DETAILED ACTION
This action is in response to the amendments filed on Aug. 7th, 2026. A summary of this action:
Claims 1-2, 4-7 have been presented for examination.
Claims 1-2, 4-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement
Claims 1-2, 4-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of both a mathematical concept and mental process without significantly more.
The claims are not rejected under § 102/103. The closest reference of record is Alacoque, Lee, "Topology Optimization and Analysis of Thermal and Mechanical Metamaterials" (2020). Master’s Thesis. Embry-Riddle Aeronautical University. See §§ 2.2-2.3, 2.5-2.7, etc., noting also the equations, e.g. eq. 37-39 and accompanying description, 27-28 and accompanying description, and so on; as taken in view of Høj, Dennis, et al. "Ultra-coherent nanomechanical resonators based on inverse design." Nature communications 12.1 (2021): 5766 – page 6, section “Methods”, including the updating of the design variables and constraints using “MMA” and further see Alexandersen, Joe, and Boyan S. Lazarov. "Topology optimisation of manufacturable microstructural details without length scale separation using a spectral coarse basis preconditioner." Computer Methods in Applied Mechanics and Engineering 290 (2015): 156-182. Abstract and § 2.2 in particular eq. 5 as well as §§ 4.3-4.4. However, this does not fairly teach step S9.2 – S9.3 as taken in ordered combination with the remaining features of the claimed invention, nor does any other combination of the art of record.
This action is Final
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 .
Response to Arguments/Amendments
Regarding the objections
Withdrawn in view of amendment.
Regarding the § 101 Rejection
Maintained, updated as necessitated by amendment.
With respect to the remarks, the alleged improvement is in the abstract idea. MPEP § 2106.04(II)(A)(2): “Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").”.
To clarify, MPEP § 2106.04(I): “Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a new abstract idea is still an abstract idea") (emphasis in original)”
MPEP § 2106.05(a): “It is important to note, the judicial exception alone cannot provide the improvement.”.
With respect the amended subject matter, see rejection below for how it is treated.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.
Claims 1-2, 4-7 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention. The dependent claims inherit the deficiencies of the claims they depend upon.
See MPEP 2163(II)(A): "For example, in Hyatt v. Dudas, 492 F.3d 1365, 1371, 83 USPQ2d 1373, 1376-1377 (Fed. Cir. 2007), the examiner made a prima facie case by clearly and specifically explaining why applicant’s specification did not support the particular claimed combination of elements, even though applicant’s specification listed each and every element in the claimed combination. The court found the "examiner was explicit that while each element may be individually described in the specification, the deficiency was lack of adequate description of their combination" and, thus, "[t]he burden was then properly shifted to [inventor] to cite to the examiner where adequate written description could be found or to make an amendment to address the deficiency.""
Also, see MPEP 2163(I) for Lockwood v. Amer. Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d 1961, 1966 (Fed. Cir. 1997).
Claim 1 recites: “and manufacturing the turbine disk based on the optimal design variable set” – the specification does not sufficiently describe this step in this particular claimed combination. ¶ 3 merely describes that “topology optimization is widely used in industrial manufacturing”, but it does not sufficiently describe an act of manufacturing based on the optimal variable set at this particular point in the presently claimed combination of features. See fig. 1 to clarify on the lack of description on the particular combination of the features of this claimed combination including the manufacturing step.
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 1-7 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of both a mathematical concept and mental process without significantly more.
Step 1
Claim 1 is directed towards the statutory category of a process.
Step 2A – Prong 1
The claims recite an abstract idea of both a mental process and mathematical concept.
See MPEP § 2106.04: “...In other claims, multiple abstract ideas, which may fall in the same or different groupings, or multiple laws of nature may be recited. In these cases, examiners should not parse the claim. For example, in a claim that includes a series of steps that recite mental steps as well as a mathematical calculation, an examiner should identify the claim as reciting both a mental process and a mathematical concept for Step 2A Prong One to make the analysis clear on the record.”
To clarify, see the USPTO 101 training examples, available at https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility.
The abstract idea recited in claim 1 is:
discretizing a structure in a design domain, - math calculations/relationships/equations in textual form in the field of geometry of dividing a shape into “N” smaller shapes. See ¶ 58.
initializing design variables xe of discrete elements to form an initial design variable set, - math calculations/relationships/equations in textual form. See ¶¶ 58-64
carrying out an iterative design using a density method until an optimal design variable set is obtained, - math calculations in textual form. See ¶¶ 66-73
and smoothing the structure according to the optimal design variable set, - math calculations in textual form. See ¶¶ 58-125, i.e. the disclosure and later recited steps in the claim makes clear that this is directed towards a series of mathematical calculations, equations, and relationships. See ¶ 127 as well: “In this embodiment, the specific method is: for any element in the optimal design variable set, if Xe < 0.5, there is no material in the space where the element is located; if Xe > 0.5, the space here the element is located has all materials; if Xe = 0.5, then the element is located at the interface.” – this is also mental judgements in textual form, for a small enough variables set. To clarify,
Suppose
X
e
=
0.75
0.5
0.4
0.6
0.3
0.2
0.1
0.5
0.6
0.8
0.4
0.3
0.5
0.3
0.4
0.9
– a person is readily able to observe a matrix of values, and mentally judge whether entries in the matrix are greater than 0.5, equal to 0.5, or less then 0.5, and judge that when they are, for example, greater then, then the element at e is empty/”there is no material”.
wherein the design variables xe of all elements in all design variable sets satisfy 0≤xe≤1, - math calculations/relations in textual form. See ¶¶ 59-62
wherein the carrying out the iterative design comprises executing the following steps for each iteration:
S1 – math calculations in textual form. See ¶¶ 66-70
S2 – math calculations in textual form and mathematical prose.
S3 – math calculations in textual form and mathematical prose.
S4 – Math calculations/relationships/equations in textual form in textual form.
S5 - math calculations in textual form and mathematical prose.
S6 - math calculations in textual form and mathematical prose.
S7 - math calculations in textual form and mathematical prose.
S8 - math calculations in textual form and mathematical prose. See ¶¶ 88-90
S9 - math calculations in textual form and mathematical prose.
S9.1 - math calculations in textual form and mathematical prose.
S9.2 - math calculations in textual form and mathematical prose.
S9.3 - math calculations in textual form and mathematical prose.
S9.4 - Math calculations/relationships/equations in textual form in textual form.
S9.5 to S10 – math calculations in textual form and mathematical prose.
S11 – math calculations in textual form (the solving of the optimization problem, but for the mere instructions to do this on a computer using an MMA algorithm) as well as mental steps (solving the optimizing problem, but for the mere instructions to do this on a computer using an MMA algorithm) with the token additional element of obtaining and saving/storing the data (akin to what is discussed in MPEP § 2106.05(g): “that adding a final step of storing data to a process that only recites computing the area of a space (a mathematical relationship) does not add a meaningful limitation to the process of computing the area”) wherein the updating the design variables is math calculations in textual form (see ¶¶ 10; 21; 26)
S12 – mental steps of the judging (see ¶ 125, which conveys examples of mental judgements that may be performed, e.g. mentally compare two sets of variables for their values; mentally compare one number to another, checking the number of iterations that iterative calculations have performed (e.g. comparing the value of i to two other values) wherein this is also includes math calculations in textual form (¶ 125 for the “absolute value of the difference between all design variables in the design variable set formed in this iteration and that in the last iteration is less than the third threshold, which is set to 0.05.” – note: for a limited variable set, this can readily be done mentally, or with physical aids), wherein “and manufacturing the turbine disk based on the optimal design variable set;” is an additional element
The parallel computation is merely math calculations in textual form. ¶ 109: “In this embodiment, both the procedures are calculated in parallel.” To further clarify, the specification does not even recite the use of a generic computer or a generic processor to be used as a tool to perform this abstract idea.
To further clarify on the abstract nature of what is claimed, first see MPEP § 2106.05(a): “It is important to note, the judicial exception alone cannot provide the improvement.” And MPEP § 2106.04(II)(A)(2): “Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself.").”
See ¶ 46: “The main improvement of this invention is to improve the method for obtaining the relaxation coefficient c in step S9, including the calculation of CJ§ based on the predicted stress method from steps S9. l to S9.8. The influence of the existence of jagged boundaries and gray densities on the calculation of the structural stress field is reduced” – which is purely improvements in the math concept itself.
See ¶ 46 – “The most important thing is to decide whether to use linear penalty or nonlinear penalty for the elastic modulus of each element 25 according to the ratio of the number of elements with design variables less than 0.1 and greater than 0.9 to the total number of elements” – see step S9.2—S9.3 which is the math calculation in textual form and mathematical prose for this.
“Meanwhile, in step S7, the RAMP method is used to nonlinearly punish the Mises stress of each element. The penalty factor is set to -0.95, thus 5 improving the sensitivity of low-density elements under centrifugal loads and stress constraints, and conducive to topology optimization.” – see S7, again its math in textual form and mathematical prose.
¶ 46: “Introducing the predicted maximum stress can make full use of the allowable stress of materials, improve the quality of optimization design, and obtain a design scheme with a lighter mass than the prior art” – a bare conclusory assertation that the math itself may provide a range of benefits, simply because the math itself is improved. An improved abstract idea is still an abstract idea and ineligible. MPEP § 2106.04(I): “Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a new abstract idea is still an abstract idea") (emphasis in original)”
See ¶ 132 for more clarification that the improvements alleged are solely provided by improvements in the math concept itself, e.g. improving the value of the “relaxation coefficient c”, etc.
To further clarify, ¶ 4: “At the same time, the presence of centrifugal loads and the use of the SIMP method to punish Von Mises stress in step S7 will result in low sensitivity of flow-density elements, which is not conducive to topology optimization” and to clarify on this see ¶ 46: “Meanwhile, in step S7, the RAMP method is used to nonlinearly punish the Mises stress of each element. The penalty factor is set to -0.95, thus 5 improving the sensitivity of low-density elements under centrifugal loads and stress constraints, and conducive to topology optimization.” – then see ¶¶ 17-18 and ¶¶ 85-87, clarifying that this is a mathematical calculation with a mathematical equation, i.e. the abstract idea itself taken alone is what is alleged to provide the improvement, and it cannot furnish/provide the improvement by itself taken alone, for that is merely just a new abstract idea.
Under the broadest reasonable interpretation, the claim recites a mathematical concept – the above limitations are steps in a mathematical concept such as mathematical relationships, mathematical formulas or equations, and mathematical calculations. If a claim, under its broadest reasonable interpretation, is directed towards a mathematical concept, then it falls within the Mathematical Concepts grouping of abstract ideas. In addition, as per MPEP § 2106.04(a)(2): “It is important to note that a mathematical concept need not be expressed in mathematical symbols, because "[w]ords used in a claim operating on data to solve a problem can serve the same purpose as a formula." In re Grams, 888 F.2d 835, 837 and n.1, 12 USPQ2d 1824, 1826 and n.1 (Fed. Cir. 1989). See, e.g., SAP America, Inc. v. InvestPic, LLC, 898 F.3d 1161, 1163, 127 USPQ2d 1597, 1599 (Fed. Cir. 2018)”. See MPEP § 2106.04(a)(2).
Under the broadest reasonable interpretation, these limitations are process steps that cover mental processes including an observation, evaluation, judgment or opinion that could be performed in the human mind or with the aid of physical aids but for the recitation of a generic computer component. If a claim, under its broadest reasonable interpretation, covers a mental process but for the recitation of generic computer components, then it falls within the "Mental Process" grouping of abstract ideas. A person would readily be able to perform this process either mentally or with the assistance of physical aids. See MPEP § 2106.04(a)(2).
To clarify, see the USPTO 101 training examples, available at https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility. In particular, with respect to the physical aids, see example # 45, analysis of claim 1 under step 2A prong 1, including: “Note that even if most humans would use a physical aid (e.g., pen and paper, a slide rule, or a calculator) to help them complete the recited calculation, the use of such physical aid does not negate the mental nature of this limitation.”; also see example # 49, analysis of claim 1, under step 2A prong 1: “Moreover, the recited mathematical calculation is simple enough that it can be practically performed in the human mind. Even if most humans would use a physical aid, like a pen and paper or a calculator, to make such calculations, the use of a physical aid would not negate the mental nature of this limitation.”
As such, the claims recite an abstract idea of both a mental process and mathematical concept.
Step 2A, prong 2
The claimed invention does not recite any additional elements that integrate the judicial exception into a practical application. Refer to MPEP §2106.04(d).
Should the discretizing be found not to be part of the abstract idea, it would be mere data gathering using commonplace readily available commercial software in its ordinary capacity – see ¶ 130: “The ANSYS software is used to generate the body-fitted mesh and then conduct the finite element analysis” – wherein ¶ 130 conveys this is WURC by its use of commercially available software.
As discussed above, the claim also recites a step of obtaining and storing after the calculations, which is mere data gathering as a token post-solution activity that does not meaningful alter the nature of the calculations themselves nor provide a practical application, rather its akin to “For example, an examiner could explain that adding a final step of storing data to a process that only recites computing the area of a space (a mathematical relationship) does not add a meaningful limitation to the process of computing the area” per MPEP § 2106.05(g).
As also discussed above, the use of the moving asymptote algorithm is considered as part of the mere instructions to do it on a computer with a commonplace algorithm. To clarify, the specification (¶ 124) does not provide any details on this algorithm or how it is to perform the claimed step, but rather merely conveys the use of a generic algorithm as a tool to automate an abstract idea.
The recitation of “and manufacturing the turbine disk based on the optimal design variable set;” is considered as mere instructions to apply it as well as an insignificant application, akin to the cutting of hair with scissors in In re Brown, 645 Fed. App'x 1014, 1016-1017 (Fed. Cir. 2016) (non-precedential) as discussed in MPEP § 2106.05(g and f). See ¶ 2 of the instant specification as well, for there is no asserted improvement in the manufacturing itself.
A claim that integrates a judicial exception into a practical application will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception. See MPEP § 2106.04(d).
MPEP 2106.04(II)(A)(2) “…Instead, under Prong Two, a claim that recites a judicial exception is not directed to that judicial exception, if the claim as a whole integrates the recited judicial exception into a practical application of that exception. Prong Two thus distinguishes claims that are "directed to" the recited judicial exception from claims that are not "directed to" the recited judicial exception…Because a judicial exception is not eligible subject matter, Bilski, 561 U.S. at 601, 95 USPQ2d at 1005-06 (quoting Chakrabarty, 447 U.S. at 309, 206 USPQ at 197 (1980)), if there are no additional claim elements besides the judicial exception, or if the additional claim elements merely recite another judicial exception, that is insufficient to integrate the judicial exception into a practical application. See, e.g., RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself."). For a claim reciting a judicial exception to be eligible, the additional elements (if any) in the claim must "transform the nature of the claim" into a patent-eligible application of the judicial exception, Alice Corp., 573 U.S. at 217, 110 USPQ2d at 1981, either at Prong Two or in Step 2B” and MPEP § 2106(I): “Mayo, 566 U.S. at 80, 84, 101 USPQ2dat 1969, 1971 (noting that the Court in Diamond v. Diehr found “the overall process patent eligible because of the way the additional steps of the process integrated the equation into the process as a whole,”” – and see MPEP § 2106.05(e).
To further clarify, MPEP § 2106.04(II)(A)(1): “Alice Corp., 573 U.S. at 216, 110 USPQ2d at 1980 (citing Mayo, 566 US at 71, 101 USPQ2d at 1965). Yet, the Court has explained that ‘‘[a]t some level, all inventions embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas,’’ and has cautioned ‘‘to tread carefully in construing this exclusionary principle lest it swallow all of patent law” See also Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335, 118 USPQ2d 1684, 1688 (Fed. Cir. 2016) ("The ‘directed to’ inquiry, therefore, cannot simply ask whether the claims involve a patent-ineligible concept, because essentially every routinely patent-eligible claim involving physical products and actions involves a law of nature and/or natural phenomenon").”
As a point of clarity, RecogniCorp, LLC v. Nintendo Co., 855 F.3d 1322, 1327, 122 USPQ2d 1377 (Fed. Cir. 2017) ("Adding one abstract idea (math) to another abstract idea (encoding and decoding) does not render the claim non-abstract"); Genetic Techs. Ltd. v. Merial LLC, 818 F.3d 1369, 1376, 118 USPQ2d 1541, 1546 (Fed. Cir. 2016) (eligibility "cannot be furnished by the unpatentable law of nature (or natural phenomenon or abstract idea) itself." discussed in MPEP § 2106.04(II)(A)(2) as well as MPEP § 2106.04(I): “Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1151, 120 USPQ2d 1473, 1483 (Fed. Cir. 2016) ("a new abstract idea is still an abstract idea") (emphasis in original).
The claimed invention does not recite any additional elements that integrate the judicial exception into a practical application. Refer to MPEP §2106.04(d).
Step 2B
The claimed invention does not recite any additional elements/limitations that amount to significantly more.
Should the discretizing be found not to be part of the abstract idea, it would be mere data gathering using commonplace readily available commercial software in its ordinary capacity – see ¶ 130: “The ANSYS software is used to generate the body-fitted mesh and then conduct the finite element analysis” – wherein ¶ 130 conveys this is WURC by its use of commercially available software.
Should the discretizing be found not to be part of the abstract idea, it would be mere data gathering using commonplace readily available commercial software in its ordinary capacity – see ¶ 130: “The ANSYS software is used to generate the body-fitted mesh and then conduct the finite element analysis” – wherein ¶ 130 conveys this is WURC by its use of commercially available software.
As discussed above, the claim also recites a step of obtaining and storing after the calculations, which is mere data gathering as a token post-solution activity that does not meaningful alter the nature of the calculations themselves nor provide a practical application, rather its akin to “For example, an examiner could explain that adding a final step of storing data to a process that only recites computing the area of a space (a mathematical relationship) does not add a meaningful limitation to the process of computing the area” per MPEP § 2106.05(g). This is considered similar to the example WURC activity as discussed in MPEP § 2106.05(d)(II) of: “iii. Electronic recordkeeping, Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 225, 110 USPQ2d 1984 (2014) (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;”
As also discussed above, the use of the moving asymptote algorithm is considered as part of the mere instructions to do it on a computer with a commonplace algorithm. To clarify, the specification (¶ 124) does not provide any details on this algorithm or how it is to perform the claimed step, but rather merely conveys the use of a generic algorithm as a tool to automate an abstract idea. This is also considered WURC in view of the generic manner that this is described in, as a specification preferably omits what is well-known in the art.
The recitation of “and manufacturing the turbine disk based on the optimal design variable set;” is considered as mere instructions to apply it as well as an insignificant application, akin to the cutting of hair with scissors in In re Brown, 645 Fed. App'x 1014, 1016-1017 (Fed. Cir. 2016) (non-precedential) as discussed in MPEP § 2106.05(g and f). See ¶ 2 of the instant specification as well, for there is no asserted improvement in the manufacturing itself, and ¶ 2 conveys it is WURC. Additional WURC evidence includes:
Alacoque, Lee, "Topology Optimization and Analysis of Thermal and Mechanical Meta materials" (2020). Master's Thesis. Embry-Riddle Aeronautical University. See § 1
Wang, Cunfu. Boundary control in multiphysics topology optimization for advanced manufacturing. The University of Wisconsin-Madison, 2020. § 1.1
Alacoque, Lee, Ryan T. Watkins, and Ali Y. Tamijani. "Stress-based and robust topology optimization for thermoelastic multi-material periodic microstructures." Computer methods in applied mechanics and engineering 379 (2021): 113749. Abstract and § 1.
MPEP § 2106.07(a)(III): “(A) A citation to an express statement in the specification or to a statement made by an applicant during prosecution that demonstrates the well-understood, routine, conventional nature of the additional element(s). A specification demonstrates the well-understood, routine, conventional nature of additional elements when it describes the additional elements as well-understood or routine or conventional (or an equivalent term), as a commercially available product, or in a manner that indicates that the additional elements are sufficiently well-known that the specification does not need to describe the particulars of such additional elements to satisfy 35 U.S.C. 112(a).”
To clarify, see MPEP § 2164.01: “A patent need not teach, and preferably omits, what is well known in the art. In re Buchner, 929 F.2d 660, 661, 18 USPQ2d 1331, 1332 (Fed. Cir. 1991); Hybritech, Inc. v. Monoclonal Antibodies, Inc., 802 F.2d 1367, 1384, 231 USPQ 81, 94 (Fed. Cir. 1986), cert. denied, 480 U.S. 947 (1987); and Lindemann Maschinenfabrik GMBH v. American Hoist & Derrick Co., 730 F.2d 1452, 1463, 221 USPQ 481, 489 (Fed. Cir. 1984).”
Also see MPEP § 2163(II)(A)(3)(a): “What is conventional or well known to one of ordinary skill in the art need not be disclosed in detail. See Hybritech Inc. v. Monoclonal Antibodies, Inc., 802 F.2d at 1384, 231 USPQ at 94. See also Capon v. Eshhar, 418 F.3d 1349, 1357, 76 USPQ2d 1078, 1085 (Fed. Cir. 2005) ("The ‘written description’ requirement must be applied in the context of the particular invention and the state of the knowledge…. As each field evolves, the balance also evolves between what is known and what is added by each inventive contribution."). If a skilled artisan would have understood the inventor to be in possession of the claimed invention at the time of filing, even if every nuance of the claims is not explicitly described in the specification, then the adequate description requirement is met.”
The claimed invention is directed towards an abstract idea of both a mathematical concept and a mental process without significantly more.
Regarding the dependent claims
Claim 2 – part of the abstract idea as discussed above.
Claim 4 – math calculations in textual form as discussed above
Claim 5 – mental steps as discussed above
Claim 6 – mental steps and math calculations as discussed above
Claim 7 – merely specifying a value of a variable for use in the abstract idea
The claimed invention is directed towards an abstract idea of both a mathematical concept and a mental process without significantly more.
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 DAVID A. HOPKINS whose telephone number is (571)272-0537. The examiner can normally be reached Monday to Friday, 10AM to 7 PM EST.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Ryan Pitaro can be reached at (571) 272-4071. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/David A Hopkins/Primary Examiner, Art Unit 2188
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