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 .
DETAILED ACTION
In response to the Communications dated March 31, 2026, claims 1-20 are active in
this application.
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.
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 18-20 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 enablement requirement. 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.
In the specification, paragraphs 0006 and 0019, the disclosure indicate a “library of circuit designs”, which implies a collection of multiple designs; however, it only provides one specific “design for a memory circuit.” This one specific design does not enable the entire range (of the “library”). Therefore, there would be a need to perform “undue experimentation” to create other members of the claimed library that are not explicitly describe.
In the specification, paragraph 0006, there is a disclosure of an aspect of the invention that includes “a library of circuit designs”. The disclosure then gave an example that “the library has a design for a memory circuit.” The specification proceed, in paragraph 0019, in disclosing that ”a library of circuit designs that can be used in the design and construction of electronic circuits.” However, the specification does not disclose specific, concrete designs and the underlying code or format that allows them to function as a library (e.g., in a computer-aided design system). Merely stating a "design for a memory circuit" is insufficient because the specification does not describe its specific structure or the improvement it provides over prior art. Additionally, the claim as written may be seen as claiming a result or function without describing the specific structure that achieves it, especially when the specification does not detail the implementation.
Claims 19 and 20 are rejected because they depend on the issues of the claim from which they depend.
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 18-20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception (i.e., a law of nature, a natural phenomenon, or an abstract idea) without significantly more.
Specifically, representative CLAIM 18 recites:
“A library of circuit designs stored on a computer readable memory and used for the design and construction of electronic circuits, wherein the library includes a circuit design of the memory circuit of Claim 1.”
The claim limitations in the abstract idea have been highlighted in bold above, the remaining limitations are “additional elements”.
First part of the eligibility analysis, we determine whether the claims are to a statutory category by considering whether the claimed subject matter falls within the four statutory categories of patentable subject matter identified by 35 U.S.C. 101: process, machine, manufacture, or composition of matter. The above claim does not fall in any of the above four categories, but rather is directed to a collection of abstract ideas (designs, mental process, or data structures). The parts pertaining to abstract ideas:
“A library of circuit designs”: This acts as a collection of data, which is considered an abstract idea (data gathering/storage).
“Stored on a computer readable memory”: This represents a “generic computer implementation” of an abstract idea, which does not add eligibility, according to Alice Corp. v. CLS Bank.
“Used for the design and construction of electronic circuits”: This describes the function of the library, which is a method of managing data or a mental process of designing circuits, rather than a technical improvement to the computer itself.
Additionally, the claim constitutes an abstract idea because it is analogous to other ideas identified as abstract in court decisions. For instance, Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473 (Fed. Cir. 2016). The Federal Circuit held that claims directed to a method for translating a functional description of a logic circuit into a hardware component—effectively generating a library of circuit designs—were patent-ineligible under § 101.
Next, we consider whether the claim recites a judicial exception (abstract idea). In the above claim, the highlighted portion constitutes an abstract idea because, under the broadest reasonable interpretation, it recites limitations that recite an abstract idea exception. Specifically, under the 2019 Revised Patent Subject matter Eligibility Guidance, it falls into the groupings of subject matter that covers mathematical concepts – mathematical relationships, mathematical formulas or equations, mathematical calculations and mental processes – concepts performed in the human mind including an observation, evaluation, judgment, and/or opinion. With regards to a design, it is treated as belonging to the mental process grouping. The design involves putting together components to make a particular circuit.
Then, we consider whether the claim that recites a judicial exception is integrated into a practical application. In this step, we evaluate whether the claim recites additional elements that integrate the exception into a practical application of that exception.
The additional elements in the claim, independent claim 1, even though claim 1 is patentable, a collection of description or digital representations of that circuit (a “library of designs”) is still simply data – an intangible concept or “abstract idea” – if it does not actually improve the computer or the physical manufacturing process itself. Additionally, including a patentable item (Claim 1) inside a library does not make the library itself a concrete, technical improvement. An abstract idea (the library) cannot be made eligible by including a valid claim (the circuit) inside its description. Further, the claim focuses on what is stored (the library of designs) rather than how the computer uses the library in an innovative way to improve the design process. Therefore, the library just stores the additional components of Claim 1 as a file or data record, it does not add significantly more – merely storing a patentable object is not the same as a technological improvement to the computer or system storing it.
Dependent claims 19 and 20 contains a further “additional element”, namely the design for the memory circuit includes a layout of logic gates for the address decoder as well as indication of the memory being of a lower-level cache. However, the claims do not include additional elements that are sufficient to amount to significantly more than the abstract idea because merely storing a patentable object is not the same as a technological improvement to the computer or system storing it.
Remarks
Applicant's arguments filed March 31, 2026 have been fully considered but they are not
persuasive.
Applicant argued that the amendment of claim 18 has overcome the 112, first paragraph rejection. The Examiner respectfully disagrees. The amended claim still indicates a library that covers a range of circuit designs, not just one singular circuit as recited in claim 1, which Claim 18 is now dependent upon. Therefore, the Examiner maintains that the 112, first paragraph rejection is still applicable to the amended claim.
Additionally, Applicant argued that “…amended Claim 18 includes a circuit design of a novel memory circuit. As such, even assuming that Claim 18 includes a judicial exception, Claim 18 provides an advancement in the art and includes significantly more than the purported judicial exception. Accordingly, Claim 18 is at least eligible under Pathway C of the subject matter analysis of MPEP 2106.” The Examiner respectfully disagrees.
Claim 18 is directed to a “library of circuit designs stored on a computer readable memory and used for the design and construction of electronic circuits.” This remains rejectable under MPEP 2106 for the following reasons:
Directed to an Abstract Idea (Step 2A – Prong 1): A library of circuit designs is a collection of data, which is an abstract idea. It is a way of storing information.
Lack of Integration into a Practical Application (Step 2A – Prong 2): The claim does not describe a specific technical improvement in how the library is created or used, but rather just describe the result of using a library (e.g., “using a library to construct a circuit”), it fails to integrate the abstract idea into a practical application.
No “Significantly More” (Step 2B): Merely storing a library on a “computer-readable memory” (a generic computer component) is considered routine or conventional activity – adding a computer-readable memory to an abstract idea does not transform it into an inventive concept. The court has stated that implementing an abstract idea on a generic computer is not patent-eligible.
Therefore, even when depending on the allowed claim, the added limitations of Claim 18 (the library) do not solve a technical problem in a non-conventional way. The library, as described, is just a “data structure” used for a purpose. It does not improve the computer’s functionality, nor does it provide a new way of fabricating the circuit that is not already covered by the allowed claim. The combination does not provide an “inventive concept” (Step 2B), as the library remains an abstract tool, and the “significantly more” part of the analysis (2B) is not satisfied.
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 response to this final action is set to expire THREE MONTHS from the date of this action. In the event a first response is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event will the statutory period for response expire later than SIX MONTHS from the date of this final action.
Allowable Subject Matter
Claims 1-17 are allowable over the prior art of records.
The following is an Examiner's statement of reasons for the indication of
allowable subject matter: the prior art of records does not show (in addition to the other
elements in the claim) the following:
-with respect to claim 1: one or more of the multiple decoders include a first pair and a second pair of unclocked logic gates, wherein the first pair share a first internal node and the second pair share a second internal node.
-with respect to claim 10: one or more of the multiple decoders include at least a first pair and a second pair of unclocked logic gates, wherein the first pair share a first internal node and the second pair share a second internal node.
Conclusion
For applicant’s benefit portions of the cited reference(s) have been cited to aid in
the review of the rejection(s). While every attempt has been made to be thorough and consistent within the rejection it is noted that the PRIOR ART MUST BE CONSIDERED IN ITS ENTIRETY, INCLUDING DISCLOSURES THAT TEACH AWAY FROM THE CLAIMS. See MPEP 2141.02 VI.
When responding to the Office action, Applicants are advised to provide
the Examiner with line and page numbers of the application and/or references cited to assist the Examiner in the prosecution of this case.
Any inquiry concerning this communication or earlier communications
from the Examiner should be directed to Michael T. Tran whose telephone number is (571) 272-1795. Interview agendas may be emailed to Michael.tran@uspto.gov. The Examiner can normally be reached on Monday-Thursday from 6:00AM-4:30 P.M.
Any inquiry of a general nature or relating to the status of this application.
should be directed to the Group receptionist whose telephone number is (571) 272-1650.
/MICHAEL T TRAN/Primary Examiner, Art Unit 2827 April 23, 2026
Prosecution Insights