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 Response to Election/Restriction filed 08/26/2026 has been received and considered. Claims 13 and 15 are cancelled. Claims 21-23 are withdrawn from further consideration. Claims 24 and 25 are new. Claims 1-12, 14, 16-25 are pending. Claims 1-12, 14, 16-20, 24, and 25 are 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.
Claims recite "and/or". The claims reciting "and/or" were interpreted as “or”.
The following is a quotation of 35 U.S.C. 112(f):
(f) Element in Claim for a Combination. – An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The following is a quotation of pre-AIA 35 U.S.C. 112, sixth paragraph:
An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
The claims in this application are given their broadest reasonable interpretation using the plain meaning of the claim language in light of the specification as it would be understood by one of ordinary skill in the art. The broadest reasonable interpretation of a claim element (also commonly referred to as a claim limitation) is limited by the description in the specification when 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is invoked.
As explained in MPEP § 2181, subsection I, claim limitations that meet the following three-prong test will be interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph:
(A) the claim limitation uses the term “means” or “step” or a term used as a substitute for “means” that is a generic placeholder (also called a nonce term or a non-structural term having no specific structural meaning) for performing the claimed function;
(B) the term “means” or “step” or the generic placeholder is modified by functional language, typically, but not always linked by the transition word “for” (e.g., “means for”) or another linking word or phrase, such as “configured to” or “so that”; and
(C) the term “means” or “step” or the generic placeholder is not modified by sufficient structure, material, or acts for performing the claimed function.
Use of the word “means” (or “step”) in a claim with functional language creates a rebuttable presumption that the claim limitation is to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites sufficient structure, material, or acts to entirely perform the recited function.
Absence of the word “means” (or “step”) in a claim creates a rebuttable presumption that the claim limitation is not to be treated in accordance with 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph. The presumption that the claim limitation is not interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, is rebutted when the claim limitation recites function without reciting sufficient structure, material or acts to entirely perform the recited function.
Claim limitations in this application that use the word “means” (or “step”) are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action. Conversely, claim limitations in this application that do not use the word “means” (or “step”) are not being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, except as otherwise indicated in an Office action.
This application includes one or more claim limitations that do not use the word “means,” but are nonetheless being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, because the claim limitation(s) uses a generic placeholder that is coupled with functional language without reciting sufficient structure to perform the recited function and the generic placeholder is not preceded by a structural modifier. Such claim limitation(s) is/are: a manufacturing modeler configured to, a signal integrity modeler configured to, and a yield modeler configured to.
Because this/these claim limitation(s) is/are being interpreted under 35 U.S.C. 112(f) or pre-AIA 35 U.S.C. 112, sixth paragraph, it/they is/are being interpreted to cover the corresponding structure described in the specification as performing the claimed function, and equivalents thereof.
As to the previously identified/above means for limitations a corresponding structure in the specification reads:
'[0012] The terms "processor" or "controller" as, for example, used herein may be understood as any kind of technological entity that allows handling of data. The data may be handled according to one or more specific functions executed by the processor or controller. Further, a processor or controller as used herein may be understood as any kind of circuit, e.g., any kind of analog or digital circuit. A processor or a controller may thus be or include an analog circuit, digital circuit, mixed-signal circuit, logic circuit, processor, microprocessor, Central Processing Unit (CPU), Graphics Processing Unit (GPU)'
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-12, 14, 16-20, 24, and 25 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention. As to claims 1 and 17, the disclosure is inadequate to support the following limitations: wherein the processor is configured to select the second values of the trace variable as a function of position along the metal trace to compensate for the spatially resolved deviations such that the impedance of the metal trace approaches a target impedance along the metal trace. The specification includes no description of them. The description merely reads:
"[0033] Turning to the adaptive model, independent predictive models for Signal Integrity… these predictive capabilities include: signal integrity performance metrics based on channel stack-up dimensions (Impedance… stack modeling for spatially resolved substrate manufacturing dimensional stackups… The adaptive model further includes automation tools to receive the optimized TW spatially resolved compensation maps and operate on the vectorized design database to apply the required TW biases in a way compatible with today's design rules…
[0043]… stack modeler 900 may be configured to generate the model of the real manufacture of the layer design by spatially resolving substrate manufacturing stacks. Determining the signal integrity of the metal trace may optionally include determining any of impedance of the metal trace"
Dependent claims inherit the defect of the claim from which they depend.
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 1-12, 14, 16-20, 24, and 25 are rejected because the claimed invention is directed to a judicial exception without significantly more.
Independent claim 1, Step 1: a package substrate stack modeling system (system = 2019 PEG Step 1 = yes)
Independent claim 1, Step 2A, Prong One: claim recites:
determining spatially resolved deviations of a layer thickness of the real package substrate stack from a corresponding layer thickness of the ideal design of the package substrate stack as a function of position within a plane of the real package substrate stack…
determine a yield of the real package substrate stack…
select second values of the trace variable of the metal trace based on the determined signal integrity of the metal trace or the determined yield of the real package substrate stack, wherein the processor is configured to select the second values of the trace variable as a function of position along the metal trace to compensate for the spatially resolved deviations such that the impedance of the metal trace approaches a target impedance along the metal trace
The limitations are substantially drawn to mental concepts. The 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. 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”.
As to the limitations "determining spatially resolved deviations of a layer thickness of the real package substrate stack from a corresponding layer thickness of the ideal design of the package substrate stack as a function of position within a plane of the real package substrate stack", determinations are mental in nature. These activities can be characterized as entailing a user analyzing (observations, evaluations) and deciding/determining (judgments), i.e., processing information and/or data, that can be performed in the human mind or by a human using a pen and paper. These limitations are not elaborated but merely repeated twice in the Specification.
As to the limitations "determine a yield of the real package substrate stack", determinations are mental in nature. These activities can be characterized as entailing a user analyzing (observations, evaluations) and deciding/determining (judgments), i.e., processing information and/or data, that can be performed in the human mind or by a human using a pen and paper. Examiner notes that the Specification reads '[0002]… yield (Y) (e.g. cost)'. The claimed invention further reads “16. The package substrate stack modeling system of claim 1, wherein determining the yield of the real package substrate stack comprises determining an amount of yield loss of the real package substrate stack”. The Examiner notes that the limitation “16… determining an amount of yield loss" is not elaborated but merely repeated thrice in the Specification and also described as "[0033]… Design for Yield tool for predictive patterning yield loss predictive estimates". Estimating is also a mental concept. Estimating operations are activities that can be performed in the human mind or by a human using a pen and paper.
As to the limitations "select second values of the trace variable of the metal trace based on the determined signal integrity of the metal trace or the determined yield of the real package substrate stack, wherein the processor is configured to select the second values of the trace variable as a function of position along the metal trace to compensate for the spatially resolved deviations such that the impedance of the metal trace approaches a target impedance along the metal trace", under its broadest reasonable interpretation, “selecting” is a mental concept. Examiner notes that both the claimed invention and the specification are mute about how selections are made. Selections are mental in nature (mental processes including a judgment, opinion). As to the amended limitations "select the second values of the trace variable as a function of position along the metal trace to compensate for the spatially resolved deviations such that the impedance of the metal trace approaches a target impedance along the metal trace", Examiner notes that both the claimed invention and the specification are mute about these limitations (see 112(a) Rejection 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 1, Step 2A, Prong two: The claim recites the additional elements a manufacturing modeler configured to, a signal integrity modeler configured to, a yield modeler configured to, and a processor as performing generic computer functions routinely used in computer applications.
As to the limitations "generate a model of a real package substrate stack based on an ideal design of the package substrate stack" and "modify at least one of the ideal design of the package substrate stack or the model of the real package substrate stack in accordance with the selected second values of the trace variable", these limitations represent no more than just “apply it” limitations, because they recite only the idea of a solution or outcome, i.e. these claim limitations fail to recite details of how a solution to a problem is accomplished.
As to the limitations "determine a signal integrity of a metal trace of the real package substrate stack, wherein the signal integrity is determined by executing one or more predictive models using the spatially resolved deviations and comprises an impedance of the metal trace determined as a function of position along the metal trace… wherein the metal trace comprises a first value of a trace variable"; they represent no more than just “apply it” limitations, because they invoke computers or other machinery merely as a tool to perform an existing process.
As to the limitations “the spatially resolved deviations resulting from one or more manufacturing processes“, 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, claim 1 recites the additional elements a manufacturing modeler configured to, a signal integrity modeler configured to, a yield modeler configured to (see Claim Interpretation above) and a processor. 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. The use of a computer to implement the abstract idea of a mathematical or mental algorithm has not been held by the courts to be enough to qualify as “significantly more”. The implementation on a computing system is described in the specification (underline emphasis added):
'[0012] The terms "processor" or "controller" as, for example, used herein may be understood as any kind of technological entity that allows handling of data. The data may be handled according to one or more specific functions executed by the processor or controller. Further, a processor or controller as used herein may be understood as any kind of circuit, e.g., any kind of analog or digital circuit. A processor or a controller may thus be or include an analog circuit, digital circuit, mixed-signal circuit, logic circuit, processor, microprocessor, Central Processing Unit (CPU), Graphics Processing Unit (GPU)… any two (or more) of the processors, controllers, or logic circuits detailed herein may be realized as a single entity with equivalent functionality or the like, and conversely that any single processor, controller, or logic circuit detailed herein may be realized as two (or more) separate entities with equivalent functionality or the like'
As discussed with respect to Step 2A, Prong two, limitations reciting only the idea of a solution or outcome are just “apply it” limitations, because these claim limitations fail to recite details of how a solution to a problem is accomplished. See MPEP 2106.05(f)(1). As to the limitations "generate a model of a real package substrate stack based on an ideal design of the package substrate stack" and "modify at least one of the ideal design of the package substrate stack or the model of the real package substrate stack", the limitations are so broad that little is known about how the claimed generation or modification of a model is performed. The description merely reads (underline emphasis added):
"[0030] FIG. 8 depicts a comparison of conventional design 800 versus adaptive design 850. In a conventional process, the initial design 802 is separately evaluated and modified by a signal integrity module 804, a stack model ( e.g. for deviations from the ideal due to manufacturing processes and tolerances) 806, and a yield model 808"
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 – simply adding a general purpose computer or computer components after the fact to an abstract idea. See MPEP 2106.05(f)(2). These limitations amount to computer implementation of mental concepts. As to these limitations, mathematical operations are activities that can be performed in the human mind or by a human using a pen and paper. See for example in the Specification (underline emphasis added):
'[0033] Turning to the adaptive model, independent predictive models for Signal Integrity… these predictive capabilities include: signal integrity performance metrics based on channel stack-up dimensions (Impedance, cross-talk and insertion loss)… The adaptive model further includes automation tools to convert vectorized design databases into numerical arrays suitable for mathematical operations as an input to predictive model tools'
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.
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).
Independent claim 17, Step 1: a computer readable medium (manufacture = 2019 PEG Step 1 = yes)
Independent claim 17, Step 2A, Prong One: claim recites:
determining spatially resolved deviations of a layer thickness of the real package substrate stack from a corresponding layer thickness of the ideal design of the package substrate stack as a function of position within a plane of the real package substrate stack…
determine a yield of the real package substrate stack;
and select second values of the trace variable of the metal trace based on the determined signal integrity of the metal trace or the determined yield, wherein the second values of the trace variable is selected as a function of position along the metal trace to compensate for the spatially resolved deviations such that the impedance of the metal trace approaches a target impedance along the metal trace
The limitations are substantially drawn to mental concepts. Determinations are mental in nature. (See Independent claim 1, Step 2A Prong One above).
As to the limitations "select second values of the trace variable of the metal trace based on the determined signal integrity of the metal trace or the determined yield, wherein the second values of the trace variable is selected as a function of position along the metal trace to compensate for the spatially resolved deviations such that the impedance of the metal trace approaches a target impedance along the metal trace", under its broadest reasonable interpretation, “selecting” is a mental concept. (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 17, Step 2A, Prong two: The claim recites the additional element computer readable medium as performing generic computer functions routinely used in computer applications.
As to the limitations "determine a signal integrity of a metal trace of the real package substrate stack, wherein the metal trace comprises a first value of a trace variable, and wherein the signal integrity is determined by executing one or more predictive models using the spatially resolved deviations and comprises an impedance of the metal trace determined as a function of position along the metal trace"; they represent no more than just “apply it” limitations, because they invoke computers or other machinery merely as a tool to perform an existing process.
As to the limitations "generate a model of a real package substrate stack based on an ideal design of the package substrate stack" and "wherein the instructions are further configured to cause the one or more processors to modify at least one of the ideal design of the package substrate stack or the model of the real package substrate stack in accordance with the selected second values of the trace variable", they represent no more than just “apply it” limitations, because they recite only the idea of a solution or outcome, i.e. these claim limitations fail to recite details of how a solution to a problem is accomplished.
As to the limitations “the spatially resolved deviations resulting from one or more manufacturing processes“, 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 17, Step 2B: As discussed with respect to Step 2A, claim 17 recites the additional element computer readable medium. (See Independent claim 1, Step 2B above).
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 – simply adding a general purpose computer or computer components after the fact to an abstract idea. (See Independent claim 1, Step 2B above).
As discussed with respect to Step 2A, Prong two, limitations reciting only the idea of a solution or outcome are just “apply it” limitations, because these claim limitations fail to recite details of how a solution to a problem is accomplished. (See Independent claim 1, Step 2B above).
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.
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).
Dependent claims, Prong One: The claim limitations further the mental concepts of their independent claims. (See Independent claims, Step 2A, Prong One above).
As to the limitations "2… select the second values of the trace variable based on the determined signal integrity and the determined yield", "3… select the second values of the trace variable based on the model of the real package substrate stack", "8… select a fourth trace width of the second trace portion based on the determined signal integrity of the metal trace or the determined yield of the real package substrate stack", "9… select the fourth trace width based on the determined signal integrity of the metal trace and the determined yield of the real package substrate stack", "10… select the fourth trace width based on the model of the real package substrate stack", "12… select the second trace width and/or the fourth trace width as a function of the signal integrity and the yield", "18… select the second values of the trace variable based on the determined signal integrity and the determined yield", "19… select the second values of the trace variable based on the model of the real package substrate stack", and "24… wherein the processor is configured to select the second values of the trace variable such that the metal trace comprises a gradient change of trace width along a length of the metal trace", under its broadest reasonable interpretation, “selecting” is a mental concept. Examiner notes that both the claimed invention and the specification are mute about how selections are made. Selections are mental in nature (mental processes including a judgment, opinion).
As to the limitations "16… wherein determining the yield of the real package substrate stack comprises determining an amount of yield loss of the real package substrate stack", determinations are mental in nature. These activities can be characterized as entailing a user analyzing (observations, evaluations) and deciding/determining (judgments), i.e., processing information and/or data, that can be performed in the human mind or by a human using a pen and paper. The Examiner notes that the limitation “determining an amount of yield loss" is not elaborated but merely repeated thrice in the Specification and also described as "[0033]… Design for Yield tool for predictive patterning yield loss predictive estimates". Estimating is also a mental concept. Estimating operations are activities that can be performed in the human mind or by a human using a pen and paper.
If a claim limitation, under its broadest reasonable interpretation, covers abstract ideas, then it falls within groupings of abstract ideas (2019 PEG Step 2A, Prong One: Abstract Idea Grouping? = Yes).
Dependent claims, Step 2A, Prong two:
As to the limitations "4… wherein the trace variable is trace width", "5… wherein the trace variable is any one of trace width, trace-to-trace distance, distance to a next trace above the trace, or distance to a next trace below the trace", "8… wherein the metal trace comprises a first trace portion and a second trace portion; wherein a first trace width is a trace width of the first portion, a second trace width is an amended trace width of the first portion; wherein the second trace portion comprises a third trace width", "14… wherein the signal integrity modeler is further configured to determine at least one of: cross talk between the metal trace and another metal trace, or an insertion loss of the metal trace", and "20… wherein the trace variable is trace width"; they represent no more than just “apply it” limitations, because they invoke computers or other machinery merely as a tool to perform an existing process.
As to the limitations “6… wherein the one or more manufacturing processes comprise at least one of an electroplating process or a lamination process“, they amount to merely indicating a field of use or technological environment in which to apply a judicial exception.
As to the limitations "7… change the trace width of the model of the real package substrate stack or the ideal design of the package substrate stack from the first trace width to the second trace width" and "11… change the third trace width of the model of the package substrate stack or the ideal design of the package substrate stack from the third trace width to the fourth trace width", these limitations represent no more than just “apply it” limitations, because they recite only the idea of a solution or outcome, i.e. these claim limitations fail to recite details of how a solution to a problem is accomplished.
The claims recite the additional element "25… wherein the manufacturing modeler, the signal integrity modeler, and the yield modeler are configured to execute on a common platform" as performing generic computer functions routinely used in computer applications.
As to the limitations “25… wherein the signal integrity modeler is configured to receive the spatially resolved deviations from the manufacturing modeler via a dynamic data feed”, these limitations describe the concept of “mere data gathering”, which corresponds to the concepts identified as abstract ideas by the courts.
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 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 – simply adding a general purpose computer or computer components after the fact to an abstract idea. (See Independent claim 1, Step 2B above).
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.
As discussed with respect to Step 2A, Prong two, limitations reciting only the idea of a solution or outcome are just “apply it” limitations, because these claim limitations fail to recite details of how a solution to a problem is accomplished. See MPEP 2106.05(f)(1). The limitations are so broad that little is known about how the claimed trace width is changed.
As discussed with respect to Step 2A, Prong two, the further additional element "25… wherein the manufacturing modeler, the signal integrity modeler, and the yield modeler are configured to execute on a common platform" is interpreted as drawn to a generic computer. (See Independent claim 1, Step 2B above).
As discussed with respect to Step 2A, claims recite data gathering at a high level of generality; and therefore, these limitations remain insignificant extra-solution activity even upon reconsideration. See MPEP § 2106.05(g).
The claims do not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Allowable Subject Matter
Claims 1-12, 14, 16-20, 24, and 25 are allowable over prior art of record. They will be allowed once all outstanding rejections/objections are traversed.
No reference cited taken either alone or in combination and with the prior art of record discloses
claim 1, "… determining spatially resolved deviations of a layer thickness of the real package substrate stack… as a function of position within a plane of the real package substrate stack, the… deviations resulting from… manufacturing… signal integrity… determined by executing… predictive models using the… deviations and comprises an impedance… as a function of position along the… trace… determine a yield of the real package substrate stack… select second values of the trace… based on the… signal integrity… or the… yield… as a function of position along the… trace… to compensate for the… deviations such that the impedance… approaches a target impedance along the… trace…",
and claim 17, "… determining spatially resolved deviations of a layer thickness of the real package substrate stack… as a function of position within a plane of the real package substrate stack, the… deviations resulting from… manufacturing… signal integrity… determined by executing… predictive models using the… deviations and comprises an impedance… as a function of position along the… trace… determine a yield of the real package substrate stack; select second values of the trace… based on the… signal integrity… or the… yield… as a function of position along the… trace… to compensate for the… deviations such that the impedance… approaches a target impedance along the… trace…",
in combination with the remaining steps, elements, and features of the claimed invention. Also, there is no motivation to combine any references to meet these limitations. It is for these reasons that Applicant's invention defines over the prior art of record.
As allowable subject matter has been indicated, applicant's reply must either comply with all formal requirements or specifically traverse each requirement not complied with. See 37 CFR 1.111(b) and MPEP § 707.07(a).
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 9, next to last paragraph to page 10, next to last paragraph):
‘… As described in the Specification, these operations are performed by predictive model tools operating on "numerical arrays suitable for mathematical operations" converted from "vectorized design databases," producing spatially resolved dimensional stackups of an entire unit and position-resolved signal-integrity profiles along individual traces. Specification at [0033]; see also FIGs. 3-7 (spatial distributions of trace thickness and dielectric thickness across a unit, and trace-width, thickness, and impedance profiles extracted as a function of position along individual traces). A human cannot practically mentally execute predictive models over spatially resolved numerical arrays representing the deviations of every layer of a package substrate stack across an entire unit, nor mentally derive therefrom an impedance profile of a metal trace as a function of position along the trace. Because the amended claims require executing specific, computerized operations over spatially resolved deviation data, they cannot practically be performed in the human mind and do not recite a mental process’
The MPEP reads (underline emphasis added):
‘2106.04(b) Laws of Nature, Natural Phenomena & Products of Nature [R-07.2022], III. MENTAL PROCESSES… A. A Claim With Limitation(s) That Cannot Practically be Performed in the Human Mind Does Not Recite a Mental Process… Examples of claims that do not recite mental processes because they cannot be practically performed in the human mind include: • a claim to a method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals, where the claimed GPS receiver calculated pseudoranges that estimated the distance from the GPS receiver to a plurality of satellites, SiRF… B. A Claim That Encompasses a Human Performing the Step(s) Mentally With or Without a Physical Aid Recites a Mental Process. If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea…
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…’.
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”.
SiRF3 Tech. reads (bold emphasis added):
‘A GPS receiver is a machine and is integral to each of the claims at issue… the methods at issue could not be performed without the use of a GPS receiver; indeed without a GPS receiver it would be impossible to generate pseudoranges or to determine the position of the GPS receiver whose position is the precise goal of the claims… there is no evidence here that the calculations here can be performed entirely in the human mind. Here, as described, the use of a GPS receiver is essential to the operation of the claimed methods. In conclusion, we hold that the claims at issue are properly directed to patentable subject matter as they explicitly require the use of a particular machine (a GPS receiver) and could not be performed without the use of such a receiver’.
Examiner's response: Applicant’s argument is not persuasive, because they conflate judicial exception(s) or abstract idea(s) (Step 2A, Prong One) with additional elements (Step 2A, Prong Two or Step 2B). (See supra MPEP 2106.05(f) and BASCOM). Applicant argues that the additional elements (see Independent claim 1, Step 2A, Prong Two and/or 2B) are not judicial exception(s) or abstract idea(s). Applicant's arguments do not address the argued limitations as additional elements, as pointed out by the Examiner.
As to Applicant’s argument ('A human cannot practically mentally execute predictive models'); Applicant argues that additional elements (Step 2A, Prong Two or Step 2B) cannot practically be performed in the human mind. However, Applicant presents no evidence that the judicial exception(s) or abstract idea(s) claim limitations (see Independent claim 1, Step 2A, Prong One) cannot practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, or that the claim limitations explicitly require the use of a particular machine, a GPS receiver as in SIRF for example. (See MPEP 2106.04(b) or SIRF supra).
Applicant further argues, (see page 10, last paragraph to page 11, next to last paragraph):
‘… amended claims recite the technological solution: a spatially resolved model of the deviations of the real stack, a position-resolved impedance determination made using those deviations, and a compensating, position-dependent selection of the trace variable that drives the impedance of the as-manufactured trace toward its target. The specification demonstrates the resulting technological improvement: a compensated trace whose impedance is flat and on target along its length, in contrast to the uncompensated design whose impedance varies significantly along the trace. Specification at ¶ [0022]; FIG. 7.
This is an improvement to the technology of package substrate design in the presence of manufacturing non-uniformity and to the functioning of the design tools themselves, which are thereby enabled to certify the article that will actually be manufactured rather than an idealized drawing that will not…’
Examiner's response: Applicant's argument is not persuasive, because Applicant's argument does not elaborate how the claimed invention’s additional elements/limitations considered both individually and in combination integrate a judicial exception into a practical application in Step 2A Prong Two or amount to significantly more in Step 2B. “Integration into a practical application” requires an additional element or a combination of additional elements in the claim to apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the exception. The claims provide no additional elements/limitations such that an improvement to the computer itself or any other technology is realized.
Applicant further argues, (see page 11, last paragraph to page 12, 1st paragraph):
‘… The claimed arrangement is different in kind: a manufacturing modeler that produces spatially resolved deviations of the real stack; a signal integrity modeler that consumes those deviations to produce a position-resolved impedance; and a processor that closes the loop by selecting the trace variable as a function of position to compensate the deviations toward a target impedance. This specific arrangement, namely one in which the deviation data of the as-manufactured article flows through the signal-integrity determination and into a compensating modification of the design, is a non-conventional architecture, not the generic use of a computer to automate a mental process. As in McRO, the claims do not preempt the broad idea of accounting for manufacturing variation; they recite a specific means, namely spatially resolved deviation determination, position-resolved impedance determination using those deviations, and position-dependent compensating selection toward a target impedance, that produces an improvement in the relevant technology. As in Enfish, the improvement runs to the operation of the design system itself, which is enabled to model and compensate the manufactured reality rather than the nominal abstraction…’
The MPEP reads (underline emphasis added):
‘2106.05 (b) Particular Machine [R-07.2022]… a general purpose computer that applies a judicial exception, such as an abstract idea, by use of conventional computer functions does not qualify as a particular machine. Ultramercial, Inc. v. Hulu4… If applicant amends a claim to add a generic computer or generic computer components and asserts that the claim recites significantly more because the generic computer is 'specially programmed' (as in Alappat, now considered superseded) or is a 'particular machine' (as in Bilski), the examiner should look at whether the added elements integrate the exception into a practical application or provide significantly more than the judicial exception. Merely adding a generic computer, generic computer components, or a programmed computer to perform generic computer functions does not automatically overcome an eligibility rejection…")'
Examiner's response: Applicant's argument is not persuasive, because 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. (See MPEP 2106.05(b) and Independent claim 1, Step 2B supra).
Therefore, the claims do not recite additional elements which integrate the identified abstract idea into a practical application or amount to significantly more than the identified abstract idea.
Regarding the rejections under 103, the rejections are rendered moot by the amendment.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
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 - 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 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)
3 SiRF Tech., 601 F.3d at 1331-33, 94 USPQ2d at 1616-17
4 Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014)
