DETAILED ACTION
Status of the Claims
1. This action is in reply to the Requirement for Restriction dated November 25, 2025.
2. Applicant provisionally elects Invention I, claims 1-9 and provisionally has withdrawn
claims 10-15, encompassing Inventions II and III.
3. Claims 1-9 are currently pending and have been examined.
Notice of Pre-AIA or AIA Status
4. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Response to Applicant’s Arguments Regarding Restriction/Election
5. Examiner acknowledges the traversal made by Applicant with regards to the restriction standard employed as this is a national stage patent application filed under 35 USC 371. (See Applicant’s Response dated 11/25/2025)
Examiner agrees that the wrong standard was unintentionally utilized, however appreciates that Applicant has provisionally elected Invention I, claims 1-9 by their response. (Id.) Applicant has also provisionally reserved the right of rejoinder of the withdrawn claims if at allowance of the non-withdrawn claims recite the technical feature. (Id.)
For purposes of clarity of the record and compact prosecution, Examiner has presented the election/restriction under the requirement for unity of invention standard, below. Further, based on Applicant’s written response, Examiner will treat the claims as provisionally elected as to Invention I, claims 1-9 and is herewith examining those claims. Examiner is further withdrawing claims 10-15 from further consideration by the Examiner as being drawn to a non-elected invention.
Election/Restriction
6. REQUIREMENT FOR UNITY OF INVENTION
As provided in 37 CFR 1.475(a), a national stage application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept (“requirement of unity of invention”). Where a group of inventions is claimed in a national stage application, the requirement of unity of invention shall be fulfilled only when there is a technical relationship among those inventions involving one or more of the same or corresponding special technical features. The expression “special technical features” shall mean those technical features that define a contribution which each of the claimed inventions, considered as a whole, makes over the prior art.
The determination whether a group of inventions is so linked as to form a single general inventive concept shall be made without regard to whether the inventions are claimed in separate claims or as alternatives within a single claim. See 37 CFR 1.475(e).
When Claims Are Directed to Multiple Categories of Inventions:
As provided in 37 CFR 1.475 (b), a national stage application containing claims to different categories of invention will be considered to have unity of invention if the claims are drawn only to one of the following combinations of categories:
(1) A product and a process specially adapted for the manufacture of said product; or
(2) A product and a process of use of said product; or
(3) A product, a process specially adapted for the manufacture of the said product, and a use of the said product; or
(4) A process and an apparatus or means specifically designed for carrying out the said process; or
(5) A product, a process specially adapted for the manufacture of the said product, and an apparatus or means specifically designed for carrying out the said process.
Otherwise, unity of invention might not be present. See 37 CFR 1.475 (c).
Restriction is required under 35 U.S.C. 121 and 372.
This application contains the following inventions or groups of inventions which are not so linked as to form a single general inventive concept under PCT Rule 13.1.
In accordance with 37 CFR 1.499, applicant is required, in reply to this action, to elect a single invention to which the claims must be restricted.
Group I, claim(s) 1-9, drawn to a method, comprising: generating chromosomes in a genetic procedure, wherein each chromosome indicates a packing of objects in a volume; determining uniformity scores corresponding to the chromosomes, wherein each uniformity score is based on object orientation similarity; and selecting a chromosome based on the uniformity scores, classified in G06N 3/126; G06F17/50; B29C64/386; B33Y50/00.
Group II, claim(s) 10-12, drawn to an apparatus, comprising: a memory; a processor coupled to the memory, wherein the processor is to: determine sets of objects that meet an orientation similarity criterion in a chromosome corresponding to a build volume to produce a uniformity score; evaluate the chromosome based on the uniformity score and propagate the chromosome in a case that the evaluation is satisfied, classified in G05B2219/35162; G05B2219/49023; B33Y50/00; G06F2113/10; B29C64/00.
Group III, claim(s) 13-15, drawn to a non-transitory tangible computer-readable medium storing executable code, comprising: code to cause a processor to determine sets of objects in a chromosome that meet an orientation condition and a sequence condition; code to cause the processor to quantify the sets to produce a uniformity score for the chromosome; code to cause the processor to determine a fitness score of the chromosome; and code to cause the processor to determine a packing based on the uniformity score and the fitness score, classified in B33Y50; B29C64/386.
The groups of inventions listed above do not relate to a single general inventive concept under PCT Rule 13.1 because, under PCT Rule 13.2, they lack the same or corresponding special technical features for the following reasons:
Groups I, II and III lack unity of invention because the groups do not share the same or corresponding technical feature.
Group I is generating chromosomes in a genetic procedure, wherein each chromosome indicates a packing of objects in a volume; determining uniformity scores corresponding to the chromosomes based on object orientation similarity and selecting a chromosome based on the uniformity score. The genetic procedure is a computational procedure that may be initializing a population. (See at least para 12 of Applicant’s spec)
Group II is drawn to an apparatus that determines sets of objects that meet an orientation similarity in a chromosome corresponding to a build volume to produce a uniformity score; evaluating the chromosome based on the uniformity score and then propagate the chromosome in a case that the evaluation is satisfied. Propagation is mutating or crossing over a chromosome or chromosomes that are above a ranking threshold. (See at least para 45 of Applicant’s spec). This is done after the generating of the initial chromosomes are created, thereby requiring an additional technical step not required in Group I and an apparatus to perform a distinct process.
Group III is drawn to a CRM claim defined by code and recites determining sets of objects that meet an orientation condition and a sequence condition, code to quantify the sets to produce a uniformity score, then code to determine a fitness score and determine packing based on the uniformity and fitness score. This is the only claim that actually determines a fitness score and then determines a packing based on the determination of both scores, however it is based on sets of objects in a chromosome that meet orientation condition and sequence condition. There is no generation of chromosomes in a genetic procedure (as is seen in Group I), rather this claim is utilizing already generated chromosomes and comparing conditions to the previously generated chromosome. The process and technical steps are different than those seen in the previous two groups.
The dependent claims further diverge from their respective independent claims.
The groups will also require different avenues of search as the claims have different technical features and will require different search strategies to meet the distinct elements of each group of claims. Under a broadest reasonable interpretation, the prior art applicable to the groups will likely vary as well.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Claim Interpretation – Broadest Reasonable Interpretation
7. In determining patentability of an invention over the prior art, all claim limitations have been considered and interpreted using the “broadest reasonable interpretation consistent with the specification during the examination of a patent application since the applicant may then amend his claims.” See In re Prater and Wei, 162 USPQ 541, 550 (CCPA 1969); MPEP § 2111. Applicant always has the opportunity to amend the claims during prosecution, and broad interpretation by the examiner reduces the possibility that the claim, once issued, will be interpreted more broadly than is justified. See In re Prater, 162 USPQ 541, 550-51 (CCPA 1969); MPEP § 2111. Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 26 USPQ2d 1057 (Fed. Cir. 1993). See also MPEP 2173.05(q) All claim limitations have been considered. Additionally, all words in the claims have been considered in judging the patentability of the claims against the prior art. See MPEP 2143.03.
Claim limitations that contain statement(s) such as “if, may, might, can, could”, are treated as containing optional language. As matter of linguistic precision, optional claim elements do not narrow claim limitations, since they can always be omitted.
Claim limitations that contain statement(s) such as “wherein, whereby”, that fail to further define the steps or acts to be performed in method claims or the discrete physical structure required of system claims.
Similarly, a method step exercised or triggered upon the satisfaction of a condition, where there remains the possibility that the condition was not satisfied under the broadest reasonable interpretation, is an optional claim limitation. see MPEP § 2103(I)(C); In re Johnson, 77 USPQ2d 1788 (Fed Cir 2006). As the Applicant does not address what happens should the optional claim limitations fail, Examiner assumes that nothing happens (i.e. the method stops). An alternate interpretation is that merely the claim limitations based upon the condition are not triggered or performed.
The subject matter of a properly construed claim is defined by the terms that limit its scope. It is this subject matter that must be examined.
As a general matter, grammar and the plain meaning of terms as understood by one having ordinary skill in the art used in a claim will dictate whether, and to what extent, the language limits the claim scope. see MPEP §2013(I)(C). Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation. see MPEP §2013(I)(C).
Claim scope is not limited by claim language that suggests or makes optional but does not require steps to be performed, or by claim language that does not limit a claim to a particular structure. In addition, when a claim requires selection of an element from a list of alternatives, the prior art teaches the element if one of the alternatives is taught by the prior art. See, e.g., Fresenius USA, Inc. v. Baxter Int’l, Inc., 582 F.3d 1288, 1298 (Fed. Cir. 2009). See MPEP 2111.04, 2143.03.
Language in a method or system claim that states only the intended use or intended result, but does not result in a manipulative difference in the steps of the method claim nor a structural difference between the system claim and the prior art, fails to distinguish the claims from the prior art. In other words, if the prior art structure is capable of performing the intended use, then it meets the claim.
The following types of claim language may raise a question as to its limiting effect (this list is not exhaustive):
Statements of intended use or field of use, including statements of purpose or intended use in the preamble (MPEP 2111.02);
Clauses such as “adapted to”, “adapted for”, “wherein”, and “whereby” (MPEP 2111.04)
Contingent limitations (MPEP 2111.04)
Printed matter (MPEP 2111.05) and
Functional language associated with a claim term (MPEP 2181)
Examiner notes that during examination, “claims … are to be given their broadest reasonable interpretation consistent with the specification, and … claim language should be read in light of the specification as it would be interpreted by one of ordinary skill in the art.” See In re Bond, 15 USPQ 1566, 1568 (Fed. Cir. 1990), citing In re Sneed, 218 USPQ 385, 388 (Fed. Cir. 1983). However, "in examining the specification for proper context, [the examiner] will not at any time import limitations from the specification into the claims". See CollegeNet, Inc. v. ApplyYourself, Inc., 75 USPQ2d 1733, 1738 (Fed. Cir. 2005). Construing claims broadly during prosecution is not unfair to the applicant, because the applicant has the opportunity to amend the claims to obtain more precise claim coverage. See In re Yamamoto, 222 USPQ 934, 936 (Fed. Cir. 1984), citing In re Prater, 162 USPQ 541, 550 (CCPA 1969).
As such, while all claim limitations have been considered and all words in the claims have been considered in judging the patentability of the claimed invention, the following italicized language is expressing the intended result of a process step positively recited and are not given weight:
As in Claim 1:
generating chromosomes in a genetic procedure, wherein each chromosome indicates a packing of objects in a volume;
determining uniformity scores corresponding to the chromosomes, wherein each uniformity score is based on object orientation similarity;
As in Claim 2:
wherein determining the uniformity scores comprises determining whether each of the chromosomes includes a set or sets of objects that meet an orientation similarity criterion.
As in Claim 3:
wherein determining the uniformity scores comprises determining, for each of the chromosomes, a quantity of sets of objects that meet an orientation similarity criterion.
As in Claim 4:
wherein the orientation similarity criterion comprises an orientation condition and a sequence condition.
As in Claim 5:
wherein a sequence of the chromosomes corresponds to a packing order in the volume.
As in Claim 6:
wherein the orientation similarity criterion is met for objects that are within a rotational range of an object or within a second rotational range of a 180-degree relative rotation of the object in a case of symmetry across an axis of the rotation.
As in Claim 7:
wherein selecting the chromosome is based on a lowest uniformity score.
As in Claim 8:
wherein selecting the chromosome is further based on a quantity of objects packed.
As in Claim 9:
wherein selecting the chromosome is further based on a fitness score.
Further, the following terminology is used in the claims:
Generating chromosomes in a genetic procedure:
Applicant’s specification discloses the following:
“The apparatus may generate 102 chromosomes in a genetic procedure, where each chromosome indicates a packing of objects in a volume. A genetic procedure is a computational procedure. For example, a genetic procedure may be a metaheuristic procedure that includes evolution and/or selection mechanisms for determining a solution. In some examples, a genetic procedure may be a technique utilized in artificial intelligence. In some examples, the genetic procedure may include initializing a population, evaluation, selection, crossover, and/or mutation operations. In some examples, evaluation, selection, crossover, and/or mutation may be performed repeatedly (e.g., iteratively, recursively, etc.) until an end condition is met. In some examples, generating 102 the chromosomes may be performed in initializing a population, crossover, and/or mutation operations. A population is a group or set of chromosomes.” (See Applicant Spec para 12)
Accordingly, generating chromosomes in a genetic procedure, under a broadest reasonable interpretation is a computational procedure to generate packing of objects in a volume and will be interpreted in this manner for purposes of examination.
Uniformity score and object orientation similarity:
Applicant’s specification discloses the following:
“The apparatus may determine 104 uniformity scores corresponding to the chromosomes. A uniformity score is a value or measure that indicates a degree of uniformity. For example, a uniformity score may indicate a degree of uniformity of a chromosome (e.g., packing) In some examples, each uniformity score may be based on object orientation similarity. Object orientation similarity is similarity in terms of orientation (e.g., rotation) relative to another orientation (e.g., orientation of another object or a default orientation). For instance, a uniformity score may indicate a degree to which objects in a chromosome (e.g., packing) are oriented similarly. For instance, a uniformity score may quantify symmetric orientation patterns and/or nested sets of objects for assessing a chromosome (e.g., packing).” (See Applicant Spec para 17)
“In some examples, the uniformity score may be utilized to increase (e.g., maximize) packing density by increasing (e.g., maximizing) the size of the sets of similarly oriented objects (e.g., sets that meet an orientation similarity criterion, nested piles, etc.). For instance, some of the techniques described herein may be utilized to increase (e.g., maximize) the quantity of similarly oriented objects (e.g., objects that meet an orientation similarity criterion, nested objects, etc.) in a set (e.g., a pile) and reduce (e.g., minimize) the quantity of different sets (e.g., nested piles) in the volume (e.g. build volume). In some examples, the uniformity score may be utilized to evaluate and/or rank the chromosomes (e.g., packings).” (See Applicant Spec para 21)
Accordingly, the uniformity score will be interpreted in accordance with the specification as a value or measure that indicates a degree of uniformity.
Chromosomes and packing of objects in a volume:
Applicant’s Specification discloses the following:
“A packing is information that specifies an arrangement (e.g., position, location, and/or orientation, etc.) of objects in a build volume. A build volume is a 3D space.” (See Applicant Spec para 8)
“A chromosome is data. For example, a chromosome may include data representing a potential solution for a question that the genetic is to address. For instance, a chromosome may indicate a packing of objects in a volume (e.g., build volume). A packing is an arrangement of objects. For instance, chromosomes may indicate packing positions. A packing position is a pose of an object in a build volume. In some examples, a chromosome may include data indicating a set of object identifiers and poses. An object identifier is information (e.g., number, floating point number, integer, string, character(s), name, etc.) that identifies an object. A pose is information indicating a location and/or orientation of an object. For instance, a pose may indicate a location and/or orientation (e.g., rotation(s) in a dimension or dimensions) of an object in a build volume. In some examples, a pose may be expressed as a number or numbers (e.g., floating point numbers, integers, etc.), vector(s), matrix or matrices, quaternion(s), etc. In some examples, a chromosome may include an object identifier with a first axis rotation (e.g., x), a second axis rotation (e.g., y), and a third axis rotation (e.g., z) for each set of objects. In some examples, a chromosome may include an object identifier with an orientation (and without location, for instance) for each of a set of objects. In some examples, each gene of a chromosome may include an object identifier and/or pose (e.g., orientation and/or location).” (See Applicant Spec para 13)
Accordingly, the packing of objects will be interpreted as information specifying an arrangement of objects and a chromosome will be interpreted as data.
Fitness score:
“In performing evaluation, the apparatus may evaluate and/or rank the chromosomes according to a value or values. Examples of values include quantity of objects packed, a fitness measure, and/or uniformity score. The quantity of objects packed is a quantity of objects that fit within the volume (e.g., build volume) for a chromosome. A quantity of objects packed may be determined for each chromosome.” (See Applicant Spec para 22)
“A fitness measure is a measure that indicates a degree to which a chromosome (e.g., packing) satisfies an objective or objectives (e.g., increased packing density, decreased packing height, and/or decreased z-axis measure, etc.) For example, the fitness measure may be evaluated for each chromosome (e.g., packing). Examples of fitness measures may include packing density and/or packing height (e.g., z-height).” (See Applicant Spec para 23)
Accordingly, a fitness score will be interpreted as a measure indicating a degree with which a chromosome satisfies an objective(s) where examples include packing density and/or packing height.
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.
8. Claims 1-9 are rejected under 35 U.S.C. § 101 because the claimed invention is directed to an abstract idea without significantly more.
ANALYSIS:
STEP 1:
Does the claimed invention fall within one of the four statutory categories of invention (process, machine, manufacture or composition matter?
Claim 1 recites a method claim. Currently this method claim has a separate rejection as being non-statutory (as shown below), however Examiner assumes that Applicant will rectify the claims to properly claim the invention as within statutory categories.
STEP 2A:
Prong One: Does the Claim Recite A Judicial Exception (An Abstract Idea, Law of Nature or Natural Phenomenon)? (If Yes, Proceed to Prong Two, If No, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material)
Claim 1 recites the abstract idea of generating and selecting data to indicate a packing of objects in a volume. The idea is described by the following limitations:
generating chromosomes in a genetic procedure, wherein each chromosome indicates a packing of objects in a volume;
determining uniformity scores corresponding to the chromosomes, wherein each uniformity score is based on object orientation similarity; and
selecting a chromosome based on the uniformity scores.
Under a broadest reasonable interpretation, the claim may reflect no more than an existing approach to select data to indicate packing of objects in a volume using a computational procedure. The claim does not specify a specific type of computational procedure nor a specific manner of determining uniformity scores. This claim may reflect no more than determining how to arrange objects in a volume, for instance a box, using any sort of computational procedure.
As a result, the abstract ideas describe mathematical concepts and certain methods of organizing human activity.
As to mathematical concepts, the steps involve describing a computational procedure [genetic procedure] to generate data [chromosomes] to determine a packing of objects in a volume and selecting a particular chromosome based on scores.
As to certain methods of organizing human activity, the steps involve managing personal behavior or relationships or interactions between people (including following rules or instructions) and/or sales activities or behaviors and business relations. The uniformity scores are based on object orientation similarity which may be nothing more than deciding which direction objects pack most efficiently in a volume. For instance, this may be the same type of analysis undertaken by a manufacturer or retailer when shipping goods to a consumer and deciding how to pack objects in a volume. (Step 2A – Prong 1: YES, the claims are abstract)
Prong Two: Does the Claim Recite Additional Elements That Integrate The Judicial Exception Into A Practical Application of the Exception? (If Yes, the claim is not directed to a judicial exception and qualifies as subject matter patent eligible material. If No, Proceed to Step 2B)
The claims do not include additional elements that integrate the judicial exception into a practical application of the exception because the claims do not provide improvements to another technology or technical field, improvements to the functioning of the computer itself, are not applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition, are not applying the judicial exception with, or by use of a particular machine, are not effecting a transformation or reduction of a particular article to a different state or thing, and are not applying the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
Further, the method outlined in Claim 1 does not sufficiently tie the method steps to a particular machine within the body of the claim. As such, the recitations are further failing to integrate the judicial exception into a practical application on this basis.
In particular, the claims recite no systemization, rather it appears to be mere instructions to apply the exception, presumably using a generic computer component [though not claimed]. Accordingly, as there are no additional elements that can be considered separately and as an ordered combination, there is no basis for integration into a practical application because they do not impose any meaningful limits on practicing the abstract idea. Therefore, Claim 1 is directed to an abstract idea without a practical application. (Step 2A – Prong 2: No, there are no additional claimed elements that are integrated into a practical application)
STEP 2B: If there is an exception, determine if the claim as a whole recites significantly more than the judicial exception itself.
The courts have recognized the following computer functions as well‐understood, routine, and conventional functions when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: i) receiving or transmitting data over a network, e.g., using the Internet to gather data, Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362 (utilizing an intermediary computer to forward information); TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) (using a telephone for image transmission); OIP Techs., Inc., v. Amazon.com, Inc., 788 F.3d 1359, 1363, 115 USPQ2d 1090, 1093 (Fed. Cir. 2015) (sending messages over a network); buySAFE, Inc. v. Google, Inc., 765 F.3d 1350, 1355, 112 USPQ2d 1093, 1096 (Fed. Cir. 2014) (computer receives and sends information over a network); but see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1258, 113 USPQ2d 1097, 1106 (Fed. Cir. 2014) ("Unlike the claims in Ultramercial, the claims at issue here specify how interactions with the Internet are manipulated to yield a desired result‐‐a result that overrides the routine and conventional sequence of events ordinarily triggered by the click of a hyperlink." (emphasis added)); ii) performing repetitive calculations, Flook, 437 U.S. at 594, 198 USPQ2d at 199 (recomputing or readjusting alarm limit values); Bancorp Services v. Sun Life, 687 F.3d 1266, 1278, 103 USPQ2d 1425, 1433 (Fed. Cir. 2012) ("The computer required by some of Bancorp’s claims is employed only for its most basic function, the performance of repetitive calculations, and as such does not impose meaningful limits on the scope of those claims."); iii) electronic recordkeeping, Alice Corp., 134 S. Ct. at 2359, 110 USPQ2d at 1984 (creating and maintaining "shadow accounts"); Ultramercial, 772 F.3d at 716, 112 USPQ2d at 1755 (updating an activity log); iv) storing and retrieving information in memory, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1334, 115 USPQ2d 1681, 1701 (Fed. Cir. 2015); OIP Techs., 788 F.3d at 1363, 115 USPQ2d at 1092-93; v) electronically scanning or extracting data from a physical document, Content Extraction and Transmission, LLC v. Wells Fargo Bank, 776 F.3d 1343, 1348, 113 USPQ2d 1354, 1358 (Fed. Cir. 2014) (optical character recognition); and vi) a web browser’s back and forward button functionality, Internet Patent Corp. v. Active Network, Inc., 790 F.3d 1343, 1348, 115 USPQ2d 1414, 1418 (Fed. Cir. 2015). (MPEP §2106.05(d)(II))
This listing is not meant to imply that all computer functions are well‐understood, routine, conventional activities, or that a claim reciting a generic computer component performing a generic computer function is necessarily ineligible. Courts have held computer‐implemented processes not to be significantly more than an abstract idea (and thus ineligible) where the claim as a whole amounts to nothing more than generic computer functions merely used to implement an abstract idea, such as an idea that could be done by a human analog (i.e., by hand or by merely thinking). On the other hand, courts have held computer-implemented processes to be significantly more than an abstract idea (and thus eligible), where generic computer components are able in combination to perform functions that are not merely generic. (MPEP §2106.05(d)(II) – emphasis added)
Below are examples of other types of activity that the courts have found to be well-understood, routine, conventional activity when they are claimed in a merely generic manner (e.g., at a high level of generality) or as insignificant extra-solution activity: recording a customer’s order, Apple, Inc. v. Ameranth, Inc., 842 F.3d 1229, 1244, 120 USPQ2d 1844, 1856 (Fed. Cir. 2016); shuffling and dealing a standard deck of cards, In re Smith, 815 F.3d 816, 819, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016); restricting public access to media by requiring a consumer to view an advertisement, Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 716-17, 112 USPQ2d 1750, 1755-56 (Fed. Cir. 2014); identifying undeliverable mail items, decoding data on those mail items, and creating output data, Return Mail, Inc. v. U.S. Postal Service, -- F.3d --, -- USPQ2d --, slip op. at 32 (Fed. Cir. August 28, 2017); presenting offers and gathering statistics, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; determining an estimated outcome and setting a price, OIP Techs., 788 F.3d at 1362-63, 115 USPQ2d at 1092-93; and arranging a hierarchy of groups, sorting information, eliminating less restrictive pricing information and determining the price, Versata Dev. Group, Inc. v. SAP Am., Inc., 793 F.3d 1306, 1331, 115 USPQ2d 1681, 1699 (Fed. Cir. 2015) (MPEP 2106.05(d))
Here, the steps are performing repetitive calculations – which has been recognized by the courts as well-understood, routine and conventional functions.
The claims are directed to an abstract idea with no claimed additional generic computer elements that thus do not add meaningful limitations to the abstract idea because they require no more than a generic computer to perform generic computer functions that are well-understood, routine, and conventional activities previously known in the industry.
For the next step of the analysis, it must be determined whether the limitations present in the claims represent a patent-eligible application of the abstract idea. A claim directed to a judicial exception must be analyzed to determine whether the elements of the claim, considered both individually and as an ordered combination are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself.
For the role of a computer in a computer implemented invention to be deemed meaningful in the context of this analysis, it must involve more than performance of “well-understood, routine, [and] conventional activities previously known to the industry.” Further, “the mere recitation of a generic computer cannot transform a patent ineligible abstract idea into a patent-eligible invention.”
As the claims currently do not recite any computerization or systemization, the role of the computer is not an applicable metric at the moment, however Examiner assumes that Applicant will integrate the systemization described by the specification and will thus notes the systemization Applicant’s specification discloses could be utilized by the invention.
Applicant’s specification discloses the following:
“Figure 2 is a block diagram of an example of an apparatus 202 that may be used in object packing. 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.” (See Applicant Spec para 36)
“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 initialization instructions 212, uniformity score determination instructions 210, evaluation instructions 214, chromosome propagation instructions 216, and/or packing selection instructions 217) stored in the memory 206. In some examples, the processor may include an electronic circuit or circuits that include electronic components for performing a function or functions of the instructions (e.g., chromosome initialization instructions 212, uniformity score determination instructions 210, evaluation instructions 214, chromosome propagation instructions 216, and/or packing selection instructions 217). 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 1-4A or 4C.” (See Applicant Spec para 37)
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.
Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of a computer or improves any other technology. The collective functions appear to be implemented using conventional computer systemization.
The claim(s) does not include additional elements that are sufficient to amount to significantly more than the judicial exception. Upon reconsideration of the indicia noted under Step 2A in concert with the Step 2B considerations, the additional claim element(s) amounts to no more than mere instructions to apply the exception using generic computer components. The same analysis applies in Step 2B, i.e., mere instructions to apply an exception using a generic computer component cannot integrate a judicial exception into a practical application at Step 2A or provide an inventive concept in Step 2B. The claim does not provide an inventive concept significantly more than the abstract idea.
Accordingly, these additional elements, when considered separately and as an ordered combination, do not integrate the abstract idea into a practical application because they do not impose any meaningful limits on practicing the abstract idea.
The independent claim 1 is not patent eligible. (Step 2B: NO. The claim does not provide significantly more)
Dependent Claims 2-9 further define the abstract idea that is presented in the respective independent Claim 1 and are further grouped as certain methods of organizing human activity and are abstract for the same reasons and basis as presented above. No additional hardware components other than those found in the respective independent claims is recited, thus it is presumed that the claim is further utilizing the same generic systemization as presented above. The dependent claims do not include any additional elements that integrate the abstract idea into a practical application of the exception or are sufficient to amount to significantly more than the judicial exception when considered both individually and as an ordered combination.
Therefore, the dependent claims are also directed to an abstract idea .
Thus, Claims 1-9 are rejected under 35 U.S.C. 101 as being directed to non-statutory subject matter.
Regarding Claims 1-9, Examiner notes that the method of Claims 1-9 would also have been rejected under the earlier §101 standards based upon In re Bilski, which have been superseded by the current §101 standards based upon the Alice-Mayo test. Specifically, Claim 1 contains an insufficient recitation of a machine or transformation as the involvement of the machine. As recited, the machine is not recited at all related to the performance of the steps. There is no direct tie between a machine and the limitations of the independent claim, nor to the subsequent dependent claims. Examiner is only noting this as §101 under the Alice-Mayo test is considered a substantially higher bar than under In re Bilski. Examiner suggests Applicant incorporate language into the body of the claim reciting the machine elements performing the recited processes.
Examiner Note:
Examiner notes that while the specification discloses that it is related to additive manufacturing and discloses that 3D printing is an example of additive manufacturing, the claims do not recite limitations that correspond to 3D building of objects in a build volume.
The claims and associated definitions in the specification are so broad as to enable the claims to be read as a more conventional and known process of attempting to optimize packing of objects in a volume. This could be a box, a shipping container or any other volume, however does not require the details seen in the specification that are related to 3D printed objects being produced in a 3D space by an additive manufacturing process. As such, as currently claimed, this may be nothing more than the process by with any manufacturer, shipper or retailer may undertake in order to efficiently pack objects.
Examiner suggests integrating the technological framework and elements into the claims.
Claim Rejections - 35 USC § 102
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
9. Claim(s) 1-9 are rejected under 35 U.S.C. 102 (a)(2) as being anticipated by Zeng et al. (WO 2019/117963) (“Zeng”) (disclosed by Applicant’s IDS dated 05/05/2023)
The applied reference has a common inventor with the instant application. Based upon the earlier effectively filed date of the reference, it constitutes prior art under 35 U.S.C. 102(a)(2). This rejection under 35 U.S.C. 102(a)(2) might be overcome by: (1) a showing under 37 CFR 1.130(a) that the subject matter disclosed in the reference was obtained directly or indirectly from the inventor or a joint inventor of this application and is thus not prior art in accordance with 35 U.S.C. 102(b)(2)(A); (2) a showing under 37 CFR 1.130(b) of a prior public disclosure under 35 U.S.C. 102(b)(2)(B) if the same invention is not being claimed; or (3) a statement pursuant to 35 U.S.C. 102(b)(2)(C) establishing that, not later than the effective filing date of the claimed invention, the subject matter disclosed in the reference and the claimed invention were either owned by the same person or subject to an obligation of assignment to the same person or subject to a joint research agreement.
Regarding Claim 1, Zeng discloses the following:
A method, comprising:
generating chromosomes in a genetic procedure, wherein each chromosome indicates a packing of objects in a volume; (See Zeng paras 37-39 – packing density, set of possible placements and orientations using genetic processes; each individual may be represented by chromosomes encoding for parts placement)
determining uniformity scores corresponding to the chromosomes, wherein each uniformity score is based on object orientation similarity; and (See Zeng paras 20, 24, 32, 39-41 – uniformity)
selecting a chromosome based on the uniformity scores. (See Zeng paras 39-40)
Regarding Claim 2, this claim recites the limitations of Claim 1 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Zeng discloses the following:
wherein determining the uniformity scores comprises determining whether each of the chromosomes includes a set or sets of objects that meet an orientation similarity criterion. (See Zeng paras 32, 34, 39)
Regarding Claim 3, this claim recites the limitations of Claim 1 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Zeng discloses the following:
wherein determining the uniformity scores comprises determining, for each of the chromosomes, a quantity of sets of objects that meet an orientation similarity criterion. (See Zeng paras 18, 20, 32, 34, 39)
Regarding Claim 4, this claim recites the limitations of Claim 3 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Zeng discloses the following:
wherein the orientation similarity criterion comprises an orientation condition and a sequence condition. (See Zeng paras 18, 20, 32, 34, 39)
Regarding Claim 5, this claim recites the limitations of Claim 4 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Zeng discloses the following:
wherein a sequence of the chromosome corresponds to a packing order in the volume. (See Zeng paras 13, 18, 20, 39)
Regarding Claim 6, this claim recites the limitations of Claim 3 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Zeng discloses the following:
wherein the orientation similarity criterion is met for objects that are within a rotational range of an object or within a second rotational range of a 180-degree relative rotation of the object in a case of symmetry across an axis of the rotation. (See Zeng paras 15-16, 39 – arrangement refers to orientation of the parts in the build volume (e.g., yaw, pitch, and roll); x, y, z coordinates)
Regarding Claim 7, this claim recites the limitations of Claim 1 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Zeng discloses the following:
wherein selecting the chromosome is based on a lowest uniformity score. (See Zeng paras 21, 39-40, 59)
Regarding Claim 8, this claim recites the limitations of Claim 1 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Zeng discloses the following:
wherein selecting the chromosome is further based on a quantity of objects packed.(See Zeng paras 37-38, 46, 55 – number of parts in the build volume)
Regarding Claim 9, this claim recites the limitations of Claim 1 and as to those limitations is rejected for the same basis and reasons as disclosed above. Further, Zeng discloses the following:
wherein selecting the chromosome is further based on a fitness score. (See Zeng paras 24, 40 – score for z-height differences [difference score and determination of a collision free packing to minimize the cumulative difference score based on packing height]; all scores can be assembled into a single fitness value)
Conclusion
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/AMBREEN A. ALLADIN/Primary Examiner, Art Unit 3691 December 26, 2025
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