Guest Post: Beware – Patent Prosecution Arguments Can Be Utilized as Evidence of Patent-Ineligible Concept Under §101

[Guest Post by Tyson Benson, a registered patent attorney and partner at Advent, LLP. Tyson's practice includes all aspects of patent prosecution and has experience drafting and prosecuting patent applications relating to integrated circuitry, electronics, medical devices, telecommunications, geographic information system technologies, graphics processing, computer networking, communications protocols, and computer architecture.]

In a recent decision handed down by the Patent Trial and Appeal Board (PTAB), PTAB introduced a new grounds for rejection under 35 U.S.C. §101 and supported this new ground for rejection with the Appellant’s arguments made during prosecution.

In Ex parte Hoitsma (Appeal 2014-003035 – decided March 4, 2016), the Appellant appealed the final rejection of a number of claims under 35 U.S.C. § 103(a). The patent application at issue was directed to methods and apparatus for determining probability distribution functions and/or cumulative probability distributions. Claim 1 of the patent application is reproduced below:

     1.  A method comprising:
     receiving a plurality of values of an input variable at an input to a processor, wherein the input variable is representative of a physical characteristic of a component or system; and
     using the processor to implement a physics model to produce an estimate of an output for each of the input values;
     wherein the processor
          maps the output estimates to the input values by fitting the estimates to a plurality of curves;
          selects values from corresponding points on the curves to produce an output probability density or cumulative distribution function for the physical characteristic at a future time; and
          outputs the probability density or cumulative distribution function.

The technology could be utilized to predict the occurrence of defects such as cracks in components of an aircraft and the estimated crack lengths could be used to determine the probability that a crack length would exceed a predetermined threshold at some future time.

PTAB affirmed-in-part the final rejection under 35 U.S.C. § 103(a). However, as mentioned above, PTAB also introduced a new rejection under 35 U.S.C. § 101. After reciting the current state of the law (e.g., Alice, Mayo, etc.), PTAB applied the Mayo framework to the claims at issue.

The interesting part of this decision is that PTAB utilized the Appellant’s arguments during prosecution as evidence that the claims at issue were directed to a patent-ineligible concept (Mayo step 1). More specifically, PTAB held that the claims were directed to “a mathematical algorithm in the form of a probability distribution mapping function” and pointed to portions of the Applicant’s specification. Additionally, PTAB stated:

Our conclusion ...is reinforced is reinforced by Appellants’ arguments directed to the Examiner’s rejection of claims 1 and 11 under 35 U.S.C. § 103. Appellants’ arguments are focused solely on the probability density or cumulative distribution function (mathematical algorithm) encompassed by claims 1 and 11. For example, Appellants argue “Barajas et al. does not disclose or suggest that a probability density or cumulative distribution function for a physical characteristic at a future time can be produced by selecting values from corresponding points on a plurality of curves.”

PTAB went on to hold that there was no “inventive concept” under Mayo step 2. For instance, PTAB indicated that the processor was generic and purely conventional and that the inputs “encompass purely theoretical (made-up) input values to produce theoretical predictions of a theoretical component or system.”

As such, Applicants/Appellants should be mindful that arguments made during prosecution to differentiate claim language from the prior art may be utilized as evidence to support a rejection under 35 U.S.C. § 101.