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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 7/20/2026 has been entered.
Claims Status
Claim 13 has been amended.
Claims 1-12 and 19-23 remain withdrawn.
Claims 13-18 are pending and rejected.
Terminal Disclaimer
The terminal disclaimer filed on 6/25/2024 disclaiming the terminal portion of any patent granted on this application which would extend beyond the expiration date of the US Patent numbers or US Application Numbers listed therein was received, however, the terminal disclaimer was not accepted. Please follow the instructions provided on the response mailed 11/20/2025 to resubmit the terminal disclaimer.
Response to Arguments
Double Patenting Rejection
Applicant’s terminal disclaimer, filed 6/25/2024, was disproved on 11/20/2025. Please resubmit the terminal disclaimer according to the instructions provided in the disapproval. The double patenting rejection is restated below for completeness of record.
35 USC 101 rejection
Applicant's arguments with respect to the rejection of claims 13-18 under 35 USC 101, as being directed to a judicial exception, have been fully considered but are not persuasive, in view of MPEP 2106. The rejection under 35 USC 101 is explained in further detail below.
The Examiner asserts that the claims, as currently written, are abstract and directed to a judicial exception. The present claims merely set forth a process for providing pricing information, which is considered to be an abstract idea as it relates to ‘certain methods of organizing human activity,’ namely marketing or sales activities or behaviors.
Examiner notes that although claim 13 may use technology (i.e. an electronic device, etc.) to perform steps related to solving a problem, the claim does not amount to a ‘technical improvement’ as the technology (i.e. a computer or other machinery) is merely used in its ordinary capacity for economic or other tasks (e.g., to store, process, receive and transmit data). Further clarification with regards to the technical nature of specific steps may assist with the analysis of these claims.
Applicant is reminded that under Step 2A of the Mayo framework claim is considered “directed to” an abstract idea when the exception is recited in the claim (i.e. the claim sets forth or describes the exception) (see MPEP 2106.04(a)).
It is also pertinent to remind Applicant that the courts have declined to define abstract ideas, other than by example. The MPEP instructs examiners to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract (see MPEP 2106.04(a)).
With this in mind, the Examiner asserts that appropriate comparisons have been made for determining whether the claims are directed to a judicial exception under step 2A of the Mayo framework. Application’s arguments with respect to the determination under step 2A are not persuasive. The determination under step 2A has been maintained.
The Examiner further maintains that the claims do not purport to improve the functioning of the computer itself or effect an improvement in any other technology or technical field. Although Applicant argues (Remarks, p. 6) that the claimed subject matter provides an improvement to the technology of order handling, there is still no improvement to the computer itself or a technical field. Admittedly, streamlining order handling improves a user experience, but adding features such as these do not impart any functional change to the computer itself, nor any improvement to another technology or technical field.
The additional elements are merely recited at a high level of generality and amount to little more than the mere instructions to implement an abstract idea on a computer or similar hardware. Further, these elements represent little more than a general link to a technological environment (i.e. a mere attempt to restrict use of the idea to a technical environment such as the Internet or computer networks – see Ultramercial, Inc. v. Hulu, LLC) as currently written. In each case, the courts have found such limitations insufficient to qualify as “significantly more” when recited in a claim with a judicial exception (see MPEP 2106.05(A)).
As written, the claims fail to be significantly more than the abstract idea because the claims use a computer or other machinery in its ordinary capacity for economic or other tasks or simply add a general purpose computer or computer components after the fact to an abstract idea. Therefore, the claims continue to be viewed as examples of an abstract idea without significantly more and thus lack subject matter eligibility.
Additionally, where certain dependent claims rely upon similar additional elements as recited in claim 13 these do not result in significantly more than the abstract idea itself. The additional elements of the dependent claims are treated at least similarly as those discussed above with respect to claim 13.
Even when viewed as an ordered combination, the dependent claims simply convey the abstract idea itself applied on a generic computer and are held to be ineligible under Steps 2A/2B of the Mayo framework at least similar rationale as discussed above regarding claim 13.
In view of the above, the Examiner concludes that there are no meaningful limitations in the claim that transform the judicial exception into a patent eligible application such that the claim amounts to significantly more than the judicial exception itself.
The analysis above applies to all statutory categories of invention. For at least these reasons above, the rejections under 35 USC 101 have been maintained and are explained in further detail below.
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.
Claims 13-18 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Step 1:
Claims 13-18 are directed to a method, which is a process. Therefore, claims 13-18 are directed to one of the four statutory categories of invention.
Step 2A (Prong 1):
Claim 13 sets forth the following limitations which recite the abstract idea of providing pricing information:
receiving an initial file associated with at least one 3D object to be formed;
determining, based on the initial file, a design change for the at least one 3D object to be formed based on a received parameter selection data associated with a selection by a user of at least one parameter for the at least one 3D object;
creating a modified version of the initial file comprising the design change;
calculating a price quote based on the modified version of the initial file;
generating a price quote based on the calculation; and
accepting the price quote.
The recited limitations above set forth a process for providing pricing information. These limitations amount to certain methods of organizing human activity, including commercial or legal interactions (e.g. advertising, marketing or sales activities or behaviors).
Such concepts have been identified by the courts as abstract ideas (see: MPEP 2106).
Step 2A (Prong 2):
Examiner acknowledges that representative claim 13 does recite additional elements, such as: a server, a client device, etc.
Taken individually and as a whole, claim 13 does not integrate the recited judicial exception into a practical application of the exception. The claim merely includes instructions to implement an abstract idea on a computer, or to merely use a computer as a tool to perform an abstract idea (i.e. a generic computer component) (see MPEP 2106.05(f)), while the additional elements do no more than generally link the use of a judicial exception to a particular field of technological environment or field of use (i.e. 3D printing) (see MPEP 2106.05(h)).
Furthermore, this is also because the claim fails to (i) reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, (ii) implement a judicial exception with a particular machine, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) apply the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.
In view of the above, under Step 2A (Prong 2), claim 13 does not integrate the recited exception into a practical application (see again: MPEP 2106).
Step 2B:
Claim 13, when taken individually or as a whole, the additional elements of claim 13 do not provide an inventive concept (i.e. whether the additional elements amount to significantly more than the exception itself). As discussed above with respect to integration of the abstract idea into a practical application, the additional elements using a server of client device to perform the receiving, determining, creating, calculating, generating, and accepting steps amount to no more than mere instructions to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. Certain additional elements would also recite well-understood, routine, and conventional activity (See MPEP 2106.05(d)).
Even if considered as an ordered combination, the additional elements of claim 13 do not add anything further than when they are considered individually.
In view of the above, claim 13 does not provide an inventive concept under step 2B, and is ineligible for patenting.
Dependent claims 14-18 recite further complexity to the judicial exception (abstract idea) of claim 13, such as by further defining the process for providing pricing information. Thus, each of claims 14-18 are held to recite a judicial exception under Step 2A (Prong 1) for at least similar reasons as discussed above.
Therefore, dependent claims 14-18 do not add “significantly more” to the abstract idea. The dependent claims recite additional functions that describe the abstract idea and any potential additional elements would only generally link the abstract idea to a particularly technological environment, or be applied on a generic computer. Further, the additional limitations fail to provide an improvement to the functioning of a computer, another technology, or a technical field.
Even when viewed as an ordered combination, the dependent claims simply convey the abstract idea itself applied on a generic computer and are held to be ineligible under Steps 2A/2B for at least similar rationale as discussed above regarding claim 13.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to Anand Loharikar whose telephone number is 571-272-8756. The examiner can normally be reached Monday through Friday, 9am – 5pm.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Marissa Thein can be reached at 571-272-6764. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/ANAND LOHARIKAR/Primary Examiner, Art Unit 3689
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