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 .
Priority
The current application claimed priority to US Provisional Application No. 63/479,450, filed 1/11/2023.
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 4/16/2026 has been entered.
Claims Status
Claims 1-20 are pending and stand rejected.
Claim Rejections - 35 USC § 112(a)
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 1-20 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.
Regarding claim 1, claim 1 has been amended to recite processing, by the client device, the technical drawing to generate a transparent image and a semi-transparent image corresponding to the garment;
The subject matter of the claim (recited above) does not conform to the disclosure in such a manner in which one of ordinary skill in the art would recognize that applicant actually had possession of at the time of the invention. The most pertinent portion of the disclosure includes Fig. 8, 0033 and 0035. Paragraph 0033 provides that pattern data may include “a technical drawing 802” and that “a semi-transparent image 806 formed as a semi-transparent line drawing”.
Paragraph 0035 provides that “pattern interface 232 processes the technical drawing to generate transparent image 804, and semi-transparent image 806”
While the specification mentions technical drawings that may be processed to generate a transparent and semi-transparent image, the specification fails to provide sufficient disclosure of how the processing is accomplished. Although the specification may literally support the claimed limitation, merely reproducing the claim limitation in the specification or pointing to an original claim does not satisfy the written description requirement where the claim itself does not convey enough information to show that the inventor had possession of the claimed invention. Elements that are essentially a "black box" will not be sufficient.
Moreover, whether one of ordinary skill in the art could devise a way to accomplish these functions is not relevant to the issue of whether the inventor(s) has shown possession of the claimed invention. This is because the ability to make and use the invention does not satisfy the written description requirement if details of how a function (such as the claimed updating) is performed are not disclosed.
Disclosure of function alone is little more than a wish for possession and it does not satisfy the written description requirement. [See MPEP 2163: II(3)(a)(i), Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406]. Moreover, a specification which does little more than outline goals applicant hopes the claimed invention achieves does not satisfy the written description requirement [see MPEP 2163: II(3)(a)(i), In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984)]. Lastly, the specification lacks adequate description of a “representative number of species” which may satisfy the written description requirement [see MPEP 2163: II(3)(a)(ii)].
It is noted that this is not an enablement rejection. Applicant’s failure to sufficiently describe any algorithm, steps, or procedures taken to perform the claimed function of processing the technical drawing to generate a semi-transparent overlay combined with a fabric image to form the representation raises questions as to whether Applicant truly had possession of this feature at the time of filing.
Further regarding claim 1, generating, based on the sewing pattern selection and the fabric selection, a representation of the garment made from the fabric, wherein generating comprises dynamically sizing at least one of the transparent image, the semi-transparent image, and a mannequin image based on a measurement set associated with the garment, using image warping techniques to size images to fit one another, and combining the semi-transparent image with a fabric image having a representative scale to form the representation.
The subject matter of the claim (recited above) does not conform to the disclosure in such a manner in which one of ordinary skill in the art would recognize that applicant actually had possession of at the time of the invention. The specification as originally filed does not discuss any “dynamic sizing”, mentioning “sizing” in reference to a sizing chart (e.g., 0049, 0054). Paragraph 0052 recites that “transparent image 804 from pattern data 134 is overlaid onto mannequin 404 to allow the user to view the pattern during selection”, but does not mention any manner of “dynamic sizing”.
Lastly, 0040 states that “In certain embodiments, image "warping" techniques may be used to size images to fit one another”. Although there are various known techniques in the art, Applicant’s specification does not provide any reference to exemplary known techniques, nor does the specification otherwise provide for specific manners of performing the warping.
Moreover, even assuming said warping is known, the specification does not sufficiently describe how the presumably known techniques are applied to achieve the operation of generating a representation of the garment by dynamically sizing at least one of the transparent image, the semi-transparent image and a mannequin image.
Disclosure of function alone is little more than a wish for possession and it does not satisfy the written description requirement. [See MPEP 2163: II(3)(a)(i), Eli Lilly, 119 F.3d at 1568, 43 USPQ2d at 1406]. Moreover, a specification which does little more than outline goals applicant hopes the claimed invention achieves does not satisfy the written description requirement [see MPEP 2163: II(3)(a)(i), In re Wilder, 736 F.2d 1516, 1521, 222 USPQ 369, 372-73 (Fed. Cir. 1984)]. Lastly, the specification lacks adequate description of a “representative number of species” which may satisfy the written description requirement [see MPEP 2163: II(3)(a)(ii)].
It is noted that this is not an enablement rejection. Applicant’s failure to sufficiently describe any algorithm, steps, or procedures taken to perform the claimed function of processing the technical drawing to generate a semi-transparent overlay combined with a fabric image to form the representation raises questions as to whether Applicant truly had possession of this feature at the time of filing.
Dependent claims 2-7 and 19-20 depend either directly or indirectly from independent claim 1. These claims are thereby rejected along with claim 1 by virtue of their dependency of claim 1.
Regarding claims 8-14 (non-transitory medium), claims 8-14 recite at least substantially similar concepts and elements as recited in claims 1-7 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 8-14 are rejected under at least similar rationale because they are directed to an abstract idea without significantly more.
Regarding claims 15-18 (system), claims 15-18 recite at least substantially similar concepts and elements as recited in claims 1-7 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 15-18 are rejected under at least similar rationale because they are directed to an abstract idea without significantly more.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claims 1-20 are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 1, claim 1 recites dynamically sizing at least one of the transparent image, the semi-transparent image, and a mannequin image based on a measurement set associated with the garment, using image warping techniques to size images to fit one another. The specification does not define “image warping” or otherwise provide example known methods of “image warping techniques”. It is unclear what the scope of “warping” includes or excludes – e.g., whether this speaks to distortion of images, morphing or transformation of shape, alignment of images, etc. “Image warping” itself does not have a clearly defined scope in the art, nor does the specification provide either a definition or exemplary techniques that allows one of ordinary skill to readily ascertain the scope. Accordingly, the scope of the claim is unclear because one of ordinary skill in the art cannot readily determine how to avoid infringement of the claim because the metes and bounds of what may or may not be considered an “image warping technique” is unclear.
For examination purposes, an “image warping technique” is interpreted as any technique that transforms the shape of an image by modifying the position of points/pixels of the image.
Dependent claims 2-7 and 19-20 depend either directly or indirectly from independent claim 1. These claims are thereby rejected along with claim 1 by virtue of their dependency of claim 1.
Regarding claims 8-14 (non-transitory medium), claims 8-14 recite at least substantially similar concepts and elements as recited in claims 1-7 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 8-14 are rejected under at least similar rationale because they are directed to an abstract idea without significantly more.
Regarding claims 15-18 (system), claims 15-18 recite at least substantially similar concepts and elements as recited in claims 1-7 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 15-18 are rejected under at least similar rationale because they are directed to an abstract idea without significantly more.
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 1-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (abstract idea) without significantly more.
Regarding claims 1-20, under Step 2A claims 1-20 recite a judicial exception (abstract idea) that is not integrated into a practical application and does not provide significantly more.
Regarding claims 1-7 and 19-20 under Step 2A (prong 1), and taking claim 1 as representative of claims 1-7 and 19-20, claim 1 recites fashion design assistant method, comprising:
receiving a sewing pattern selection identifying sewing pattern data having a technical drawing for a garment;
receiving a fabric selection identifying fabric data for a fabric, wherein the fabric data includes a fabric type selected from a predefined set including 2-way knit, woven, woven with Lycra, and non-woven;
automatically performing, in response to selection of the fabric selection, a compatibility check based on the selected fabric type and the sewing pattern data;
processing the technical drawing to generate a transparent image and a semi-transparent image corresponding to the garment;
generating, based on the sewing pattern selection and the fabric selection, a representation of the garment made from the fabric, wherein generating comprises dynamically sizing at least one of the transparent image, the semi-transparent image, and a mannequin image based on a measurement set associated with the garment, using image warping techniques to size images to fit one another, and combining the semi-transparent image with a fabric image having a representative scale to form the representation;
guiding a user to capture the fabric image at a predetermined distance from the fabric such that the fabric image has the representative scale; and,
displaying the representation of the garment.
These limitations recite ‘certain methods of organizing human activity’, such as by performing commercial or legal interactions, or managing personal behavior or relationships or interactions between people (see: MPEP 2106.04(a)(2)(II)). This is because the limitations above set forth or describe assisting in garment design, which is a marketing or sales activity or behavior. Alternatively, the claimed method manages user behavior, such as by reciting rules or instruction for designing a garment. Accordingly, under step 2A (prong 1) claim 1 recites an abstract idea because claim 1 recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas.
Additionally, claim 1 can also be understood to recite limitations that set forth or describe “mental processes” that are performable in the human mind, or by pen and paper (see: MPEP 2106.04(a)(2)(III)). Notably, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer.
As written, automatically performing a compatibility check based on the selected fabric type and the sewing pattern data represents an observation, evaluation, or judgment performable in the human mind. Additionally, generating, based on the sewing pattern selection and the fabric selection, a representation of the garment made from the fabric, wherein generating comprises dynamically sizing at least one of the transparent image, the semi-transparent image, and a mannequin image based on a measurement set associated with the garment, using image warping techniques to size images to fit one another, and combining the semi-transparent image with a fabric image having a representative scale to form the representation is a process performable by a human using a physical aid.
Accordingly, under step 2A (prong 1) claim 1 also recites an abstract idea because claim 1 recites limitations that fall within the “Mental processes” grouping of abstract ideas.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. The Examiner acknowledges that representative claim 1 does recite additional elements, including a client device and a display of the client device.
Although reciting these additional elements, taken alone or in combination these elements are not sufficient to integrate the abstract idea into a practical application. This is because the additional elements of claim 1 are recited at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Secondly, the additional elements are insufficient to integrate the abstract idea into a practical application 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 the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses 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 1 does not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Returning to representative claim 1, taken individually or as a whole the additional elements of claim 1 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Even considered as an ordered combination (as a whole), the additional elements of claim 1 do not add anything further than when they are considered individually.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Regarding dependent claims 2-7 and 19-20, dependent claims 2-7 and 19-20 recite more complexities descriptive of the abstract idea itself, and at least inherit the abstract idea of claim 1. As such, claims 2-7 and 19-20 are understood to recite an abstract idea under step 2A (prong 1) for at least similar reasons as discussed above.
Under prong 2 of step 2A, the additional elements of dependent claims 2-7 and 19-20 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. More specifically, claims 2-7 and 19-20 rely upon similar additional elements as recited in claim 1, which are recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Where further additional elements are recited (e.g., claim 20: a toolkit, measurement tool, and recommendation tool), these elements are also mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Lastly, under step 2B, claims 2-7 and 19-20 also fail to result in “significantly more” than the abstract idea under step 2B. This is again because the claims merely apply the exception on generic computing hardware, and do nothing more than generally link the exception to a particular technological environment. Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
In view of the above, claims 2-7 and 19-20 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
Regarding claims 8-14 (non-transitory medium), claims 8-14 recite at least substantially similar concepts and elements as recited in claims 1-7 such that similar analysis of the claims would be readily apparent to one of ordinary skill in the art. As such, claims 8-14 are rejected under at least similar rationale because they are directed to an abstract idea without significantly more.
Regarding claims 15-18 under Step 2A (prong 1), and taking claim 15 as representative of claims 15-18, claim 15 recites a fashion design system to
interact with a sewing pattern supplier to receive sewing pattern data having technical drawings;
interact with a fabric supplier to receive fabric data including a fabric type selected from a predefined set including 2-way knit, woven, woven with Lycra, and non-woven;
receive a pattern selection identifying the pattern data for a garment;
receive a fabric selection identifying the fabric data for a fabric;
automatically perform, in response to selection of the fabric selection, a compatibility check based on the selected fabric type and the sewing pattern data;
processing the technical drawing to generate a transparent image and a semi-transparent image corresponding to the garment;
generating, based on the sewing pattern selection and the fabric selection, a representation of the garment made from the fabric, wherein generating comprises dynamically sizing at least one of the transparent image, the semi-transparent image, and a mannequin image based on a measurement set associated with the garment, using image warping techniques to size images to fit one another, and combining the semi-transparent image with a fabric image having a representative scale to form the representation;
guiding a user to capture the fabric image at a predetermined distance from the fabric such that the fabric image has the representative scale; and,
display the representation of the garment.
These limitations recite ‘certain methods of organizing human activity’, such as by performing commercial or legal interactions, or managing personal behavior or relationships or interactions between people (see: MPEP 2106.04(a)(2)(II)). This is because the limitations above set forth or describe assisting in garment design, which is a marketing or sales activity or behavior. Alternatively, the claimed method manages user behavior, such as by reciting rules or instruction for designing a garment. Accordingly, under step 2A (prong 1) claim 15 recites an abstract idea because claim 1 recites limitations that fall within the “Certain methods of organizing human activity” grouping of abstract ideas.
Additionally, claim 15 can also be understood to recite limitations that set forth or describe “mental processes” that are performable in the human mind, or by pen and paper (see: MPEP 2106.04(a)(2)(III)). Notably, the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer.
As written, automatically perform a compatibility check based on the selected fabric type and the sewing pattern data represents an observation, evaluation, or judgment performable in the human mind. Additionally, generating, based on the sewing pattern selection and the fabric selection, a representation of the garment made from the fabric, wherein generating comprises dynamically sizing at least one of the transparent image, the semi-transparent image, and a mannequin image based on a measurement set associated with the garment, using image warping techniques to size images to fit one another, and combining the semi-transparent image with a fabric image having a representative scale to form the representation is a process performable by a human using a physical aid.
Accordingly, under step 2A (prong 1) claim 15 also recites an abstract idea because claim 15 recites limitations that fall within the “Mental processes” grouping of abstract ideas.
Under Step 2A (prong 2), the abstract idea is not integrated into a practical application. The Examiner acknowledges that representative claim 15 does recite additional elements, including:
a computer server,
a pattern interface comprising machine-readable instructions stored on non- transitory computer-readable medium that, when executed by a first processor of the computer server, causes the computer server to,
a fabric interface comprising machine-readable instructions stored on the non- transitory computer-readable medium that, when executed by the first processor of the computer server, causes the computer server to,
a database for storing the pattern data and the fabric data;
a fashion design assistant tool comprising machine-readable instructions stored on non- transitory computer-readable medium that, when executed by a second processor of a client device, cause the client device to, and,
a display of the client device
Although reciting these additional elements, taken alone or in combination these elements are not sufficient to integrate the abstract idea into a practical application. This is because the additional elements of claim 15 are recited at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Secondly, the additional elements are insufficient to integrate the abstract idea into a practical application 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 the judicial exception with, or use the judicial exception in conjunction with, a particular machine or manufacture that is integral to the claim, (iii) effect a transformation or reduction of a particular article to a different state or thing, or (iv) applies or uses 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 15 does not integrate the recited exception into a practical application.
Under Step 2B, examiners should evaluate additional elements individually and in combination to determine whether they provide an inventive concept (i.e., whether the additional elements amount to significantly more than the exception itself). In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Returning to representative claim 1, taken individually or as a whole the additional elements of claim 15 do not provide an inventive concept (i.e. they do not amount to “significantly more” than the exception itself). As discussed above with respect to the integration of the abstract idea into a practical application, the additional elements used to perform the claimed process amount to no more than the mere instructions to apply the exception using a generic computer and/or no more than a general link to a technological environment.
Even considered as an ordered combination (as a whole), the additional elements of claim 15 do not add anything further than when they are considered individually.
In view of the above, representative claim 1 does not provide an inventive concept (“significantly more”) under Step 2B, and is therefore ineligible for patenting.
Regarding dependent claims 16-18, dependent claims 16-18 recite more complexities descriptive of the abstract idea itself, and at least inherit the abstract idea of claim 15. As such, claims 16-18 are understood to recite an abstract idea under step 2A (prong 1) for at least similar reasons as discussed above.
Under prong 2 of step 2A, the additional elements of dependent claims 16-18 also do not integrate the abstract idea into a practical application, considered both individually or as a whole. More specifically, claims 16-18 rely upon similar additional elements as recited in claim 1, which are recited only at a high level of generality (i.e. as generic computing hardware) such that they amount to nothing more than the mere instructions to implement or apply the abstract idea on generic computing hardware (or, merely uses a computer as a tool to perform an abstract idea). Further, the additional elements do no more than generally link the use of a judicial exception to a particular technological environment or field of use (such as the Internet or computing networks).
Lastly, under step 2B, claims 16-18 also fail to result in “significantly more” than the abstract idea under step 2B. This is again because the claims merely apply the exception on generic computing hardware, and do nothing more than generally link the exception to a particular technological environment. Even when viewed as an ordered combination (as a whole), the additional elements of the dependent claims do not add anything further than when they are considered individually.
In view of the above, claims 16-18 do not provide an inventive concept (“significantly more”) under Step 2B, and are therefore ineligible for patenting.
Response to Arguments
I. Applicant’s arguments made with respect to the rejection under 35 USC 112(a) have been fully considered in view of the accompanying amendments but are not persuasive.
As noted in the previous rejection, the Examiner acknowledged that the speciation provided literal support for processing a technical drawing. A claim may lack written description support when the claim defines the invention in functional language specifying a desired result but the disclosure fails to sufficiently identify how the function is performed or the result is achieved. This is precisely the situation with the amended feature of processing, by the client device, the technical drawing to generate a transparent image and a semi-transparent image corresponding to the garment. As originally filed, the specification provides only literal support sans any further description of how the technical drawing is processed to generate the transparent and semi-transparent images.
Similar logic applies to the newly amended feature of dynamically sizing at least one of the transparent image, the semi-transparent image, and a mannequin image based on a measurement set associated with the garment, using image warping techniques to size images to fit one another, and combining the semi-transparent image with a fabric image having a representative scale to form the representation. That is, even presuming arguendo literal support exists in the specification, as originally filed the specification lacks any further description of how this may be performed.
The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, inventor was in possession of the invention as now claimed. An applicant shows that the inventor was in possession of the claimed invention by describing the claimed invention with all of its limitations using such descriptive means as words, structures, figures, diagrams, and formulas that fully set forth the claimed invention (see MPEP 2163.02). The Examiner hereby maintains that, as now written, the claimed invention is not supported by the original disclosure because it does not provide sufficient disclosure of the amended features.
Accordingly, Applicant’s arguments are not found persuasive.
II. Applicant’s arguments made with respect to the rejection under 35 USC 101 have been fully considered in view of the accompanying amendments but are not persuasive.
Applicant argues that the “compatibility analysis and resulting notification are automatically triggered by client-device-detected user selection, not by discretionary human judgement”. The claims contain no details with respect to the underlying functional detection or interoperation of the computer components, instead setting forth the components at a high-level of generality used only as a tool to automate the performance of the abstract idea. The recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it” (see MPEP 2106.05(f)(1)). Moreover, mere automation of manual processes is insufficient to show an improvement to computing functionality (MPEP 2106.05(a), “Examples that the courts have indicated may not be sufficient to show an improvement in computer-functionality” (iii)).
Further, the Examiner maintains that at least the indicated limitations set forth and describe ‘mental processes’, reiterating that the courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation, nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. Even assuming arguendo this were not the case (which the Examiner does not acquiesce), the claims still recite certain methods of human activity for the reasons discussed above.
Applicant also argues that the claimed invention is directed to a similar improvement to that of McRO, Inc. v. Bandai Namco Games America Inc. As discussed previously, the basis for the court’s decision in McRO was that the claims were clearly directed to an improvement in computer-related technology (allowing computers to produce "accurate and realistic lip synchronization and facial expressions in animated characters"). As part of the analysis, the court in McRO emphasized the specification, which clearly described the invention as improving computer animation through the use of specific rules. The decision in McRO was similar to that in Enfish v. Microsoft (Fed. Cir. 2016) and other precedential decisions in that the courts emphasized the specificity of the specification in detailing and solving a problem arising in a specific technology or technical field.
The Examiner maintains that a comparison to McRO is inapposite, even in view of the broad use of image warping techniques. The Examiner reminds Applicant that, if it is asserted that the invention improves upon conventional functioning of a computer, or upon conventional technology or technological processes, a technical explanation as to how to implement the invention should be present in the specification. That is, the disclosure must provide sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. If the specification explicitly sets forth an improvement but in a conclusory manner (i.e., a bare assertion of an improvement without the detail necessary to be apparent to a person of ordinary skill in the art), the examiner should not determine the claim improves technology (MPEP 2106.05(a)).
As written, and unlike McRO, the claimed invention does not provide an improvement akin to another technology or technical field. Merely utilizing some unspecified “image warping techniques” does not demonstrate that what Applicant invented was an improvement to image generation or image processing technology, or any other technology or technical field. Applicant’s assertion is little more than a bare assertion without the necessary detail to demonstrate the alleged improvement. The specification as originall filed, and the claims as written, do not provide any detail concerning “specific concrete technical operations for generating accurate composite images”. Here again, the Examiner emphasizes that a recitation of claim limitations that attempt to cover any solution to an identified problem with no restriction on how the result is accomplished and no description of the mechanism for accomplishing the result, does not integrate a judicial exception into a practical application or provide significantly more because this type of recitation is equivalent to the words “apply it” (see MPEP 216.05(f)).
The Examiner also reiterates MPEP 2106.05(d), and again contrasts the McRO decision with that in in Affinity Labs of Tex. v. DirecTV, LLC. In that decision, the court relied on the specification’s failure to provide details regarding the manner in which the invention accomplished the alleged improvement when holding the claimed methods of delivering broadcast content to cellphones ineligible. 838 F.3d 1253, 1263-64, 120 USPQ2d 1201, 1207-08 (Fed. Cir. 2016). The Examiner holds that a more proper comparison of the claimed invention is to that of Affinity Labs of Tex. v. DirecTV, LLC, rather than McRO (or other eligible decisions).
Accordingly, Applicant’s arguments are not found persuasive.
III. Applicant’s arguments made with respect to the rejection under 35 USC 103 have been fully considered in view of the accompanying amendments and are persuasive, at least in part. This is discussed further below under the heading Subject Matter Allowable Over the Prior Art.
Subject Matter Allowable Over the Prior Art
Though rejected on other grounds, claims 1-14 are indicated as allowable over the prior art. The following is a statement for the reasons of indication allowability over the prior art:
As discussed previously, Lind ‘127 teaches various features of the claimed invention, namely with respect to the selection of a sewing pattern and fabric. In addition to the above features, Lind ‘127 fails to teach wherein the fabric data includes a fabric type selected from a predefined set including 2-way knit, woven, woven with Lycra, and non-woven, where generating the representation of the garment comprises generating a semi-transparent overlay as part of the representation, and automatically performing, by the client device, a compatibility check based on the selected fabric type and the sewing pattern data. Lastly, while Lind ‘127 teaches laying over 2D pattern images on top of a fabric image, Lind ‘127 does not appear to teach dynamically sizing…using image warping techniques to size images to fit one another. That is, modifying measurements is not akin to image warping (see above interpretation under 35 USC 112(b)).
While Sights remedies certain deficiencies (e.g., the fabric type and a garment representation comprising a semi-transparent overlay combined with a fabric image, Sights does not teach both transparent image and a semi-transparent image corresponding to the garment. With respect to Prasad, neither Lind ‘127 nor Sights teach automatically performing, by the client device, a compatibility check based on the selected fabric type and the sewing pattern data, which was taught by Prasad.
Still further, neither Lind ‘127, Sights or Prasad teaches or suggests guiding, via a display of the client device, a user to capture the fabric image at a predetermined distance from the fabric such that the fabric image has the representative scale.
The Examiner hereby asserts that the totality of the evidence neither anticipates nor renders obvious the particular combination of elements as claimed above. That is, the Examiner emphasizes the claims as a whole and hereby asserts that the totality of the evidence fails to set forth, either explicitly or implicitly, an appropriate rationale for combining or otherwise modifying the available prior art to arrive at the claimed invention. The combination of features as claimed would not have been obvious to one of ordinary skill in the art because any combination of the evidence at hand to reach the combination of features as claimed would require a substantial reconstruction of Applicant’s claimed invention relying on improper hindsight bias.
Though rejected on other grounds, claims 15-18 are indicated as allowable over the prior art. Claims 15-18 are allowable in view of the reasons above, but also in view of the reasons discussed in the Final Action mailed 1/29/2026 (p. 28-29).
Conclusion
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
PTO form 892-U discusses utilization of image warping as a transformation which maps all positions in one image plane to positions in a second plane, including various transformations (e.g., parametric, non-parametric) that may be performed (see Summary, Section (2) and (3)).
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WILLIAM J. ALLEN
Primary Examiner
Art Unit 3625
/WILLIAM J ALLEN/Primary Examiner, Art Unit 3619
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