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 06/19/2026 has been received and considered. Claim 1 is currently presented for examination.
Claim Interpretation
Office personnel are to give claims their "broadest reasonable interpretation" in light of the supporting disclosure. In re Morris, 127 F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027-28 (Fed. Cir. 1997). Limitations appearing in the specification but not recited in the claim are not read into the claim. In re Prater, 415 F.2d 1393, 1404-05, 162 USPQ 541,550-551(CCPA 1969). See *also In re Zletz, 893 F.2d 319,321-22, 13 USPQ2d 1320, 1322(Fed. Cir. 1989) ("During patent examination the pending claims must be interpreted as broadly as their terms reasonably allow").... The reason is simply that during patent prosecution when claims can be amended, ambiguities should be recognized, scope and breadth of language explored, and clarification imposed.... An essential purpose of patent examination is to fashion claims that are precise, clear, correct, and unambiguous. Only in this way can uncertainties of claim scope be removed, as much as possible, during the administrative process.
Claim 1 recites "and/or". The claim reciting "and/or" was interpreted as “or”.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim 1 is rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. The subject matter description of “a non-transitory storage medium storing software instructions” and "a processor, wherein the processor, in performing the software instructions, is configured to" in the specification is non–existing. Examiner interprets these limitations as "[a]ny kind of… finite element(s) software" for examination purposes, because while the amended claimed invention reads “a non-transitory storage medium storing software instructions… a processor, wherein the processor, in performing the software instructions, is configured to", the specification reads (emphasis added):
"In order to achieve this, first of all, the definition of the matrices that indicate the system properties of the structure to which the technique will be applied and the periodic excitation forces to which the system is subjected should be determined in advance by the designer as an input for the analysis. Any kind of method and/or finite elements software can be used for system matrices" (see page 5, last paragraph),
"These matrices belong to the engineering structure that was designed and it can be obtained using any kind of commercial finite elements software" (see page 6, 1st paragraph),
"While the system matrices of the linear system are required for solving the eigenvalue problem in Equation (6), it is sufficient to know the natural frequencies of the linear system Ω, and mode shapes, Φ, for the eigenvalue problem in Equation (7). This information can be obtained from any finite element software only once" (see page 8, 1st paragraph),
"The modal matrix and natural frequency information of the linear system is obtained only once by solving the eigenvalue problem of the related system or by using any kind of finite element software" (see page 11, 4th paragraph),
and "Obtaining the modal matrix and natural frequency information of the linear system once only, by solving the eigenvalue problem mentioned in the equation K.u = ω2M.u of the system or by using any kind of finite elements software" (see page 13, 2nd paragraph).
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.
Claim 1 is rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Independent claims, Step 1: a system (system = 2019 PEG Step 1 = yes).
Independent claim 1 Step 2A, Prong One: claim recites:
A modal superposition… defining a modal superposition method using a response dependent non-linear mode concept for a vibration analysis of non-linear engineering structures… after defining system matrices and non-linear elements of a physical system… and external driving forces of the non-linear engineering structure, wherein a steady vibration response is desired for the non-linear engineering structure, obtain an equation of motion as M.x(t)+C.x(t)+iH.x(t)+K.x(t)+fN(x(t),x(t),...)=f(t), after deciding upon a number of harmonics, writing out a system response and internal non-linear forces as periodic functions by using
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in order to apply the modal superposition method, substitute a displacement vector, a non-linear force vector, and an external excitation vector inside the equation of motion, wherein the displacement vector, the non-linear force vector, and the external excitation vector are written as a periodic function using the Fourier series, and the displacement vector with a response dependent non-linear mode (RDNM) matrix times a modal coefficient vector to obtain,
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forming a non-linear complex equation system in a modal domain for a non-linear system,
obtain for once only modal matrix and natural frequency information of a linear system, by solving an eigenvalue problem in an equation K.u = ω2M.u of the linear system or… and to calculate RDNMs included in the equations
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and
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handle a real section of a non-linear matrix obtained using a Describing Function Method (DFM) of the non-linear system as a modification made in a stiffness matrix of the linear system and establish a new eigenvalue problem for the linear system, multiply each term in the new eigenvalue problem, from a left with a transpose of the modal matrix of the linear system and with the modal matrix from a right, as the modal matrix of the linear system is orthogonal with the system matrices of the linear system, obtain a new eigenvalue problem equation [Ω+ΦTΔ1reΦ].u =ω2I·u, comprising a diagonal matrix of a square of natural frequencies of the linear system, an identity matrix and the transpose of the modal matrix of the linear system times the real section of the non-linear matrix obtained by the DFM times the modal matrix, obtain modal information of a modified linear system by solving the new eigenvalue problem at each frequency point or at certain intervals, wherein the modal information is modal vectors and new eigenvalues, and calculate the RDNMs using ΦN=ΦΦ equation with a multiplication of the modal matrix of the linear system and the modal matrix obtained from a solution of the new eigenvalue problem, wherein eigenvalues corresponding to each RDNM are the new eigenvalues calculated in this step, obtain a non-linear equation system defined with equations
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[ΦT(Ωn-(hω)2I+iHd+ihωCd)Φ].qh+ΦNTfh (h=1,2,...,nh), and solve the modal coefficient vector as a single unknown in the non-linear equation system (mathematical concepts)
to determine forced vibration amplitudes of the non-linear engineering structure under operating conditions of the non-linear engineering structure… minimize a number of non-linear equations to be solved by selecting only a minimum number of RDNMs sufficient for a given harmonic content, thereby reducing solution computation time and improving numerical stability during the solution of the nonlinear equation system (mental concepts)
wherein M, C, H, and K respectively represent a mass, a viscous damping, a structural damping and a stiffness matrices of the system, wherein f and N denote force and nonlinear, respectively, h denotes harmonic, t is time, qo is a real valued bias amplitude vector of the physical system response in the modal domain, Hd is a structural damping matrix in the modal domain, Cd is a viscous damping matrix in the modal domain, fo is a bias amplitude vector of an external force, I is an identity matrix, wherein
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and f(t) are internal non-linear forces and periodic external excitation force vectors, respectively, wherein x(t) represents the displacement vector of the system, dot represents a derivative with respect to time, i represents a unit imaginary number, wherein x0 and fN, 0, represent real valued bias amplitude vectors of the system response and the internal non-linear forces, respectively, and xh and fN, h, represent complex amplitude vectors of the system response and the internal non-linear forces for the nh represents harmonic, respectively, and nh represents a total number of harmonics taken into consideration in the expansion, and e is the Euler's number, and Im shows an imaginary part of the expressions, wherein qh is a response coordinate in the modal domain for the hth harmonic and ΦN is a response dependent non-linear mode, wherein Φ is a modal matrix of an original linear system and Φ is a modal matrix of modified the linear system, wherein u and ω are a mode vector and a natural frequency of the original linear system, respectively, and jis a diagonal matrix formed of a square of natural frequencies of the original linear system, and n and w represent respectively a mode vector and a natural frequency of a modified linear system, I is a diagonal unit matrix, and Δ1re obtained from the Describing Function Method, and wherein u is a mode shape vector of the modified system, qre and qim are a real part and an imaginary part of unknown modal coordinates (mathematical concepts)
Independent claim 1 is substantially drawn to mathematical concepts: mathematical relationships, formulas or equations, and calculations and mental concepts: observation, evaluation, judgment, opinion; but for the recitation of generic computer components. Information and/or data also fall within the realm of abstract ideas because information and data are intangible. See Electric Power Group1: “Information… is an intangible”.
As to the limitations “Describing Function Method”, under their broadest reasonable interpretation, the Describing Function Method is a mathematical concept. The specification reads (see page 7, last paragraph):
"the Describing Function Method… shows that the non-linear internal forces matrix, can be written as a multiplication of a non-linear complex matrix and the response vector".
As to the limitations “entailing a user analyzing deciding/determining (judgments, opinions), that can be performed in the human mind or by a human using a pen and paper.
As to the limitations “minimize a number of non-linear equations to be solved by selecting only a minimum number of RDNMs sufficient for a given harmonic content", under its broadest reasonable interpretation, “selecting” is a mental concept. Examiner notes that both the claimed invention and the specification are mute about how the "minimum number of RDNMs sufficient for a given harmonic content" are selected. Selections are mental in nature (mental processes including a judgment, opinion). The specification merely reads "invention reduces the solution time, as the minimum number of non-linear equations needs to be solved" (see page 4, last paragraph).
If a claim limitation, under its broadest reasonable interpretation, covers mathematical or mental concepts, then it falls within groupings of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes).
Independent claim 1 Step 2A, Prong Two: As to the limitations medium storing software, processor, and "by using any kind of finite elements software", they are interpreted at best as drawn to a generic computer for performing mathematical computations.
As to the limitations “the physical system being a real non-linear engineering structure that is subject to friction, contact and/or bolted structures or that includes materials exhibiting non-elastic behaviors“, they amount to merely indicating a field of use or technological environment in which to apply a judicial exception.
This judicial exception is not integrated into a practical application (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 medium storing software, processor, and "by using any kind of finite elements software" are recited at a high level of generality and 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 a computerized system. Examiner notes that both the specification is mute about "medium storing software" and "processor". See 112(a) Rejection above. The description of "by using any kind of finite elements software" in the specification amounts to "The modal matrix and natural frequency information of the linear system is obtained only once by solving the eigenvalue problem of the related system or by using any kind of finite element software" (see page 11, 4th paragraph).
As discussed with respect to Step 2A, Prong two, the limitations amounting to merely indicating a field of use or technological environment in which to apply a judicial exception remain as merely indicating a field of use or technological environment even upon reconsideration. Examiner notes that the specification is mute about "physical".
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 their combination improves the functioning of a computer itself or improves any other technology (underline emphasis added). Therefore, the claim does not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Allowable Subject Matter
A reason for the indication of allowable subject matter was provided in the Office Action dated 07/17/2025.
Response to Arguments
Examiner invites Applicant to use the Specification of record in the present Application and not any other publication. The MPEP reads "evaluating the specification… if the specification sets forth… described in the specification", see MPEP 2106.04(d)(1) or 2106.05(a), and does not read the U.S. Pre–Grant publication or any other publication.
Applicant argues, (see page 1, 4th paragraph to page 2, next to last paragraph):
‘… The Office Action is essentially asserting that the Specification must explicitly disclose a storage medium and processor in order to be supported under 35 U.S.C. §112(a). As discussed in the amendment submitted on January 16, 2026, the standard for complying with the Written Description requirement under 35 U.S.C. §112(a) is not explicit disclosure of claimed features. Rather, “the fundamental factual inquiry [for determining compliance with the written description requirement] is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed.” MPEP §2163.02 (citing Vas-Cath…(emphasis added). The Specification describes detailed and complex steps for solving a modal coefficient vector as a single unknown in a non-linear equation system and notes that finite elements software can be employed. See, e.g., Specification, para. 0009. Due to the sophistication of the method as well as the explicit mention of the use of software, it is clear to those of ordinary skill in the art the inventors were aware that the claimed method can be implemented by a processor with software. Thus, the Applicant respectfully submits that the Specification conveys with reasonable clarity to those skilled in the art that the inventors knew that software and processor can be employed to implement the claimed method…’
As pointed out by Applicant, the MPEP reads (underline emphasis added):
‘2163.02 Standard for Determining Compliance With the Written Description Requirement [R-07.2022]…
An applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention. Lockwood v. Am. Airlines… Possession may be shown in a variety of ways including description of an actual reduction to practice, or by showing that the invention was "ready for patenting" such as by the disclosure of drawings or structural chemical formulas that show that the invention was complete, or by describing distinguishing identifying characteristics sufficient to show that the inventor was in possession of the claimed invention…
The subject matter of the claim need not be described literally (i.e., using the same terms or in haec verba) in order for the disclosure to satisfy the description requirement. If a claim is amended to include subject matter, limitations, or terminology not present in the application as filed, involving a departure from, addition to, or deletion from the disclosure of the application as filed, the examiner should conclude that the claimed subject matter is not described in that application. This conclusion will result in the rejection of the claims affected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C.112, first paragraph - description requirement, or denial of the benefit of the filing date of a previously filed application, as appropriate’
The MPEP further reads (underline emphasis added):
‘714.02… Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06. An amendment which does not comply with the provisions of 37 CFR 1.121(b), (c), (d), and (h) may be held not fully responsive. See MPEP § 714.’
Examiner's response: Applicant's argument is not persuasive, because there is no support for these limitations in the application as filed. The subject matter description of “a non-transitory storage medium storing software instructions” and "a processor, wherein the processor, in performing the software instructions, is configured to", as amended in the claims, in the specification is non–existing. There is no support for these amended limitations in the specification. Examiner found no hard devices in the specification. Applicants are respectfully requested, in the event of an amendment to claims or submission of new claims, that such claims and their limitations be directly mapped to the Specification, which provides support for the subject matter. This will assist in expediting compact prosecution. See MPEP 714.02 supra. Amendments not pointing to specific support in the disclosure may be deemed as not complying with provisions of 37 C.F.R. 1.131(b), (c), (d), and (h) and therefore held not fully responsive. The specification lacks paragraph numbers.
Applicant argues ‘… conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed’, but the Examiner looked at the specification, and it does not clarify that all claimed language is executed by finite element software and implicitly hardware. The Application description does not exactly specify:
1) That all elements of the claimed invention are executed by finite element software. While the specification has some elements of the claimed invention executed by finite element software, applicant has no possession of all elements of the claimed invention as being executed by finite element software. See Examiner’s interpretation in Claim Rejections - 35 USC § 112 (a) and MPEP ‘2163.02 Standard for Determining Compliance With the Written Description Requirement]… applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention’ supra. The Specification merely reads potential use of software for some elements of the claimed invention but not all. The specification reads (see Examiner’s interpretation in Claim Rejections - 35 USC § 112 (a) supra): “Any kind of method and/or finite elements software can be used for system matrices", "These matrices… can be obtained using any kind of commercial finite elements software", and "natural frequencies of the linear system Ω, and mode shapes, Φ, for the eigenvalue problem in Equation (7)… information can be obtained from any finite element software".
2) Any hard device executing software. Hard devices as currently claimed “a non-transitory storage medium” and "a processor… configured to" are not software and are non–existing in the specification. Software is instructions executed by hardware. Soft and hard are antonyms not synonyms.
Regarding the rejections under 101, Applicant's arguments have been considered, but they are not persuasive. Applicant argues, (see page 3, 1st paragraph to page 5, 1st paragraph):
‘… claims do not recite an abstract idea, but merely involve an abstract idea. In support of the rejection of claim 1, the Office Action asserts that claim 1 is directed to mathematical concepts. See Office Action, p. 5, para. 3. As discussed in the Applicant’s amendment submitted on January 16, 2026, the Applicant respectfully disagrees, as claim 1 is directed to a modal superposition system including a processor and a storage medium. While the Applicant acknowledges that a claim cannot preempt an abstract idea (see, e.g. Mayo Collaborative Servs. v. Prometheus Labs… the claim does not constitute a preemption that monopolizes all applications of applying the claimed concepts. Rather, claim 1 is specifically limited and uniquely directed to a computing system that determines forced vibration amplitudes under operating conditions of a non-linear engineering structure that is subject to friction, contact and/or bolted structures or that includes materials exhibiting non-elastic behaviors. Thus, claim 1 is a method claim that merely involves an abstract idea, thereby rendering it patent eligible.
In response to the Applicant’s points, the Office Action asserts that it “is unclear how the claimed mathematical relationships, formulas or equations, and calculations in claim 1 are not performed via mathematical computations.” Office Action, p. 8, para. 4 to p. 9, para. 1. As discussed above, claim 1 is a method claim that merely involves an abstract idea. The Office Action’s response does not address the Applicant’s points and fails to consider the fact that the claim is directed to a computing system that determines forced vibration amplitudes under operating conditions of a non-linear engineering structure that is subject to friction, contact and/or bolted structures or that includes materials exhibiting non-elastic behaviors…'
Examiner's response: Applicant’s argument is not persuasive, because 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.
Applicant further argues, (see page 5, 2nd paragraph to page 10, last paragraph):
‘… the Specification identifies technical improvements to the field of computational structural dynamics: minimizing non-linear equations, reducing solution time, and mitigating stability issues. These are improvements to a technology under MPEP § 2106.05(f), not mere field-of-use statements. In particular, claim 1 describes determining forced vibration amplitudes by minimizing a number of non-linear equations to be solved by selecting only a minimum number of RDNMs sufficient for a given harmonic content. See, e.g., Specification, para. 0007. Although effectively implemented with software running on processor, these features reduce the computation time to determine the forced vibration amplitudes, thereby improving the functioning of the computer as well as the relevant technology in the design of mechanical structures such as aerospace and automotive structures, defense industry platforms, steam and gas turbine engine structures. See, e.g., Specification, para. 0006-0007. As noted in Hybrid Audio, LLC, “a specific improvement to the way computers operate” “constitute[s] a non-abstract patent-eligible invention.” Hybrid Audio, LLC v. Asus… In particular, in Hybrid Audio, LLC, the claims at issue provided an improvement of a “lower computational workload” and, while the claimed elements can be implemented on “general purpose computers,” “this does not preclude patentability” because [lower computational workload] is “directed to an improvement in the functioning of a computer.” Hybrid Audio, LLC v. Asus (emphasis added). Here, as noted above, the minimization of a number of non-linear equations to be solved by selecting only a minimum number of RDNMs sufficient for a given harmonic content lowers the computational workload, as it reduces computation time of the processor (see, e.g., Specification, para. 0007), thereby constituting an improvement in the functioning of the computer in the relevant technical field.…
In addition, the MPEP also explicitly states that a combination of additional elements can constitute an integration into a practical application if they are an improvement in a technical field. MPEP §2106.04(d)(I). Here, the combination of the claimed instructions, which effect a reduction of computation time, together with the processor is an improvement in the technical field, as discussed above. Even assuming, arguendo, that the processor itself was well-understood, routine, and conventional, with respect to the second prong of Step 2A as opposed to the “significantly more” analysis applied in Step 2B of the eligibility analysis, as noted above, an additional element that represents well-understood, routine, conventional activity may integrate a recited judicial exception into a practical application.
In response to the Applicant’s points, the Office Action cites a case stating "relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible” Office Action, p. 10, para. 2 to p. 11, para. 3 (citing OIP Techs, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)). However, this argument does not address the Applicant’s point. The case holds that using a computer to perform tasks more quickly is insufficient to render a claim patent eligible. In contrast, the claimed method improves the way a computer performs a task; in particular, the claimed minimization of a number of non-linear equations to be solved by selecting only a minimum number of RDNMs sufficient for a given harmonic content provides the improvement; not simply the use of a computer the way the Office Action presumes. As noted above, the minimization of a number of non-linear equations to be solved by selecting only a minimum number of RDNMs sufficient for a given harmonic content lowers the computational workload, as it reduces computation time of the processor, thereby constituting an improvement in the functioning of the computer in the relevant technical field. See, e.g., Specification, para. 0007…
Step 2B:
… Claim 1 embodies a non-conventional ordered workflow in structural dynamics, including: deriving modal data of the underlying linear system; forming and solving a modified eigenvalue problem incorporating the real section of a DFM-derived nonlinear matrix; computing response-dependent nonlinear modes (RDNMs) from the original and modified modal matrices; forming and solving a nonlinear complex equation system in the modal domain with a single unknown modal coefficient vector; and reducing the number of nonlinear equations by selecting only the minimum number of RDNMs required to represent the harmonic content, thereby reducing runtime and mitigating numerical stability issues. The specification demonstrates that this ordered combination produces accurate forced-response solutions with fewer nonlinear equations, improved computational efficiency, and enhanced numerical stability, and that the resulting outputs are used in fatigue analysis and iterative design of real structures.
Accordingly, the claim is not limited to collecting, analyzing, or displaying information, and is readily distinguishable from Electric Power Group. Instead, it represents a non-routine computational architecture that improves the technology of computer-aided structural analysis, satisfying Step 2B under the 2019 PEG and MPEP §2106.05(f)…’
The MPEP reads (underline emphasis added):
'2106.04(d)(1) Evaluating Improvements in the Functioning of a Computer, or an Improvement to Any Other Technology or Technical Field in Step 2A Prong Two [R-10.2019]... first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement… Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. The claim itself does not need to explicitly recite the improvement described in the specification… the claimed invention may integrate the judicial exception into a practical application by demonstrating that it improves the relevant existing technology although it may not be an improvement over well-understood, routine, conventional activity… the word "improvements" in the context of this consideration is limited to improvements to the functioning of a computer or any other technology/technical field, whether in Step 2A Prong Two or in Step 2B...'.
‘2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-07.2022]… if the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology. An indication that the claimed invention provides an improvement can include a discussion in the specification that identifies a technical problem and explains the details of an unconventional technical solution expressed in the claim, or identifies technical improvements realized by the claim over the prior art. For example, in McRO, the court relied on the specification’s explanation of how the particular rules recited in the claim enabled the automation of specific animation tasks that previously could only be performed subjectively by humans, when determining that the claims were directed to improvements in computer animation instead of an abstract idea… the court in Affinity Labs of Tex. v. DirecTV, LLC relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible… the judicial exception alone cannot provide the improvement. The improvement can be provided by one or more additional elements… analyze the "improvements" consideration by evaluating the specification and the claims to ensure that a technical explanation of the asserted improvement is present in the specification, and that the claim reflects the asserted improvement'
OIP Techs, Inc. v. Amazon.com, Inc.2 reads (underline emphasis added):
'But relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible. See Alice… (“use of a computer to create electronic records, track multiple transactions, and issue simultaneous instructions” is not an inventive concept); Bancorp Servs… (a computer “employed only for its most basic function . . . does not impose meaningful limits on the scope of those claims”'.
Enfish3 (Enfish hereinafter), reads (underline emphasis added):
‘the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool… In this case, however, the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity'.
Examiner's response: Applicant's argument is not persuasive, because the claims may provide improved math ('minimization of a number of non-linear equations to be solved', as argued), but do not provide limitations such that an improvement to the functioning of a computer itself or to any other technology is realized. See “the judicial exception alone cannot provide the improvement” in MPEP § 2106.05(a) supra. Improved math is a species of the genus math and is not an improvement to the functioning of a computer itself or to any other technology. An improved abstract idea is a species of the genus abstract idea.
The claimed invention lacks “improvements to the functioning of a computer or any other technology/technical field". See MPEP 2106.04(d)(1) supra. The claimed invention does not improve the operation of any underlying computer system, i.e. the computer itself (underline emphasis added). (See Enfish supra). Applicant argues that the claimed invention provides improvements to the functioning of a computer itself, but the Application description does not even specify any hard device executing software (see Claim Rejections - 35 USC § 112 (a) supra).
It is well established that "relying on a computer to perform routine tasks more quickly or more accurately is insufficient to render a claim patent eligible." OIP Techs, Inc. v. Amazon.com, Inc. (supra). A faster abstract idea ('reduction of computation time', as argued) is still an abstract idea.
Applicant's generic statements about the claimed invention provided improvements lack any mappings to the Specification. The specification does not provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing/realizing any improvements to the functioning of a computer itself or any other technology or technical field (underline emphasis added). (See MPEP 2106.05(a) or 2106.04(d)(1) supra). The specification lacks paragraph numbers.
Therefore, the rejections are maintained.
Conclusion
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.
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 - 8:00 PM.
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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 OIP Techs, Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1363 (Fed. Cir. 2015)
3 Enfish LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016)
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