DETAILED ACTION
Claims 1-16 are pending.
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 .
Priority
Acknowledgement is made of applicant’s claim for foreign priority under 35 U.S.C. 119 (a)-(d) to Japanese Patent Application No. 2020-180565, filed on 10/28/2020.
Response to Arguments
Applicant’s arguments, filed 12/19/25, have been fully considered but are not persuasive, except where indicated below.
Applicant’s argument regarding the objections to the claims (page 8) are persuasive and the objections are withdrawn.
Applicant’s comments on interpretation under 35 U.S.C. § 112(f) (pages 8-9) are persuasive and the claims are no longer interpreted under that statute.
Applicant’s arguments regarding the rejection under 35 U.S.C. § 112(b) (pages 9-10) are persuasive and the claims are no longer rejected under that statute.
Applicant argues that ‘amended independent claims 1 and 9 do not cover any features that recite a mental process. More particularly, it is evident, from the following portions of the disclosure of the present application, that such features could not be performed in the human mind’ and cites paragraph [0022] of the specification that addresses adjusting a tool path and It is evident that the subject features recited in both the previous form of claim 1, and especially as amended in this paper, could not practically be performed in the human mind without the associated hardware and the assistance of a special purpose computer programmed to apply the specialized algorithms disclosed in the specification of the present application (pages 10-12). Applicant further notes that ‘paragraph [0028] through to paragraph [0035] of the specification of the present application describe the processes and algorithms associated with operation of the optimization device for a tool path’ (page 12) and ‘such analyses would require the aid of a special purpose computer programmed to apply the specialized algorithms disclosed in the specification… the above-indicated paragraphs of the specification could not be performed, and associated advantages could not be obtained, by any alleged practice of the claimed invention in the human mind without the associated hardware and the assistance of a special purpose computer programmed to apply the specialized algorithms disclosed in the specification of the present application and recited in the claims’ (page 13) and cites paragraph [0039] that references using hardware and software.
It is respectfully submitted that no evidence or reasoned argument is presented as to why a person cannot practically calculate an abstract tool path using an algorithm, e.g. using pen and paper. For example, the claims broadly recite ‘acquire the at least one analysis/evaluation result by performing calculations on the input data’ [claim 3] that a human could perform even without the assistance of a computer. Furthermore, the recited processor and memory merely constitutes generic computer technology and performing a mental process on a generic computer is not considered significantly more than an abstract idea, see MPEP 2106.04(a)(2) III C. It is also noted that ‘specialized algorithms’ are still merely abstract algorithms. Applicant’s arguments are therefore not persuasive.
Applicant’s argument regarding independent claim 9 (page 14) is moot given the continued rejection of claim 1, detailed above.
Applicant’s argument regarding the dependent claims (page 14) is moot given the continued rejection of the independent claims.
Applicant argues that claim 3 does not recite a mathematical process ‘because claim 3 does not explicitly recite a mathematical relationship, formula, or calculation’ or refer to specific mathematical calculations (pages 14-15).
It is respectfully submitted that this point is moot because in the analysis of claim 3 it was determined that the claim involved a mental and/or mathematical process (see the rejection below under 35 U.S.C. § 101). Furthermore, the claim explicitly recites ‘performing calculation on the input data’ and Applicant has provided no evidence or reasoned argument as to how a calculation may be performed without using some basic form of mathematics. Also note that the broadest reasonable interpretation of a ‘calculation’ includes mathematical calculations. Applicant’s arguments are therefore not persuasive.
Applicant argues that additional claim limitations reflect an improvement in a technical field and integrate the abstract idea into a practical application and compares the instant invention to that in Ex Parte Smith (pages 16-20).
It is respectfully submitted that eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." Genetic Techs. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) as cited in MPEP 2106.04, i.e. an improvement to the abstract idea itself (determining/calculating a tool path) is still merely an abstract idea. Reciting that the abstract idea is an improvement in the specification alone is not sufficient to render the claims eligible under 35 U.S.C. § 101. Furthermore, the invention of Ex Parte Smith is not analogous to the instant invention at least because Ex Parte Smith involves specific timing limitations that were considered to integrate the invention of Smith into a practical application [pages 8-9 of Ex Parte Smith]. As indicated previously, the various abstract claim limitations recited by Applicant at least involve ineligible mental processes. Applicant’s arguments are therefore not persuasive.
Applicant’s argument regarding claim 9 (page 20) is moot given the continued rejection of claim 1.
Applicant argues that ‘the claims of the present application, especially as amended, are not directed to an abstract idea, but instead are clearly integrated into a practical application of an optimization device for a tool path and associated methodology that performs path adjustment of a tool path’ because ‘the claims of the present application are therefore directed to a particular, limited application of an optimization device and methodology for a tool path that performs path adjustment of the tool path. As a result, the claims of the present application do not monopolize any abstract idea’ (page 21) and ‘present application thus includes additional elements that apply or use any alleged judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception’ (page 22).
It is respectfully submitted that simply not monopolizing an exception alone is not sufficient to render claims eligible under 35 U.S.C. § 101. In addition, the claims are directed to an optimization device and computer readable medium performing a method for a tool path but nowhere do the claims limit the type of tool for which the tool path is being optimized and the claims are therefore very broadly applicable to all types of different tools. Applicant’s argument is therefore not persuasive.
Applicant argues that the instant claims are a ‘technological solution to a technological problem’, including ‘claims as a whole’ and the ‘newly-implemented amendments are additional elements that integrate any alleged judicial exception into a practical application’ (pages 23-24).
It is respectfully submitted that a process that may be performed mentally, and particularly in the case of claim 3, a mathematical process, is not considered a technological solution to a technological problem under current USPTO guidelines as detailed in the rejection below under 35 U.S.C. § 101. The newly added amendments include a processor and memory that are not sufficient to add significantly more to the abstract idea because they merely recite applying the abstract idea with generic computer technology, see MPEP 2106.04(a)(2) III C. Applicant’s argument is therefore not persuasive.
Applicant argues that the claims recite improvements and ‘submits that the newly-implemented amendments to claim 1 are additional elements that integrate any alleged abstract idea into a practical application’ (page 25). Both of these points are already addressed above and neither is considered persuasive.
Applicant’s argument regarding claim 9 and the dependent claims (page 26) is moot given the continued rejection of claim 1.
Applicant argues that the ‘above-discussed additional limitations of the claims are not well-understood, routine, conventional activity in the field. Instead, Applicant submits that the additional limitations of the amended claims provide an inventive concept because the elements of the claims do not perform routine or conventional activities previously known to the industry’ (page 26), that claim 1 is ‘directed to a particular, limited application of an optimization device and methodology for a tool path that performs path adjustment of the tool path, as discussed in the previous section with regard to integration into a practical application’ and ‘Applicant respectfully submits that the features of the amended claims of the present application are not well-understood, routine, and conventional’ (page 27).
It is respectfully submitted that the additional claim features identified during examination in the 35 U.S.C. § 101 analysis (see below) are well-understood, routine and conventional, as discussed in the rejection below. The newly amended limitations include additional features involving a processor and memory that are well-understood, routine and conventional, see MPEP 2106.04(a)(2) III C. The algorithm recited in claim 1 is not considered well-understood, routine and conventional, however, as discussed above, an improvement to an algorithm is still an abstract algorithm and does not integrate the abstract idea into a practical application. Applicant’s arguments are therefore not persuasive.
Applicant’s comments on 35 U.S.C. § 102 and 35 U.S.C. § 103 (page 28) are noted, however those statutes constitute a separate enquiry from the 35 U.S.C. § 101 analysis.
Applicant’s comments on Ex Parte Desjardins (page 28) are noted. However, eligibility under 35 U.S.C. § 101 must still be evaluated, see MPEP 2106, in addition to any other applicable statutes and Desjardins does not indicate otherwise.
Applicant’s arguments (page 28-29) are already addressed above and found to be unpersuasive.
For at least these reasons, the rejection of the claims is maintained.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claim(s) 1-16 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a non-statutory subject matter. The claims do not fall within at least one of the four categories of patent eligible subject matter because the claimed invention is directed to the abstract idea (mental process) of processing data to determine various results, decide if a tool path adjustment is required and adjust the tool path.
Claim 1 recites an optimization device for a tool path, i.e. a machine, which is a statutory category of invention. The claim recites:
analyze and evaluate the tool path with respect to the plurality of evaluation items and to output a plurality of analysis/evaluation results;
normalize the plurality of analysis/evaluation results in consideration of each of the weightings to make the plurality of analysis/evaluation results dimensionless and output a plurality of normalized analysis/evaluation results;
determine whether a path adjustment is required or not based on the dimensionless determination criterion and the plurality of normalized analysis/evaluation results, and select at least one evaluation item requiring adjustment from the plurality of evaluation items based on the plurality of normalized analysis/evaluation results, when it is determined that the path adjustment is required;
output a determination result including either the plurality of normalized analysis/evaluation results or the at least one evaluation item requiring adjustment, or both; perform, based on the determination result, the path adjustment of the tool path and output a path adjustment result including at least the adjusted tool path, for analyzing and evaluating the adjusted tool path; and perform again an analysis/evaluation based on the adjusted tool path and output at least one analysis/evaluation result that may be performed in the human mind, or by a human using a pen and paper. Thus the claim recites an abstract idea (mental processes), see MPEP 2106.04(a).
This judicial exception is not integrated into a practical application because the additional elements, i.e. a memory configured to store a program; and a processor configured to execute the program and control the optimization device (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), receive input data including at least a tool path, and a plurality of evaluation indices each including at least an evaluation item and a weighting and receive a dimensionless determination criterion (insignificant extra-solution elements – mere data gathering, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d)) does not impose any meaningful limits on practicing the abstract idea. The claim is therefore directed to an abstract idea.
The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception. As discussed above with respect to integration of the abstract idea into a practical application, a memory configured to store a program; and a processor configured to execute the program and control the optimization device (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C), receive input data including at least a tool path, and a plurality of evaluation indices each including at least an evaluation item and a weighting and receive a dimensionless determination criterion (insignificant extra-solution elements – mere data gathering, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d)) does not impose any meaningful limits on practicing the abstract idea and are not considered significantly more. Considering the additionally elements individually and in combination and the claim as a whole, the additional elements do not provide significantly more than the abstract idea. Thus the claim is not patent eligible.
Claim 2 merely recites the different types of abstract input data. Thus this claim recites an abstract idea.
Claim 3 recites the processor is configured to control the optimization device (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C) to acquire the at least one analysis/evaluation result by performing calculation on the input data (mental/mathematical process). Thus this claim recites an abstract idea.
Claim 4 merely specifies what the abstract weighting indicates. Thus this claim recites an abstract idea.
Claim 5 recites the processor is configured to control the optimization device (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C) to determine whether a path adjustment is required or not based on whether a total value of the plurality of the normalized analysis/evaluation results satisfies the determination criterion (mental process). Thus this claim recites an abstract idea.
Claim 6 recites the processor is configured to control the optimization device (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C) to determine at least one acceptable item each satisfying the determination criterion, respectively for the at least one normalized analysis/evaluation result, and determine whether a path adjustment is required or not based on whether a number of the acceptable items is greater than a certain number (mental process). Thus this claim recites an abstract idea.
Claim 7 recites the processor is configured to control the optimization device (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C) to compare the normalized analysis/evaluation results with each other and select, based on a magnitude relationship among the normalized analysis/evaluation results, the at least one evaluation item requiring adjustment from the evaluation items (mental process). Thus this claim recites an abstract idea.
Claim 8 recites the processor is configured to control the optimization device (merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C) to output, when it is determined that the path adjustment is not required (mental evaluation/judgement), at least the tool path or the tool path having undergone the adjustment to an outside of the optimization device (insignificant extra-solution elements – merely using generic computer technology, see MPEP 2106.05 I A, MPEP 2106.05(g) MPEP 2106.05(d) e.g. receiving or transmitting data over a network). Thus this claim recites an abstract idea.
Claim 9 recites a non-transitory computer readable recording medium encoded with an optimization program for a tool path, causing a computer to achieve functions, i.e. an article of manufacture, which is a statutory category of invention. However, the recited method performed by the encoded program functions is similar to that in claim 1 and is rejected under the same rationale. Note that a non-transitory processor-readable storage medium is considered merely applying the exception with generic computer technology – see MPEP 2106.04(a)(2) III C.
Claims 10-16 recite similar limitations to claims 2-8 are rejected under the same respective rationales.
Note that any citations to specific, pages, columns, lines, or figures in the prior art references and any interpretation of the reference should not be considered to be limiting in any way. A reference is relevant for all it contains and may be relied upon for all that it would have reasonably suggested to one having ordinary skill in the art. See MPEP 2123.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to BERNARD G. LINDSAY whose telephone number is (571)270-0665. The examiner can normally be reached Monday through Friday from 8:30 AM to 5:30 PM EST.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Mohammad Ali can be reached on (571)272-4105. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/BERNARD G LINDSAY/
Primary Examiner, Art Unit 2119