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.
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 5/4/2026 has been entered.
Response to Arguments
Applicant’s arguments, filed 5/4/2026, have been fully considered but are not persuasive.
Applicant recites the changes to the independent claims and states ‘As a result, the numerical control device can machine the workpiece using an optimized tool path for the evaluation item that truly need to be optimized. Alternatively, the CAM device can generate a machining program using an optimized tool path for the evaluation item that truly need to be optimized. Therefore, Applicant respectfully submits that the configurations including the limitations added by the amendments to the independent claims 1 and 9 in this paper are integrated into a practical application’ (pages 8-9).
It is respectfully submitted that the limitations involving actually machining a workpiece are not positively recited — the abstract tool path optimization technique is merely ‘included’ with a generic numerical control device. Therefore, as indicated below these new limitations are merely considered to generally link the use of the judicial exception to a particular conventional technological environment or field and hence, they are not significantly more than the abstract idea, see the rejection below under 35 U.S.C. § 101. It is also noted that a CAM device processing data alone does not result in a physical machining process and that the newly added limitations lack support in the specification as originally filed as detailed below in the current rejection under 35 U.S.C. § 112. Applicant’s arguments are therefore not persuasive.
Applicant states ‘In the event that these rejections are maintained, the Examiner is respectfully requested to explain on the record why the Ex parte Desjardins Appeals Review Panel decision as well as the Recentive Analytics, Inc. decision do not apply in this case, especially in light of the claim amendments that are newly-implemented in this paper’ (page 10).
It is respectfully submitted that the instant claims are not analogous to those in Desjardins. The instant claims are directed to an abstract algorithm that optimizes a tool path where the algorithm is merely executed using a generic computer but does not improve the computer/technology. While the claimed algorithm may be an improvement, 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. By contrast, Desjardins recites a computer-implemented method of training a machine learning model and was found to actually improve technology. As stated in Desjardins: ‘For example, one improvement identified in the Specification is to "effectively learn new tasks in succession whilst protecting knowledge about previous tasks. The Specification also recites that the claimed improvement allows artificial intelligence (AI) systems to "us[e] less of their storage capacity" and enables "reduced system complexity." Id. When evaluating the claim as a whole, we discern at least the following limitation of independent claim 1 that reflects the Improvement… that constitutes an improvement to how the machine learning model itself operates, and not, for example, the identified mathematical calculation’. Applicant’s point about the Recentive Analytics, Inc. decision is not entirely clear because Applicant appears to be referencing the CAFC decision in Recentive Analytics v. Fox (April 18, 2025) where the claims were found to be ineligible under 35 U.S.C. § 101 similarly to the instant claims. Furthermore, neither this office action nor any of the previous office actions has asserted that any USPTO guidance, including Desjardins, ‘does not apply’. However, as detailed above and in the following rejection, the application of USPTO guidance, when applied to the instant claims, is not favorable to claim eligibility under 35 U.S.C. § 101. Applicant’s arguments are therefore not persuasive.
Applicant reiterates that ‘claim 1 of the present application is not a mere abstract idea’ and references MPEP 2106.04(d) (page 10).
It is respectfully submitted that Applicant’s general argument has been addressed above and the rejection is explained in some detail below. Further, no reasoned argument is provided as to which considerations in MPEP 2106.04(d) should apply in this case or why they might integrate the judicial exception into a practical application. Applicant’s arguments are therefore not persuasive.
Applicant argues that the instant claims are similar to those in Diamond v. Diehr (pages 10-11).
It is respectfully submitted that the claims in Diamond v. Diehr differ substantially from the instant claims because in Diamond v. Diehr a specific physical action is positively recited that involves automatically opening a press based on the performed calculations. The instant claims merely generally link the use of the judicial exception to a well-understood, routine and conventional numerical control device, as detailed below. Applicant’s arguments are therefore not persuasive.
Applicant quotes the last office action: ‘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’ and states that ‘Applicant respectfully requests that the Examiner clarify the record in the next response as to why this portion of the August 4, 2025 USPTO Memorandum does not apply in the event that these rejections are maintained’ (pages 11-12).
It is respectfully submitted that the statement in the last office that ‘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’ merely points out that making an assertion about an alleged improvement is not by itself sufficient to render the claims eligible under 35 U.S.C. § 101. At least, evidence or reasoned argument would be required — a statement without these is not sufficient to be persuasive, see MPEP 2145. Neither this office action nor any of the previous office actions has asserted that the ‘August 4, 2025 USPTO Memorandum does not apply’ and these office actions are in accord with USPTO guidance, including the August 4, 2025 USPTO Memorandum. Applicant’s arguments are therefore not persuasive.
Applicant argues that ‘independent claims 1 and 9 in this paper to now more precisely recite the type of tool for which the tool path is being optimized’ (page 12).
It is respectfully submitted that the claims now include a generic numerical control device — i.e. a very broadly recited computer controlled machine tool that may include a large range of different types of tools, e.g. lathes, mills, grinders, various types of cutting tools, etc. — and such tools are also well-understood, routine and conventional, as detailed below. Applicant’s arguments are therefore not persuasive.
Applicant argues that ‘the presently claimed invention, when taken as a whole, provides a technological solution to a technological problem that provides an improvement to the technological field, and also that provides a functional improvement of a computer, and as such, the presently claimed invention is integrated into a practical application’ (page 12).
It is respectfully submitted that the improvement argument has been rebutted above and merely using a generic computer to execute an abstract algorithm does not actually improve the computer, see MPEP 2106.04(a)(2) III C. Applicant’s arguments are therefore not persuasive.
Applicant’s comments that claim 9 recites similar features to claim 1 (page 13) are not persuasive given the continued rejection of claim 1. And Applicant’s comments regarding the various dependent claims (page 13) are moot given the continued rejection of the independent claims.
For at least these reasons, the rejection of the claims is maintained.
Claim Rejections - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claim(s) 1-16 is/are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for pre-AIA the inventor(s), at the time the application was filed, had possession of the claimed invention.
Claim 1 recites the limitation 'wherein the optimization device is included in a numerical control device that controls machining of a workpiece based on the outputted tool path, or in a CAM device that outputs a machining program based on the outputted tool path to a numerical control device.’. This constitutes new matter because it is not described in the application as originally filed. Specifically, the specification fails to recite that the numerical control device controls machining of a workpiece based on the outputted tool path and also fails to recite a CAM device that outputs a machining program based on the outputted tool path to a numerical control device. Neither of these features is specifically recited in paragraph [0038] of the specification cited by Applicant.
Claim 9 recites similar limitations to claim 1 and is rejected based on the same rationale.
The respective dependent claims are also rejected under 35 U.S.C. § 112 as they inherit all of the characteristics of the claim from which they depend.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
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 and output a tool path determined not to require the path adjustment, when it is determined that the path adjustment is not required, 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)) and that the optimization device is included in a numerical control device that controls machining of a workpiece based on the outputted tool path, or in a CAM device that outputs a machining program based on the outputted tool path to a numerical control device (generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h)) does not impose any meaningful limits on practicing the abstract idea. Also note that controlling the device to use the tool path to machine the workpiece may alternatively be considered insignificant extra-solution activity, i.e. mere instructions to apply the exception using a technique recited at a high level of generality, see MPEP 2106.05(f); and that processing data to generate a machining program alone is an abstract process, does not constitute physically altering a workpiece, and may alternatively be considered part of 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)) and that the optimization device is included in a numerical control device that controls machining of a workpiece based on the outputted tool path, or in a CAM device that outputs a machining program based on the outputted tool path to a numerical control device (generally linking the use of the judicial exception to a particular technological environment or field of use, see MPEP 2106.05(h)) 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.
Note that numerical control devices that control machining of a workpiece based on tool paths, or CAM devices that output machining programs based on tool paths to a numerical control device are well-understood, routine and conventional, see for example Hsu et al. U.S. Patent Publication No. 20180150060 [0004, Fig. 1], Matsubara et al. U.S. Patent Publication No. 20170308060 [0002], Nishibashi U.S. Patent Publication No. 20110166693 [0066, 0102], Locke et al. U.S. Patent No. 4974165 [col. 8].
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.
Citation of Pertinent Prior Art
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure.
Kaneko et al. U.S. Patent Publication No. 20180299859 discloses a tool-path correcting apparatus including a cut-point calculating unit that calculates, on the basis of tool path data, tool data, and shape data, cut point information.
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
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
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