DETAILED ACTION
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 .
Status
Claims 1-3 and 5-13 are pending. Claims 1 and 11 are amended. Claim 4 is cancelled. No new claims are added.
Claim 1 is objected to as stated below in detail.
Claims 1-3 and 5-13 are rejected under 35 USC 101.
Response to Amendment
The objections to the specification are withdrawn.
The rejection under 35 USC 112(b) is withdrawn.
Claim 1 is newly objected to in view of the amendments.
The amended claims are rejected under 35 USC 101.
The rejections under 35 USC 103 are withdrawn in view of the amendments. Claim 1 is amended to include the previously indicated allowable subject matter from claim 4 and claim 4 is cancelled.
Response to Arguments
Applicant's arguments filed 6/4/2026 with respect to rejection under 35 USC 101 have been fully considered but they are moot as they refer to the newly amended claims which have not been previously addressed. For the sake of compact prosecution, the arguments are addressed.
With respect to Step 2A prong 1, the examiner agrees that the “calculating…” limitation is no longer directed to a mental process, but the amended limitation is now identified as a mathematical calculation in the new grounds of rejection necessitated by the amendment.
With respect to Step 2A prong 2, the examiner respectfully disagrees with the applicant’s argument that the judicial exception is integrated into a practical application. Although the amended claim includes prototypes and optimizing the physical object in the engineering process, the “processing…” is recited at a high level and is identified as a mental process. Also “It is important to note, the judicial exception alone cannot provide the improvement.” MPEP 2106.05(a).
With respect to Step 2B, the argument regarding Well Understood, Routine, and Conventional subject matter is not persuasive. In the previous office action, only select limitations were identified as belonging to this grouping, but the argument addresses the claim limitations as an ordered combination.
With respect to Step 2B, the argument regarding “apply it" is not persuasive. As acknowledged by the applicant in pg. 16 ¶ 2, “the representative design data sample … is used as a computations input of the claimed engineering process”. The selection of the design samples is distinct from the application of the selected sample as a prototype.
The dependent claims are argued to be allowable because the independent claims are supposedly allowable. However, the independent claims are not allowable; therefore, the dependent claims are not allowable since they do not add any further allowable limitations.
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.
To determine if a claim is directed to patent ineligible subject matter, the Court has guided the Office to apply the Alice/Mayo test, which requires:
1. Determining if the claim falls within a statutory category;
2A. Determining if the claim is directed to a patent ineligible judicial exception consisting of a law of nature, a natural phenomenon, or abstract idea; and
Step 2A is a two prong inquiry. MPEP 2106.04(II)(A). Under the first prong, examiners evaluate whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. Abstract ideas include mathematical concepts, certain methods of organizing human activity, and mental processes. MPEP 2106.04(a)(2). The second prong is an inquiry into whether the claim integrates a judicial exception into a practical application. MPEP 2106.04(d).
2B. If the claim is directed to a judicial exception, determining if the claim recites limitations or elements that amount to significantly more than the judicial exception. (See MPEP 2106).
Claims 1-3 and 5-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite a mental process; see MPEP 2106.04(a)(2)(III).
Step 1:
Claims 1-13 are directed to the statutory category of processes.
Claim 1 Step 2A prong 1:
For the sake of identifying the abstract ideas, a copy of the claim is provided below. Abstract ideas are bolded.
1. A computer-implemented method for performing a design process by processing design data of a physical object, the method comprising steps of:
acquiring a dataset D including a plurality of design data samples x1,...,xND of design data, each design data sample xi representing one design variation of the physical object and comprising a plurality of design features fi,..., fNF, each design feature ft included in at least one of a plurality of description spaces;
determining at least one design concept including a plurality of design data samples x1,...,xND from the acquired dataset D based on at least a similarity of feature values of the design features f1,..., fNF , wherein each design data sample x1,...,xND comprises design features in at least two of the description spaces;
calculating a local similarity measure between the at least two description spaces for each design data sample x1, ...,xND included in the determined at least one design concept, wherein calculating the local similarity measure as local mutual information measure defined by
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with the local similarity measure i (x; y), x and y are design data of the design data sample in the respective description spaces and p (x) defines a probability of occurrence of the characteristic data sample x in the first description space, and p (x I y) defines a probability of occurrence of the design data sample x in the first description space when observing the design data sample y in the second description space, and
wherein the probabilities of occurrence p(x) and p(x ly) are estimated from vectors of design data samples in the respective description spaces;
selecting a number of design data samples x1, ...,xND based on the calculated local similarity measure from the plurality of design data samples x1, ...,xND included in the determined at least one design concept as at least one of most representative designs and least representative designs, such that design data samples having higher local mutual information measure between the first and second description spaces are selected as the at least one most representative design data samples; and
outputting the selected most representative design(s) to an engineering process for further processing, or deleting the least representative design(s) from the design data samples x1,...,xND of the respective design concept; and
processing at least one of the most representative design data samples x1, ...,xND of the at least one design concept by using the at least one of the selected most representative design data sample as prototypes to in the computer-implemented engineering process for optimizing the physical object.
The limitation “determining at least one design concept including a plurality of design data samples x1,...,xND from the acquired dataset D based on at least a similarity of feature values of the design features f1,..., fNF , wherein each design data sample x1,...,xND comprises design features in at least two of the description spaces; ” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, consider various design parameters and options.
The limitation “calculating a local similarity measure between the at least two description spaces for each design data sample x1, ...,xND included in the determined at least one design concept wherein calculating the local similarity measure as local mutual information measure defined by
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with the local similarity measure i (x; y), x and y are design data of the design data sample in the respective description spaces and p (x) defines a probability of occurrence of the characteristic data sample x in the first description space, and p (x I y) defines a probability of occurrence of the design data sample x in the first description space when observing the design data sample y in the second description space, and
wherein the probabilities of occurrence p(x) and p(x ly) are estimated from vectors of design data samples in the respective description spaces;” is an abstract idea because it is directed to a mathematical calculation. The limitation, as drafted and under broadest reasonable interpretation, is “a mathematical operation (such as multiplication) or an act of calculating using mathematical methods to determine a variable or number, e.g., performing an arithmetic operation such as exponentiation.”. MPEP 2106.04(a)(2)(I)(C).
The limitation “selecting a number of design data samples x1, ...,xND based on the calculated local similarity measure from the plurality of design data samples x1, ...,xND included in the determined at least one design concept as at least one of most representative designs and least representative designs; and ” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, choose a set of design choices based on their previous consideration and rating of similarity.
The limitation “processing at least one of the most representative design data samples x1, ...,xND of the at least one design concept by using the at least one of the selected most representative design data sample as prototypes to in the computer-implemented engineering process for optimizing the physical object.” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, further develop a selected design concept by adding additional details to improve the design.
Claim 1 Step 2A prong 2:
Under step 2A prong two, this judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present general field of use or insignificant extra-solution activity. In particular, the claim recites the additional limitations:
“A computer-implemented method for performing a design process by processing design data of a physical object, the method comprising steps of: ” (general field of use – see MPEP 2106.04(d) referencing MPEP 2106.05(h)) and
“acquiring a dataset D including a plurality of design data samples x1,...,xND of design data, each design data sample xi representing one design variation of the physical object and comprising a plurality of design features fi,..., fNF, each design feature ft included in at least one of a plurality of description spaces; ” (insignificant extra-solution activity – mere data gathering MPEP 2106.05(g)).
“outputting the selected most representative design(s) to an engineering process for further processing, or deleting the least representative design(s) from the design data samples x1,...,xND of the respective design concept; (insignificant extra-solution activity – mere data gathering/outputting MPEP 2106.05(g))
“computer-implemented” (“apply it” MPEP 2106.05(f))
Claim 1 Step 2B:
The Examiner must consider whether each claim limitation individually or as an ordered combination amount to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as “apply it” or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations are considered directed towards field of use or insignificant extra-solution activity. See MPEP 2106.04(d) referencing MPEP 2106.05(h) and MPEP2106.05(g).
The insignificant extra-solution data gathering activity “acquiring a dataset…” and “outputting the selected more representative designs…” is further Well-Understood, Routine and Conventional (WURC), see MPEP § 2106.05(d)(II) “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”, analogous to the “acquiring…” and “outputting…” limitations.
Considering the claim limitations as an ordered combination, claim 1 does not include significantly more than the abstract idea.
Claim 2 Step 2A prong 1:
The limitation “determining relevant description spaces of the plurality of design data samples x1,...,xND of the at least one design concept;” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, consider various design parameters and options.
The limitation “calculating the local similarity measure as a correlation between the design data samples x,...,xND in different description spaces of the determined relevant description spaces of the plurality of design data samples of the at least one design concept.” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, rate the similarity of design parameters and options.
Claim 2 Step 2A prong 2:
Under step 2A prong two, this judicial exception is not integrated into a practical application because there are no additional claim elements outside the abstract idea.
Claim 2 Step 2B:
The Examiner must consider whether each claim limitation individually or as an ordered combination amount to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as “apply it” or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations are considered directed towards field of use or insignificant extra-solution activity. See MPEP 2106.04(d) referencing MPEP 2106.05(h) and MPEP2106.05(g).
Considering the claim limitations as an ordered combination, claim 2 does not include significantly more than the abstract idea.
Claim 3 Step 2A prong 1:
The claim does not recite further abstract ideas.
Claim 3 Step 2A prong 2:
Under step 2A prong two, this judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present general field of use or insignificant extra-solution activity. In particular, the claim recites the additional limitations:
“wherein the at least two description spaces include at least two of the description space of design specification parameters, geometrical features of the design, design performance parameters of at least one engineering discipline for one set of operation criteria, and an operation mode of the design.” (general field of use – see MPEP 2106.04(d) referencing MPEP 2106.05(h)) and
Claim 3 Step 2B:
The Examiner must consider whether each claim limitation individually or as an ordered combination amount to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as “apply it” or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations are considered directed towards field of use or insignificant extra-solution activity. See MPEP 2106.04(d) referencing MPEP 2106.05(h) and MPEP2106.05(g).
Considering the claim limitations as an ordered combination, claim 3 does not include significantly more than the abstract idea.
Claim 5 Step 2A prong 1:
The limitation “wherein processing the most representative design data samples x1,...,xND of the at least one design concept in the engineering process includes optimizing the representative design data samples x1,...,xND with respect to at least one design target using the at least on representative design data sample x1,...,xND as a starting point for the optimization process.” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, further develop a design concept by changing details of a design.
Claim 5 Step 2A prong 2:
Under step 2A prong two, this judicial exception is not integrated into a practical application because there are no additional claim elements outside the abstract idea.
Claim 5 Step 2B:
The Examiner must consider whether each claim limitation individually or as an ordered combination amount to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as “apply it” or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations are considered directed towards field of use or insignificant extra-solution activity. See MPEP 2106.04(d) referencing MPEP 2106.05(h) and MPEP2106.05(g).
Considering the claim limitations as an ordered combination, claim 5 does not include significantly more than the abstract idea.
Claim 6 Step 2A prong 1:
The limitation “determining relevant description spaces includes the description spaces design specification subspace and design performance subspace,” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, further develop a design concept by considering design options.
The limitation “processing the most representative design data samples x1,...,xND of the at least one design concept in the engineering process includes varying design parameters in the description space of design specification parameters for the at least one representative design for developing design variants of the at least one design concept.” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, further develop a design concept by changing details of a design.
Claim 6 Step 2A prong 2:
Under step 2A prong two, this judicial exception is not integrated into a practical application because there are no additional claim elements outside the abstract idea.
Claim 6 Step 2B:
The Examiner must consider whether each claim limitation individually or as an ordered combination amount to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as “apply it” or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations are considered directed towards field of use or insignificant extra-solution activity. See MPEP 2106.04(d) referencing MPEP 2106.05(h) and MPEP2106.05(g).
Considering the claim limitations as an ordered combination, claim 6 does not include significantly more than the abstract idea.
Claim 7 Step 2A prong 1:
The claim does not recite further abstract ideas.
Claim 7 Step 2A prong 2:
Under step 2A prong two, this judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present general field of use or insignificant extra-solution activity. In particular, the claim recites the additional limitations:
“wherein processing the representative design data samples x1,...,xND of the at least one design concept in the engineering process includes storing the representative design data samples xi,...,xND of the at least one design concept as a reduced data set of the design concept.” (insignificant extra-solution activity – mere data gathering/outputting MPEP 2106.05(g))
Claim 7 Step 2B:
The Examiner must consider whether each claim limitation individually or as an ordered combination amount to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as “apply it” or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations are considered directed towards field of use or insignificant extra-solution activity. See MPEP 2106.04(d) referencing MPEP 2106.05(h) and MPEP2106.05(g).
The insignificant extra-solution data gathering activity is further Well-Understood, Routine and Conventional (WURC), see MPEP § 2106.05(d)(II) “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. iv. Storing and retrieving information in memory”, analogous to the “storing…”.
Considering the claim limitations as an ordered combination, claim 7 does not include significantly more than the abstract idea.
Claim 8 Step 2A prong 1:
The claim does not recite further abstract ideas.
Claim 8 Step 2A prong 2:
Under step 2A prong two, this judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present general field of use or insignificant extra-solution activity. In particular, the claim recites the additional limitations:
“wherein the determined at least one design concept includes the plurality of design data samples fulfilling constraints of each design data sample x1,...,xND is included in at maximum one design concept, and all design features fi,..., fNF of all design data samplesx1,...,XND of the at least one design concept are similar,” (general field of use – see MPEP 2106.04(d) referencing MPEP 2106.05(h))
“and all design data samples x1,..., xNDassigned to the at least one design concept in a joint description space including all description spaces are assigned to the same at least one design concept in each of the description space of the plurality of description spaces.” (general field of use – see MPEP 2106.04(d) referencing MPEP 2106.05(h))
Claim 8 Step 2B:
The Examiner must consider whether each claim limitation individually or as an ordered combination amount to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as “apply it” or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations are considered directed towards field of use or insignificant extra-solution activity. See MPEP 2106.04(d) referencing MPEP 2106.05(h) and MPEP2106.05(g).
Considering the claim limitations as an ordered combination, claim 8 does not include significantly more than the abstract idea.
Claim 9 Step 2A prong 1:
The limitation “determining at least one design concept including a plurality of design data samples x,...,xND from the acquired a dataset D comprising: determining plural concept candidates from the obtained dataset D based on at least a similarity of feature values of the design features fi,..., fNF, each concept candidate including a group of design data samples, for generating plural concept candidate configurations;” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, further develop a design concept by considering alternative design options.
The limitation “calculating a metric Q for the concept candidate configurations, the calculated metric Q defining a quality of the generated concept candidate configurations, the metric Q evaluating the design features fi,..., fNF of different description spaces of the plurality of description spaces;” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, make an evaluation of a design based on a metric.
The limitation “evaluating the plural concept candidate configurations based on the calculated metric Q to generate the at least one design concept.” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, make an evaluation of a design based on a metric.
Claim 9 Step 2A prong 2:
Under step 2A prong two, this judicial exception is not integrated into a practical application because there are no additional claim elements outside the abstract idea.
Claim 9 Step 2B:
The Examiner must consider whether each claim limitation individually or as an ordered combination amount to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as “apply it” or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations are considered directed towards field of use or insignificant extra-solution activity. See MPEP 2106.04(d) referencing MPEP 2106.05(h) and MPEP2106.05(g).
Considering the claim limitations as an ordered combination, claim 9 does not include significantly more than the abstract idea.
Claim 10 Step 2A prong 1:
The limitation “wherein the similarity of feature values of the design features fi,..., fNF includes at least a similarity in a first description space, in a second description space and in a third description space.” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, further develop a design concept by considering alternative design options and rating the similarity of the alternative designs.
Claim 10 Step 2A prong 2:
Under step 2A prong two, this judicial exception is not integrated into a practical application because there are no additional claim elements outside the abstract idea.
Claim 10 Step 2B:
The Examiner must consider whether each claim limitation individually or as an ordered combination amount to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as “apply it” or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations considered directed towards field of use or insignificant extra-solution activity. See MPEP 2106.04(d) referencing MPEP 2106.05(h) and MPEP2106.05(g).
Considering the claim limitations as an ordered combination, claim 10 does not include significantly more than the abstract idea.
Claim 11 Step 2A prong 1:
The limitation “wherein processing the representative design data samples x1,...,xND of the at least one design concept in the engineering process includes optimizing a design of the physical object based on a fitness function, wherein the fitness function is based on at least one of the calculated metric Q and the local similarity measure as a selection criterion.” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, further adjusting a design based on a performance metric.
Claim 11 Step 2A prong 2:
Under step 2A prong two, this judicial exception is not integrated into a practical application because there are no additional claim elements outside the abstract idea.
Claim 11 Step 2B:
The Examiner must consider whether each claim limitation individually or as an ordered combination amount to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as “apply it” or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations considered are directed towards field of use or insignificant extra-solution activity. See MPEP 2106.04(d) referencing MPEP 2106.05(h) and MPEP2106.05(g).
Considering the claim limitations as an ordered combination, claim 11 does not include significantly more than the abstract idea.
Claim 12 Step 2A prong 1:
The limitation “each of the plural description spaces is characterized by a single design feature ft or a group of design features ft,f, ..., wherein the group of design features ft, f ,... includes one of a set of design data parameters of the physical object, a set of geometrical features of the physical object, a set of performance values of the physical object for defined conditions, and a latent representation of a machine learning approach.” is an abstract idea because it is directed to a mental process, an observation, evaluation, judgment, or opinion. The limitation, as drafted and under broadest reasonable interpretation, “can be performed in the human mind or by a human using a pen and paper”. MPEP 2106.04(a)(2)(III). For example, a human could, mentally or on paper, determine a design with one or multiple design features.
Claim 12 Step 2A prong 2:
Under step 2A prong two, this judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present general field of use or insignificant extra-solution activity. In particular, the claim recites the additional limitations:
“wherein the dataset includes design data samples x1,...,xND of engineering design data, each data sample xi representing a design of the physical object,” (insignificant extra-solution activity – mere data gathering MPEP 2106.05(g)).
Claim 12 Step 2B:
The Examiner must consider whether each claim limitation individually or as an ordered combination amount to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as “apply it” or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations are considered directed towards field of use or insignificant extra-solution activity. See MPEP 2106.04(d) referencing MPEP 2106.05(h) and MPEP2106.05(g).
Considering the claim limitations as an ordered combination, claim 12 does not include significantly more than the abstract idea.
Claim 13 Step 2A prong 1:
The claim recites no further abstract ideas.
Claim 13 Step 2A prong 2:
Under step 2A prong two, this judicial exception is not integrated into a practical application because the additional claim limitations outside the abstract idea only present general field of use or insignificant extra-solution activity. In particular, the claim recites the additional limitations:
“wherein the machine learning approach is an auto-encoder or a principal/independent component analysis PCA/ICA.” (instructions to implement an abstract idea on a generic computer. See MPEP 2106.05(f) and July 2024 Subject Matter Eligibility Example 47 Claim 2).
Claim 13 Step 2B:
The Examiner must consider whether each claim limitation individually or as an ordered combination amount to significantly more than the abstract idea. This analysis includes determining whether an inventive concept is furnished by an element or a combination of elements that are beyond the judicial exception. For limitations that were categorized as “apply it” or generally linking the use of the abstract idea to a particular technological environment or field of use, the analysis is the same. The claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because the additional limitations are considered directed towards field of use or insignificant extra-solution activity. See MPEP 2106.04(d) referencing MPEP 2106.05(h) and MPEP2106.05(g).
Considering the claim limitations as an ordered combination, claim 13 does not include significantly more than the abstract idea.
Allowable Subject Matter
Claims 1-3 and 5-13 would be allowable if amended to overcome rejection under 35 USC 101.
The following is a statement of reasons for the indication of allowable subject matter:
Regarding claim 1, the prior art as exemplified by Lanfermann teaches the method of claim 1, however, the prior art of record fails to teach, alone or in obvious combination, “ calculating the local similarity measure as local mutual information measure defined by
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with the local similarity measure i (x; y), x and y are design data of the design data sample in the respective description spaces and p (x) defines a probability of occurrence of the characteristic data sample x in the first description space, and p (x I y) defines a probability of occurrence of the design data sample x in the first description space when observing the design data sample y in the second description space.
”, in combination with the other limitations of the claims.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to TROY A MAUST whose telephone number is (571)272-1931. The examiner can normally be reached on Monday-Friday from 8AM to 4PM.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Rehana Perveen, can be reached at telephone number (571) 272-3676. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/T.A.M./Examiner, Art Unit 2189
/REHANA PERVEEN/Supervisory Patent Examiner, Art Unit 2189
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