Read these blogs for Alice § 101 rejections

I work primarily in the computer and electronics arts, so I deal a lot with § 101 rejections in the wake of Alice v. CLS Bank. I haven't found any magic bullets for overcoming these rejections, but I have found some bloggers that feature posts on this topic.

Here are a few of my favorites:

•     The Software Intellectual Property Report ("Reporting from the nexus of software and intellectual property law" from Bejin Bieneman PLC)
•     BilskiBlog ("Analysis and Commentary on patent eligibility and patent strategy", from Fenwick and West)
•     USPTO Talk ("Observations about US patent examination and prosecution from a patent practitioner")
•     Software Patents Blog ("Software Patent Law Blog", from Schwegman, Lundberg & Woessner)

PTAB agrees with Applicant that claimed feature "would make no sense in the context" of the reference

Takeaway: The application on appeal used biometrics from multiple users to measure software application ease-of-use. The Examiner asserted that "averaging quantitative metrics across the plurality of users" was taught by the primary reference, and the Applicant argued this feature was not disclosed. The Applicant also argued that averaging would run counter to the main purpose of the primary reference. The Board reversed. "Appellants contend the claimed averaging across a plurality of users would make no sense in the context of Franz where cursor tracking responsive to keycap forces is customized for each user's preference. Id. ( see, e.g., Franz col. 2, 11. 22-26). We agree." (Ex parte Verma, PTAB 2015.)

Details:
Ex parte Verma
Appeal 2012-007587; Appl. No. 12/057,950; Tech. Center 2400
Decided:  February 3, 2015

The application on appeal used biometrics from multiple users to measure ease of use for a particular software application. "By correlating the application that a user is currently engaged in with the biometric measurements obtained from the devices, software ease of use can be done while [filtering out interactions with other concurrent applications]." "The information obtained from different users needs to be compiled into a single quantitative measure for ease of use index for the software, which can then be used as a user-independent index for its ease-of-use."

The claims on appeal recited:

     1. A computer implemented method for quantitative determination of software ease of use, comprising the steps of:
     using sensors to collect biometric data from each of a plurality of users engaged in using a software application operating on a computer  or computer network;
     monitoring and recording changes in the biometric data which occur while the software application is being used by each of the plurality  of users;
     combining recorded changes in the biometric data for each user into quantitative metrics;
     averaging quantitative metrics across the plurality of users;
     compiling the averaged quantitative metrics into a single quantitative measure for an ease of use index for the software application; and
     providing an output as a user-independent index for ease­ of-use of the software application.
(Emphasis added.)

The Examiner rejected as obvious over Franz in view of Kotzin. Franz was directed to keyboard cursor control, where cursor responsiveness could be adjusted for each user. Kotzin was directed to selecting from among multiple biometric sensors.

The Examiner read the claimed biometric sensors on Franz's keycap force sensors. The Examiner read the generating and averaging metrics steps on Franz's teaching that "several different parameters maybe stored, one for each of a plurality of users where the corresponding settings would be invoked depending upon who logged into the system." For the remaining single quantitative measure and user-independent index limitations, the Examiner relied on Kotzin's abstract, which stated: "Biometric samples are collected from multiple users [to enable a feature] when the sample matches a known sample corresponding to the user from a list of [sensors] prioritized according to accuracy and ease of use."

The Applicant appealed and made a variety of arguments in the Appeal Brief. One such argument related to the "averaging across users" limitation. The Applicant first argued that the reference simply did not disclose what the Examiner asserted, and then backed this up with a one sentence explanation of why the Examiner's interpretation didn't make sense:

The stored parameter settings are not combined, as specifically required by the claim. [Combining or averaging] would eliminate the personalization of the game controller response settings (the focus of Franz et al.). 

Later on in the response, the Applicant restated this argument about Franz, and then explained why averaging across users didn't make sense in Kotzin either.

Neither Franz et al. nor Kotzin average measures from different users. In Franz et al., this would make no sense whatsoever, because the purpose is to identify specific individuals and correlate their desired performance criteria (one wants to have the cursor tracking device perform in the desired manner, not in a manner averaged among several users). In Kotzin, this would also not make any sense. In Kotzin, the effort is to identify specific users so that only specific users can have access to a feature or service provided via a wireless communication device.

The Applicant also included arguments that neither reference taught the limitation "monitoring ... while the software application is being used," and that Kotzin was non-analogous art.

The Examiner's Answer included some rebuttal of each Appeal Brief argument. The Examiner explained why Kotzin was analogous by first addressing claim construction for "biometric data." The Examiner discussed the "monitoring" limitation by referring to Franz's keyboard microcontroller software. For the "averaging across users" limitation, the Examiner newly relied on a mention of averages in Franz. ("At initialization time, and periodically thereafter, the keyboard needs to read the individual sensor values and individually average them.")

The Applicant filed a Reply Brief. It mostly focused on the Examiner's claim construction position for "biometric data."

The Board reversed the § 103 rejection on the grounds that Franz did not teach, or even suggest, averaging the metrics across a plurality of users:

Appellants contend the claimed averaging across a plurality of users would make no sense in the context of Franz where cursor tracking responsive to keycap forces is customized for each user's preference. Id. ( see, e.g., Franz col. 2, 11. 22-26). We agree. Appellants further contend, in Franz, "one wants to have the cursor tracking device perform in the desired manner [(for each user)], not in a manner averaged among several users." Id. We agree.

Commenting on Franz's brief mention of "average," the Board found that the calibration procedure described in this passage was not performed across users.

My two cents: For the vast majority of Applicants, a "does not teach" argument amounts to quoting the reference, quoting the claim language, and then asserting that A is not B. And sometimes, this alone can be persuasive. But often a more persuasive argument can be made with judicious (and careful) use of paraphrasing, summarizing, and/or providing context. I  find the argument made by the Applicant in Verma to be more persuasive because it did just this.

The typical do-nothing-but-quote argument looks like:

Franz teaches "several different parameters maybe stored, one for each of a plurality of users where the corresponding settings would be invoked depending upon who logged into the system." However, this is not the same as "averaging quantitative metrics across the plurality of users" as recited in the claim.

For this argument to be persuasive, the Examiner must map the words, phrases, and concepts expressed in the reference to the words, phrase, and concepts in the claim. But claims are almost always hard to parse, and references too can be obtuse.

Paraphrase makes it easier to see the contrast between the reference teachings and the claims:

Franz stores parameters for each user, and then invokes corresponding per-user settings. In contrast, the clam recites averaging across multiple users. 

Here the Applicant went one step further and tied it all together, by providing a bit of context for the comparison:

[Combining or averaging] would eliminate the personalization of the game controller response settings (the focus of Franz et al.). ... In Franz et al., averaging measures from different users would make no sense whatsoever, because the purpose is to identify specific individuals and correlate their desired performance criteria (one wants to have the cursor tracking device perform in the desired manner, not in a manner averaged among several users).

I find this version of the argument even more persuasive. Notably, this explanation of context was preceded by an argument that stuck closely to the claim language. I think that's important. Because the "purpose" of the reference doesn't trump a reference that really does disclose the claim element. Instead, the purpose must be used to provide further explanation of how or why the relied-upon teachings do not disclose to the claim element.

I expect a lot of practitioners to disagree with me. And I can't stress enough that paraphrasing and summarizing must be done thoughtfully and carefully. Still, when done well, this form of argument can be very persuasive. 

I'll also point out that I am not advocating for arguing outside the claims, i.e., importing limitations into the claims. Here, the plain and ordinary meaning of the claim, read as a whole, actually does boil down to "averaging across multiple users." That's much different than arguing that "user" has a narrower meaning by importing statements in the Applicant's spec.

PTAB reverses obviousness of treating muscle-based disorders with a compound targeted at sensory neurons

Takeaway: The Examiner issued an obviousness rejection of claims to a method of using modified botox to treat urogenital-neurological disorders. One reference taught the modified toxin recited in the claims as a treatment for chronic pain. The other reference taught unmodified botox as a treatment for urogenital-neurological disorders, and also mentioned that pain was a symptom of these disorders. The Examiner used a substitution rationale and asserted that a POSITA would expect the modified (claimed) toxin to be "effective at treating chronic pain in urogenital-neurological disorders." The Board reversed, finding that the POSITA would have no reason to expect that "the opioid targeting moiety designed for nociceptive [sensory neuron] pain" would have any efficacy in treating the "muscle based urogenital­ neurological disorders" recited in the claims. (Ex parte Brin, PTAB 2015.)


Details:

Ex parte Brin
Appeal 201300250; Appl. No. 12/255,369; Tech. Center 1600
Decided:  Dec. 2, 2015

The application on appeal was directed to using a modified botulism toxin (botox) to treat sensory nerve bladder disorders, such as incontinence and chronic urinary tract infection.

A representative claim on appeal read:

     A method of treating urogenital-neurological disorder in a human, the method comprising the step of administering to the human in need thereof a therapeutically effective amount of a composition including a modified Clostridial toxin comprising
     an opioid peptide binding domain,
     a Clostridial toxin translocation domain and
     a Clostridial toxin enzymatic domain,
     wherein the urogenital-neurological disorder is selected from the group consisting of urinary incontinence, overactive bladder, detrusor dysfunction, lower urinary tract dysfunction, urinary retention and urinary hesitancy,
      wherein administration of the composition reduces a symptom of the urogenital­ neurological disorder, thereby treating the human.

The Examiner rejected the claims as obvious over Schmidt in view of Foster. Schmidt was used to show a method of treating urogenital-neurological disorders with (unmodified) botulinum toxin. Foster was used to show the modified toxin (having specific domains) recited in the claim.

The Examiner used a substitution rationale, asserting that Foster's modified toxin would provide several benefits mentioned in Foster (e.g., good efficacy, low dosage). "It would have been expected, absent evidence to the contrary, that the modified toxin would be effective at treating chronic pain in urogenital-neurological  disorders." The Examiner noted that Schmidt described patients with a urogenital-neurological disorder as experiencing pain, and that Foster's modified toxins were used to treat chronic pain.

The Applicant appealed the obviousness rejection and argued the prima facie case was insufficient. The Applicant focused on the different "mechanisms of action" in Schmidt and Foster. Schmidt's toxin affected a motor neuron, while Foster's modified toxin affected a sensory neuron. Thus, Schmidt treated a urogenital-neurological disorder by paralyzing a muscle, while Foster controlled pain by targeting sensory nerves (no effect on muscle).

[W]here there are two references being combined, each of which show the treatment of different diseases or conditions by a different mechanism of action, there is no reasonable expectation of success. Even an "obvious to try" approach would be insufficient to make out the prima facie case of obviousness. (See, e.g., In re May, 574 F.2d 1082, 1094, (CCPA 1978) and In re Schechter, 205 F.2d 185, 191, (CCPA 1953).)

Finally, the Applicant used these differences to rebut the Examiner's substitution rationale:

The Examiner is arguing that the respective methods of treating chronic pain by blocking the neuron are similar to blocking a receptor that activates a muscle by means of a neuron that provides a neurotransmitter such as acetylcholine. But the Examiner has provided no reference to show that these methods are similar. And, in fact, since the mechanisms of action are different, they are not similar.

In the Answer, the Examiner noted that the claims did not recite "different mechanisms of action." The claims did recite "reducing a symptom of a urogenital-neurological disorder." The Applicant's spec listed pain as a symptom of such disorders, and both Schmidt and Foster taught their toxin was useful to treat pain.

The Examiner was not persuaded by the Applicant's attack on the substitution rationale, since "the features upon which applicant relies (i.e., "mechanisms of action) are not recited in the rejected claim(s)." The Examiner maintained there was a reasonable expectation for the modified toxin to effectively treat chronic pain "absent convincing evidence to the contrary."

The Applicant did not file a Reply Brief.

The Board reversed the obviousness rejection as not being supported by the references. While the Examiner focused on pain treatment as a reason to combine the references, and asserted a reasonable expectation of success, the Board disagreed.

     Pain is not one of the recited conditions in claim 1. Foster's modified clostridium toxin would have been expected to treat pain, not the conditions recited in claim 1. We therefore agree with Appellants that there would have been no reason, based on Foster, to expect that a modified clostridium toxin with an opioid targeting moiety would have any efficacy on muscle based urogenital­ neurological disorders "selected from the group consisting of urinary incontinence, overactive bladder, detrusor dysfunction, lower urinary tract dysfunction, urinary retention and urinary hesitancy" (Claim  1). Schmidt also provides no reason to modify the clostridial toxin with an opioid targeting moiety because Schmidt is focused on treatment of voiding dysfunction, not pain. Neither Foster nor Schmidt provide any suggestion that an opioid targeting moiety designed for nociceptive pain would have any efficacy treating the conditions recited  in claim 1.

My two cents: The Applicant was wise not to frame this as a non-analogous art argument. The references were probably similar enough to be analogous, yet the Applicant successfully argued that the differences undermined the rationale to combine.

The Applicant leveraged a basic distinction between the two references – targeting muscles vs. targeting sensory nerves – into two slightly different arguments. One, the Examiner's substitution rationale was flawed because the treatment mechanisms were different, not similar.  Two, a POSITA reading the references would not expect the modified botox to effectively treat the claimed disorders.

The Applicant was wise to address substitution, because the Examiner brought it up. And I'm not surprised to see a no-expectation-of-success argument, since biotech cases seem to lend themselves to this. Not so in electronics, computers, and mechanical cases, since components (functional and structural) are generally expected to work in combination.

However, even when working in these technologies, you sometimes do find basic differences between the references, analogous to sensory vs motor neuron. If so, you might use these differences to craft a slightly different argument, basically explaining how/why wouldn't make sense for a POSITA to combine because of these differences.

Another way of thinking about this case is that the connection between the two references was too attenuated. One described treating chronic pain with the modified toxin, the other with treating nerve-based urological disorders with the unmodified toxin. The connection between the two was pain, in that the primary reference mentioned pain as a symptom of the treated nerve-based urological disorders. The Examiner reasoned that the claims recited "administration of the composition reduces a symptom of the urogenital­ neurological disorder", and pain was a symptom, so they were combinable. But the way I see it, the Examiner used pain as an intermediary to jump from the primary reference to the secondary. I'm not sure this was part of the Board's reasoning.

Here's something that I really don't understand about this case. The original claims recited "treating urogenital-neurological disorder." The Applicant narrowed during prosecution to include a specific set of disorders: "urinary incontinence," "overactive bladder," and four others. The Applicant didn't  mention this limitation in the response or the Appeal Brief. The Examiner failed to address it in both the Final Office Action and the Answer. And the Board mentioned this set of disorders in its obviousness analysis, but did not make a finding that the reference did (or did not) disclose the feature.