DETAILED ACTION
Claims 1-15 have been examined.
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Claim Rejections - 35 U.S.C. § 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.
The invention, as taught in Claims 1-15, is directed to “mental steps” and “mathematical steps” without significantly more.
The claims recite:
• generating, in a genetic procedure (i.e., mental steps or mathematical
steps)
• chromosomes indicating object packing positions (i.e., mathematical
expressions)
• determining whether a chromosome of the chromosomes is
expired (i.e., mental steps)
• excluding the chromosome from a subsequent generation in response to
determining that the chromosome is expired (i.e., mental steps)
Claim 1
Step 1 inquiry: Does this claim fall within a statutory category?
The preamble of the claim recites “1. A method, comprising:…” Therefore, it is a “method” (or “process”), which is a statutory category of invention. Therefore, the answer to the inquiry is: “YES.”
Step 2A (Prong One) inquiry:
Are there limitations in Claim 1 that recite abstract ideas?
YES. The following limitations in Claim 1 recite abstract ideas that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG. Specifically, they are “mental steps” and “mathematical steps”:
• generating, in a genetic procedure (i.e., mental steps or mathematical
steps)
• chromosomes indicating object packing positions (i.e., mathematical
expressions)
• determining whether a chromosome of the chromosomes is
expired (i.e., mental steps)
• excluding the chromosome from a subsequent generation in response to
determining that the chromosome is expired (i.e., mental steps)
Step 2A (Prong Two) inquiry:
Are there additional elements or a combination of elements in the claim that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception?
Applicant’s claim 1 contains no “additional elements.” The answer to the inquiry is “NO”, no additional elements integrate the claimed abstract idea into a practical application.
Step 2B inquiry:
Does the claim provide an inventive concept, i.e., does the claim recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception in the claim?
Applicant’s claim 1 contains no “additional elements”. Therefore, the answer to the inquiry is “NO”, no additional elements provide an inventive concept that is significantly more than the claimed abstract ideas the claimed abstract idea into a practical application.
Claim 1 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 2
Claim 2 recites:
2. The method of claim 1, further comprising maintaining age information for each of the chromosomes.
Applicant’s Claim 2 merely teaches mere storage of data. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 2 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 3
Claim 3 recites:
3. The method of claim 2, wherein determining whether the chromosome is expired is based on an age of the chromosome.
Applicant’s Claim 3 merely teaches the mental determination of whether a chromosome is expired based on age. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 3 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 4
Claim 4 recites:
4. The method of claim 3, wherein determining whether the chromosome is expired is based on comparing the age to an age threshold.
Applicant’s Claim 4 merely teaches the mental determination of whether a chromosome is expired based on age. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 4 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 5
Claim 5 recites:
5. The method of claim 1, further comprising determining a slope of packing density and generation.
Applicant’s Claim 5 merely teaches the mental or mathematical determination of a slope (i.e., rate of change) of packing density and generation. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 5 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 6
Claim 6 recites:
6. The method of claim 5, wherein determining whether the chromosome is expired is based on the slope.
Applicant’s Claim 6 merely teaches the mental determination of whether a chromosome is expired based on “slope”/“rate of change”. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 6 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 7
Claim 7 recites:
7. The method of claim 6, wherein determining whether the chromosome is expired is based on comparing the slope to a slope threshold.
Applicant’s Claim 7 merely teaches the mental determination of whether a chromosome is expired based on slope. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 7 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 8
Claim 8 recites:
8. The method of claim 1, further comprising randomly rotating poses of a selected chromosome.
Applicant’s Claim 8 merely teaches the mental step of pose rotation for a mathematical chromosome. Applicant’s Specification, paragraph [0013] recites the following:
[0013] In initializing a population, the apparatus may randomly initialize a set of chromosomes. For example, the apparatus may utilize a random number generator to generate random poses for a set of objects (to be packed in a build volume, for instance).
It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 8 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 9
Claim 9 recites:
9. The method of claim 1, further comprising generating a recycled chromosome based on a seed portion of an expired chromosome.
Applicant’s Claim 9 merely teaches the mental step. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 9 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 10
Step 1 inquiry: Does this claim fall within a statutory category?
The preamble of the claim recites “10. An apparatus, comprising:…” Therefore, it is an “apparatus”, which is a statutory category of invention. Therefore, the answer to the inquiry is: “YES.”
Step 2A (Prong One) inquiry:
Are there limitations in Claim 10 that recite abstract ideas?
YES. The following limitations in Claim 10 recite abstract ideas that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG. Specifically, they are “mental steps” and “mathematical steps”:
• determine that a chromosome in a genetic procedure is expired (i.e., mental steps)
• generate a recycled chromosome based on a seed portion of the expired chromosome (i.e., mental steps)
• select a packing based on the recycled chromosome (i.e., mental steps)
Step 2A (Prong Two) inquiry:
Are there additional elements or a combination of elements in the claim that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception?
Applicant’s claims contain the following “additional elements”:
(1) A processor
(2) A memory
(3) A processor coupled to the memory
(1) A “processor” is a broad term which is described at a high level and includes general purpose computers. M.P.E.P. § 2106.05(f) recites:
For claim limitations that do not amount to more than a recitation of the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection. For example, an examiner could explain that implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two…
Further, M.P.E.P. § 2106.05(f)(2) recites:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
This “processor” limitation does not integrate the additional element into a practical application and represents “insignificant extra-solution activity”. (See, M.P.E.P. § 2106.05(I)(A)).
(2) A “memory” is a broad term which is described at a high level. M.P.E.P. § 2106.05(g) recites:
2106.05(g) Insignificant Extra-Solution Activity [R-10.2019]
Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more in Step 2B is whether the additional elements add more than insignificant extra-solution activity to the judicial exception. The term “extra-solution activity” can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity.
This “memory” limitation does not integrate the additional element into a practical application and represents “insignificant extra-solution activity”. (See, M.P.E.P. § 2106.05(I)(A)).
(3) A “processor coupled to the memory” is a broad term which is described at a high level. M.P.E.P. § 2106.05(g) recites:
2106.05(g) Insignificant Extra-Solution Activity [R-10.2019]
Another consideration when determining whether a claim integrates the judicial exception into a practical application in Step 2A Prong Two or recites significantly more in Step 2B is whether the additional elements add more than insignificant extra-solution activity to the judicial exception. The term “extra-solution activity” can be understood as activities incidental to the primary process or product that are merely a nominal or tangential addition to the claim. Extra-solution activity includes both pre-solution and post-solution activity.
This “processor coupled to the memory” limitation does not integrate the additional element into a practical application and represents “insignificant extra-solution activity”. (See, M.P.E.P. § 2106.05(I)(A)).
The answer to the inquiry is “NO”, no additional elements integrate the claimed abstract idea into a practical application.
Step 2B inquiry:
Does the claim provide an inventive concept, i.e., does the claim recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception in the claim?
Applicant’s claims contain the following “additional elements”:
(1) A processor
(2) A memory
(3) A processor coupled to the memory
(1) A “processor” is a broad term which is described at a high level and includes general purpose computers. M.P.E.P. § 2016.05(f) recites:
2106.05(f) Mere Instructions To Apply An Exception [R-10.2019]
Another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words “apply it” (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do “‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on “the draftsman’s art”).
Further, M.P.E.P. § 2106.05(f)(2) recites:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
Applicant’s Specification, paragraph [0035], recites:
[0035] The processor 204 may be any of a central processing unit (CPU), a semiconductor-based microprocessor, graphics processing unit (GPU), field- programmable gate array (FPGA), an application-specific integrated circuit (ASIC), and/or other hardware device suitable for retrieval and execution of instructions stored in the memory 206. The processor 204 may fetch, decode, and/or execute instructions (e.g., chromosome determination instructions 212, expiration instructions 210, recycling instructions 214, and/or packing selection instructions 216) stored in the memory 206. In some examples, the processor 204 may include an electronic circuit or circuits that include electronic components for performing a function or functions of the instructions (e.g., chromosome determination instructions 212, expiration instructions 210, recycling instructions 214, and/or packing selection instructions 216). In some examples, the processor 204 may perform one, some, or all of the functions, operations, elements, methods, etc., described in relation to one, some, or all of Figures 1-5.
Therefore, the claim as a whole does not amount to significantly more than the exception itself (i.e., there is no inventive concept in the claim). (See, M.P.E.P. § 2106.05(II)).
(2) A “memory” is a broad term which is described at a high level. M.P.E.P. § 2106.05(f) recites:
For claim limitations that do not amount to more than a recitation of the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection. For example, an examiner could explain that implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two…
Applicant’s Specification, paragraph [0036], recites:
[0036] The memory 206 may be any electronic, magnetic, optical, or other physical storage device that contains or stores electronic information (e.g., executable instructions, executable code, and/or data). The memory 206 may be, for example, Random Access Memory (RAM), Electrically Erasable Programmable Read-Only Memory (EEPROM), a storage device, an optical disc, and the like. In some examples, the memory 206 may be volatile and/or non-volatile memory, such as Dynamic Random Access Memory (DRAM), EEPROM, magnetoresistive random-access memory (MRAM), phase change RAM (PCRAM), memristor, flash memory, and the like. In some examples, the memory 206 may be a non-transitory tangible machine-readable storage medium, where the term "non-transitory" does not encompass transitory propagating signals. In some examples, the memory 206 may include multiple devices (e.g., a RAM card and a solid-state drive (SSD)).
Therefore, the claim as a whole does not amount to significantly more than the exception itself (i.e., there is no inventive concept in the claim). (See, M.P.E.P. § 2106.05(II)).
(3) A “processor coupled to the memory” is a broad term which is described at a high level. M.P.E.P. § 2106.05(f) recites:
For claim limitations that do not amount to more than a recitation of the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection. For example, an examiner could explain that implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two…
Applicant’s Specification, paragraph [0034]-[0035] recites:
[0034] Figure 2 is a block diagram of an example of an apparatus 202 that may be used in determining chromosome expiration. The apparatus 202 may be an electronic device, such as a personal computer, a server computer, a printer, a 3D printer, a smartphone, a tablet computer, etc. The apparatus 202 may include and/or may be coupled to a processor 204 and/or a memory 206. In some examples, the apparatus 202 may be in communication with (e.g., coupled to, have a communication link with) an additive manufacturing device (e.g., a 3D printing device). In some examples, the apparatus 202 may be an example of a 3D printing device. The apparatus 202 may include additional components (not
shown) and/or some of the components described herein may be removed and/or modified without departing from the scope of the techniques described herein.
[0035] The processor 204 may be any of a central processing unit (CPU), a semiconductor-based microprocessor, graphics processing unit (GPU), field- programmable gate array (FPGA), an application-specific integrated circuit (ASIC), and/or other hardware device suitable for retrieval and execution of instructions stored in the memory 206. The processor 204 may fetch, decode, and/or execute instructions (e.g., chromosome determination instructions 212, expiration instructions 210, recycling instructions 214, and/or packing selection instructions 216) stored in the memory 206. In some examples, the processor 204 may include an electronic circuit or circuits that include electronic components for performing a function or functions of the instructions (e.g., chromosome determination instructions 212, expiration instructions 210, recycling instructions 214, and/or packing selection instructions 216). In some examples, the processor 204 may perform one, some, or all of the functions, operations, elements, methods, etc., described in relation to one, some, or all of Figures 1-5.
The claim as a whole does not amount to significantly more than the exception itself (i.e., there is no inventive concept in the claim). (See, M.P.E.P. § 2106.05(II)).
Therefore, the answer to the inquiry is “NO”, no additional elements provide an inventive concept that is significantly more than the claimed abstract ideas the claimed abstract idea into a practical application.
Claim 10 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 11
Claim 11 recites:
11. The apparatus of claim 10, wherein the processor is to determine that the chromosome is expired based on a slope of packing density over generation of the genetic procedure.
Applicant’s Claim 11 merely teaches the mental determination of whether a chromosome is expired based on slope. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 11 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 12
Claim 12 recites:
12. The apparatus of claim 10, wherein the processor is to select the packing as a packing with a greatest packing density from a set of chromosomes that includes the recycled chromosome.
Applicant’s Claim 12 merely teaches the mental process of selection of a packing with highest density. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 12 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 13
Step 1 inquiry: Does this claim fall within a statutory category?
The preamble of the claim recites “13. A non-transitory tangible computer-readable medium storing executable code, comprising:…” Therefore, it is a “non-transitory tangible computer-readable medium” (or “product of manufacture”), which is a statutory category of invention. Therefore, the answer to the inquiry is: “YES.”
Step 2A (Prong One) inquiry:
Are there limitations in Claim 13 that recite abstract ideas?
YES. The following limitations in Claim 13 recite abstract ideas that fall within at least one of the groupings of abstract ideas enumerated in the 2019 PEG. Specifically, each limitation of Claim 13 (and, its dependents) recite “code to cause…” This means that every limitation, alone and in combination, is software, per se. on that basis alone, claim 13 and its dependents are not eligible.
Further, they represent “mental steps” and “mathematical steps”:
• create a chromosome and initialize an age associated with the chromosome (i.e., mental steps)
• increment the age for each generation of a genetic procedure (i.e., mental steps or mathematical steps)
• exclude the chromosome in a case that the age reaches an age threshold (i.e., mental steps)
• determine a packing based on a set of chromosomes that excludes the chromosome (i.e., mental steps)
Step 2A (Prong Two) inquiry:
Are there additional elements or a combination of elements in the claim that apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that it is more than a drafting effort designed to monopolize the exception?
Applicant’s claims contain the following “additional elements”:
(1) A processor
(1) A “processor” is a broad term which is described at a high level and includes general purpose computers. M.P.E.P. § 2106.05(f) recites:
For claim limitations that do not amount to more than a recitation of the words “apply it” (or an equivalent), such as mere instructions to implement an abstract idea on a computer, examiners should explain why they do not meaningfully limit the claim in an eligibility rejection. For example, an examiner could explain that implementing an abstract idea on a generic computer, does not integrate the abstract idea into a practical application in Step 2A Prong Two…
Further, M.P.E.P. § 2106.05(f)(2) recites:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process. Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
This “processor” limitation does not integrate the additional element into a practical application and represents “insignificant extra-solution activity”. (See, M.P.E.P. § 2106.05(I)(A)).
The answer to the inquiry is “NO”, no additional elements integrate the claimed abstract idea into a practical application.
Step 2B inquiry:
Does the claim provide an inventive concept, i.e., does the claim recite additional element(s) or a combination of elements that amount to significantly more than the judicial exception in the claim?
Applicant’s claims contain the following “additional elements”:
(1) A processor
(1) A “processor” is a broad term which is described at a high level and includes general purpose computers. M.P.E.P. § 2016.05(f) recites:
2106.05(f) Mere Instructions To Apply An Exception [R-10.2019]
Another consideration when determining whether a claim integrates a judicial exception into a practical application in Step 2A Prong Two or recites significantly more than a judicial exception in Step 2B is whether the additional elements amount to more than a recitation of the words “apply it” (or an equivalent) or are more than mere instructions to implement an abstract idea or other exception on a computer. As explained by the Supreme Court, in order to make a claim directed to a judicial exception patent-eligible, the additional element or combination of elements must do “‘more than simply stat[e] the [judicial exception] while adding the words ‘apply it’”. Alice Corp. v. CLS Bank, 573 U.S. 208, 221, 110 USPQ2d 1976, 1982-83 (2014) (quoting Mayo Collaborative Servs. V. Prometheus Labs., Inc., 566 U.S. 66, 72, 101 USPQ2d 1961, 1965). Thus, for example, claims that amount to nothing more than an instruction to apply the abstract idea using a generic computer do not render an abstract idea eligible. Alice Corp., 573 U.S. at 223, 110 USPQ2d at 1983. See also 573 U.S. at 224, 110 USPQ2d at 1984 (warning against a § 101 analysis that turns on “the draftsman’s art”).
Further, M.P.E.P. § 2106.05(f)(2) recites:
(2) Whether the claim invokes computers or other machinery merely as a tool to perform an existing process.
Use of a computer or other machinery in its ordinary capacity for economic or other tasks (e.g., to receive, store, or transmit data) or simply adding a general purpose computer or computer components after the fact to an abstract idea (e.g., a fundamental economic practice or mathematical equation) does not integrate a judicial exception into a practical application or provide significantly more. See Affinity Labs v. DirecTV, 838 F.3d 1253, 1262, 120 USPQ2d 1201, 1207 (Fed. Cir. 2016) (cellular telephone); TLI Communications LLC v. AV Auto, LLC, 823 F.3d 607, 613, 118 USPQ2d 1744, 1748 (Fed. Cir. 2016) (computer server and telephone unit). Similarly, “claiming the improved speed or efficiency inherent with applying the abstract idea on a computer” does not integrate a judicial exception into a practical application or provide an inventive concept. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1367, 115 USPQ2d 1636, 1639 (Fed. Cir. 2015). In contrast, a claim that purports to improve computer capabilities or to improve an existing technology may integrate a judicial exception into a practical application or provide significantly more. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314-15, 120 USPQ2d 1091, 1101-02 (Fed. Cir. 2016); Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36, 118 USPQ2d 1684, 1688-89 (Fed. Cir. 2016). See MPEP §§ 2106.04(d)(1) and 2106.05(a) for a discussion of improvements to the functioning of a computer or to another technology or technical field.
Applicant’s Specification, paragraph [0035], recites:
[0035] The processor 204 may be any of a central processing unit (CPU), a semiconductor-based microprocessor, graphics processing unit (GPU), field- programmable gate array (FPGA), an application-specific integrated circuit (ASIC), and/or other hardware device suitable for retrieval and execution of instructions stored in the memory 206. The processor 204 may fetch, decode, and/or execute instructions (e.g., chromosome determination instructions 212, expiration instructions 210, recycling instructions 214, and/or packing selection instructions 216) stored in the memory 206. In some examples, the processor 204 may include an electronic circuit or circuits that include electronic components for performing a function or functions of the instructions (e.g., chromosome determination instructions 212, expiration instructions 210, recycling instructions 214, and/or packing selection instructions 216). In some examples, the processor 204 may perform one, some, or all of the functions, operations, elements, methods, etc., described in relation to one, some, or all of Figures 1-5.
Therefore, the claim as a whole does not amount to significantly more than the exception itself (i.e., there is no inventive concept in the claim). (See, M.P.E.P. § 2106.05(II)).
Therefore, the answer to the inquiry is “NO”, no additional elements provide an inventive concept that is significantly more than the claimed abstract ideas the claimed abstract idea into a practical application.
Claim 13 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 14
Claim 14 recites:
14. The computer-readable medium of claim 13, further comprising code to cause the processor to randomize a portion of the chromosome in the case that the age reaches the age threshold to produce a recycled chromosome.
Applicant’s Claim 14 merely teaches the mental or mathematical step of randomizing a portion of a mathematical chromosome. It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 14 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Claim 15
Claim 15 recites:
15. The computer-readable medium of claim 13, further comprising:
code to cause the processor to randomly select a subset of the chromosome; and
code to cause the processor to randomly rotate poses of the subset of the chromosome.
Applicant’s Claim 15 merely teaches the mental or mathematical step of random selection of chromosomes and the random rotation of poses of mathematical chromosomes. Applicant’s Specification, paragraph [0013] recites the following:
[0013] In initializing a population, the apparatus may randomly initialize a set of chromosomes. For example, the apparatus may utilize a random number generator to generate random poses for a set of objects (to be packed in a build volume, for instance).
It does not integrate the abstract idea to a practical application, nor is it anything significantly more than the abstract idea. (See, 2106.05(a)(II).)
Claim 15 is, therefore, NOT ELIGIBLE subject matter under 35 U.S.C. § 101.
Conclusion
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/WILBERT L STARKS/
Primary Examiner, Art Unit 2122
WLS
02 AUG 2026
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