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 04/16/2026 has been received and fully considered.
3. Claims 1-19 are presented for examination.
Response to Arguments
4. Applicant's arguments filed 04/16/2026 have been fully considered but they are not persuasive. Regarding applicant’s assertions that: “Claims 1-18 are directed to improvements in computer-related technology and thus are directed to patent eligible subject matter. As explained by the U.S. Court of Appeals for the Federal Circuit in Enfish V. Microsoft and reiterated recently in McRo, Inc. V. Bandai Namco Games America Inc., a claim must be evaluated as a whole and that analysis must consider the specification to determine if a claim is directed to an improvement in computer- related technology. As set forth in the USPTO's November 2, 2016, Memorandum discussing the U.S. Court of Appeals for the Federal Circuit's decision in McRo, "[a]n indication that a claim is directed to an improvement in computer-related technology may include a teaching in the specification about how the claimed invention improves a computer or other technology.' And that: “In light of Enfish, McRo, and the USPTO's May 19, 2016, and November 2, 2016, guidelines concerning each case, Applicants respectfully assert the Office Action's rejection of claims 1-18 is improper.”, the Examiner respectfully disagrees and notes that the claims as currently presented are clearly to an abstract and do not recite anything that goes beyond the judicial exception and do not in any way provide any improvement to a technological field, as asserted by the Applicant. In fact, there absolutely no way to improve the functionality of the general processor by the step set forth by the claims. In reference to the enfish case, the Examiner respectfully notes that the fact pattern in the instant case is completely different from the fact pattern in the Enfish decision. In Enfish there was a data structure that allowed for faster access to data in a database, the claimed embodiments in Applicants case do not in any manner improve data access by making take less time in the manner that the claims in the Enfish do. The examiner further notes that McRO is not applicable to the instant case, the fact patterns do not match, McRO involved morph weights being applied to animated characters in order to lip sync dialog to animated characters, Applicants claimed embodiments do not even include a displaying step; and thus, are clearly not patent eligible under 35 USC 101.
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 1-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more.
Step 2A- Prong One
The claim(s) recite(s) a method, …, of generating a heatsink configuration of a heatsink meeting a predetermined performance constraint, the method comprising: The step of: “determining an initial thermal performance of the heatsink, the determining of the initial thermal performance of the heatsink comprising performing an initial thermal simulation of a heat source positioned proximate the heatsink base”; “selecting, based on the initial thermal simulation, a first rod that has a lowest value of the thermal evaluation parameter and a second rod that has a highest value of the thermal evaluation parameter”; “generating a first revised heatsink configuration, the generating of the first revised heatsink configuration comprising removing the first rod from the heatsink base and carrying out a first subsequent thermal simulation, such that a first revised thermal performance is determined”; “generating a second revised heatsink configuration, the generating of the second revised heatsink configuration comprising adding a third rod to the heatsink base positioned on the second rod and carrying out a second subsequent thermal simulation, such that a second revised thermal performance is determined”; “generating a third revised heatsink configuration, the generating of the third revised heatsink configuration comprising removing the first rod from the heatsink base, adding the third rod to the heatsink base positioned on the second rod, and carrying out a third subsequent thermal simulation, such that a third revised thermal performance is determined”; “comparing the first revised thermal performance, the second revised thermal performance, and the third revised thermal performance to the initial thermal performance and selecting a heatsink configuration that results in a greatest improvement in thermal performance from the initial thermal performance”, and “repeating the selecting of the first rod and the selecting of the second rod until a final heatsink configuration meeting the predetermined performance constraint is generated” under the broadest reasonable interpretation fall under 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 of: “non-transitory computer readable media” storing “one or more processors”, 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, which can be of any type, including general-purpose computer 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: “establishing an initial heatsink configuration having a heatsink base comprising at least one layer formed of a plurality of tessellated rods and setting a thermal evaluation parameter”, under the broadest reasonable interpretation, reasonable fall under data gathering and processing activities that are pre-solution activities that are also well-known, routine and conventional activities; and the step of: “using the selected heatsink configuration in place of the initial heatsink configuration” 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); 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 media” storing “one or more processors”, 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, which can be of any type, including general-purpose computer 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: “establishing an initial heatsink configuration having a heatsink base comprising at least one layer formed of a plurality of tessellated rods and setting a thermal evaluation parameter”, under the broadest reasonable interpretation, reasonable fall under data gathering and processing activities that are pre-solution activities that are also well-known, routine and conventional activities; and the step of: “using the selected heatsink configuration in place of the initial heatsink configuration” 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). 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 2-11, 14-18 merely include limitations pertaining to: (claim 2 and 14), “wherein the preprocessing step comprises the steps of: “selecting a fourth rod that has a second lowest value of the thermal evaluation parameter and a fifth rod that has a second highest value of the thermal evaluation parameter and repeating the selecting of the first rod and the selecting of the second rod when the first revised thermal performance, the second revised thermal performance, and the third revised thermal performance show no improvement in thermal performance compared to the initial heatsink configuration or the selected heatsink configuration” (mental process). (claims 3 and 15); “wherein the thermal evaluation parameter is a bottle neck heat transfer characteristic value, a shortcut heat transfer characteristic value, a temperature, or a heat flux” (mental process); (claims 4 and 16); “wherein the predetermined performance constraint is a maximum heatsink temperature or a heatsink design volume” (mental process); (claims 5 and 17); “wherein a rod of the first rod, the second rod, and the third rod is a tessellating body having at least four surfaces” (mental process); (claims 6 and 18) “wherein a rod of the first rod, the second rod, and the third rod is a cuboid having six surfaces” (mental process), (claim 7); “wherein at least one surface of the second rod is in contact with another rod in any heatsink configuration” (mental process); (claim 8) “wherein the third rod is added to a surface of the second rod that is not in contact with another rod” (mental process); (claim 9) “wherein the surface the third rod is added to is chosen based on a temperature or a convective heat transfer coefficient” (mental process); (claim 10) “wherein each of the first rod, the second rod, and the third rod is identical physically, thermally, or physically and thermally” (mental process); (claim 11) “wherein the at least one layer of tessellated rods represents an existing heatsink geometry” (mental process), all of which further amount to further data gathering and processing or otherwise mental similar to that already recited by the independent claims and already addressed above and thus are further not patent eligible under 35 USC 101. The rejection may be overcome if each of the independent claims were amended to include the limitations of dependent claim 19.
5.3 Claims 12, 14-18 are further rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. Claim 12 along with its dependencies provide for a “non-transitory computer readable storage medium that stores instructions” executable by one or more processors, to generate a heatsink configuration …; then goes on to state the instructions comprising which could be interprets as software per se as merely software instructions within the medium, as constructed, as it simply appears to be claiming the instructions within the medium.
Claim Rejections - 35 USC § 112
6. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
6.1 Claims 1-18 rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
6.2 Claim 12 recite a “non-transitory computer readable storage medium that stores instructions” executable by one or more processors, to generate a heatsink configuration …; then goes on to state the instructions comprising a plurality of method’s steps; it is unclear whether applicant meant to claim a particular method performed by the executing the instructions or whether the claimed method’s steps were meant to be referred as merely instructions stored in the medium, as the claims seem to indicate that the instructions comprising method steps which lead to lack of clarity in the claims. If the instructions are executed to perform a method comprising the claimed steps, Applicant need to amend the claims accordingly. Clarification and/or correction is respectfully requested, in response to this office action.
Conclusion
7. The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
7.1 Steinbrecher et al. (USPG_PUB No. 20140188434 A1) teaches a method for determining whether to perform maintenance for an electronic device includes generating a baseline characterization of thermal performance for a heat-generating component of the electronic device at a baseline date.
8. Claims 1-18 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.
9. 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.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, EMERSON C PUENTE can be reached at 571-272-3652. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANDRE PIERRE LOUIS/Primary Patent Examiner, Art Unit 2187 June 27, 2026
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