[Today's guest post is from Robert K S, who is a patent attorney from Cleveland, Ohio.]
Takeaway: The 35 U.S.C. § 101 prohibition against claims covering transitory signals per se, as articulated by the Federal Circuit in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), does not apply to method claims, since methods are processes and are therefore among the expressly permitted categories of statutory subject matter. Ex parte Kosuru, No. 2014-005593 (P.T.A.B. May 19, 2016).
Details:
Ex parte Kosuru
Appeal 2014-005593; Appl. No. 13/406,478; Tech. Center 2100
Decided: May 19, 2016
In the application underlying this appeal decision, all of the independent claims were method claims, and each recited an "input file being stored on a computer readable storage medium." Initially, the word "storage" was absent from the claims, and the examiner rejected all of the claims as directed to non-statutory subject matter under § 101, citing to In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) ("A transitory, propagating signal . . . is not a 'process, machine, manufacture, or composition of matter.' Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.") The claims were amended to specify that the "medium" was a "storage medium," as above, but the examiner maintained the rejection on final.
The Federal Circuit held in Nuijten that a propagating signal itself, such as a radio broadcast, an electrical signal through a wire, or a light pulse through a fiber-optic cable, is not patentable subject matter. According to then-director David Kappos's January 26, 2010 memo to the examining corps, entitled "Subject Matter Eligibility of Computer Readable Media," the PTO interpreted the Federal Circuit's decision in Nuijten to mean that "[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter." The memo references the Nuijten opinion as well as the August 24, 2009 PTO memo, "Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101."
In their briefs in Kosuru, the appellants conceded that their claims were "drawn to" a computer-readable storage medium, but emphasized that the use of the word "storage" meant that the claims could not read on transitory signals and thus were subject-matter eligible. In support, the appellants referred to Ex parte Hu, No. 2010-000151 (B.P.A.I. Feb. 9, 2012), which held that "[w]hile a computer-readable medium is broad enough to encompass both tangible media that store data and intangible media that carry a transitory, and propagating signal containing information, a computer readable storage medium is distinguished therefrom as it is confined to tangible media for storing data" (emphasis added).
The examiner's only response was an allegation that the specification did not refer to "storage" media—a weak response given that the claims clearly recited "storage" and no rejection was made on § 112 grounds for lack of written description or enablement. The appellants' reply brief noted several specification paragraphs that mentioned algorithms "stored on" computer-readable media or on "a disk," but even absent this support, PTO policy evidently tolerates amendment language limiting claims to non-transitory embodiments even when such language is not explicitly supported, so long as non-transitory interpretations are not ruled out by the specification. See the above-mentioned 2010 memo ("A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments . . . . Such an amendment would typically not raise the issue of new matter, even when the specification is silent . . .").
The PTAB resolved the appeal of the § 101 rejection on much broader grounds than the examiner and appellants had argued: "Unlike the claims at issue in In re Nuijten, each of the pending claims here recites a method—a series of acts or steps—and thus falls under the statutory category of 'process.'" Indeed, the examiner (and the Board) had only to read the opinion cited in support of the rejection to realize that, in Nuijten, disputed independent claim 14 was directed to "[a] signal," while claims 1-10, directed to "[a] method," and 11-13, "[a]n arrangement for embedding supplemental data in a signal," were not appealed because the PTO found them statutory without any fuss.
My two cents: Nuijten did not expressly hold that process claims cannot be rejected as "covering" transitory signals, because that issue was not before the Nuijten court. This case may provide useful support for countering Nuijten-type rejections of method claims.
Kosuru may have been a case of an examiner attempting to follow a PTO directive rather than the law upon which it was based. Transitory signal subject-matter analysis is a narrow area of subject-matter eligibility analysis. Like the words "directed to" used in broader subject-matter eligibility jurisprudence, including abstract-idea jurisprudence (see, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014); In re Benson, 441 F.2d 682, 684 (C.C.P.A. 1971)), the word "covers" used in the Kappos memo ("[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected . . .") can be interpreted overly broadly. When "covers" is read to mean "includes" or "involves" rather than "effectively claims" or "ties up," the PTO interpretation of Nuijten can be read as making ineligible even statutory categories like processes. The examiner and appellants got lost on a wild goose chase over whether the specification taught "storage" media, whereas the real question was the propriety of the examiner's initial decision as to whether the claims could be interpreted as attempting to capture, among whatever else, transitory signals per se.
Another potentially winning argument in this case might have been to argue that the claimed "input file" cannot reasonably be interpreted as encompassing transitory signals, since, even under broad interpretations, "file" has a meaning of a record of greater-than-transitory permanence such that it can be stored and retrieved at arbitrary times. After this PTAB decision, such an argument is superfluous in view of the fact that an Applicant can simply point out that the claims are couched as methods.
I neglected to mention--although it probably goes without saying--that the appellants' argument based on Ex parte Hu might have been a loser in view of the decision in Ex parte Mewherter, No. 2012-007692 (P.T.A.B. May 8, 2013), which was designated precedential a few months before the Kosuru appeal brief was submitted.
ReplyDeleteAnybody who has read Nuijten (certainly, a very small number at the USPTO) would have NEVER applied Nuijten to a method claim. To apply Nuijten to a method claim reflects substantial legal ignorance on the part of the USPTO (but do they really care?).
ReplyDeleteWhen "covers" is read to mean "includes" or "involves" rather than "effectively claims" or "ties up," the PTO interpretation of Nuijten can be read as making ineligible even statutory categories like processes.
That would be a grossly unreasonable interpretation of the USPTO's guidance. Transitory, propagating signals are found in all computing devices -- this does not make them nonstatutory subject matter. No one who has read Nuijten would seriously even suggest such an interpretation.
Kosuru may have been a case of an examiner attempting to follow a PTO directive rather than the law upon which it was based.
While the Examiner may have been attempting to follow a PTO directive, the Examiner didn't understand the directive. Moreover, whoever reviewed the Examiner's work product was, IMHO, incompetent to miss this plain error.
Incidentally, the appellants in Nuijten attempted to argue before the Federal Circuit that their claims directed to signals per se were patentable subject matter under section 101 as processes, since section 100 defines "process" as, among other things, an "art", and (so went their argument) a signal is an art. It's a decent argument, especially since the Supreme Court held that the following "system" claim, which pretty clearly seems directed to a signal per se under a broadest reasonable interpretation, was patentable subject matter, in O’Reilly v. Morse, 56 U.S. 62 (1863): "the system of signs, consisting of dots and spaces, and of dots, spaces, and horizontal lines, for numerals, letters, words, or sentences, [substantially as herein set forth and illustrated,] for telegraphic purposes." The Federal Circuit held that this claim was actually directed to a process. Nuijten, n.9.
Delete"To apply Nuijten to a method claim reflects substantial legal ignorance on the part of the USPTO (but do they really care?)."
ReplyDeleteHave you read the MPEP?!
"Moreover, whoever reviewed the Examiner's work product was, IMHO, incompetent to miss this plain error."
How much you wanna bet that the examiner, and the incompetent stooge who reviewed this mess and decided to send it to the Board, both got "outstanding" ratings for quality last FY? And a bonus?
Have you read the MPEP?!
ReplyDeleteI have, and I have read many of the misrepresentations of case law found within the MPEP. However, I haven't seen anything in the MPEP that misrepresents Nuijten this badly.
How much you wanna bet that the examiner, and the incompetent stooge who reviewed this mess and decided to send it to the Board, both got "outstanding" ratings for quality last FY? And a bonus?
$0.01 -- I don't like losing, but I can afford to lose a penny. The USPTO quality measurements are for measuring the USPTO's ability to push paper (or electronic documents) -- not do a good job.
Taking grossly-unreasonable positions is not something that one can be punished for at the USPTO. To the contrary, and in TC3600, taking a grossly-unreasonably position (so as to deny issuing a patent) can be worthy of a commendation.
"I have read many of the misrepresentations of case law found within the MPEP"
ReplyDeleteMy personal favorite is the section on non-analogous art that cites KSR (a case where the issue of non-analogousness was never raised) to hold that any problem known to one of ordinary skill in the art meets the "problem" portion of the non-analogous art test.
I don't think MPEP 2141.01(a) says quite that, exactly. It cites KSR as an introduction and offers that any problem known in the art can be a reason for combining, not that any problem suffices as the "problem" part of the analogous art test (wherein, to qualify as "analogous art," the reference must reasonably pertinent to the problem faced by the inventor.
DeleteWhile you are correct that the issue of non-analogous art was not raised in KSR, I actually like MPEP 2141.01(a)I's cite to KSR. That cite is, "Under the correct analysis, any need or problem known in the field of endeavor at the time of invention and addressed by the patent can provide a reason for combining the elements in the manner claimed." 550 U.S. at 420. So the need or problem has to be known. And it has to be in the field of endeavor. So when I argue non-analogousness to the examiner I argue that the examiner has to have evidence that the problem or need is 1) known and 2) in the field of endeavor. The field of endeavor is a question of fact, and must be resolved by a preponderance. If the examiner even bothers to address the field of endeavor, it is almost always some conclusory statement from the examiner that is not based on any evidence at all.
DeleteWhen arguing that a reference is non-analogous, I find it helpful to pin the examiner down on whether the reference is considered from the field of endeavor or is considered reasonably pertinent, which is the "traditional" test for analogousness. When I see the issue argued by others, most fail to get the examiner on the record, which permits the Board to pick which test they think the reference satisfies. I don't like to give the Board that option.
When I see the issue argued by others, most fail to get the examiner on the record, which permits the Board to pick which test they think the reference satisfies. I don't like to give the Board that option.
DeleteUnfortunately, while analogous prior art arguments should be given credence, the MOST TYPICAL way for the Board to dispose of these arguments is to reclassify the field of endeavor (new grounds? ... nah ... we don't need no stink'n new grounds) in a broad a manner as possible so as to encompass both your invention and the prior art.
I've seen allegations of "field of endeavor" that are so broad that they likely cover the majority of patent applications being examined within a particular Tech Center. Frankly, the Board treats it like a joke.
"I've seen allegations of 'field of endeavor' that are so broad that they likely cover the majority of patent applications being examined within a particular Tech Center. Frankly, the Board treats it like a joke."
DeleteThat's why it's important in your argument to have the examiner state on the record whether the reference is considered to be 1) from the field of endeavor OR 2) reasonably pertinent to the particular problem faced by the inventor. If the examiner alleges the reference is from the same field of endeavor, it's important to note that the field of endeavor is a question of fact. So a finding of a very broad field of endeavor can be challenged by arguing that the evidence fails to support a finding of such a broad field.
If you argue those issues in front of the examiner, the Board cannot make new findings of a field of endeavor and affirm without designating a new grounds.
The Board, as a whole, is an incredibly lazy organization. A former APJ now in private practice spoke to my company and admitted that the APJ's are looking for any reason at all to affirm. If they think they can affirm and get away with it without having to designate a new grounds, they will. If you don't argue "field of endeavor" and/or "reasonably pertinent" in front of the examiner, the Board is going to affirm and when you try to argue it's a new grounds, the Board is going to use the same old tried and true dodge they use every time - "We're just explaining the examiner's rejection or filling in gaps in the rejection. Those aren't new grounds."
If you let them get away with that, with full knowledge that they're lazy and unscrupulous, that's on you.
"OR 2) reasonably pertinent to the particular problem faced by the inventor."
DeleteExcept the Examiners are citing KSR as standing for the proposition that any problem known in the art IS the same thing as the particular problem faced by the inventor, and that confusion results from the way the analogous art portion of the MPEP was re-written to invoke KSR.
So a finding of a very broad field of endeavor can be challenged by arguing that the evidence fails to support a finding of such a broad field.
DeleteYou are assuming (well, maybe not) that the Board is impartial and will weigh the evidence with a blind eye. While I have to present my arguments based upon that assumption, in reality, I know that isn't the case. I've had Examiners not even respond to my arguments (no identification of even a field or endeavor or reasonably pertinent program) yet the Board still bailed them out.
It isn't that these are bad arguments, the Board just finds easy ways to ignore them.
If you argue those issues in front of the examiner, the Board cannot make new findings of a field of endeavor and affirm without designating a new grounds.
To the extent that the Board actually puts findings of fact in the record (these days, many just incorporate by reference the Examiner's findings) they almost always present new grounds. Moreover, when I call the Board out on it, the song and dance that follows is both funny and sad at the same time.
If you let them get away with that, with full knowledge that they're lazy and unscrupulous, that's on you.
Oh, I call them out, but it doesn't matter because they know there is nothing I can really do about it. Appeals from the PTO to the Fed Cir are Rule 36'd about 60% of the time, and the PTO wins the vast, vast majority of those in which opinions are actually written.
While I would love to appeal some of the field of endeavor decisions by the Board to the Federal Circuit, the standard of review for findings of fact is substantial evidence -- a very difficult standard of review to overcome.
The Board knows that very few Board decisions get reviewed (a fraction of 0.1%) and the deck is stacked against those that actually do go to the Federal Circuit. They can be blatantly lazy and unscrupulous knowing that there is a miniscule chance that they'll be called out on it.
"They can be blatantly lazy and unscrupulous knowing that there is a miniscule chance that they'll be called out on it."
DeleteAnd precious little (translation: absolutely nothing) in the way of negative consequences to the Examiner, the PTAB, or the PTO if they are overturned by the Federal Circuit.
Here's a quote from a decision where a BPAI panel stated KSR broadened the latter part of the analogous arts test (i.e., reference must be reasonably pertinent to the particular problem with which the inventor was concerned).
Delete"We do not subscribe to the Appellant's position that [the references] are from nonanalogous art. Appellant's position is flawed since it is based on a wrong analogous art legal standard. As stated by Appellant, both In re Oeticker [citation omitted] and In re Clay [citation omitted] require that for a prior art reference to be analogous, the reference must be "in the field of applicant's edeavor" or, if not, the reference must be "reasonably pertinent to the particular problem with which the inventor was concerned." The latter test, however, was subsequently broadened by the Supreme Court in KSR [citation omitted] which stated that:
In determining whether the subject matter of a patent claim is obvious, neither the particular motivation nor the avowed purpose of the patentee controls....
The first error of the Court of Appeals in this case was ... by holding that courts and patent examiners should look only to the problem the patentee was trying to solve.
The Supreme Court explained "[w]hen a work is available in one field of endeavor, design incentives and other market forces [(not the subjective intent of inventors provided in the Specification)] can prompt variations of it, either in the same field or a different one." KSR [citation omitted]. In other words, a prior art reference is analogous under 35 USC 103(a) if it is reasonably pertinent to ANY problem with which ONE OF ORDINARY SKILL IN THE ART is concerned. This broadened analogous art test suggested by KSR is consistent with the language of 35 USC 103 which requires us to focus on ONE OF ORDINARY SKILL IN THE ART, rather than the subjective reason given by inventors in the Specification, in evaluating the content of the prior art to determine the propriety of obviousness. Why any advantages or problem solving intended by inventors as described in the Specification may be considered as relevant secondary evidence, they are not controlling in terms of evaluating the contents of the prior art references for the purpose of appropriateness of their combinability. Graham v. John Deere [citation omitted].
Even were we to assume that the legal standard for analogous art relied upon by Appellant was not wrong, our conclusion would not be altered. As is apparent from the preamble of independent claims 1, 11, and 22, we find that prior art references .... are in the same field of the inventors' endeavor. In particular, we find that the subject matter described in [the references], like the subject matter claimed by the Appellant, is drawn to [the BPAI goes on to come up with a generic field of endeavor that was far broader than what the inventor specifically stated in the Field of Endeavor section].
Alternatively, we find that [the references] are reasonably pertinent to the particular problem with which the inventors are concerned. We find that they, as correctly found by the Examiner on pages 5 through 20 of the Answer, are directed to solving problems associated with [the BPAI goes on to state the problem solved by the Applicant but in a manner far more generic and all-encompassing than the problem the inventor was actually trying to solve]."
"I've seen allegations of "field of endeavor" that are so broad that they likely cover the majority of patent applications being examined within a particular Tech Center."
ReplyDeleteI hear that. If you point out the Field of Endeavor specifically identified by the Applicant in the "Field of Endeavor" portion of the spec, the Examiner just gives a boilerplate statement that there's no basis for defining the field so narrowly while failing to justify their own basis for defining the field so broadly.
"If you point out the Field of Endeavor specifically identified by the Applicant in the 'Field of Endeavor' portion of the spec,..."
DeleteYou can't define the field of endeavor simply by putting in some heading like "Field of the Invention" or whatever in the spec. The field of endeavor is a question of fact, and it's based on the scope of the written description and claims. The examiner is required to determine the field of endeavor by reference to explanations of the claimed subject matter in the application, including the embodiments, the function, and the structure of the claimed inventions.
"... the Examiner just gives a boilerplate statement that there's no basis for defining the field so narrowly while failing to justify their own basis for defining the field so broadly."
That's when you note to the Board that the examiner has failed to resolve the factual inquiry into the field of the endeavor by a preponderance of the evidence, and as such, the examiner's determination that the reference at issue is analogous is not supported by the evidence of record.
From In re Bigio:
DeleteTo the contrary, the field of endeavor test is neither wholly subjective nor unworkable. This test for analogous art requires the PTO to determine the appropriate field of endeavor by reference to explanations of the invention's subject matter in the patent application, including the embodiments, function, and structure of the claimed invention. See Wood, 599 F.2d at 1036 (confining the field of endeavor to the scope explicitly specified in the background of the invention); see also Deminski, 796 F.2d at 442 (determining that the cited references were within the same field of endeavor where they "have essentially the same function and structure").
AAA JJ writes:
You can't define the field of endeavor simply by putting in some heading like "Field of the Invention" or whatever in the spec.
It worked in In re Wood, 599 F.2d 1032 (CCPA 1979).
That's when you note to the Board that the examiner has failed to resolve the factual inquiry into the field of the endeavor by a preponderance of the evidence, and as such, the examiner's determination that the reference at issue is analogous is not supported by the evidence of record.
The Board is even a worst offender than most Examiners when it comes to defining the field of endeavor. By way of example, I pulled up the first Board decision (Appeal No. 2013-010096 dated 6/14) that I came across involving "field of endeavor." The applicants argued that the field of endeavor was "enhancing the antioxidant status of the an animal." They also argued that the reference involved "deterioration in mental activity of cats." The Board found that the field of endeavor was "addressing the dietary and nutritional needs of companion animals."
The illogic behind the Board's reasoning is astounding. The Board is asserting that kitten food is in the same field of endeavor as horse food, ferret food, and guinea pig food. They are all "companion animals," are they not? However, this is a CLASSIC approach by the Board to the field of endeavor test. They'll identify some common denominator between the invention and the prior art and declare it to be the "field of endeavor." I've seen this play out over and over and over again.
This isn't to say that one shouldn't be making these arguments. However, if the Board gets a hold of them, don't expect them to be a winning argument.
I was looking over some more analogous prior art related decisions by the Board -- trying to find one in which the Board reversed the rejection. No luck yet despite putting "reversed" as a search term.
DeleteA real doozy is Appeal No. 2014-003147. The claimed invention is directed to a pulsed detonation cleaning device. Basically, it is a tool to clean deposits on heat exchangers within industrial boilers. The cited reference is titled "Thin-wall multi-concentric cylinder speaker enclosure with audio amplifier tunable to listening room" (i.e., a speaker for a room, e.g., to listen to music).
As stated by the Federal Circuit in Oetiker, the Examiner is to consider "the reality of the circumstances' ... in other words, common sense" when considering what field a person would reasonably be expected to look.
The Board didn't find a same field of endeavor, but they set forth a detailed yet convoluted analysis (based upon considerable hindsight) that tied the reference to the problem being addressed. Absent from the Board's analysis, however, is "common sense."
While both the invention and the reference involve sound waves, they are used for entirely different reasons. Yet again, this decision is another great example as to the great lengths the Board will go to find that a reference is analogous prior art.
"I was looking over some more analogous prior art related decisions by the Board -- trying to find one in which the Board reversed the rejection. No luck yet despite putting "reversed" as a search term."
DeleteYou didn't find In re Klein (the hummingbird feeder case)?
You didn't find In re Klein (the hummingbird feeder case)?
DeleteOne would hope that I wouldn't have to go back 5 years to find a case in which the Board agreed that the references weren't analogous prior art. Then again, the Board did find that the cases were analogous prior art within In re Klein and the Federal Circuit reversed.
You're right, the Board did find the refs analogous in Klein. My mistake.
DeleteJust checking Jim Long's site today and noticed 11/813,214, in which the Board granted a request for rehearing (a rarity) and found that they had incorrectly concluded that the refs were analogous. And written by one of the dopiest lifer APJ's there is. So there's that.
I posted a long comment regarding a BPAI panel's warped interpretation of the analogous arts test but it does not seem to have gone through. Spam filter?
ReplyDeleteI found one comment caught in the spam filter, and I released it into the wild. Sorry for that.
DeleteNo problem, Karen.
Delete