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 .
Terminal Disclaimer
The terminal disclaimer filed on 10/27/2025 disclaiming the terminal portion of any patent granted
on this application which would extend beyond the expiration date of co-pending application 17/689,813 has been reviewed and is accepted. The terminal disclaimer has been recorded.
Response to Amendment
The amendment filed 10/27/2025 has been entered. As directed, no claim have been amended,
canceled or added. Thus claims 1-20 remain pending in the application.
Response to Arguments
With respect to the Applicant’s argued rejection under 35 § U.S.C. 101 in “Applicant Arguments/Remarks Made in an Amendment,”:
Applicant argues:
…
Here, the streamlined eligibility analysis is appropriate and satisfied because the claims are directed to a clear improvement in an inherently computer-related technology, as in Enfish. Specifically, the claims are directed to improvement(s) in computer aided design (CAD) exchange. As explained in the Background section of Applicant's originally filed specification, it is generally known that "a CAD design can represent a mechanical design as one or more CAD bodies," but "[e]xchanging these bodies between different systems has traditionally challenged CAD" as a field. Specification, paragraph [0003]. "For example, to generate a physical prototype of [an] item, or to manufacture the item, the corresponding CAD body/bodies can be exchanged with a 3-D printer or computer numerical control (CNC) machine. .. . How CAD bodies are exchanged is an important process for accurate building of parts, particularly for downstream applications along the design to manufacturing process. The goal is to have a compatible CAD file format for downstream use in other programs." Paragraph [0004]. "Unfortunately, due to nuanced differences in geometry representations," the transfer of the geometry from one system to another "is inherently unreliable." Paragraph [0005]. Furthermore, "due to differences in the semantics of the programs that produce the geometry output, it is not possible to reliably transfer the various steps used to generate a given CAD body, according to conventional approaches." Id. Indeed, conventional attempts to solve this technological problem suffer a variety of drawbacks tied to computer-based technological issues, such as the differences in computer operations or commands between different systems. Paragraphs [0006]-[0007].
An additional challenge in the field is that companies often need to share CAD models for collaborative design, manufacturing, or visualization. However, there is a critical need to do so without fully revealing "proprietary, specialized, and/or trade secret geometries and/or construction techniques." Paragraph [0042]. This protection is valuable to companies for maintaining competitive advantage and preventing unauthorized replication or reverse engineering of their designs.
Taking independent claim 1 as an example, the claimed method is directed to solving these known technical problems in CAD technology, and thereby improving a computer-related technology. Claim 1 recites:
…
The method of claim 1 addresses the technical problems described above by determining at least one implicit function and a proprietary geometry representation for a CAD body, obfuscating the proprietary geometry representation in an external function, and expressing the implicit function(s) and external function as code. The claimed method thus enables the CAD exchange to be accomplished with a smaller data transfer than in conventional methods, increases precision by avoiding the need for making approximations, enables easy consumption and use at the target system by using code as the exchange medium rather than "an unwieldly and/or poorly structured data format," and "allow[s] for increased editability at a target [system], including allowing for replayability and parametric editing with respect to the exchanged CAD body (e.g., allowing for different parameter values to be specified for the CAD body, for instance changing thicknesses or diameters in the CAD body)." Paragraph [0009]. See also paragraphs [0055]-[0056], illustrating certain advantages with reference to specific examples. Additionally, obfuscating the proprietary geometry representation in an external function is an inherently computer-based solution to the inherently computer- based problem of exchanging CAD between systems without revealing proprietary information.
Notably, the aforementioned benefits are not improvements to a mental process, mathematical concept, or other abstract idea. Instead, the benefits - e.g., reduced data transfer, increased editability at the target system, increased precision, avoidance of data structures that are difficult for the target system to use, allowing a CAD body to be displayed at a target system while protecting proprietary information from that target system - are plainly computer-related improvements to a computer-related technology. For at least this reason, the streamlined patent eligibility analysis is appropriate and is satisfied.
Importantly, this conclusion is not undermined by the extent to which the benefits are achieved via software rather than hardware. This point was emphasized by the Appeals Review Panel of the PTAB in a September 26, 2025, decision reversing a § 101 rejection introduced as a new ground of rejection by PTAB in a patent application appeal ("ARP decision").1 The ARP addressed software-based patentable improvements as follows:
Enfish ranks among the Federal Circuit's leading cases on the eligibility of technological improvements. In particular, Enfish recognized that "[m]uch of the advancement made in computer technology consists of improvements to software that, by their very nature, may not be defined by particular physical features but rather by logical structures and processes." 822 F.3d at 1339. Moreover, because "[s]oftware can make non-abstract improvements to computer technology, just as hardware improvements can," the Federal Circuit held that the eligibility determination should turn on whether "the claims are directed to an improvement to computer functionality versus being directed to an
abstract idea." Id. at 1336 (emphasis added).
Here, as in Enfish, the claims are directed to an improvement to computer functionality rather than to an abstract idea, and the eligibility determination turns on this fact. Accordingly, Applicant respectfully asserts that the streamlined analysis is appropriate and satisfied as to claim 1, and for similar reasons, also as to independent claims 8 and 15. All pending claims therefore comply with 35 U.S.C. § 101 and a full analysis under the two-part Subject Matter Eligibility Test is not required.
(see Response filed 10/27/2025 [pages 8-11]).
The examiner respectfully disagrees with applicant's argument that the streamlined eligibility analysis is appropriate and satisfied because the claims are directed to a clear improvement in an inherently computer-related technology, as in Enfish.
As explained in MPEP § 2106.06, “a streamlined eligibility analysis (Pathway A) when the eligibility of the claim is self-evident, e.g., because the claim clearly improves a technology or computer functionality. However, if there is doubt as to whether the applicant is effectively seeking coverage for a judicial exception itself, the full eligibility analysis (the Alice/Mayo test described in MPEP § 2106, subsection III) should be conducted to determine whether the claim integrates the judicial exception into a practical application or recites significantly more than the judicial exception.” In this case, the claims recite limitation such as determining at least one implicit function, obfuscating a geometry representation in an external function, and expressing the functions as code. Under their broadest reasonable interpretation in light of specification can be considered as mental process and mathematical concepts (mathematical relationships and equation). The additional limitations mere instructions to implement an abstract idea on a computer, or merely uses a computer as a tool to perform an abstract idea (MPEP § 2106.05(f)), and merely adding insignificant extra-solution activity (i.e., display CAD body) to the judicial exception (MPEP § 2106.05(g)). Therefore, eligibility is not self-evident and the streamlined path is not applicable.
The Enfish decision does not apply to the instant claims. In Enfish, the claimed invention improved the computer’s internal data operation through a specific self-referential table structure. However, the instant claims merely use conventional computing components to perform abstract representation steps for CAD geometry. The alleged improvements described in the specification related to the abstract idea itself and are not reflected in any additional limitation (e.g., providing …; displaying …) that could meaningfully limit the judicial exception. Therefore, the additional limitation does not show a specific improvement to computer functionality or to another technology or technical field.
Therefore, the examiner properly applied the full eligibility analysis to determine whether the claims integrate a judicial exception into a practical application or recite additional elements amounting to significantly more than the exception.
With respect to the Applicant’s argued rejection under 35 U.S.C. § 101 in “Applicant Arguments/Remarks Made in an Amendment,”:
Applicant argues:
…
Applying the instruction of the August 2025 Memorandum, even if the present independent claims may involve or rely on mathematical concepts such as implicit function(s), they do not recite any mathematical concept just by virtue of containing the phrase "implicit function." The Office action itself characterizes the claims as simply perhaps "represent[ing]" mathematical concepts, which Applicant believes reflects the fact that the claims involve mathematical concepts rather than reciting them. For at least the foregoing reasons, the claims do not recite a mathematical concept in the sense of Prong 1.
Second, regarding mental processes, Applicant respectfully submits that the claims do not recite any mental processes that can practically be performed in the human mind. The Office action asserts that the following portions of claim 1 are mental processes: "determining, ..., at least one implicit function and a proprietary geometry representation for a CAD body; obfuscating, with the source computing system, the proprietary geometry representation in a corresponding external function; expressing, ..., the at least one implicit function and the external function as code." Applicant submits that none of these features amount to a mental process within the meaning of Prong 1. Determining implicit function(s) for a CAD body is not a mental process because it cannot practically be performed in the human mind. This is analogous to "a claim to detecting suspicious activity by using network monitors and analyzing network packets," which the MPEP explains is not an abstract idea because "the human mind is not equipped to detect suspicious activity by using network monitors and analyzing network packets." MPEP 2106.04(a)(2)(III)(A), quoting SRI Int'l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019).
Obfuscating a proprietary geometry representation in a corresponding external function is also not a mental process, and expressing the implicit function(s) and external function as code are also not mental processes because they cannot practically be performed in the human mind. Although in some cases "[c]laims can recite a mental process even if they are claimed as being performed on a computer," MPEP 2106.04(a)(2)(III)(C), this situation generally arises only when the claim recites a mental process and generically links it to a computer environment, or incidentally uses a computer as a tool. See id., providing examples such as a system of computerizing actions "that humans have performed for hundreds of years." In contrast, obfuscating a geometry representation in an external function and expressing implicit function(s) as code are inherently computer-based steps that each produce an inherently computer- based output that exists outside the human mind (respectively, an external function, and code that expresses an implicit function and an external function).
Indeed, it is difficult to understand exactly what mental process could achieve these results. The Office action appears to state that the above-mentioned features amount to a mental process because a person could purportedly say out loud, or write by hand, "the implicit function and external function in a written or verbal format resembling code." Office action, page 15. Applicant respectfully submits that this is an unreasonable interpretation of the case law and USPTO guidance regarding mental processes. As the Federal Circuit held in CyberSource Corp. v. Retail Decisions, Inc. - the case cited by the Office action in support of this part of the rejection - a claim recites "unpatentable mental processes" if the claim's method steps themselves can all actually be performed in the human mind, "or by a human using a pen and paper." CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372 (Fed. Cir. 2011). The CyberSource court was referring to a claim that recited "obtaining information about other transactions. .","constructing a map of credit card numbers based up on the other transactions," and "utilizing the map of credit card numbers to determine if the credit card transaction is valid." CyberSource, 654 F.3d at 1370. The court's point was that a human being could use their mind (possibly aided by pen and paper) to obtain the information, construct the map, and assess validity of the transaction based on the map.
In contrast to CyberSource, the present Office action appears to assert that the claims are directed to a mental process because a person could attempt to envision (or write by hand) software code that would carry out aspects of the claimed method. By this reasoning, all software elements of a claim would always amount to mental processes, because a human being could envision or mock up on paper the code that would implement those elements. However, as described above, the USPTO has recently cautioned that in the ARP decision that "[s]oftware can make non-abstract improvements to computer technology, just as hardware improvements can." ARP decision, citing Enfish. Similarly, the August 2025 Memorandum instructs that a claim reciting "training the neural network in a first stage using the first training set" does not recite a judicial exception, despite the fact that a person could write out on paper the code that would accomplish this task. Accordingly, the possibility that a person could articulate "a format resembling code" in thought or on paper cannot legally establish that the claim features in question are mental processes. This is analogous to saying that a claim reciting a purely mechanical device is directed to a mental process just because a person could imagine or draw blueprints for the device. For at least these reasons, Applicant respectfully submits that the features identified by the Office action are not mental processes, and that the claim does not recite a mental process.
Accordingly, the pending claims do not recite any limitation that falls within one of the three groupings considered to be "abstract idea" subject matter, and therefore the claims do not recite an abstract idea. Thus, even if one proceeded with the full eligibility analysis despite it being unnecessary in this case, one should find at Step 2A, Prong 1 of the full analysis that the claims are patent eligible.
(see Response filed 10/27/2025 [pages 13-15]).
The examiner respectfully disagrees with applicant's argument that the claims merely “involve” mathematical concepts rather than “recite” them.
As explained in MPEP § 2106.04(a)(2)(I), the mathematical concepts grouping is defined as mathematical relationships, mathematical formulas or equations, and mathematical calculations … A mathematical relationship is a relationship between variables or numbers. A mathematical relationship may be expressed in words or using mathematical symbols. For example, pressure (p) can be described as the ratio between the magnitude of the normal force (F) and area of the surface on contact (A), or it can be set forth in the form of an equation such as p = F/A. Examples of mathematical relationships recited in a claim include:
i. a relationship between reaction rate and temperature, which relationship can be expressed in the form of a formula called the Arrhenius equation, Diamond v. Diehr; 450 U.S. at 178 n. 2, 179 n.5, 191-92, 209 USPQ at 4-5 (1981).
The instant claims recites such mathematical subject matter.
Claim 1 explicitly requires:
“determining … at least one implicit function … for a CAD body,” and
“expressing … the implicit function … as code.”
The specification defines the “implicit function” as one or more equations describing geometric relationship of the CAD body ([0031], [0035], Fig.4). Under a broadest reasonable interpretation in light of the specification, determining and expressing the “implicit function” requires forming and representing equations defining spatial geometry. These are mathematical relationships and equations as described in the 2019 PEG.
The Diehr example illustrates the type of mathematical relationship that counts have identified as a mathematical concept (e.g., a relationship between reaction rate and temperature expressible as a formular). Likewise, the instant claim recites equations describing relationships between CAD-body geometry and the correspond code.
Therefore, the limitation is directed to a mathematical concept, similar to the comparison steps in MPEP 2106.04(a)(2)(I).
Furthermore, the examiner respectfully disagrees with applicant's argument that the claims do not recite any mental processes that can practically be performed in the human mind.
Under the broadest reasonable interpretation in light of specification, claim 1 recites observing and evaluating a CAD model feature to determining at least one implicit function and a proprietary geometry representation, transforming that representation through obfuscation, and expressing the results as code. The claim does not specify the complexity of the implicit function, any particular technique for obfuscation, or any defined coding format. When the claim recites these high-level conceptual operations on geometric information without limiting how they must be performed, the steps reasonably amount to evaluating information and rewriting the information into a different form, which can be performed mentally or by using pencil and paper. This is consistent with the analysis in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011), which explains that a method step constitutes a mental process when it can be performed in human mind or with pen and paper, even if the claim nominally recites a computer. Therefore, the limitations reasonably fall within the “mental processes” grouping of abstract ideas (MPEP 2106.04(a)(2)(III).
The SRI Int’l, Inc. v. Cisco Systems, Inc., 930 F.3d 1295, 1304 (Fed. Cir. 2019) case recited by applicant is not persuasive. In SRI, the claims required specific computer network monitoring operations that continuously analyzed data packets to detect suspicious actively. These steps necessarily involved active machine-based processing that cannot be performed mentally. In contrast, the instant claims do not recite real-time monitoring or continuous computer operation. They merely describe evaluating geometric relationships and expressing them as code without requiring any particular computer technique. There steps can be performed mentally when the claim does not restrict how they must be implemented.
Applicant also cites the Appeals Review Panel (ARP) decision. However, the ARP decision is not applicable. The ARP decision involved claims that improved computer performance through specific algorithmic training and adaptive computation. By contrast, the instant claims involve evaluating and rewriting geometric information without improving how the computer operates or processes data.
Therefore, the limitation is direct to a “mental process”, similar to the comparison steps in MPEP § 2106.04(a)(2)(III), and claims 1, 8 and 15 remain directed to a judicial exception under Step 2A, Prong 1.
With respect to the Applicant’s argued rejection under 35 U.S.C. § 101 in “Applicant Arguments/Remarks Made in an Amendment,”:
Applicant argues:
…
Applicant respectfully submits that one or more additional features are recited in the claims to apply, rely on, and/or use the purported abstract idea, such that each claim as a whole integrates any such abstract idea into a practical application. Specifically, even if one interprets "determining, ..., at least one implicit function and a proprietary geometry representation for a CAD body; obfuscating, with the source computing system, the proprietary geometry representation in a corresponding external function; expressing, ..., the at least one implicit function and the external function as code" to be abstract ideas, though Applicant maintains that they are not, claim 1 still recites the following "additional" elements:
providing, with the source computing system, the code to a target system; and
displaying the CAD body at the target system based on the code.
As explained in the MPEP at 2106.04(d)(1), "[o]ne way to demonstrate such integration [into a practical application] is when the claimed invention improves the functioning of a computer or improves another technology or technical field. .. . Such claims are eligible at Step 2A because they are not "directed to" the recited judicial exception." To evaluate this consideration, the MPEP instructs that "first the specification should be evaluated to determine if the disclosure provides sufficient details such that one of ordinary skill in the art would recognize the claimed invention as providing an improvement. The specification need not explicitly set forth the improvement, but it must describe the invention such that the improvement would be apparent to one of ordinary skill in the art."Id. "Second, if the specification sets forth an improvement in technology, the claim must be evaluated to ensure that the claim itself reflects the disclosed improvement. That is, the claim includes the components or steps of the invention that provide the improvement described in the specification. The claim itself does not need to explicitly recite the improvement described in the specification (e.g., 'thereby increasing the bandwidth of the channel')."Id. Furthermore, "[w]hen performing this evaluation, examiners should be 'careful to avoid oversimplifying the claims' by looking at them generally and failing to account for the specific requirements of the claims." MPEP at 2106.05(a), citing McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016).
Following the MPEP's instruction, an evaluation of the specification shows that the disclosure does provide sufficient details for a person of ordinary skill in the art to recognize that the claimed subject matter provides an improvement to computer technology. As explained above with reference to the streamlined analysis, the claimed method of CAD exchange provides several improvements over known methods, such as enabling the exchange to be accomplished with a smaller data transfer, increasing precision by avoiding the need for making approximations, enabling easy consumption and use at the target system by using code as the exchange medium rather than "an unwieldly and/or poorly structured data format," and "allow[ing] for increased editability at a target [system], including allowing for replayability and parametric editing with respect to the exchanged CAD body (e.g., allowing for different parameter values to be specified for the CAD body, for instance changing thicknesses or diameters in the CAD body)." Paragraph [0009]. The specification explicitly sets forth these improvements, and the first step of the MPEP's analysis is therefore satisfied.
Next, an evaluation of the claims shows that the claims do reflect one or more of the improvements disclosed in the specification. Continuing to take claim 1 as an example, claim 1 recites determining at least one implicit function and a proprietary geometry representation for a CAD body; obfuscating the proprietary geometry representation in a corresponding external function; expressing the implicit function and the external function as code; and providing the code to a target system. As clearly explained in the specification, and as would be readily apparent to a person of ordinary skill in the art, these features give rise to most or all of the improvements provided by the claimed method of CAD exchange. For example, exchanging code rather than meshes, voxels, or boundary representations provides the advantages of accomplishing CAD exchange with a smaller amount of data than is conventional. Paragraph [0009]. Paragraphs [0055]-[0056] further explain that accomplishing the CAD exchange by exchanging code that expresses the implicit function gives rise to the advantages of precision and allowing for parametric editing at the target system, which are improvements over known methods. Additionally, a person of ordinary skill in the art would readily appreciate that obfuscating the proprietary geometry representation in an external function would keep the proprietary geometry representation protected even after the code is provided to the target system by the source system. This is an improvement over known systems in which providing the CAD body to the target system necessarily reveals all proprietary information about the CAD body's geometry representation, which is a troubling issue in the field of CAD exchange in many common use cases, such as manufacturing an item by providing the corresponding CAD body (made by a first company) to a 3-D printer or manufacturing machine (controlled by a second company). See paragraph [0004].
Although certain features mentioned above (determining at least one implicit function and a proprietary geometry representation for a CAD body; obfuscating the proprietary geometry representation in a corresponding external function; expressing the implicit function and the external function as code) include those identified by the Office action as an abstract idea, this identification is immaterial for this part of the MPEP's analysis, because "the improvement [to the computer and/or technology] can be provided by the additional element(s) in combination with the recited judicial exception.... Thus, it is important for examiners to analyze the claim as a whole when determining whether the claim provides an improvement to the functioning of computers or an improvement to other technology or technical field." MPEP at 2106.05(a), emphasis added.
The Office action asserts that certain "additional elements" mentioned above (namely, providing, with the source computing system, the code to a target system; and displaying the CAD body at the target system based on the code) are merely insignificant extra-solution activity that cannot integrate any abstract idea into a practical application. Applicant respectfully disagrees. Insignificant extra-solution activities are claim elements that are only "nominally or tangentially related to the invention," or that are required by "all uses of the recited judicial exception." MPEP at 2106.05(g). There is no apparent reason to believe that any of the features identified in the Office action are only tangentially related to the claimed method of CAD exchange, or would be required any time someone determined an implicit function.
Indeed, the Office action does not actually provide any reasoning to the contrary, although the MPEP instructs that such reasoning should accompany a § 101 rejection involving alleged extra-solution activity. Id. To illustrate this instruction, the MPEP explains that "[f]or example, an examiner could explain that adding a final step of storing data to a process that only recites computing the area of a space (a mathematical relationship) does not add a meaningful limitation to the process of computing the area." Id., emphasis added. Here, no such explanation is provided, and Applicant believes no such explanation could plausibly be articulated, because the features in question are not insignificant and are not extra-solution. Thus, these features must be considered at the Step 2A, Prong 2 analysis, and they should be found to integrate any purported abstract idea into the practical application of exchanging a CAD body between a source system and a target system, thus enabling display of the CAD body at the target system.
Accordingly, though Applicant believes that claim 1 (and for similar reasons, all independent claims) does not recite any abstract idea, the Prong 2 analysis still shows that the claim is not "directed to" any such abstract idea, because the claim as a whole integrates any such idea into a practical application. This is true at least because the specification describes the relevant subject matter such that a person of ordinary skill in the art would recognize that the subject matter provides improvement(s) to a computer and/or technology, and the claims include the components or steps of the invention(s) that provide the improvement(s). The full eligibility analysis must therefore end at Step 2A, Prong 2 with the conclusion that the claims are eligible for patenting, and that no §101 rejection is proper. Applicant respectfully requests that the rejections under §101 be withdrawn.
(see Response filed 10/27/2025 [pages 16-19]).
The examiner respectfully disagrees with applicant argues that one or more additional features are recited in the claims to apply, rely on, and/or use the purported abstract idea, such that each claim as a whole integrates any such abstract idea into a practical application.
As explained in MPEP § 2106.04(d)(II), “The analysis under Step 2A Prong Two is the same for all claims reciting a judicial exception, whether the exception is an abstract idea, a law of nature, or a natural phenomenon (including products of nature). Examiners evaluate integration into a practical application by: (1) identifying whether there are any additional elements recited in the claim beyond the judicial exception(s); and (2) evaluating those additional elements individually and in combination to determine whether they integrate the exception into a practical application, using one or more of the considerations introduced in subsection I supra, and discussed in more detail in MPEP §§ 2106.04(d)(1), 2106.04(d)(2), 2106.05(a) through (c) and 2106.05(e) through (h).” However, the alleged improvements identified by applicant arise from the abstract representation steps of “determining, obfuscating, and expressing, which are part of the abstract idea itself. Improvements within the abstract idea cannot supply integration under Step 2A prong 2. Thus, the relevant additional limitations are the generic computer components, providing…the code to a target system and displaying… based on the code. These limitations merely represent data transmission and data output that occur after the abstract processing is complete. The limitations are performed by conventional computers and are identified in MPEP § 2106.05 (f) and (g) with explains and examples of Mere Instructions To Apply An Exception and Insignificant Extra-Solution Activity that do not meaningfully limit a judicial exception.
Furthermore, the examiner respectfully disagrees with applicant argues that the steps of providing the code to a target system and displaying the CAD body at the target system are not insignificant extra-solution activity. These steps merely send the result of the abstract processing and present it for viewing. The claim does not specify any technical detail about how the data is transmitted, stored, or displayed that would meaningfully limit the abstract operations. In MPEP § 2106.05(g), As explained by the Supreme Court, the addition of insignificant extra-solution activity does not amount to an inventive concept, particularly when the activity is well-understood or conventional. Parker v. Flook, 437 U.S. 584, 588-89, 198 USPQ 193, 196 (1978). In Flook, the Court reasoned that "[t]he notion that post-solution activity, no matter how conventional or obvious in itself, can transform an unpatentable principle into a patentable process exalts form over substance. A competent draftsman could attach some form of post-solution activity to almost any mathematical formula.
Furthermore, the examiner respectfully disagrees with applicant argues that the Office failed to explain why the steps of providing and displaying are insignificant extra-solution activities. The prior Office Action already provided the required explanation consistent with MPEP § 2106.05(g). Specifically, the action identified the providing step (transmitting code from one system to another) as data gathering, and the displaying step (showing the CAD body based on the code) as data output. Both actions merely transmit or display the results of the abstract processing and do not integrate the judicial exception into a practical application. Therefore the Office has satisfied the explanatory requirement by identifying the nature of these activities and indicating that they do not meaningful limit the claim. Therefore, the claims do not integrate the recited abstract idea into a practical application under Step 2A Prong 2.
Although Applicant did not present arguments regarding Step 2B, the prior Office action already addressed this step to complete the patent subject matter eligibility analysis under 35 U.S.C. § 101 . As previously Office action explained, the claims do not include any additional elements, alone or in combination that are sufficient to amount to significantly more than the judicial exception. The identified additional limitation (e.g., transmitting code between systems and displaying the CAD body) are generic computer functions that merely perform generic computer functions of executing, transmitting, and displaying information. These operations represent well-understood, routine, and conventional (WURC) computer functions, as explained in MPEP 2106.05(d)(II) and confirmed by the courts in Symantec, 838 F.3d at 1321, 120 USPQ2d at 1362, TLI Communications LLC v. AV Auto. LLC, 823 F.3d 607, 610, 118 USPQ2d 1744, 1745 (Fed. Cir. 2016) and Interval Licensing LLC v. AOL, Inc., 896 F.3d 1335, 1344-45, 127 USPQ2d 1553, 1559-60 (Fed. Cir. 2018).
Therefore, the claims, when is considered as a whole, do not recite additional limitation elements that amount to significantly more than the judicial exception, claims 1, 8, and 15 do not recite patent-eligible subject matter under 35 U.S.C. § 101.
For the reasons discussed above, applicant’s arguments have been considered but are not persuasive. The claims are directed to abstract ideas (mathematical concepts and mental processes), are not integrated judicial exception into a practical application, and do not recite additional elements amount to significantly more than the judicial exception. The rejection under 35 U.S.C. § 101 is maintained.
Applicant's arguments filed under “Applicant Arguments/Remarks Made in an Amendment” on
08/29/2025, the applicant' s arguments with respect to rejection under 35 U.S.C. § 103 have been fully considered but they are not persuasive.
Applicant argues:
… In the present case, the cited references, whether taken alone or in combination, fail to teach or suggest all of the limitations of the claims.
Claim 1 recites the following:
…
These features are not taught or suggested by the cited references, whether taken individually or in combination. As the Office action notes, the primary cited reference, Gielis, describes representing CAD bodies using so-called "SUPERSHAPES," which can be coded for transfer to another system using XML or Scalable Vector Graphics. However, Gielis does not teach or suggest obfuscating a proprietary geometry representation in an external function. The Office action acknowledges this deficiency of Gielis, but asserts that Gupta and Makkinejad remedy it. Applicant respectfully disagrees for the following reasons.
Gupta describes a method of deliberately introducing defects into a CAD model so that unauthorized users cannot 3D print a high quality product using the model. See, e.g., Gupta, paragraph [0054]. The Office action characterizes this as "obfuscating a geometry representation," but acknowledges that Gupta fails to actually teach obfuscating a geometry representation in a corresponding external function. Instead, the Office action asserts that this obfuscating a geometry representation in an external function would have been obvious in view of Makkinejad. Applicant respectfully submits that this conclusion is unreasonable. Makkinejad describes methods of introducing "alternative information" or "false error information" into the text of computer error messages to prevent malicious actors from gleaning information about the computer system through the error messages. See, e.g., Makkinejad, paragraphs [0006]-[0008].
The obviousness rejection is premised on the proposition that a person of ordinary skill in the art would have arrived at the idea of obfuscating a proprietary geometry representation in an external function based on Gielis's method of deliberately introducing a defect into a CAD model and Makkinejad's method of deliberately introducing false information into error messages. Applicant submits that this proposition is unreasonable. Even taken together, Gielis and Makkinejad do not even approach the concept of obfuscating a proprietary geometry representation in an external function. Defects in CAD models and false information in error messages do not amount to obfuscation of geometry representations, much less obfuscation in an external function.
The Office action states that "Makkinejad teaches obfuscating the geometry representation in a corresponding external function and expressing the external function as code" purely because Makkinejad mentions at paragraph [0035] that its method is implemented by an API that provides "classes and methods" usable by different programming languages. This is an unreasonably broad interpretation of Makkinejad, or of the claim language "obfuscating . .. the proprietary geometry representation in a corresponding external function," or both. Makkinejad does not teach or suggest obfuscating anything in an external function - it simply describes computer mechanisms such as APIs for replacing accurate text with inaccurate text. It is unreasonable to suggest that Makkinejad's API for replacing accurate error message text with inaccurate error message text would have prompted a person of ordinary skill in the art to attempt to modify Gupta to obfuscate a geometry representation in an external function. The obviousness rejection should be withdrawn for at least this reason.
Additionally, the claim further recites expressing the implicit function and the external function as code and providing the code to a target system. Under the Office action's interpretation that the external function is Makkinejad's API, there would be no reason to provide code expressing the API to a target system. Accordingly, even if the Office action's interpretation of "obfuscating . . . in a corresponding external function" as encompassing Makkinejad's API could be considered reasonable in a vacuum, which Applicant does not concede, it cannot be considered reasonable in the context of the claim as a whole. Nothing in Makkinejad, Gupta, or any other reference would suggest any reason to provide code expressing Makkinejad's API to a target system. Applicant respectfully submits that this problem indicates either that the rejection fails to account for every limitation of the claim, or that the interpretation of the claim language is not consistent with the claim as a whole, or both. The obviousness rejection should be withdrawn for at least this additional reason.
Accordingly, for the reasons set forth above, the cited references fail to render obvious the claimed feature of obfuscating a proprietary geometry representation in an external function. Each independent claim, and therefore each dependent claim as well, is patentable over the cited art for at least this reason.
Furthermore, all claims are patentable over the cited art for the additional reason that the cited art fails to teach or suggest displaying the CAD body at the target system based on the code. The Office action asserts that Massaro supplies this feature, and Applicant respectfully disagrees for the following reasons.
Massaro describes methods for designing a HVAC system (or more generally, "any system that has components designed to particular specifications"). Massaro, paragraph [0042]. In Massaro's method, the system is designed using a first CAD software application. Id. The first application exports geometrical information (e.g., inlet and outlet coordinates, pipe fitting orientations) and property values (e.g., airflow direction, pressure class, material type) to a text file, or other suitable data file. Paragraphs [0043]-[0045]. Then the information stored in the text file is imported into a second CAD application. Paragraph [0047]. The second application uses the stored information to identify standard HVAC components (e.g., duct lengths, connectors, gauges, etc.) that "map to" the geometric and property information specified in the data file for the designed HVAC system. Paragraph [0049]. Finally, based on the identified standard HVAC components, the second system generates a three-dimensional representation of the "intended system" that resembles the system designed on the first software application, but is "constructed of standard fittings" identified as suitable substitutes by the second software application. [0051]. Alternatively, the second system may construct a blueprint or parts list instead of the three-dimensional representation. Paragraphs [0053]-[0055].
Accordingly, Massaro fails to teach or suggest displaying a CAD body at a second system based on code provided by a first system, much less based on code related to implicit function(s). Instead, Massaro displays a three-dimensional representation assembled from standard HVAC fittings that is intended as a standardized version of an HVAC system designed in a different CAD application. Massaro therefore would not have suggested to a person of ordinary skill in the art that it might be possible or beneficial to modify Gielis or any other reference to display a CAD body at a target system based on code provided by a source system. The concept of displaying a CAD body is absent from Massaro.
Furthermore, the entire point of Massaro's invention is to identify and present a set of suitable standard fittings instead of the original CAD body. Displaying the CAD body at the target system would defeat the purpose of Massaro's invention and effectively change its principle of operation. However, "[i]f a proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, there may be no suggestion or motivation to make the proposed modification." MPEP at 2143.01(V), citing In re Gordon, 733 F.2d 900 (Fed. Cir. 1984). And "[i]f the proposed modification or combination of the prior art would change the principle of operation of the prior art invention being modified, then the teachings of the references are not sufficient to render the claims prima facie obvious." MPEP at 2143.01(VI), citing In re Ratti, 270 F.2d 810, 813 (CCPA 1959). For at least these additional reasons, Massaro cannot remedy the deficiencies of Gielis or any other reference, and each independent claim is patentable over the cited art for at least this additional reason, as are all claims depending therefrom.
Accordingly, each independent claim recites several features that are not taught or suggested by the art of record. The independent claims, and therefore the dependent claims as well, are therefore patentable over the art of record. Applicant respectfully requests withdrawal of the present rejections under 35 U.S.C. § 103.
(see Response filed 10/27/2025 [pages 19-24]).
The examiner respectfully disagrees the applicant's argument that Gielis in view of Gupta and Makkinejad fail to teach the limitation of claim 1, “obfuscating, with the source computing system, the proprietary geometry representation in a corresponding external function.”
Under the broadest reasonable interpretation (BRI), “obfuscating” can be interpreted as making the geometry representation of misleading, degraded, or difficult to use or interpret, and “external function” reasonably includes any callable software function or API used by an application to perform obfuscation operations. The claim does not require a particular obfuscation technique (e.g., encryption) and external function be limited to geometry-specific functions.
In the prior Office action, Gupta is cited for teach obfuscating a geometry representation. Gupta teaches embedding security elements into a CAD model so that an unauthorized user cannot obtain a high-quality printed part from the model ([0054]). The model’s geometric representation is intentionally modified causing normal use (accurate/high-quality 3D printing) fails. The reference explicitly teaches obfuscating the geometry representation under BRI, because the resulting representation is purposely rendered misleading and unsuitable for unauthorized use.
The applicant argues that Makkinejad does not teach obfuscation “in an external function” of a geometry representation, because it discusses replacing error-message text. However, the Office action does not rely on Makkinejad to teach geometry-specific content; rather, Makkinejad is cited for teaching that obfuscation functionality is implemented via an API that provides classes and methods usable by different programming languages and operating environments ([0035]). An API that exposes obfuscation operations as callable classes and methods is reasonably an “external function” under BRI. When Gupta’s geometry-obfuscation technique is implemented using the external obfuscation API structure taught by Makkinejad, the geometry representation of Gupta is obfuscated in a corresponding external function, as claimed. The claim limitation does not limit the external function to a particular type of data or to graphical operations. Under BRI, Makkinejad’s obfuscation API can be interpreted as an external function performing obfuscation.
Applicant also argues that combining Gupta and Makkinejad is “unreasonable” and that the references “do not even approach the concept” of the claimed feature. However, both references address protecting proprietary or sensitive information from unauthorized access or misuse, such as Gupta by altering CAD models to prevent accurate reproduction, and Makkinejad by introducing false information via an obfuscation API to prevent inspection of internal system details. As explained in the Office Action, incorporating Makkinejad’s external function obfuscation mechanism into Gupta’s CAD obfuscation method represent a reasonable combination of known compatible features, since both references address data obfuscation for information protection. The combination remains consistent with the claim limitation and does not alter the function or operation of the cited systems.
Furthermore, the examiner respectfully disagrees the applicant's argument that the rejection fails to account for every limitation of the claim, or that the interpretation of the claim language is not consistent with the claim as a whole, or both for the limitation of claim 1, “expressing, with the source computing system, the at least one implicit function and the external function as code; providing, with the source computing system, the code to a target system.”
First, Applicant mischaracterizes the mapping in the Office action. As explained at prior Office action pages 23-24, the limitations “expressing … the at least one implicit function and the external function as code” and “providing … the code to a target system” are met by the combination of Gielis with Gupta and Makkinejad, not by Makkinejad alone. Under the broadest reasonable interpretation (BRI), “code” is any machine-readable representation of instructions or functions, and “target system” is any second application or device that receives and uses the code.
In the prior office action, Gielis is cited for teaching expressing CAD shapes as implicit functions and representing those functions as code in standardized formats (e.g., XML or SVG) and GENICAP SUPERSHAPES file formats. Gielis further teaches saving this code to an external file and using the file as a common transport format between applications, so that other products can import the information and “use the common methods for importing and exporting” via a shared class library. Thus, Gielis already discloses both (i) expressing the implicit function as code, and (ii) providing that code from a source system to a different target system.
Gupta, as discussed above, teaches modifyi