DETAILED ACTION
This office action addresses Applicant’s response filed on 29 December 2025. Claims 1-23 are pending.
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
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 1-23 are rejected under 35 U.S.C. 101 because the claimed invention is directed to non-statutory subject matter. The claim(s) does/do not fall within at least one of the four categories of patent eligible subject matter because a design is merely information per se and/or non-functional descriptive material, and does not fall within one of the four statutory categories of process, machine, manufacture, or composition of matter.
Claim Rejections - 35 USC § 102
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)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claim(s) 1-23 is/are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Teig (US 7,310,793).
As discussed above in the § 101 rejection, claims 1-23 are wholly directed to a design, which is information per se and/or non-functional descriptive material. All features of the design are mere informational content, and do not have a functional or structural relationship with anything, let alone a new and non-obvious functional/structural relationship, since the claims are directed to only the design itself. Thus, no feature of the claimed design has patentable weight. See MPEP § 2111.05. Teig discloses an integrated circuit design representing a design of an IC that is manufactured over a substrate comprising a plurality of routes defined by one or more electronic design automation (EDA) routers (col. 1, lines 55-56; col. 2, lines 16-17 and 34-36).
Response to Arguments
Applicant's arguments filed 29 December 2025 have been fully considered but they are not persuasive.
Applicant asserts that Fujimura fails to disclose an IC design comprising various features, and instead discusses mask designs and manufactured ICs. Remarks 7. The examiner disagrees. First, Applicant has ignored the rejection. Fujimura does not need to recite any of the features of the IC design to anticipate the claim, because, as explained in the rejection, the IC design is non-functional descriptive material and no feature of the design as patentable weight. Second, Fujimura clearly and explicitly discloses an IC design, not just mask designs and manufactured ICs; cited. Fig. 11 explicitly illustrates “I.C. Circuit Design” 1120, independent of “Mask Design” 1128 or “Wafer Image” 1148. Thus, Applicant’s assertion is plainly contradicted by Fujimura.
Applicant asserts that the claims recite statutory subject matter because “an IC design with the limitations recited in claim 1” is not an abstract idea. Remarks 8. The examiner disagrees. The § 101 rejection is not an abstract idea rejection. The claims are non-statutory because a “design” is merely information per se and does not fall within a statutory category. For the same reasons, amending the claims to recite that the routes are defined by EDA routers has no impact on the eligibility of the claim, because the claim is to the design itself, rather than a method of producing the design. The design itself (information per se) is ineligible regardless of how the design is produced.
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 ARIC LIN whose telephone number is (571)270-3090. The examiner can normally be reached M-F 07:30-17:00 ET.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jack Chiang can be reached at 571-272-7483. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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4 February 2026
/ARIC LIN/ Examiner, Art Unit 2851
/JACK CHIANG/ Supervisory Patent Examiner, Art Unit 2851