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 .
Response to Amendment
In light of Applicant's submission filed January 30, 2026, the Examiner has maintained and updated the 35 USC § 101 and 103 rejections.
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.
The claims herein are directed to a method and system which would be classified under one of the listed statutory classifications. Claims 1-12 are rejected under 35 U.S.C. 101 because the claimed invention is directed to abstract idea without significantly more. The claim(s) recite(s) the following limitations that are considered to be abstract ideas:Claims 1 and 7
executing a design software application configured to display on a screen in communication a design view for creating design projects to be cut associated with a user, the design view including a virtual mat viewdisplaying: a virtual material representing an actual material for cutting; and
a content object on a portion of the virtual material; receiving a user input indication indicating selection of the content object displayed on the portion of the virtual material;
while the content object displayed on the portion of the virtual material is selected, receiving an auto-fill command to duplicate display of the selected content object until the duplicated content objects displayed on the virtual material fill the virtual material; and based on receiving the auto-fill command, executing the auto-fill command to cause the virtual mat view to duplicate, for display on the virtual material, the selected content object to fill the virtual material and visually show how much of the virtual material is occupied by the duplicated content objects. The limitations of independent claims 1 and 7, as detailed above, as drafted, falls within the “Mental Processes” and/or “Certain Method of Organizing Human Activity” grouping of abstract ideas namely concepts performed in the human mind (including an observation, evaluation, judgment, opinion) and/or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions) because the claims disclose receiving user input, duplicating and arranging design object and displaying virtual design objects. Accordingly, the claims recite an abstract idea This judicial exception is not integrated into a practical application. In particular the claims recite the additional elements of using data processing hardware, memory hardware, and electronic cutting machine. The aforementioned additional generic computing elements perform the steps of the claims at a high level of generality (i.e. As a generic medium performing generic computer function of executing, displaying and receiving) such that it amounts no more than mere instructions to apply the exception using a generic computer component. Accordingly, this additional element does not integrate the abstract idea into a practical application because it does not impose any meaningful limits on practicing the abstract idea. The claim is directed to an abstract idea.
The claim does not include additional elements that are sufficient to
amount to significantly more than the judicial exception. The claims does not include additional elements that are sufficient to amount to significantly more than the judicial exception As discussed above with respect to integration of the abstract idea into a practical application, the additional element of data processing hardware, memory hardware, and electronic cutting machine., to executing, displaying and receiving amounts to no more than mere instruction to apply the exception using a generic computer component. Mere instructions to apply an exception using a generic computer component cannot provide an inventive concept. The claim is not patent eligible. Thus, taken alone, the additional elements do not amount to significantly more than the above-identified judicial exception (the abstract idea). Looking at the limitations as an ordered combination adds nothing that is not already present when looking at the elements taken individually. There is no indication that the combination of elements improves the functioning of the computer or improves any other technology. Their collective functions merely provide generic computer implementation.
Thus, taken individually and in combination, the additional elements do not amount to
significantly more than the above-identified judicial exception (the abstract idea).
The dependent claims 2-6 and 8-12 appear to merely further limit the abstract idea and as such, the analysis of dependent claims 2-6 and 8-12 results in the claims “reciting” an abstract idea. The claims do not recite additional elements that integrate the exception into a practical application. the additional elements do not amount to an inventive concept (significantly more) other than the above-identified judicial exception (the abstract idea). Thus, based on the detailed analysis above, claims 1-12 are not patent eligible.
Claim Rejections - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claim(s) 1-12, is/are rejected under 35 U.S.C. 103 as being unpatentable over Johnson et al. (US 2009/0000444) in view of Sigtryggsson et al. (US 2005/0240300)
Claim 1 and 7: Johnson discloses a computer-implemented method and system executing on data processing hardware that causes the data processing hardware to perform operations comprising:([0059], processor) executing a design software application configured to display on a screen in communication with the data processing hardware a design view for creating design projects to be cut by an electronic cutting machine associated with a user, the design view displaying: a virtual material representing an actual material for cutting on the electronic cutting machine; ([0059] will change parameters visible on the user display 35. For example, the dial 20 may be employed to modify the size of the image or shape to be cut. Thus, rotation of the dial 20 triggers a change in the image size shown in the display), and
a content object on a portion of the virtual material; ([0072], This allows the user to enter a character and then choose a particular creative feature to be added to that character (such as one of the character features 152 shown in FIG. 4). The OK button 65 is provided to allow the user to proceed since the selection resets the environment back to only one feature selected.) receiving a user input indication indicating selection of the content object displayed on the portion of the virtual material;[0072]
while the content object displayed on the portion of the virtual material is selected, receiving an auto-fill command to duplicate display of the selected content object until the duplicated content objects displayed on the virtual material fill the virtual material;([0073 and 0083], The Auto Fill feature would automatically fill the page to be cut with the selected images.) and but does not explicitly disclose the design view including a virtual mat view displaying; based on receiving the auto-fill command, executing the auto-fill command to duplicate, for display on the virtual material, the selected content object to fill the virtual material, and visually show how much of the virtual material is occupied by the duplicated content objects..(0073 [0133]. , An "auto-fill" feature may be used to fill a page with as many instances of the current character/shape as will generally fit on the remainder of the page. The auto-fill feature can be useful when cutting a large number of the same shape.) However Sigtryggsson the design view including a virtual mat view displaying; [0044] virtual mat view to duplicate, for display on the virtual material, ([0044] Graphic display 180 then provides the operator with power tools to plan and preview the cutting and/or machining operations prior to sheet of material 10 actually being cut.)
It would have it would have been obvious to a person of ordinary skill in the art before the effective filing date to have modified the method and system of Johnson to have included a virtual mat view. The reference of Johnaosn and Sigtryggsson both discloses electronic cutting machines. Since each individual element and its function are shown in the prior art, albeit shown in separate references, the difference between the claimed subject matter and the prior art rests not on any individual element or function but in the very combination itself- that is in the substitution of the method and system, design view of Sigtryggsson for the display view of Johnson. Thus, the simple substitution of one known element for another producing a predictable result renders the claim obvious.
Claim 2, 8: Johnson discloses the computer-implemented method of claim 1 and system of claim 7, wherein executing the auto-fill command causes the virtual mat view to duplicate, for display on the virtual material, the selected content object to fill the virtual material by repeating display of the selected design object on the virtual material in a grid pattern. [0073,0083, and 0133]
Claims 3, 9: Johnson discloses the computer-implemented method of claim 1 and system of claim 7, wherein executing the auto-fill command causes the virtual mat view to duplicate, for display on the virtual material, the selected content object as many times as possible until the duplicated content objects displayed on the virtual material fill the virtual material. 0073,0083, and 0133]
Claims 4, 10: Johnson discloses the computer-implemented method of claim 3 and system of claim 9, wherein the design duplicates, for display on the virtual material, the selected content object as many times as possible without having any partial content objects duplicated for display on an edge of the virtual material. [0109]
Claims 5, 11: Johnson discloses the computer-implemented method of claim 1 and system of claim 7, wherein the virtual material representing an actual material comprises a virtual paper representing actual paper for cutting on the electronic cutting machine. [0056 and 0067] Claims 6, 12 The computer-implemented method of claim 1 and system of claim 7, wherein the operations further comprise: receiving a cut command to cut the duplicated content objects displayed on, and filling, the virtual material; and based on the received cut command, instructing, by the design software application, the electronic cutting machine to cut the duplicated content objects from the actual material.[0073 and 0074]
Response to Arguments
Applicant's arguments filed January 30, 2026 have been fully considered but they are not persuasive.
The applicant argues the 101 rejection, that the claims describe a technical solution to a problem in the field of computer aided design for electronic cutting machine. The Examiner respectfully disagrees the claims do not recite any technological improvement to the operation of the computer, display device, or electronic cutting, device, etc. (Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)) The applicant also argues that the claims are not directed to an abstract idea, because the human mind is not equipped to perform. The Examiner respectfully disagrees, merely displaying information that corresponds to a physical object does not remove the claim being a mental process. The claims as a whole recites receiving user selections, duplicating design objects, determining when available space has been filled and displaying the results. The aforementioned features are observations, evaluations, and manual graphical manipulations that constitute a mental process being performed with a generic computer that merely automates the stated features. The use of a graphical interface does not transform the abstract idea into patent eligible subject matter. (see MPEP 2106.04 –
. Using a computer as a tool to perform a mental process. An example of a case in which a computer was used as a tool to perform a mental process is Mortgage Grader, 811 F.3d. at 1324, 117 USPQ2d at 1699. The patentee in Mortgage Grader claimed a computer-implemented system for enabling borrowers to anonymously shop for loan packages offered by a plurality of lenders, comprising a database that stores loan package data from the lenders, and a computer system providing an interface and a grading module. The interface prompts a borrower to enter personal information, which the grading module uses to calculate the borrower’s credit grading, and allows the borrower to identify and compare loan packages in the database using the credit grading. 811 F.3d. at 1318, 117 USPQ2d at 1695. The Federal Circuit determined that these claims were directed to the concept of "anonymous loan shopping", which was a concept that could be "performed by humans without a computer." 811 F.3d. at 1324, 117 USPQ2d at 1699. Another example is Berkheimer v. HP, Inc., 881 F.3d 1360, 125 USPQ2d 1649 (Fed. Cir. 2018), in which the patentee claimed methods for parsing and evaluating data using a computer processing system. The Federal Circuit determined that these claims were directed to mental processes of parsing and comparing data, because the steps were recited at a high level of generality and merely used computers as a tool to perform the processes. 881 F.3d at 1366, 125 USPQ2d at 1652-53.
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. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed "conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally," i.e., "as a person would do it by head and hand."); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of "translating a functional description of a logic circuit into a hardware component description of the logic circuit" are directed to an abstract idea, because the claims "read on an individual performing the claimed steps mentally or with pencil and paper"). Mental processes performed by humans with the assistance of physical aids such as pens or paper are explained further below with respect to point B.
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 the Federal Circuit has explained, "[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind." Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer"). Mental processes recited in claims that require computers are explained further below with respect to point C.
The applicant further argues the 101 rejection by citing [0043, 0049 and [0053] as an indication of technical problem and explains the details of an unconventional technical solution. The Examiner respectfully disagrees the claimed visually show how much of the virtual material is occupied merely presents the results of the duplication process to the user. Merely displaying this information does not improve the functioning of the computer, other technology or technical field. The limitation when viewed individually, nor the claim as a whole merely assist the user in making design decisions but does not recite any improvement to a graphical user interface, functioning of the computer(e.g. memory, processor, etc.), nor does it improve the functioning of electronic cutting machine itself.
Thea applicant further argues the 101 rejection, by stating, “it is a real-time, computer-generated graphical calculation and rendering. A human mind cannot practically calculate the optimal tessellation of complex geometric glyphs onto a bounded area and simultaneously render a visual occupancy report in real-time.” The Examiner respectfully disagrees, eligibility isn’t based on if the claimed process is difficult, fast, or complex calculation. MPEP 2106.04 gives several examples of limitations that are not mental processes. The examples given cannot be practically performed in the human mind. For example, • a claim to a method for calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals, where the claimed GPS receiver calculated pseudoranges that estimated the distance from the GPS receiver to a plurality of satellites, SiRF Tech., 601 F.3d at 1331-33, 94 USPQ2d at 1616-17; Whereas the applicant’s claims are more a kin to the example deemed mental processes such as • a claim to "collecting information, analyzing it, and displaying certain results of the collection and analysis," where the data analysis steps are recited at a high level of generality such that they could practically be performed in the human mind, Electric Power Group v. Alstom, S.A., 830 F.3d 1350, 1353-54, 119 USPQ2d 1739, 1741-42 (Fed. Cir. 2016);
The applicant further argues that the claims recite a technical method for generating a machine executable design project and that this is a tool driven technological process, not a social or managerial activity. The Examiner agrees with the applicant’s admission the claims are merely using the computer/electronic cutting machine as a tool to implement the abstract idea. Per MPEP 2106.05(f) - Adding the words “apply it” (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea - see MPEP 2106.05(f) Furthermore, merely limiting the abstract idea to a particular technological environment does not integrate the judicial exception into a practical application. The electronic cutting machine is merely intended field of use. See MPEP 2106.05(h) - Generally linking the use of the judicial exception to a particular technological environment or field of use. The aforementioned cited paragraphs of the applicant’s specification merely disclose manipulation of the software. A person of ordinary skill in the art would not be able to discern a technical problem and unconventional technical solution. Nor do the cited paragraphs recite any specific improvement to computer functionality, any other technology or technical field. Instead the claim merely recites a generic graphical user interface performing operations executed on generic data processing hardware. The applicant further argues dependent claims 6 and 12, as stated in the previous office action the dependent claims merely further limit the abstract idea. Claims 6 and 12 merely use an output of the abstract idea to perform a cutting operation. The claims do not recite any improvement to the operation of the cutting machine, any improvement to the cutting process itself, nor does it recite any medication of machine functionality. The cutting machine merely performs it ordinary function of cutting materials according to the generated design. As stated above the additional limitations merely apply the abstract idea in a particular technological environment and do not integrate the judicial exception into a practical application.
The applicant further argues that the claims represent provides a specific technical improvement to a design software interface, the Examiner respectfully disagrees foremost the claims do not recite a graphical user interface, they merely imply that a user interface is present via displaying and receiving inputs. Furthermore, the claims merely broadly recite displaying information, receiving user inputs, and displaying the resulting layout. The claims do not specify any particular interface, display mechanism, or other technological improvement in the operation of a user interface. Instead the recited display and inputs merely implement the abstract idea on generic computer technology. Limitations that are indicative of integration into a practical application:
Improvements to the functioning of a computer, or to any other technology or technical field - see MPEP 2106.05(a)
Applying or using a judicial exception to effect a particular treatment or prophylaxis for a disease or medical condition – see Vanda Memo
Applying the judicial exception with, or by use of, a particular machine - see MPEP 2106.05(b)
Effecting a transformation or reduction of a particular article to a different state or thing - see MPEP 2106.05(c)
Applying or using the judicial exception in some other meaningful way beyond generally linking the use of the judicial exception to a particular technological environment, such that the claim as a whole is more than a drafting effort designed to monopolize the exception - see MPEP 2106.05(e) and Vanda Memo
The applicant’s claims do not have limitations that are indicative of integration into a practical application. Thus the 35 USC 101 rejection is maintained.
The arguments regarding the prior art are moot in view of the new grounds of rejection above.
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 DARNELL A POUNCIL whose telephone number is (571)270-3509. The examiner can normally be reached Monday - Friday 10:00 - 6:00.
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/D.A.P/Examiner, Art Unit 3622
/ILANA L SPAR/Supervisory Patent Examiner, Art Unit 3622
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