenomenon into "a patent-eligible application", the claim must recite more than simply the judicial exception "while adding the words 'apply it.'" Mayo, 132 S. Ct. at 1294, 101 USPQ2d at 1965. Therefore, the claims are abstract, as currently constructed, contrary to Applicant’s assertions.
Claim Rejections - 35 USC § 101
5. 35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
5.1 Claims 1-2, 4, 6-12, 14, and 16-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 2A- Prong One
The claim(s) recite(s) a non-transitory computer-readable medium and computer-implemented method of optimizing a design for a physical device to be fabricated by a fabrication system, comprising: The step of: “simulating, …, fabrication of the physical device using a fabrication model associated with the fabrication system to determine predicted structural parameters, wherein the fabrication model includes a convolution function multiplied by a beta parameter, wherein a first beta parameter is used while simulating fabrication of the physical device”; “determining, …, a gradient of the fabrication model based on an estimator, wherein a second beta parameter different the first beta parameter is used for the beta parameter by the estimator”; “backpropagating …, the gradient of the fabrication model to update the predicted structural parameters and thereby generate updated structural parameters”; and “backpropagating, …, a gradient associated with the updated structural parameters to update the initial design and thereby generate an updated initial design”, under the broadest reasonable interpretation fall under a mathematical concept / mathematical relationship or otherwise a mental process. Therefore, the claims are directed to an abstract idea, by use of generic computer components and thus are clearly directed to an abstract idea, as constructed.
Step 2A Prong Two
This judicial exception is not integrated into a practical application because the additional limitation such as: “non-transitory computer-readable medium” having “logic” stored thereon that, in response to execution by “one or more processors of a computing system”, either alone or in combination, all serve to gather and process data and do not add anything more significantly to the judicial exception, but are mere instructions to apply the exception using a generic computer component that are well known, routine, and conventional activities (see specification at para [0021] of the pub, and fig.1) which can be of any type, including general-purpose computer (para 0051-0052) previously known in the industries. Merely adding a programmable computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice, 573 U.S. at 223-24. Furthermore, the use of a general-purpose computer to apply an otherwise ineligible algorithm does not qualify as a particular machine. See Ultramerciallnc. v. Hulu, LLC, 772F.3d 709, 716-17 (Fed. Cir. 20l4); In re TLI Commc 'ns LLC v. AV Automotive, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785; the step of: “receiving, …, an initial design of the physical device”, under the broadest reasonable interpretation, reasonable fall under data gathering activities that are pre-solution activities; that are well-known, routine and conventional activities to store data in a memory and the step of: “transmitting,…, the updated initial design to the fabrication system to cause the fabrication system to fabricate the physical device” could amount to post-solution activities and are not sufficient to amount to significantly more than the judicial exception (See further MPEP 2106.05(d)(i-iv)-f), and do not add anything more significant to the recited abstract; thus are not patent eligible under 35 USC 101.
Step 2B
The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception because, as previously discussed above with reference to the integration of abstract idea into a practical application, the additional elements of: “non-transitory computer-readable medium” having “logic” stored thereon that, in response to execution by “one or more processors of a computing system”, either alone or in combination, all serve to gather and process data and do not add anything more significantly to the judicial exception, but are mere instructions to apply the exception using a generic computer component that are well known, routine, and conventional activities (see specification at para [0021] of the pub, and fig.1) which can be of any type, including general-purpose computer (para 0051-52) previously known in the industries. Merely adding a programmable computer to perform generic computer functions does not automatically overcome an eligibility rejection. Alice, 573 U.S. at 223-24. Furthermore, the use of a general-purpose computer to apply an otherwise ineligible algorithm does not qualify as a particular machine. See Ultramerciallnc. v. Hulu, LLC, 772F.3d 709, 716-17 (Fed. Cir. 20l4); In re TLI Commc 'ns LLC v. AV Automotive, LLC, 823 F.3d 607, 613 (Fed. Cir. 2016) (mere recitation of concrete or tangible components is not an inventive concept); Eon Corp. IP Holdings LLC v. AT&T Mobility LLC, 785; the step of: “receiving, …, an initial design of the physical device”, that are well-known, routine and conventional activities and are not sufficient to amount to significantly more than the judicial exception (See further MPEP 2106.05(d)(i-iv)-f), and the step of: “transmitting,…, the updated initial design to the fabrication system to cause the fabrication system to fabricate the physical device” could amount to post-solution activities and are not patent eligible under 35 USC 101. Therefore, using computer components amount to no more than mere instructions to perform the abstract, and thus are not sufficient to amount to significantly more than the recited abstract, as constructed.
5.2 Dependent claims 2, 4, 6-10, 12, 14, 16-20 merely include limitations pertaining to further mathematical computations (claim 2, 12) “wherein the actions further comprise repeating the simulating, determining, and backpropagating actions two or more times” [mathematical concept]; (claims 4 and 14); “ wherein the estimator is a straight-through estimator” [mathematical concept or otherwise a mental process]; (claims 6 and 16) “wherein the second beta parameter is smaller than the first beta parameter” [mental process or otherwise data gathering]; (claims 7 and 17) “wherein the fabrication model includes a hyperbolic tangent function” [mathematical concept]; (claims 8 and 18) “wherein the physical device is a photonic device” [mental process]; (claims 9 and 19) “wherein the photonic device is a wavelength multiplexer or a wavelength demultiplexer” [mental process]; (claims 10 and 20) “wherein the fabrication system is configured to perform a photolithography process”, all of which further amount to mental process and/or otherwise mathematical concept similar to that already recited by the independent claims and already addressed above and thus are further not patent eligible under 35 USC 101.
Conclusion
6. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
6.1 Schubert et al. (U.S. Patent No. 11,900,026) teaches a computer-implemented method for modeling fabrication constraints of a fabrication process.
7. Claims 1-2, 4, 6-12, 14, and 16-20 are rejected and THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
8. Any inquiry concerning this communication or earlier communications from the examiner should be directed to ANDRE PIERRE-LOUIS whose telephone number is (571)272-8636. The examiner can normally be reached M-F 9:00 AM-5:00 PM.
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/ANDRE PIERRE LOUIS/Primary Patent Examiner, Art Unit 2187 January 8, 2026