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 .
This final rejection is in response to the amendment filed on: 12/29/2025.
The prior 35 USC 112 rejections applied to claims 27-35 are withdrawn in view of applicant’s amendments.
The following rejections are withdrawn in view of applicant’s amendments:
Claim(s) 21-23, 25, 36, and 37-40 rejected under 35 U.S.C. 103 as being unpatentable over Moore et al (US Patent: 5859648, issued: Jan. 12, 1999, filed: Jul. 21, 1997) in view of Oh et al (US Patent: 9229913, issued: Jan . 5, 2016, filed: Sep. 10, 2013) in view of Brock (US Patent: 5664086, issued: Sep. 2, 1997, filed: Apr. 16, 1993).
Claim(s) 24 and 26 rejected under 35 U.S.C. 103 as being unpatentable over Moore et al (US Patent: 5859648, issued: Jan. 12, 1999, filed: Jul. 21, 1997) in view of Oh et al (US Patent: 9229913, issued: Jan . 5, 2016, filed: Sep. 10, 2013) in view of Brock (US Patent: 5664086, issued: Sep. 2, 1997, filed: Apr. 16, 1993) in view of Ying et al (US Patent: 6853980, issued: Feb. 8, 2005, filed: Sep. 7, 1999).
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 21-40 remain rejected under 35 U.S.C. 101 because the claimed invention is directed to an Abstract idea without significantly more.
Claim 21:
Claim 21 recites a method and is one of the statutory categories.
Step 2A, Prong One
The claim recites the following, for which the bolded items are interpreted to encompass steps that fall within: 1) the mental process groupings of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment and opinion and/or 2) Mathematical concept that include mathematical relationships, formulas , equations and calculations.
A computer implemented method for importing original text into an application, the method comprising: receiving the original text, wherein the original text is original embedded font text that includes a plurality of original text characters associated with an original font family; determining, by one or more computer processing devices, that the original font family is an unsupported font family that is not supported by the application; identifying, by one or more computer processing devices, and based on the original font family, a first replacement font mapping record, wherein the first replacement font mapping record is associated with the original font family, a first replacement font family that is supported by the application, and a first spacing modifier value that indicates a single first spacing modification that is to be used when converting the plurality of original text characters between the original font family and the first replacement font family; and generating, by one or more computer processing devices, first converted text by converting the plurality of original text characters to the first replacement font family, wherein converting the plurality of original text characters to the first replacement font family includes: calculating, by one or more computer processing devices, a first new character spacing value that is based on an original character spacing value associated with the original text and the first spacing modifier value; and converting, by one or more computer processing devices, the plurality of original text characters to the first replacement font family using the first new character spacing value.
More specifically, the limitations of “determining that the original font family is an unsupported font family that is not supported by the application”, can be interpreted to encompass a person evaluating original font family data and making a judgment that it is unsupported in view of the evaluation. With regards to the limitation(s) “identifying, based on the original font family, a first replacement font mapping record, wherein the first replacement font mapping record is associated with the original font family, a first replacement font family that is supported by the application, and a first spacing modifier value that indicates a single first spacing modification that is to be used when converting between the original font family and the first replacement font family”, they can be interpreted to encompass a person evaluating the original font family data and make a judgement that a first replacement font mapping record is relevant based on the evaluation. With regards to the limitation(s) “converting the plurality of original text characters the plurality of original text characters to the first replacement font family, wherein converting the plurality of original text characters to the first replacement font family includes: calculating a first new character spacing value that is based on an original character spacing value associated with the original text and the first spacing modifier value; and converting the plurality of original text characters to the first replacement font family using the first new character spacing value”, the limitation(s) define conversion to include calculation (a mathematical concept for calculation) and also the limitation(s) explains conversion merely “uses” the calculated first new character spacing value , and can be interpreted as mathematical relationship of a conversion (function) that uses the calculated first new character spacing value as a parameter.
Step 2A, Prong Two:
The claim recites addition a elements/limitations of :
“… by one or more computer processing devices …” – these types of additional elements are considered adding the words ‘apply it’ with the judicial exception or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea. The courts have identified this type of limitation as insufficient to integrate a judicial exception into a practical application.
“importing original text into an application …” and “receiving the original text, wherein the original text is original embedded font text that includes a plurality of original text characters associated with an original font family”. These additional element(s) are considered as adding insignificant extra solution activity (‘Mere Data Gathering’) to the judicial exception (see MPEP 2106.05(g)). The courts have identified this type of limitation as insufficient to integrate a judicial exception into a practical application.
“… generating first converted text by … converting the plurality of original text characters to the first replacement font family using the first new character spacing value”. These additional element(s) are considered as adding insignificant extra solution activity (‘Selecting a particular data source of type of data to be manipulated’) to the judicial exception (see MPEP 2106.05(g) since the generation is recited at a high level of generality is a result of conversion. However the conversion is detailed to only use the first new character spacing value without any further steps on how conversion is performed. Thus, the generation of the first converted text could be interpreted to just selecting/using the first new character spacing value ( Electric Power Group, LLC v. Alstom S.A., 830 F.3d 1350, 1354-55, 119 USPQ2d 1739, 1742 (Fed. Cir. 2016)) as a step in an insignificant application of generating data (Ameranth, 842 F.3d at 1241-42, 120 USPQ2d at 1854-55).
Thus, these additional elements identified above when considered individually and in combination, do not integrate the exception into a practical application.
Step 2B
As explained in Step 2A, Prong Two, there are the following additional elements:
“… by one or more computer processing devices …” – these types of additional elements were explained above as being considered as adding the words ‘apply it’ with the judicial exception or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea. The courts have found limitations that add insignificant extra solution activity as insufficient to qualify as ‘significantly more’ when recited in a claim with a judicial exception.
“importing original text into an application …” and “receiving the original text, wherein the original text is original embedded font text that includes a plurality of original text characters associated with an original font family”. These additional element(s) were determined to be insignificant extra solution activity (‘Mere Data Gathering’) to the judicial exception (see MPEP 2106.05(g)). The courts have found limitations that add insignificant extra solution activity as insufficient to qualify as ‘significantly more’ when recited in a claim with a judicial exception.
“… generating first converted text by … converting the plurality of original text characters to the first replacement font family using the first new character spacing value”. These additional element(s) were considered as adding insignificant extra solution activity (‘Selecting a particular data source of type of data to be manipulated’) to the judicial exception and an insignificant application (see MPEP 2106.05(g)). The courts have found limitations that add insignificant extra solution activity as insufficient to qualify as ‘significantly more’ when recited in a claim with a judicial exception.
Thus, when considered, individually and in combination, these additional elements fail to amount to ‘significantly more’.
Claims 22-35:
With regards to claims 22-35, they recite further judicial exceptions of mental steps (such as claimed ‘identifying’ , ‘determining’ steps ) and/or mathematical concepts ( such as claimed ‘calculating’ steps). The other additional elements from one or more of the claims are either insignificant extra solution activity (such as claimed ‘generating’, ‘accessing’ steps ) or merely reciting the words ‘apply it’ with the judicial exception or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (such as claimed ‘ displaying’, ‘processing’ steps). The courts have identified these types of limitations are insufficient to integrate a judicial exception into a practical application and also the courts have identified these types of limitations as insufficient to qualify as ‘significantly more’ when recited in claim(s) with a judicial exception(s).
Claim 36:
With regards to claim 36, it is rejected under similar rationale as the rejection of claim 21 above. It is noted that it additionally recites a “non-transitory computer readable storage medium storing instructions, which when executed by a processing unit, cause the processing unit to perform …” , however these additional elements are considered adding the words ‘apply it’ with the judicial exception or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (such as claimed ‘ displaying’, ‘processing’ steps). The courts have identified these types of limitations are insufficient to integrate a judicial exception into a practical application and also the courts have identified these types of limitations as insufficient to qualify as ‘significantly more’ when recited in claim(s) with a judicial exception(s).
Claims 37 and 38:
With regards to claims 37 and 38, they recite further judicial exceptions of mathematical concepts ( such as claimed ‘calculating’ steps). They do not include any additional elements that would integrate a judicial exception into a practical application nor do they include additional elements that would qualify as ‘significantly more’ when recited in claim(s) with a judicial exception(s).
Claim 39:
With regards to claim 39, it is rejected under similar rationale as claim 21. It is noted that it additionally recites “a processing unit, and a non-transitory computer readable storage medium storing instructions, which when executed by a processing unit, cause the processing unit to perform …” , however these additional elements are considered adding the words ‘apply it’ with the judicial exception or merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea (such as claimed ‘ displaying’, ‘processing’ steps). The courts have identified these types of limitations are insufficient to integrate a judicial exception into a practical application and also the courts have identified these types of limitations as insufficient to qualify as ‘significantly more’ when recited in claim(s) with a judicial exception(s).
Claim 40:
With regards to claim 40, it recites a judicial exceptions of mathematical concepts ( such as claimed ‘calculating’ steps). It does not include any additional elements that would integrate a judicial exception into a practical application nor does it include additional elements that would qualify as ‘significantly more’ when recited in claim(s) with a judicial exception(s).
Response to Arguments
Applicant's arguments filed 12/29/2025 have been fully considered but they are not persuasive.
With regards to claim 21 (and other pending claims 22-40), the applicant first argues with respect to Step 2A, prong one, that the claims are rooted in computer technology. However this argument is not persuasive as the examiner has explained/pointed-out the specific elements that are interpreted to fall within: 1) the mental process groupings of abstract ideas because they cover concepts performed in the human mind, including observation, evaluation, judgment and opinion and/or 2) Mathematical concept that include mathematical relationships, formulas , equations and calculations. The specific computer related aspects were not ignored as alleged by the applicant as they were addressed in Step 2A, prong two and Step 2B within the 35 USC 101 rejection of the claim.
The applicant argues with respect to prong two and step 2B that the claimed invention contains technological improvements because of use of a computer “by enabling accurate import and rendering of embedded font text when the original fonts are unavailable”. However this argument is not persuasive since the claims only recite the original text characters are ‘converted’ using the first new character spacing value, and this conversion does not explain how the conversion is rendered or even displayed. Thus, the applicant’s rationale of an improvement through recitation of a computer is not persuasive for at least those reasons.
The applicant argues with respect to prong two that the claimed invention provides a technical solution to a technological problem and explains the use of spacing modifier values. However this argument is not persuasive since the claim only nominally references (‘using’) spacing values when performing a conversion. Thus, simply reciting a conversion and referencing values is not a technical solution, but only a matter of referencing data to perform a generic action (in this case there is no technical details for how the conversion is performed that would preclude conversion being performed as part of a mental process. Thus the applicant’s arguments are not persuasive.
The applicant argues with respect to prong two that the claimed invention require specific structural elements that work together and then proceeds to list claim elements elaborated under a), b, and c). However these elements that the applicant has addressed in a), b), and c) have been specifically addressed by the examiner in the outstanding 35 USC 101 rejection in step 2A, prong 1 as mental processes and/or mathematical concept(s) , and thus do not include any additional elements outside of the judicial exception (which makes the applicant’s arguments not persuasive).
The applicant further argues that “the examiner’s suggestion that ‘determining the original font family is an unsupported font family’ as a mental process is unrealistic because of actions such as analysis, comparison, and processing (which require a computer to perform technological operations). However the applicant has not provided any reason why the mental process mapping is ‘unrealistic’ and only substantiates his/her argument by asserting a computer is used. The examiner respectfully points out, that as explained above, the limitations emphasized by the applicant only ‘apply’ the computer at a high level of generality (merely including instructions to implement an abstract idea on a computer, or merely using a computer as a tool to perform an abstract idea). The courts have identified these types of elements are insufficient to integrate a judicial exception into a practical application.
The applicant further argues the ‘calculating’ step can not be reasonably characterized as a mere mathematical concept divorced from technological implementation and provides rationale that includes at least ‘generating pixel-level spacing adjustments for rendered text’ to be tied to technological fields of digital typography and computer graphics. Here, the examiner points out that yes, if the claim actually recited that pixel level spacing adjustments being applied , then there would be a tie to technology, however the claim does not recite pixel level spacing adjustments being applied as part of the conversion process. Thus the applicant’s argument continues to be not persuasive and the applicant is arguing limitations not in the claim language.
The applicant argues with respect to step 2B that the claim includes elements that amount to significantly more due to a plurality of reasons that the claims apparently require and lists out each ‘required’ elements listed within ‘pre calculated replacement font mapping records’ and ‘runtime conversion process’. However these arguments are not persuasive since those elements emphasized by the applicant were explained to encompass mental process(s) (abstract idea/judicial-exception) and the examiner reminds the applicant that an improvement in the abstract idea itself is not an improvement in technology (and also does not pass the test for being significantly more than the abstract idea). See Trading Technologies Int’l v. IBG, 921 F.3d 1084, 1093-94, 2019 USPQ2d 138290 (Fed. Cir. 2019), the court determined that the claimed user interface simply provided a trader with more information to facilitate market trades, which improved the business process of market trading but did not improve computers or technology. Furthermore, the applicant’s additional argument concerning ‘cross-platform compatibility’ is not featured /recited in the claim and thus the applicant is arguing limitations not present in the claim language.
The applicant recites citations from the specification in pages 13-14 in applicant’s remarks to explain that there is an improvement in technology, however the applicant never correlates each of these citations to specific parts of the independent claim, and thus the applicant’s arguments are not persuasive since there is lack of rationale/evidence from the Applicant that would prove the claimed limitations would effectuate the purported improvements.
In page 15, the applicant argues a specific hardware implementation for claim 21 (processing unit and non-transitory computer readable storage medium storing instructions) as being a specific implementation and then provides citations from the instant application’s specification of other components or architectures that were not recited in the claim language. This argument is not persuasive since the other components and architectures are not recited in the claim.
In page 15, the applicant argues there is a technical improvement to computer functionality because of spacing modifier values reduce computation overhead. This argument is not persuasive since the claim does not recite how the spacing modifier values are applied to accomplish the alleged improvement. The applicant secondly argues visual fidelity is preserved by using the pre-calculated spacing modifier to adjust character spacing values and provides support via paragraph 0026. However this argument is not persuasive since paragraph 0026 only recites ‘determine a replacement font that matches or closely matches the width of the original unsupported font’ and thus, as explained above, this type of determination does not apply/reference any technology to perform the determination/matching (still directed to judicial exception). Lastly, the applicant argues in page 16 that the invention enhances cross application and cross-platform compatibility and provides paragraph 0029 for support. This argument is not persuasive since the genera statement of the ‘techniques being applied across a wide variety of editable document formats or document editing applications’ are not recited in the claim language.
In page 16 and 17 of applicant remarks, the applicant argues practical application, however as explained above, for prong 2, the claimed limitations of applicant is citing have been found to be not integrated into a practical application.
In page 17 of applicant remarks, the applicant argues the claim does not recite well-understood, routine or conventional activities. However the examiner did not invoke the statement well understood, routine and/or conventional in the 35 USC 101 rejection above, and thus, the applicant’s argument is not persuasive.
Note
In the interest of expediting the prosecution of the application, the examiner recommends the applicant call for an interview to discuss the 35 USC 101 rejections.
Conclusion
THIS ACTION IS MADE FINAL. 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 WILSON W TSUI whose telephone number is (571)272-7596. The examiner can normally be reached Monday - Friday 9 am -6 pm.
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, Adam Queler can be reached at (571) 272-4140. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/WILSON W TSUI/Primary Examiner, Art Unit 2172
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