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 08/10/2026 has been received and considered. Claim 11 is cancelled. Claims 1-10 and 11-20 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”.
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 1-10 and 11-20 are rejected because the claimed invention is directed to a judicial exception without significantly more.
Independent claim 1, Step 1: a method (process = 2019 PEG Step 1 = yes)
Independent claim 1, Step 2A, Prong One: claim recites:
for 3D printing planning… determining an optimal subset of the set of spare parts to be 3D printed, the determining including optimizing one or more objective manufacturing functions under the 3D printing constraints and based on the reference set
The limitations are substantially drawn to mental concepts: observation, evaluation, judgment, opinion. As drafted and under their broadest reasonable interpretation, the limitations can be performed 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 "3D printing planning", as drafted and under a broadest reasonable interpretation, they "can be performed in the human mind or by a human using a pen and paper". 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 specification reads (underline emphasis added):
"The reference set may for example be provided by a user (e.g., an employee of a company ordering the manufacturing of the provided set of spare parts or an operator of the one or more factories). This allows the user to intervene in the 3D printing planning process and to guide the optimization, so that the optimal subset ultimately meets the user's requirements. In other words, this provides flexibility in the 3D printing planning where the user is provided with the possibility of guiding the optimization" (see page 9, line 25 to page 10, line 1).
As to the limitations "determining an optimal subset of the set of spare parts to be 3D printed, the determining including optimizing one or more objective manufacturing functions under the 3D printing constraints and based on the reference set", as drafted and under a broadest reasonable interpretation, they "can be performed in the human mind or by a human using a pen and paper". 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 specification reads (underline emphasis added):
"objective manufacturing functions. The optimization of the latter function(s) indeed leads to the optimal subset. This allows to prioritize the spare parts to 3D print not only based on 3D constraints, but also in order to optimize one or more objective manufacturing functions, which capture one or more manufacturing objectives. In other words, this allows to prioritize the spare parts to 3D print based on the 3D constraints but also for achieving one or more manufacturing goals (e.g., reducing the carbon footprint caused by the manufacturing process) captured by the objective function(s). These/this objective manufacturing goal(s) and the optimization with respect to them/it allow to objectively balance the need for spare parts 3D printing with the practical limitations thereof, by discriminating spare part portfolios from others with respect to the manufacturing goal(s)" (see page 9, lines 4-15).
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 element computer-implemented as performing generic computer functions routinely used in computer applications.
As to the limitations “obtaining: a set of spare parts to be manufactured in one or more factories comprising 3D printers and other manufacturing machines; 3D printing constraints, the 3D printing constraints including: one or more constraints each representing a 3D printing constraint and/or a mechanical constraint for a spare part, wherein the one or more constraints representing a 3D printing constraint and/or a mechanical constraint capture whether spare parts are objectively compatible with 3D printing, and one or more 3D printing capacity constraints for the one or more factories, wherein the one or more 3D printing capacity constraints capture, in terms of resources and/or intrinsic 3D printing capacities, an overall capacity of the one or more factories to 3D print the set of spare parts; and a reference set of one or more spare parts. the reference set including spare parts having known compatibility with the 3D printing constraints, each spare part of the reference set being classified either as compatible with the 3D printing constraints or as non-compatible with the 3D printing constraints”, they describe the concept of “mere data gathering”, which corresponds to the concepts identified as abstract ideas by the courts. Data gathering, including when limited to particular content does not change its character as information, is also within the realm of abstract ideas. Data gathering has not been held by the courts to be enough to qualify as “significantly more”. See Electric Power. The capturing ("limited to particular content") is described in the specification (underline emphasis added):
"The constraints capture (i.e., describe, represent) the 3D printing limited capacities of the one more factories (captured by the one or more 3D printing capacity constraints), and the incompatibility of some spare parts with the 3D printing (captured with the one or more constraints each representing a 3D printing constraint and/or a mechanical constraint for a spare part)" (see page 4, line 27 to page 5, line 1).
As to the limitations "establishing a 3D printing plan for the one or more factories based on the determined optimal subset, thereby allocating limited 3D printing resources of the one or more factories to the spare parts of the determined optimal subset, the spare parts of the determined optimal subset being prioritized relative to other spare parts of the set of spare parts under the 3D printing constraints and the one or more objective manufacturing functions", 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.
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 element computer-implemented. 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):
"A typical example of computer-implementation of a method is to perform the method with a system adapted for this purpose. The system may comprise a processor coupled to a memory and a graphical user interface (GUI)" (see page 34, line 29 to page 35, line 29).
As discussed with respect to Step 2A, claim 1 recites data gathering, these limitations are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration.
As discussed with respect to Step 2A, Prong two, limitations 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 “establishing a 3D printing plan for the one or more factories based on the determined optimal subset, thereby allocating limited 3D printing resources of the one or more factories to the spare parts of the determined optimal subset, the spare parts of the determined optimal subset being prioritized relative to other spare parts of the set of spare parts under the 3D printing constraints and the one or more objective manufacturing functions", they are so broad that little is known about how they are performed. See for example in the Specification (underline emphasis added):
'Establishing the 3D printing plan may include assigning 3D printing tasks to the 3D printers of the one or more factories, i.e., allocating the manufacturing of the spare parts of the optimal set to the different 3D printers of the one or more factories so that the 3D printers may then 3D print the optimal set of spare parts according to this allocation' (see page 7, lines 2-6).
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 claims 13 and 17, Step 2A Prong One: These claims recite substantially the same elements as claim 1 and are rejected for the same reasons above.
Independent claims 13 and 17, Step 2A Prong two and 2B: As to the further additional elements a computer-readable data storage medium and a processor coupled to a memory, they are interpreted as drawn to a generic computer. (See Independent claim 1, Step 2B above).
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 “2/14/18… wherein the optimization includes learning a Multiple Criteria Decision Aiding sorting model configured to take as input an input set of spare parts and to output an optimal subset of spare parts, the learning being based on the set of spare parts, on the 3D printing constraints, on the one or more objective manufacturing functions, and on the reference set", "3/15/19… wherein the reference set forms a learning set of the model", and "4/16/20… wherein the model includes a Non-Compensatory Sorting model", learning is mental in nature. See for example in the Specification (underline emphasis added):
"The concept of Multiple Criteria Decision Aiding sorting model is known per se. The model is constrained by the 3D printing constraints and thus forms a constrained Multiple Criteria Decision Aiding sorting model. The sorting model comprises parameters which are inferred through the learning. The learning in other words comprises inferring the parameters, this inference being the result of the optimization" (see page 18, lines 19-25).
As to the limitations "7… wherein the determining of the optimal subset includes a preliminary step of verifying consistency of the reference set with the 3D printing constraints and modifying the reference set as long as the reference set is inconsistent" and "8… wherein the modification of the reference set is performed by a user", as drafted and under a broadest reasonable interpretation, they "can be performed in the human mind or by a human using a pen and paper". Determinations and verifications are mental in nature. These activities can be characterized as entailing a user analyzing (observations, evaluations) and deciding/determining/verifying (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.
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 "5… wherein the learning includes encoding learning clauses based on the 3D printing constraints and on the one or more objective manufacturing functions, the encoding using a SAT-based encoding", they represent no more than just “apply it” limitations, because they recite only the idea of a solution or outcome, i.e. they fail to recite details of how a solution to a problem is accomplished.
As to the limitations “6… wherein the reference set is provided by a user" and "9… wherein the determining of the optimal subset includes, from a user, obtaining one or more target values for the one or more objective manufacturing functions”, they describe the concept of “mere data gathering”. (See Independent claims, Step 2A, Prong Two above).
As to the limitations "12… 3D printing of the optimal subset in the one or more factories based on the established 3D printing plan", 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.
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 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 discussed with respect to Step 2A, claims recite data gathering, these limitations are recited at a high level of generality; and therefore, remain insignificant extra-solution activity even upon reconsideration.
As discussed with respect to Step 2A, Prong two, limitations invoking computers or other machinery merely as a tool to perform an existing process are just “apply it” limitations. See MPEP 2106.05(f)(2).
The claims do not amount to significantly more than the abstract idea itself (2019 PEG Step 2B: NO).
Allowable Subject Matter
Claims 1-10 and 13-20 are allowable over prior art of record. They will be allowed once all outstanding rejections/objections are traversed.
The following is a statement of reasons for the indication of allowable subject matter:
No reference cited taken either alone or in combination and with the prior art of record discloses claims 1, 13, and 17, "… constraints representing a 3D printing constraint and/or a mechanical constraint capture whether spare parts are objectively compatible with 3D printing… 3D printing capacity constraints capture… an overall capacity of… factories to 3D print… spare parts; and a reference set… including spare parts having known compatibility with the 3D printing constraints, each spare part of the reference set being classified either as compatible… or as non-compatible with the 3D printing constraints; determining an optimal subset of… spare parts to be 3D printed, the determining including optimizing… objective manufacturing functions under the 3D printing constraints and based on the reference set…",
in combination with the remaining steps, elements, and features of the claimed invention. Also, there is no motivation to combine none of these 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 rejections under 112, 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 18, 3rd paragraph to page 19, next to last paragraph):
‘… simply involving an alleged mental process in the claims does not mean that the claims are directed to a mental process…
… it is not reasonable to assert that the claimed features can be done in the human mind when considering the claim as a whole. Moreover, the claims have been amended to better emphasize that these features cannot be performed in the human mind.
… if the claim when considered as a whole cannot be performed in the human mind, then the claim cannot be considered abstract under prong 1 as a mental process. Thus, the claims cannot be considered as being directed to the abstract idea of a mental process.
In particular, the claimed features cannot practically be performed in the human mind, nor on pencil and paper, nor in any conventional abstract/logical sense. Instead, the claimed features constitute specific improvements to the functioning of a computer.
Thereby, it is abundantly clear that the features of the claim are not directed to the abstract idea of a mental process.
As a result, as the claims do not recite an abstract idea…’
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…’
SiRF2 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 arguments are not persuasive, because 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 19, last paragraph to page 22, next to last paragraph):
‘… claims include a practical application. Specifically, the claims clearly integrate the features the Action considered to be abstract into a practical application…
When considering the claim as a whole it is not reasonable to assert that the claims do not include a practical application.
The Action asserts that the judicial exception is not integrated into a practical application. However, simply asserting this without proper evidence is an improper application of the practical application analysis in prong 2…
… the method starts from a set of spare parts, and 3D printing constraints. These constraints include 3D constraints and/or mechanical constraints which capture whether spare parts are objectively compatible with 3D printing, i.e. whether it is technically feasible to manufacture them by 3D printing. The constraints also include 3D printing constraints which reflect the 3D printing capacities of the one or more factories in terms of 3D printing resources and/or intrinsic technical capacity.
In other words, the spare parts have individual constraints capturing their ability to be manufactured by 3D printing, and the one or more factories also have constraints related to their capacity for manufacturing the spare parts by 3D printing.
The method also provides as input to the optimization a reference set of spare parts each classified as compatible or not with the 3D printing constraints. This reference set guides the optimization.
Given these inputs, the method determines, by optimizing one or more objective manufacturing functions, an optimal subset of the spare parts to be manufactured by 3D printing, respecting the input constraints and in line with the reference set.
The method then further comprises a step of establishing a 3D printing plan based on the optimal subset, to allocate the limited 3D printing resources of the factories to the parts of that subset which are prioritized over the other parts for 3D printing.
This integrates the method into a practical application where the result of the optimization, which is based on objective part-level and factory-level constraints related to 3D printing, is concretely used for establishing a 3D printing plan designed for optimal allocation of the available 3D printing resources to the 3D printing of the optimal subset of spare parts’
MPEP 2106.05 reads (underline emphasis added):
'(f) Mere Instructions To Apply An Exception [R-10.2019]… (3) The particularity or generality of the application of the judicial exception. A claim having broad applicability across many fields of endeavor may not provide meaningful limitations that integrate a judicial exception into a practical application or amount to significantly more. For instance, a claim that generically recites an effect of the judicial exception or claims every mode of accomplishing that effect, amounts to a claim that is merely adding the words "apply it" to the judicial exception'
Examiner's response: Applicant's argument is not persuasive, because the limitations "establishing a 3D printing plan for the one or more factories based on the determined optimal subset, thereby allocating limited 3D printing resources of the one or more factories to the spare parts of the determined optimal subset, the spare parts of the determined optimal subset being prioritized relative to other spare parts of the set of spare parts under the 3D printing constraints and the one or more objective manufacturing functions" appear to be just “apply it” limitations. They recite only the idea of a solution or outcome, i.e. they fail to recite details of how a solution to a problem is accomplished. They are so broad that little is known about how they are performed. (See MPEP 2106.05 supra and Independent claim 1, Step 2B above).
Applicant further argues, (see page 22, next to last paragraph to page 23, last paragraph):
‘… claims include significantly more under step 2B of the Alice test.
In particular, the pending claims represent techniques that are not well-understood, routine, or conventional.
In fact, the claims are directed to a significant improvement. Similarly to the McRO case, the claimed invention is able to provide features that were not possible in the past.
Thus, the claims clearly recite a significant technical improvement.
At least on this basis, it is respectfully submitted that the pending claim features do not represent a well-understood, routine, and conventional technique. As discussed with regard to Enfish, the claims represent an improvement that is more than a computer implementation of "fundamental practices long prevalent in their fields" and therefore are not subject to Alice's holdings that such claims are still considered abstract…’
The MPEP reads (underline emphasis added):
‘2106.05(a) Improvements to the Functioning of a Computer or To Any Other Technology or Technical Field [R-07.2022]… If it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement… 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…'
Examiner's response: Applicant's argument is not persuasive, because 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) supra). Applicant's generic statements about the claimed invention provided improvements lack any mappings to the Specification. No support for such argued improvements is pointed out.
If Applicant disagrees, Examiner invites Applicant to elaborate on the argued limitations by mapping them to the Specification; that is, which paragraph(s) provide support for the argued improvements to the functioning of a computer itself or any other technology or technical field (underline emphasis added).
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.
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, Renee Chavez can be reached at 571-270-1104. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/JUAN C OCHOA/Primary Examiner, Art Unit 2186
1 Electric Power Group, LLC v. Alstom S.A., 119 USPQ2d 1739 Fed. Cir. 2016
2 SiRF Tech., 601 F.3d at 1331-33, 94 USPQ2d at 1616-17
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