DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Priority
Applicant claims continuation of and claims priority to US 17/502,654 filed 15 October 2021 (now U.S. Patent No. 12,093,987 Issued 17 September 2024), which itself claims priority from and is a continuation of US Application No. 11/925,714 filed 26 October 2007 (now U.S. Patent No. 11,157,977 Issued 26 October 2021).
Information Disclosure Statement
The IDS submitted on 8/14/2024 has been considered.
Drawings
The replacement drawings were received on 4/3/2026. These drawings are acceptable.
Status of Claims
Applicant’s claims, filed 4/3/2026, have been entered. Claims 1 and 2 have been amended. Claim 6 is new. Claims 1-6 are currently pending in this application and have been examined.
Indication of Subject Matter Overcoming Prior Art
Claims 1-6 are novel in view of the prior art and would be allowable if rewritten to overcome the claim rejection(s) under 35 U.S.C. 101 set forth in this Office Action.
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 1-6 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claim(s) recite(s) an abstract idea. This judicial exception is not integrated into a practical application. The claim(s) does/do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Under Step 1 of the Alice/Mayo test the claims are directed to statutory categories. Specifically, the method, as claimed in claims 1-6, are directed to a process (see MPEP 2106.03).
Under Step 2A (prong 1), claim 1, taken as representative, recites at least the following limitations (emphasis added) that recite an abstract idea:
receiving a design image from a user;
receiving a target image, wherein the target image includes a surface with geometric markers;
performing a warp process by,
generating a grid mapping of a flat surface using the markers;
generating a grid mapping of a non-flat surface using the markers;
correlating the grid mapping of the non-flat surface markers to the grid mapping of the flat surface markers;
generating contour curves using the grid mapping of the correlated non-flat surface markers based on interpolating positions of the target image of the correlated non-flat surface markers; and
warping the received design image using the generated contour curves; and
applying the warped design image to the target image by replacing the geometric markers on the surface in the target image with the warped design image.
These limitations recite certain methods of organizing human activity, such as performing commercial interactions (see MPEP 2106.04(a)(2)(II)). Certain methods of organizing human activity are defined by MPEP 2106.04 as including “fundamental economic principles or practices (including hedging, insurance, mitigating risk); commercial or legal interactions (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations); managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).” In this case, the abstract ideas recited in representative claim 1 are certain methods of organizing human activity because warping a design image from a user to a target image is a commercial or legal interaction because it is a advertising, marketing or sales activity, or business relations. This is described in the Specification as enabling a user to see a customized product with a design prior to making a purchase (see “Background” section of Specification).
Thus, claim 1 recites an abstract idea.
Under Step 2A (prong 2), if it is determined that the claims recite a judicial exception, it is then necessary to evaluate whether the claims recite additional elements that integrate the judicial exception into a practical application of that exception (see MPEP 2106.04). As stated in the MPEP, when “an additional element merely recites the words ‘apply it (or an equivalent) with the judicial exception, or merely uses a computer as a tool to perform an abstract idea,” the judicial exception has not been integrated into a practical application.
In this case, representative claim 1 does not include any additional elements. As such, under Step 2A (prong 2), claim 1 does not integrate the recited exception into a practical application.
However, in the interest of compact prosecution, Examiner will analyze claim 1, arguendo, as if the limitations of claim 1 were computer implemented as described in the Specification. Even if the limitations, arguendo, were computer implemented, the additional elements of a computer comprising a processor and executing instructions to perform the process, taken alone or in combination, are not sufficient to integrate the abstract idea into a practical application. These, arguendo, additional elements merely amount to the general application of the abstract idea to a technical environment and insignificant pre-and-post solution activity (receiving information). The specification makes clear the general-purpose nature of the technological environment. This is because the, arguendo, 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 the abstract idea) (see Fig. 1; paragraph 2 of page 4). The specification indicates that while exemplary general-purpose systems may be specific for descriptive purposes, any elements capable of implementing the claimed invention are acceptable. That is, the technology used to implement the invention is not specific or integral to the claim. The description demonstrates that these additional elements are merely generic devices such as a generic computer. Further, the additional elements do no more than generally link the use of a judicial exception to a particular environment or field of use (such as the Internet or computing networks).
Therefore, considered both individually and as an ordered pair, the additional elements do no more than generally link the use of the abstract idea to a particular technological environment or field of use. That is, given the generality with which the additional elements are recited, the limitations do not implement the abstract idea with, or use the abstract idea in conjunction with, a particular machine or manufacture that is integral to the claim. Additionally, the claims do not reflect an improvement in the functioning of a computer, or an improvement to other technology or technical field, do not transform or reduction of a particular article to a different state or thing; and do not apply or use the abstract idea in some other meaningful way beyond generally linking the use of the abstract idea to a particular technology environment, such that the claim as a whole is more than a drafting effort designed to monopolize the abstract idea into a practical application, and is therefore “directed to” the abstract idea.
In addition to the above, the recited receiving and displaying steps (even assuming arguendo they do not form part of the abstract idea, which the Examiner does not acquiesce), are at best little more than extra-solution activity (e.g., data gathering, presentation of data) that contributes nominally or insignificantly to the execution of the claimed system (see MPEP 2106.05(g)).
In view of the above, under Step 2A (prong 2), claims 21 and 27 do 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). As noted above in this case, representative claim 1 does not include any additional elements. As such, under Step 2B, claim 1 does not include additional elements that are sufficient to amount to significantly more than the judicial exception.
However, in the interest of compact prosecution, Examiner will analyze claim 1, arguendo, as if the limitations of claim 1 were computer implemented as described in the Specification. In this case, the claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception.
Returning to claim 1, taken individually or as a whole the, arguendo, additional elements of claim 1 does 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, arguendo, 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.
Furthermore, the, arguendo, additional elements fail to provide significantly more also because the claim simply appends well-understood, routine, conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception. For example, the, arguendo, additional elements of claim 1utilize operations the courts have held to be well-understood, routine, and conventional (see: MPEP 2106.05(d)(II)), including at least:
receiving or transmitting data over a network,
storing or retrieving information from memory,
presenting offers
Even considered as an ordered combination (as a whole), the, arguendo, 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 claims 2-6
Dependent claim(s) 2-6, when analyzed as a whole, are held to be patent ineligible under 35 U.S.C. 101 because they do not add “significantly more” to the abstract idea. More specifically, dependent claim(s) 2-6 merely further define the abstract limitations of claim(s) 1 or provide further embellishments of the limitations recited in independent claim claim(s) 1.
Claims 2-6 set forth:
applying a surface specular process to the warped design image and using the surface specular process with a shaded, warped design.
colorizing the target image using a color mapping model.
wherein the colorizing includes color calibration card with a known spectral response for each session to calibrate images.
applying surface shading to the warped design image in the target image.
wherein colorizing the target image using the color mapping model includes wrapping fabric onto a sphere and mapping the sphere to the target image to change a color of the target image.
Such recitations merely embellish the abstract idea of warping a design image from a user to a target image. The claims do not set forth any further additional limitations, and therefore such abstract embellishments are applied to the additional limitations recited in claim(s) 1, which do no more than generally link the use of the abstract idea to a particular technological environment, do not integrate the abstract idea into a practical application, and do not provide an inventive concept. Accordingly, the claims do not confer eligibility on the claimed invention and is ineligible for similar reasons to claim(s) 1.
Thus, dependent claims 2-6 are ineligible.
Response to Arguments
Applicant’s arguments, on page 5 of the Remarks filed 4/3/2026, with respect to the previous claim objections have been fully considered and are persuasive in view of the currently amended claims. Accordingly the previous claim objections of the claims are withdrawn.
Applicant’s arguments, on page 5 of the Remarks filed 4/3/2026, with respect to the previous drawing objections have been fully considered and are persuasive in view of the replacement drawings submitted 4/3/2026. Accordingly the previous drawing objections are withdrawn.
Applicant’s arguments, on pages 5-6 of the Remarks filed 4/3/2026, with respect to the previous nonstatutory double patenting rejections have been fully considered and are persuasive in view of the amendments to the claims. Accordingly the previous nonstatutory double patenting rejections are withdrawn.
Applicant’s arguments, on page 6 of the Remarks filed 4/3/2026, with respect to the previous 35 USC §112(b) rejections have been fully considered and are persuasive in view of the amendments to the claims. Accordingly the previous 35 USC §112(b) rejections are withdrawn.
Applicant’s arguments, on pages 6-9 of the Remarks filed 4/3/2026, with respect to the previous 35 USC §101 rejections have been fully considered but they are not persuasive.
Applicant argues on pages 6-7 that the amended claims are not directed to a judicial exception (i.e., an abstract idea). Examiner respectfully disagrees. Applicant is reminded that in Prong One examiner evaluate whether the claim recites a judicial exception, i.e., whether a law of nature, natural phenomenon, or abstract idea is set forth or described in the claim. Despite Applicant’s assertion to the contrary, the Examiner maintains that the claims clearly set forth or describe abstract idea(s) for those reasons set forth previously. Therefore, the instant claims are unlike the claims in Enfish, as the instant claims recite an abstract idea. Further, warping a design image from a user to a target image is an abstract idea known from the pre-Internet world and the claimed solution is not necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks.
Moreover, Applicant’s own assertion that the claims are directed towards “modeling a piece of apparel” by “provide a system and method that provides better models for products” and “it is desirable to be able to display a product (with an irregular surface) with a design on it” (see pages 1-4 of the Specification) is itself an abstract idea and underscores the Examiner’s findings under Prong One. While Applicant argues the claims recite a specific, technical method of computer image processing, Examiner notes that as currently claimed, the claims do not require a computer and no additional elements have been claimed. Accordingly, the specific computational and geometric operations recited within the claims are encompassed within the abstract idea.
Examiner notes the arguments directed to practical applications and computer improvements are analyzed under Step 2A, Prong Two and not within Step 2A, Prong One.
Accordingly, Examiner maintains the claims recite an abstract idea.
Applicant argues on pages 8-9 that the alleged abstract idea is clearly integrated into a practical application. Examiner respectfully disagrees. Examiner notes that while Applicant argues the present claims “improve the technical field of computer image processing and three-dimensional surface modeling by providing a specific method for accurately wrapping a flat design image onto a non-flat surface using geometric markers and contour curves generated though interpolation of marker positions,” as currently recited, the claims do not recite any additional elements (e.g., a computer, a processor, computer image processing, etc.). MPEP 2106.04(d) uses the term additional elements to refer to claim features, limitations, and/or steps that are recited in the claim beyond the identified judicial exception. As noted above in the full rejection of the claims, the claims do not contain any additional elements, such as hardware, beyond the abstract idea itself. Abstract ideas are not patent eligible, therefore these limitations cannot provide integration.
Therefore, the instant claims are unlike the claims in Enfish and McRO, and the Examiner maintains the claims do not recite additional elements that integrate the judicial exception into a practical application of that exception and maintains the rejection Step 2A, Prong Two.
Applicant argues on page 9 that even if the amended claims are directed to a judicial exception, the claims recite “significantly more.” Examiner respectfully disagrees. As noted above in the full rejection of the claims, the claims do not contain any additional elements, such as hardware, beyond the abstract idea itself. Unlike the claimed invention in Bascom, Applicant’s claims do not recite any additional elements, and therefore the additional elements cannot pertain to an “improvement” to the functioning of a computer or to another technology (see MPEP 2106.04(a) and 2106.05(a)). In Bascom the inventive concept provided improvement in internet technology by the non-conventional and non-generic arrangement of known, conventional pieces. Specifically, the Federal Circuit identified that the Bascom patent describes how the claims particular arrangement of elements is a technical improvement over prior art ways of filtering such content, and was therefore considered an improvement to an existing technological process. The instant claims are not directed to improving “the existing technological process” requiring the generic components to operate in an unconventional manner to achieve an improvement in computer functionality or requiring the non-conventional and non-generic arrangement of known, conventional pieces to improve a technical process as the claims themselves do not recite any additional elements. As currently recited, the instant claims are directed to improving the argued business task of “warping a design image from a user to a target image” (i.e., the abstract idea). Therefore, the instant claims are unlike the claims in Bascom and the Examiner maintains the claims do not recite additional elements that integrate the judicial exception into a practical application of that exception. Contrary to Applicant’s assertion, the improvements manifested by the claimed invention, which include the dependent claims, are improvements to the abstract idea itself, not the computer or another technology or technical field.
Accordingly, Examiner maintains as the claims recite no additional elements, the argued additional elements do not render the claim as being significantly more than the underlying abstract idea.
Accordingly, the Examiner maintains the 101 rejection of the claims.
Applicant’s arguments, on pages 10-13 of the Remarks filed 4/3/2026, with respect to the previous 35 USC §103 rejections have been fully considered and are persuasive in view of the amendments to the claims. Accordingly the previous 35 USC §103 rejections have been withdrawn.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LINDSEY B SMITH whose telephone number is (571)272-0519. The examiner can normally be reached Monday - Friday 9-6 EST.
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LINDSEY B. SMITH
Examiner
Art Unit 3688
/LINDSEY B SMITH/Examiner, Art Unit 3688
/Jeffrey A. Smith/Supervisory Patent Examiner, Art Unit 3688
Prosecution Insights