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 .
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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 12/10/2025 has been entered.
Claims 1 – 20 are pending for examination. Claims 1 and 11 are amended.
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 an abstract idea without significantly more.
As to claim 1, the claim recites
“1. A computer-implemented method for enabling multi-user collaboration on a three-dimensional (3D) design, the method executed by one or more processors of a computer-aid design (CAD) system, comprising:
(a) acquiring, by the CAD system, the 3D design in a computer-aided design (CAD) application;
(b) dynamically processing, by the CAD system and in in response to receiving user input, user input as it is received, wherein:
(i) the user input comprising text and is associated with a selected part of the 3D design;
(ii) the dynamically processing parses the text and recognizes that the text in the user input relates to modifying the selected part; and
(iii) the dynamically processing dynamically retrieves a list of one or more alternative parts, wherein the list is based on similarities between the one or more alternative parts and the selected part;
(c) providing, via a graphical user interface of the CAD system, a selectable recommendation to comprising a first alternative part from the list of the one or more alternative parts instead of the selected part in the 3D design; and
(d) providing, via the CAD system the selectable recommendation including the first alternative part as part of a comment to another user, wherein the selectable recommendation is selected by the another user to accept the first alternative part”.
Step 1: the claim is directed to a process which is one of the statutory categories of invention.
Step 2A:
Prong 1: the limitations b) dynamically processing user input as it is received, wherein:
(i) the user input comprising text and is associated with a selected part of the 3D design;
(ii) the dynamically processing recognizes that the text in the user input relates to modifying the selected part; and
(iii) the dynamically processing dynamically retrieves a list of one or more alternative parts, wherein the list is based on similarities between the one or more alternative parts and the selected part;
(c) providing, a selectable recommendation to utilize a first alternative part from the list of the one or more alternative parts instead of the selected part in the 3D design; and
(d) providing the selectable recommendation including the first alternative part as part of a comment to another user, wherein the selectable recommendation is selected by the another user to accept the first alternative part are functions that can be reasonably carried out in the human mind with the aid of pen and paper, through observation, evaluation, judgment, opinion, thus it is reasonable to identify these limitation as reciting a mental process.
Prong 2:
The additional element, via a graphical user interface, merely uses a generic computer or computer components as a tool to perform the abstract idea.
The additional elements acquiring the 3D design in a computer-aided design (CAD) application, in in response to receiving user input merely recite insignificant extra solution activity such as gathering, displaying, updating, transmitting and storing data which does not integrate the judicial exception into a practical application. See MPEP 2106.05(d).
The additional elements, enabling multi-user collaboration on a three-dimensional (3D) design, computer-aid design (CAD) system, merely link the use of the judicial exception to a particular technological environment or field of use, thus does not integrate the judicial exception into a practical application. MPEP 2106.05(h).
Thus, these additional elements do not integrate the judicial exception into a practical application.
Step 2B:
The additional element, via a graphical user interface, merely uses a generic computer or computer components as a tool to perform the abstract idea.
The additional elements acquiring the 3D design in a computer-aided design (CAD) application, in in response to receiving user input merely recite insignificant extra solution activity such as gathering, displaying, updating, transmitting and storing data which does not integrate the judicial exception into a practical application. See MPEP 2106.05(d).
The additional elements, enabling multi-user collaboration on a three-dimensional (3D) design, computer-aid design (CAD) system, merely link the use of the judicial exception to a particular technological environment or field of use, thus does not integrate the judicial exception into a practical application. MPEP 2106.05(h).
Therefore, none of the additional elements recite an inventive concept.
Accordingly, the additional elements do not amount to significantly more than the abstract idea and the claimed invention is patent ineligible under 35 USC 101.
As to claims 2 – 11, they depend claims of claim 1. They merely recite insignificant extra solution activity such as gathering, displaying, updating, transmitting and storing data which does not integrate the judicial exception into a practical application. See MPEP 2106.05(d). They are rejected as their independent claims since they do not recite any eligible subject matter.
As to claim 11, this is a system claim of claim 1. See rejection for claim 1 above.
As to claims 12 – 20, see rejection for claims 2 – 11 above.
Claim Rejections - 35 USC § 112
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.
As to claim 1,
Limitation c) the limitation recites “providing, via a graphical user interface of the CAD system, a selectable recommendation to utilize comprising a first alternative part from the list of the one or more alternative parts instead of the selected part in the 3D design” is complete; therefore, it is indefinite. Who or where the selectable recommendation is providing to? For examination purpose, examiner treats the limitation to be – providing, via a graphical user interface of the CAD system, a selectable recommendation to another user, wherein the selectable recommendation comprises a first alternative part from the list of the one or more alternative parts instead of the selected part in the 3D design”
As to claims 2 – 10, they depend on claim 1 and they do not remedy the deficiencies of claim 1. Therefore, they are rejected as their independent claim.
As to claims 11, it is a system claim of claim 1. See rejection for claim 1 above.
As to claims 12 – 20, they depend on claim 11 and they do not remedy the deficiencies of claim 11. Therefore, they are rejected as their independent claim.
Response to Arguments
III. Prior Art Rejections
Applicant’s arguments, with respect to 103 rejection, have been fully considered and are persuasive. The 103 rejection has been withdrawn.
IV. Statutory Subject Matter Rejections (pages 23 - 27 of remark).
Applicant argued that
“The Office Action rejects the claims under 35 U.S.C. §101 as being directed to non- statutory subject matter.
Applicant respectfully traverses the § 101 rejection. As amended, claims 1 and 11 recite subject matter that is not directed to an abstract idea, is integrated into a practical application, and recites significantly more than any alleged abstract idea under Step 2B.
Both claims satisfy each prong of the USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance ("2019 PEG").
STEP 1: Claims 1 and 11 recite statutory categories
" Claim 1 recites a computer-implemented method, which is a statutory "process."
" Claim 11 recites a CAD system comprising a memory, processor, GUI, and CAD
application-clearly a statutory "machine."
Thus, no Step 1 issue exists.
STEP 2A, PRONG 1 - The claims are not "directed to" an abstract idea
The Examiner previously asserted that the claims recite mental processes. That is incorrect for the amended claims.
1. Claim 1 (method claim)
Claim 1 requires, among other things:
" Acquiring a 3D design in a CAD application;
. Parsing user text linked to a specific selected 3D part;
. Retrieving alternative 3D parts based on 3D similarity measurements;
. Generating a GUI-based, selectable 3D part recommendation; and
. Embedding that recommendation into a collaborative, multi-user comment channel that enables acceptance by a second user and replacement of the part in the 3D model.
These are not concepts that can reasonably be performed in the human mind. A human cannot, without specialized computer functionality:
. access or traverse CAD part libraries,
. compute geometric or functional similarities between 3D components,
. update a 3D model in real time, or
. embed actionable part-replacement operations into multi-user collaborative interfaces.
Thus, claim 1 is not directed to an abstract idea.”
In response,
The part libraries can be a database of libraries, where human can design and store data.
Human can observe and choose a similar part in the database when given one.
The update element is just human activities such as gathering, displaying, updating, transmitting and storing data which does not integrate the judicial exception into a practical application. See MPEP 2106.05(d).
Claims do not explicitly cite embed actionable part-replacement operations into multi-user collaborative interfaces. However, again replacement is just human activities such as gathering, displaying, updating, transmitting and storing data which does not integrate the judicial exception into a practical application. See MPEP 2106.05(d).
Applicant argued that
“2. Claim 11 (system claim)
Claim 11 is even further removed from any alleged abstract idea because it recites a specific, concrete machine:
. (a) a computer having a memory;
. (b) a processor;
. (c) a CAD application executed by the processor implementing steps (1)-(5).
Moreover, the CAD application itself performs:
. 3D model acquisition;
. contextual parsing of part-specific user text;
. similarity-based retrieval of CAD parts;
. GUI generation of selectable replacement recommendations; and
. insertion of such recommendations into multi-user comments.
A claim that recites a particular machine and depends on that machine's specialized operations is not a mental process.
Under the 2019 PEG, claims directed to specific improvements in computer technology, or that operate within a specific technological environment such as CAD systems, are not abstract.
STEP 2A, PRONG 2 - Even if the Examiner considers some elements abstract, both claims integrate those elements into a practical application
Assuming arguendo that the claim includes some abstract ideas such as "parsing text," both claims recite a practical application under Prong 2.
The USPTO identifies several non-exclusive examples of practical application. Claims 1 and 11 satisfy all of them.
" 1. Meaningful use of a particular machine (CAD system)
" Claim 1 expressly requires execution by "one or more processors of a CAD system."
" Claim 11 explicitly recites a CAD system with memory, processor, and a CAD application performing all steps.
This is not generic computing; the claims are expressly tied to a specific technological environment (CAD) with unique 3D modeling and collaboration functionality.
Claim 11 explicitly recites a CAD system with memory, processor, and a CAD application performing all steps.
This is not generic computing; the claims are expressly tied to a specific technological environment (CAD) with unique 3D modeling and collaboration functionality” (page 23 of remark).
In response,
Claims do not explicitly cite embed actionable part-replacement operations into multi-user collaborative interfaces. However, again replacement is just human activities such as gathering, displaying, updating, transmitting and storing data which does not integrate the judicial exception into a practical application. See MPEP 2106.05(d).
Applicant argued that
“2. The claims improve computer functionality and CAD collaboration technology
Both claims recite a specific solution to a technical problem in collaborative CAD design: ambiguity and inefficiency in multi-user modification of 3D components.
The invention provides:
. real-time part similarity retrieval,
. dynamic interpretation of text associated with a specific model element,
. actionable part-replacement recommendations, and
. seamless integration of those recommendations into multi-user collaboration workflows” (page 24 of remark).
This is a technical improvement to CAD systems, not an abstract result.
In response,
The claim does not recite real-time.
Designing can be planned in human mind with pen and paper. The computer is just a tool that uses particular technological environment to implement the abstract idea.
Three dimensional (3D) design and embedding part-replacement are just a computing technique to display a part in 3D. It is just human activities such as gathering, displaying, updating, transmitting and storing data which does not integrate the judicial exception into a practical application. See MPEP 2106.05(d).
Applicant argued that
“3. The claims meaningfully affect a digital 3D object
The selectable recommendation, when accepted by a second user:
. modifies the 3D design,
. replaces the selected part, and
. updates the CAD model.
This produces a tangible effect on a digital artifact, which is expressly recognized in the 2019 PEG as evidence of practical application” (page 25 of remark).
In response,
Examiner refers to rejection above.
Applicant argued that
“4. The claims are meaningfully limited to a specific technological field
The claimed functionality is not analogous to generic data processing or generic user interfaces.
It is tightly confined to:
. 3D CAD modeling, " CAD part libraries,
. similarity measurements between CAD components, and
. collaborative CAD workflows.
This satisfies MPEP §2106.05(h): meaningful limitations to a specific technological environment.
Thus, under Step 2A, Prong 2, the claims are not directed to an abstract idea” (page 26 of remark).
In response,Examiner refers to rejection above.
STEP 2B - The claims recite "significantly more" than any alleged abstract idea
Even assuming the Examiner identifies an abstract idea, the remaining claim elements include additional features that are not well-understood, routine, or conventional, as required under the Berkheimer memo.
Non-conventional features in Claim 1
. Parsing user text in association with a selected 3D part; " Automatically retrieving similar alternative 3D parts;
. Generating a GUI-embedded, selectable replacement option;
. Embedding the replacement option in a multi-user collaborative comment that triggers actual part replacement when selected.
Non-conventional features in Claim 11
. Structural recitation of a CAD system configured to execute all functionalities above;
. Interaction of processor, memory, CAD application, and GUI in a specific,
unconventional arrangement that enables automatic, similarity-based part
recommendations within multi-user collaboration.
The Examiner has provided no evidence-as required by Berkheimer-that such features are routine or conventional.
The combination of features in claims 1 and 11 represents significantly more than any abstract idea.” (pager 26 of remark).
In response,Examiner refers to rejection above.
Conclusion
Under the 2019 PEG, the October 2020 Update, and the Berkheimer memo:
1. Claims 1 and 11 are not directed to a judicial exception under Step 2A, Prong 1.
2. Even if an exception is identified, the claims integrate it into a practical application
under Step 2A, Prong 2.
3. The claims additionally recite significantly more than any alleged abstract idea under
Step 2B.
Accordingly, Applicant respectfully requests withdrawal of the §101 rejection for all claims, including amended claim 11.
In response,
Examiner refers to rejection above.
V. Renouncement of Disclaimer/Surrender of Claim Scope in Previous Applications, Amendments, or Remarks (page 18 of remark).
Applicant argued that
“Applicant's attorney has made the amendments in this application as set forth above to facilitate expeditious prosecution of the application. These amendments were made solely for the purpose of clarifying the language of the claims, and were not required for patentability or to distinguish the claims over the prior art. Applicant's attorney is not conceding that the subject matter encompassed by the claims prior to this Amendment is unpatentable over the art cited by the Examiner. Applicant's attorney respectfully reserves the right to pursue claims in one or more continuing applications, including claims capturing the subject matter encompassed by the claims prior to this Amendment and additional claims”.
In response,
The amendment is persuasive as responded above.
Conclusion
The prior art made of record but not relied upon request is considered to be pertinent to applicant’s disclosure.
Hamada, (US PUB 2019/0340198), discloses a method for design support system, wherein display part is processed, title, abstract and figures 1 - 29).
Addington, (US PUB 2016/0379380), discloses a method of displaying various indicia of conformance to the desired shape, including those indicia most relevant to industry standards (title, abstract and figures 1 – 11).
Any inquiry concerning this communication or earlier communications from the examiner should be directed to PHUONG N HOANG whose telephone number is (571)272-3763. The examiner can normally be reached 9:5-30.
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, KEVIN YOUNG can be reached on 571-270-3180. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/PHUONG N HOANG/ Examiner, Art Unit 2194
/KEVIN L YOUNG/Supervisory Patent Examiner, Art Unit 2194