DETAILED ACTION
Response to Remarks
1. Applicant’s remarks (see pgs. 25-30 of Remarks), filed 03/13/2026, with respect to the rejection of the claims under 35 U.S.C. 112(b) and the rejection of claims under 35 U.S.C. 102 have been fully considered and are persuasive by virtue of Applicant’s arguments combined with the amendments to the respective claims (see claims filed 03/13/2026). Therefore, these grounds of rejection have been withdrawn.
2. Applicant’s remarks (see pgs. 21-24), filed 03/13/2026, regarding the rejection of claims 1-7 under 35 U.S.C 101 have been fully considered but they are not persuasive.
Applicant appears to make arguments that “the applicant's claimed invention includes, for example, "a light source," "a mirror," and "reflecting surface of the mirror". Clearly, the inclusion of multiple necessary hardware are combined together and are made to function such that the applicant's claimed method functions; and thereby making it further clear that the applicant's invention is not to be regarded as an abstract idea, a law of nature, or a natural phenomenon; and should therefore fall within statutory patentable subject matter under 35 U.S.C. §101” (pg. 22 of Remarks). Applicant further asserts that claim 1 has been amended “so as to make more clear in the claim language that the applicant's instant claimed invention relates to hardware (and is not a mere abstract concept). More particularly, independent claim 1 has been amended herein to highlight the claimed step of: "obtaining an equation (design equation) indicating a shape of the first reflecting surface and an equation (design equation) indicating a shape of the second reflecting surface, respectively” (pg. 24 of Remarks). Examiner respectfully disagrees for the following reasons. The claims invention fails to positively recite any of the structures cited by Applicant such as "a light source," "a mirror," and "reflecting surface of the mirror”. In actuality, amended claim 1 recites “obtaining an equation (design equation) indicating a shape of the reflecting surface based on the coordinates and a condition that an optical path length from a light source position to a light collection position”, wherein the characterization of the coordinate system comprising optical axes, planes, intersection points of simulated light rays amount to parameters providing an input for the for the subsequent mathematical calculations of the reflecting surface design equation. See In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989). Applicant’s statement that “the claim language is not merely about designing a mirror using an equation, but rather obtaining, as an equation, each shape of the first reflecting surface and the second reflecting surface of the mirror” (pgs. 24-25) fails to take into account that the claim(s) as a whole are directed to a mathematical formula wherein Applicant argues that one of the parameters of said formula is the claimed invention. Thus, the claimed mathematical relationships, within the design equation, between the parameters representative of "a light source," "a mirror," and "reflecting surface of the mirror" (as alleged by Applicant) do not result in the claimed method being directed to any physical processes, i.e., the recited design equation “indicating a shape of the reflected surface” does not amount to positively reciting the physical structure of the mirror (and its two surfaces). The invention as a whole claims a method of design in which the design equation representing a surface is written in text format. Furthermore, such a generally recited design equation based on coordinate system transformations could easily be performed by the human mind, in addition to the mathematical calculations based on parameter conditions that are input into the design formula as recited in claims 2-7, which could be performed mentally or with pen and paper. See Parker v. Flook, 437 U.S. at 586, 198 USPQ at 196. Thus, Applicant’s amendments to claim 1 are insufficient to overcome the Examiner's factual findings that the claims remain directed to an ineligible abstract idea. Applicant’s arguments are not reflected in the present claim language in that the various hardware structures being referred to are not positively claimed. Therefore, Examiner maintains that the claimed method only encompasses mathematical calculations combined with mental processes as discussed supra, without significantly more.
Applicant appears to make arguments that “With respect to our reliance on the applicant's specification in support of the requisite "practical application," we refer to the recent case of Ex parte Desjardins (Appeal No. 2024- 000567) decided by the U.S. PTO Appeals Review Panel of the Patent Trial and Appeal Board issued on September 26, 2025… Similarly, in the applicant's instant application, the applicant respectfully refers the Examiner to, for example, the applicant's paragraphs [0033-35], which discusses the invention's advantages or benefits resulting in the requisite improvement of the applicant's claimed invention, in support of the claimed invention's requisite "practical application." (pg. 24 of Remarks). However, the Examiner notes that in Ex parte Desjardins, the claimed invention is directed to a method of training a machine learning model on a series of tasks, wherein the ARP determined that the specification identified improvements as to how the machine learning model itself operates, including training a machine learning model to learn new tasks while protecting knowledge about previous tasks to overcome the problem of “catastrophic forgetting” encountered in continual learning systems, thereby integrating the claims as a whole into a practical application at Step 2A Prong Two (italicized for emph.). In contrast, the instant application’s claims bear no relevance to training machine learning model or an integration of practical application at Step 2A by virtue of an improvement to the functioning of a computer (or other technology). Rather, the claims as a whole recite details directed to “obtaining an equation”, i.e., a design formula of reflecting surfaces wherein a plurality of intersection points and displacements are expressed, followed by recitation of mathematical conditions correlating the optical path length with the simulated light collection and light source positions, wherein the properties of the simulated light beams such as incoming and outgoing light beams are inputted as parameter(s) into said formula. Thus, the present claims are not analogous to Ex parte Desjardins and the instant claimed invention fails to satisfy any practical applications outside the judicial exception (see MPEP § 2106.04). Furthermore, ¶0033-35 of the instant specification is directed to the advantages of employing a single mirror structure within the optical system (see ¶0033 stating “a light source position and a light collection position can be independently set in the vertical direction and the horizontal direction, and thereby a single mirror enabling free conversion of astigmatism can be manufactured”). However, ¶0033-35 of the specification is not reflected anywhere in the present claim language because the present claim language does not require the mirror structure nor do the claims recite any physical processes; rather, the claims recite a method of design by “obtaining a design equation” representing a first reflecting surface and a second reflecting surface (see claims filed 03/13/2026). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See MPEP § 2145 Section VI, citing In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993) and Constant v. Advanced Micro-Devices, Inc., 848 F.2d 1560, 1571-72, 7 USPQ2d 1057, 1064-1065 (Fed. Cir.), cert. denied, 488 U.S. 892 (1988). The claimed invention as a whole encompasses a method of design which amounts to obtaining data followed by organizing and manipulating information through mathematical correlations, all of which can be performed mentally or by hand. See Parker v. Flook, 437 U.S. 584, 198 USPQ 193 (1978), wherein the Supreme Court noted that the "patent application does not purport to contain any disclosure relating to the chemical processes at work, the monitoring of process variables, or the means of setting off an alarm or adjusting an alarm system." 437 U.S. at 586, 198 USPQ at 195. The Court found this failure to explain any specifics of how to use the claimed formula informative when deciding that the additional elements in the claim were insignificant post-solution activity and thus not meaningful enough to render the claim eligible. 437 U.S. at 589-90, 198 USPQ at 197. Thus, the Examiner maintains that the claims provide no actual or practical applications, and recite the abstract idea of the mental processes of calculating a design formula for the mirror surfaces, without reciting any additional details. Therefore, Applicant fails to provide any factual basis for the conclusion that the claims are directed to an improvement to the functioning of a computer or to any other technology.
In conclusion, as explained above, none of Applicant’s arguments against the rejection of claims under 35 U.S.C. 101 are persuasive, and thus Claims 1-7 remain rejected, as detailed below.
Claim Objections
The claims are objected to because of the following informalities:
Parenthetical expressions (underlined) in Claim 1 should be removed to avoid confusion with respect to claim scope (see MPEP § 608.01(m)): “...obtaining an equation (design equation) indicating a shape of the first reflecting surface and an equation (design equation) indicating a shape of the second reflecting surface, respectively, based on: the coordinates; a condition that an optical path length from a light source position to a virtual light collection position is constant with respect to...”.
Appropriate correction is required.
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 in the form of mathematical calculations combined with mental processes, without significantly more. Claims 1-7 recite(s) a method of characterizing properties of virtual light beams such as simulated incoming and outgoing light beams, wherein the light beam(s) characterization is inputted as parameter(s) into reflecting surface(s) design formula. Furthermore, the method encompasses defining coordinate axes wherein a plurality of intersection points and displacements are expressed, followed by recitation of mathematical conditions correlating the optical path length with the light collection and light source positions comprised within a design formula. Specifically, the characterization of the coordinate system comprising optical axes, planes, intersection points of simulated light rays (i.e., “virtual light rays” as recited in claims 1-3) amounts to an extra-solution activity of mere data-gathering to provide an input for the for the subsequent mathematical calculations of the reflecting surface(s) design formula i.e., “obtaining an equation (design equation) indicating a shape of the first reflecting surface and an equation (design equation) indicating a shape of the second reflecting surface, respectively, based on: the coordinates; a condition that an optical path length from a light source position to a light collection position is constant with respect to any point on the reflecting surface…”, as recited in amended claim 1. See In re Grams, 888 F.2d 835, 839-40; 12 USPQ2d 1824, 1827-28 (Fed. Cir. 1989). Furthermore, such a generally recited design formula based on coordinate system definitions followed by coordinate transformations could easily be performed by the human mind, in addition to the mathematical calculations based on relative parameter conditions within said coordinate system that are input into the design formula as recited in claims 2-7, which could be performed mentally or with pen and paper. See Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016). See also MPEP § 2106.04(a)(2).1IL.B: “If a claim recites a limitation that can practically be performed in the human mind, with or without the use of a physical aid such as pen and paper, the limitation falls within the mental processes grouping, and the claim recites an abstract idea.”; see also Synopsys, 839 F.3d at 1139, 120 USPQ2d at 1474 (holding that claims to the mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Thus, the instant claims 1-7 are directed to an ineligible abstract idea.
The Court has repeatedly determined in similar cases that such mathematical correlations are a judicial exception to patent eligibility and directed to an abstract idea. See Digitech Image Techs., LLC v. Electronics for Imaging, Inc., 758 F.3d 1344, 1350, 111 USPQ2d 1717, 1721 (Fed. Cir. 2014). In the present case, the judicial exception is not integrated into a practical application because the claims provide no actual or practical applications, and recite the abstract idea of the mental processes of calculating a formula based on coordinate transformations and characterization of simulated incoming and outgoing light ray beam(s), without reciting any additional details. Furthermore, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because those additional elements that do appear merely list the steps of the abstract idea and/or express the steps of the abstract idea in terms of other parameters. Specifically, the method step of weighting the first, second, and third formulas expressed by orthogonal coordinate system uvw (which is defined in terms of the x1y1z1-x3y3z3 coordinate systems) derived from optical path length conditions as recited in claims 4-6 does not positively require any reflecting surface(s) and/or a mirror, but merely amounts to obtaining data, organizing, inputting and manipulating information through mathematical calculations in the form of coordinate transformations of optical axes of simulated incoming/outgoing light beams, all of which can be performed mentally or by hand. Similarly, the method further comprising setting the magnification MS and Mm (for the light collection along sagittal and meridional directions, respectively) via formulas expressed in terms of LA2m and LA2s (see claim 7) also does not add a meaningful limitation to the process of mere manipulating information through mathematical correlations in the form of defining intersection points and distances therebetween, as recited and encompassed by the claims. Therefore, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Claims 2-7 are rejected as being dependent upon claim 1, and fail to cure the deficiencies of the rejected base claim, as the claims do not add any additional elements beyond method steps drawn to the abstract idea (discussed supra). As such, newly amended claims 1-7 do not raise the abstract idea to the level of patentable subject matter.
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 extension fee 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.
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/SAMANVITHA SRIDHAR/Examiner, Art Unit 2872
/BUMSUK WON/Supervisory Patent Examiner, Art Unit 2872
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