DETAILED ACTION
Response to Arguments
Applicant's arguments filed 3/16/2026 have been fully considered but they are not persuasive.
Applicant argues that the amended claims are no longer directed to an abstract idea. Examiner disagrees as the claims continue to recite abstract ideas without significantly more. Specifically, for example claim 1, recites a computer receiving first and second information (including data for the target pattern or the shot region), and performing a correction on target pattern data, following calculation of a value (e.g. cost value) to generate data (e.g. drawing data of the mask pattern). The broadest reasonable interpretation of these limitations amount to data manipulation and mathematical concepts (calculating a pattern data or calculating a value) which are not patent-eligible without significantly more.
Specifically, applicant argues that the claims do not recite a judicial exception relating to a mathematical concept (see pages 11-14 of remarks filed 3/16/2026), Examiner disagrees as the claim is drawn to a data generation apparatus where the computer is configured to receive information and apply mathematical equations (e.g. calculating a cost value found in paragraphs [0034-0037] of the instant application) to generate drawing data of a mask pattern data. While the claims do not explicitly recite the disclosed formula, MPEP 2106.04(a)(2) states: “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) (holding that claims to a ‘‘series of mathematical calculations based on selected information’’ are directed to abstract ideas)” As such, the claim recites a mathematical concept which is directed to an abstract idea and is not directed to a judicial exception. See also MPEP 2106.04(a)(2)(B).
Applicant further argues that a practical application is integrated (see pages 14-17 of the remarks filed 3/16/2026). Examiner disagrees as the claim is drawn to manipulation of the design of the photomask in an abstract way without resulting in significantly more. Specifically, the claim is reciting forming a design data of a mask pattern on a computer in an electronic format, but does not implement the instructions with a particular machine or manufacture that is integral to the claim or effecting a transformation of a particular article to a different state or thing (see MPEP 2106.04(d)(I).
Applicant further argues that the claims recite “significantly more” (see pages 17-20 of the remarks filed 3/16/2026) as the claim is directed to specify a mask pattern data under concrete tool constraints. Examiner disagrees as claim merely recites generating drawing data based on an updated mask pattern data for use in a beam drawing process. MPEP 2106.05(A) recites: “Limitations that the courts have found not to be enough to qualify as "significantly more" when recited in a claim with a judicial exception include:
i. Adding the words "apply it" (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, e.g., a limitation indicating that a particular function such as creating and maintaining electronic records is performed by a computer, as discussed in Alice Corp., 573 U.S. at 225-26, 110 USPQ2d at 1984 (see MPEP § 2106.05(f))”
Applicant further argues that the amended claims overcome the rejection of 35 USC 112(a) as lacking support in the written description. Examiner disagrees as the amended claims recite “in response to the cost value greater than a threshold”. However, the specification is still lacking a way for a person of ordinary skill in the art to determine how such an arbitrary threshold is determined.
Applicant’s arguments, filed 3/16/2026, with respect to the 102/103 rejections have been fully considered and are persuasive. The rejection of the 102/103 rejections have been withdrawn.
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 1-13 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea of mathematical concepts (e.g. design a target pattern, calculate a cost function, generating mask pattern data) without significantly more. The claims recite an apparatus, comprising a computer wherein the computer designs, evaluates, and converts data. This judicial exception is not integrated into a practical application because the generically recited computer elements do not add a meaningful limitation to the abstract idea because they amount to simply implementing the abstract idea on a computer (see MPEP 2106.05(f)). Furthermore, the claims recite a mathematical calculation for calculating a cost value using a cost function. While the claims do not explicitly disclose a formula, MPEP 2106.04(a)(2) states: “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) (holding that claims to a ‘‘series of mathematical calculations based on selected information’’ are directed to abstract ideas)”
Regarding claim 1, the claim recites, for example, a computer that “receive information…”, “performs an optical proximity correction on target data…”, and “calculates a cost value…”. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the recited steps the computer executes are merely an abstract idea (e.g. mathematical concepts and data manipulation) and does not structurally add limitations to the device.
Claims 2-8 are further limiting the abstract idea without significantly more as dependent upon claim 1.
Regarding claim 9, the claim is commensurate in scope with claim 1 and are rejected under USC 101 for the same reasons above.
Regarding claim 10, the claim is commensurate in scope with claim 1 (i.e. a program causes the computer to execute “a process of designing,…”, “a process of evaluating…”, and “a process of converting…”) and are rejected under USC 101 for the same reasons above.
Claims 11-13 are further limiting the abstract idea without significantly more as dependent upon independent claims 1, 9, and 10, respectively.
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 1-13 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 lack of written description. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. The claims recite the limitation “in response to the cost value greater than a threshold” appears to lack written description.
Specifically, the specification suggests the cost value is compared to a threshold; however, without a discussion of how the threshold is determined the specification fails to disclose the algorithm of evaluating whether the mask pattern meets the threshold. See MPEP 2161.01: “Similarly, original claims may lack written description when the claims define the invention in functional language specifying a desired result but the specification does not sufficiently describe how the function is performed or the result is achieved. For software, this can occur when the algorithm or steps/procedure for performing the computer function are not explained at all or are not explained in sufficient detail (simply restating the function recited in the claim is not necessarily sufficient). In other words, the algorithm or steps/procedure taken to perform the function must be described with sufficient detail so that one of ordinary skill in the art would understand how the inventor intended the function to be performed.”
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 HANWAY CHANG whose telephone number is (571)270-5766. The examiner can normally be reached Monday - Friday 7:30 AM - 4:00 PM EST.
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Hanway Chang
/HC/ Examiner, Art Unit 2878
/GEORGIA Y EPPS/ Supervisory Patent Examiner, Art Unit 2878
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