Into the Future: Responding to Patent Office Actions in the AI and Simulation Modeling Arts

Group Art Unit 2128 deals with some of the most exciting and cutting-edge technology in the Patent Office, artificial intelligence and simulation modeling. However, patent examiners sometimes reduce these inventions to mere algorithms when making rejections under § 101. This reduction allows examiners to dismiss the technological improvement provided by the invention as nothing more than a mathematical concept that can be performed in the human mind. The “mental process/mathematical concept” rejection has always been a legal fiction and this can make the rejection difficult to overcome. After all, an examiner can argue that any mathematical concept could theoretically be performed in the human mind, even if no one has ever done so.

Here are three inspiring office actions that show how you can respond to a “mental steps/mathematical concept” rejection in the AI and simulation modeling art areas.

Lay the Groundwork with Your Specification

Since almost any application in this technology class is vulnerable to a rejection under § 101, you should draft your specification with a potential § 101 rejection in mind. Specifically, you can include ammunition in your specification that will ground the arguments in your office action response. This will provide credibility to your arguments, so the examiner knows you are not creating them out of thin air.

This strategy was used with impressive results by Samir A. Bhavsar from Baker Botts LLP in U.S. Patent No. 10,915,342. This patent was allowed after only a single office action response. This speedy prosecution was helped by an examiner interview that was conducted prior to filing the office action response.

The invention is a computer system for comparing data sets that cannot be quantified in a simple way. For example, the invention could be used for recognizing a face based on a reference photo or recognizing a voice from a voice sample.

The examiner rejected the application under § 101 on the ground that the claims merely recited a series of steps that could be performed in the human mind. In response to this mental steps rejection, the applicant argued that the invention improved technology through a practical application of the algorithm recited in the claims.

This argument is nothing new. This is often the most effective argument in response to a mental steps rejection. But in this office action response, the applicant diligently pointed out several places in the specification that described both the purpose of the invention and the practical implementation of the invention.

[T]he claims recite elements that are integrated into a practical application, and are therefore not directed to an abstract idea. Although other practical applications exist, Applicant will focus on the practical application directed to cloud-based computing, as explicitly recited in amended Claims 1, 8, and 14.

For example, the specification describes, “Another technical advantage of a correlithm object processing system is their ability to be adapted to implement a cloud based architecture that allows correlithm objects to be processed remotely as cloud services. For example, a device may send correlithm objects to a cloud based correlithm object processing system to offload the resources used for processing the correlithm objects. In this example, the device is able to receive processed correlithm objects from the cloud based correlithm object processing system without having to consume the device’s processing resources. The cloud based correlithm object processing system allows devices to utilize the benefits of correlithm objects (e.g. noise immunity and information security) while offloading the computing resources.” See Specification at p. 8, ll. 19-28 (emphasis added).

The specification set up the argument so well that the legal argument takes only a few lines in over two pages of the response. The remaining space is occupied by extensive quotes directly from the specification to support the legal argument. The takeaway from this case is to write your specification to include facts about the invention, how it is used, and how it improves technology.

Claim Steps that Are More Than Mathematical Operations

Another approach was used to great effect by Steven Fischman at Scully, Scott, Murphy & Presser, P.C. in U.S. Patent No. 10,885,241. This invention is a simulation system that uses a correction operator to correct for error between observed data and model data.

This patent was originally rejected under § 101 as a mathematical concept. In this case, the applicant overcame the rejection by amending the claims to specifically recite steps that were not mathematical operations. For example, the amended claims recited “appending … the correction operator to the simulation operator to produce a supplemented operator without modifying the simulation operator.”

By amending the claims in this way, the applicant did not surrender any claim scope. But the applicant did gain the argument that the claims were “more than” a mathematical concept. Specifically, the applicant argued that the invention integrated a mathematical algorithm with non-mathematical data processing steps and that:

As a result of such integration, the claimed processor is enhanced with functionalities to generate “supplemented output data by applying the simulation model with the supplemented operator on a set of inputs”. The practical application integrated with the elements in the pending claims addresses challenges faced by simulations systems, and provides the simulation systems with ‘relatively cost effective approach in terms of development time and computation, since current practices involve significant modification of core simulation code, which may be time consuming from a development perspective, and may significantly slowdown the implementation due to increased computational complexity of the more comprehensive formulation”. See paragraph 52 of the originally filed specification.

This response weaved together two important concepts for overcoming a rejection under § 101:

  • A real-world application for the invention
  • A technological improvement that results from the practical application

The takeaway from this response is that amending the claims to recite steps that are non-computational provides a path to arguing that the invention is practical, rather than abstract.

Argue the Limitations of the Human Mind

Another approach to overcoming a rejection under § 101 comes from U.S. Patent No. 10,761,494. This patent is directed to a simulation method that predicts the value of a variable if a particular social policy is enacted. The application was originally rejected under § 101 as an abstract idea.

In response to the rejection, Gene M.Garner II from Staas & Halsey LLP persuasively argued that the method as claimed was more than just the mental concept of estimating the value of a variable in response to a social policy. Instead, the applicant focused on the steps of the method that could not be performed by the human mind. This allowed the applicant to argue that even if the idea of estimating the value of a variable could be held in the human mind, the process recited in the claims could not be carried out by the human mind.

Thus, claims 1-9 do not recite a mathematical concept that can be practically performed in a human mind because the claims do not cover performance in the human mind but for the recitation of generic computer components. For example, at least the claimed feature of “transmitting, to the terminal via the network, a simulation result including the predicted value of the objective variable in response to introduction of the policy, to display on the terminal a display screen representing a difference between the predicted value of the objective variable in the absence of introduction of the policy and the predicted value of the objective variable in response to introduction of the policy, and enable the user to quantitatively recognize the effect of introducing the policy” requires the processor’s action that cannot be practically performed in a human mind (see, e.g., 2019 PEG, footnote 14; and USPTO Example 37, claim 2, Example 38, and Example 39 issued January 7, 2019).

The office action response did not stop there. Once the applicant highlighted the steps of the method that required a processor because they could not be performed in a human mind, the applicant pointed out that these steps provided a technological improvement. The applicant wove quotes from the MPEP directing examiners to look at the specific requirements of the invention rather than oversimplifying every process into mental steps/mathematical concepts.

One takeaway from this office action response is that you should always include steps that cannot be practically performed in the human mind in your claims. The other takeaway is that you should argue that these non-mental steps improve the technological state of the art.

Overcoming Rejections Under § 101 in Art Unit 2128

These office action responses are not the only ways to overcome a § 101 rejection in the AI and simulation model domain. But they do provide some inspiration for practitioners in these fields. Even though this domain is heavily dependent on algorithms, there are ways to show that a method or system can be patent-eligible.

Use the specification to identify technical improvements and practical applications. And be sure to claim steps that cannot be performed in the human mind and relate to non-computational data handling.

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Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Fit to Drive: 3 Inspiring Office Action Responses from Automated Vehicle Systems Domain | AU 3668

AU 3668 – Computerized Vehicle Controls and Navigation, Radio Wave, Optical and Acoustic Wave Communication, Robotics, and Nuclear Systems

Every patent practitioner has faced the same obstacle — a client’s application is assigned to an unfamiliar art unit. This presents two challenges:

  • Unfamiliarity with the examiners: When you have many applications in the same few art units, you get a feel for what works or does not work for the examiners in those art units. Getting assigned to a different unit means you have no direct insight into the examiners’ tendencies and preferences.
  • Unfamiliarity with the application of the law: Some units have particular ways of interpreting USPTO guidance and case law that plays out in differences in how they go about examining claims and determining patentability. The kinds of arguments likely to be successful in molecular biology, for example, may be less effective in prosecuting another technology, such as casino gaming or automated vehicle systems.

Using a tool such as Arguminer can simplify the research needed to find arguments that work in a particular art unit with a specific examiner. It can also identify what did not work. Armed with this intelligence, any patent practitioner can take inspiration from proven  arguments in any art unit.

Here are three proven arguments that overcame §101 rejections in art unit 3668 to draw inspiration from:

Technical Details Can Show a Practical Application

Rejections under § 101 are difficult because they often cross over into territory covered by §§ 102 and 103. Under the Alice framework, well-understood, routine, and conventional implementations can be held against the applicant in determining whether the claims recite an abstract idea.

This leads patent practitioners into a logical tautology — an invention comprises patentable subject matter if it is patentable. Specifically, an invention is less likely to encompass an abstract idea under § 101 if it is novel and non-obvious. This means that to overcome a rejection under § 101, you may need to point out the invention’s novel and non-obvious features.

One case in which this worked is U.S. Patent Application Serial No. 14/845,189. This case, argued capably by Gregory M. Murphy of Landmark Intellectual Property Law, PLLC, claims “systems and methods for optimizing energy usage in a household.”

The claims were rejected under § 101 as encompassing “an abstract idea of gathering, analyzing, and displaying data.” In response, the applicant argued that the invention provided a particular practical application that moved the invention outside the realm of an abstract idea under the first prong of the Alice framework.

Specifically, the applicant argued:

Here, the claims are similarly not “directed to an abstract idea.” Much as in Free Stream Media Corp., even though the claims include computer components operating in some manners in which they are designed, the technical focus of the claims is based upon systems including energy generation or storage components, disaggregation based thereon, and actionable user recommendations based on both TOU schedules, but also based on energy generated and/or stored locally. And as in SAIC, the claims do not stop at an abstract concept alone, but present a full solution based on, and grounded in, technology. Specifically, the claims require steps combined in an unconventional method — that is, taking into account local generation or energy storage, before making recommendations based on actual (not hypothetical) past use time periods.

What the applicant relied on in this case was the novelty of the method. By arguing that the method was novel, the applicant successfully persuaded the examiner, Shon G. Foley, that the invention had a practical application beyond a conventional implementation of an abstract idea.

In other words, the examiner originally took the position that the claims were directed to the abstract idea of optimizing energy usage. The applicant countered this position by pointing out the technical details that made the invention unconventional in the industry. As such, the examiner withdrew the rejection because the invention is more than the abstract idea of energy optimization. Instead, it is a concrete and practical application of a technical method.

A New Solution Can Establish a Specific Technological Improvement

A technological improvement is the opposite of an abstract idea. This concept is embodied in the second prong of the Alice framework. By arguing that the claimed invention improves technology, you can persuade an examiner that the invention is “significantly more” than an abstract idea.

A case where this argument succeeded is U.S. Patent Application Serial No. 15/531,319, now U.S. Patent No. 10,408,710. The claims of this patent are directed to a process for taking measurements from a tire and predicting its fault portions.

The examiner rejected the claims under § 101 on the grounds that the method only recited “an idea ‘of itself.'” The examiner explained the rejection by stating that the claims only recited collecting and analyzing information. This left the claimed process disembodied from a technological implementation and, as such, was no more than an “uninstantiated concept.”

In response, Tatsuya Sawada of Kenja IP Law, PC made two clever moves. First, the claims were amended to tighten up the language and tie the method steps to physical objects like processors, temperature measurement units, and displays.

Second, Mr. Sawada focused the arguments in the office action response on the specific technological improvement provided by the invention. That is, rather than broadly stating the field of the invention, the arguments focused on the specific problem the invention addressed.

The method according to claims 20-23 provide an improvement in the conventional a tire fault portion prediction. The claimed method allows for significant enhancement of accuracy in a tire fault portion prediction by calculating fatigue characteristic values corresponding to degrees of fatigues of the tire constituent members based on the temperatures measured with the temperature measurement unit, and predicting fault portions of a tire based on at least one of the fatigue characteristic values and the tire running parameter.

In view of the above, claims 20-23 are directed to significantly more than an abstract idea, because claims 20-23 show that there is a significant improvement in the technical field of the tire fault portion prediction

This argument overcame the examiner Thomas P. Ingram‘s rejection because the claims were no longer “uninstantiated” or disembodied. Rather, they were tied to a concrete technological improvement.

A Physical Process is the Opposite of an Abstract Idea

In a somewhat related argument, a claim that recites a physical process is much more likely to overcome a rejection under § 101. For example, it is much more difficult for an examiner to reject a claim as reciting “mental steps” when the claims include physical processes.

This argument was used in U.S. Patent Application Serial No. 16/023,699. This application is directed to a process for mitigating soil compaction in agriculture.

The claims were originally rejected under § 101 as encompassing steps that could be performed in the mind of a person. This is often a difficult rejection to overcome because almost any steps could be performed in the human mind with enough support. But Douglas J. Duff, intellectual property counsel at Deere & Company, made some insightful moves.

Mr. Duff amended the claims to include a work tool with a seeding device. This allowed the applicant to argue that the claimed method could not be performed in the human mind because the human mind lacks the physical implements recited in the claims. As such, the claimed method was a physical process rather than a purely algorithmic process.

Contrary to the Office’s rejection, none of the elements the Office identified in claims 1 or 16 fall within any of the groupings of abstract ideas identified by the Office in its 2019 Revised Patent Subject Matter Eligibility Guidance. Instead, the identified claim elements recite a method of mitigating compaction that includes “passing a work tool through the work area at the plurality of reference points” and “adjusting the work tool at the plurality of reference points,” as recited in claim 1, and a method of mitigation compaction with a vehicle that includes “determining vehicle position data as the vehicle passes through the work area at the plurality of reference points” and “adjusting the work tool at the plurality of reference points based on the vehicle position data,” as recited in claim 16. Further, claims 1 and 16 provide the further step of adjusting seeding actuation of the seeding device based on the compaction data.

Accordingly, the steps of adjusting a work tool and adjusting seeding actuation are more than a process that “covers performance of the limitation in the mind but for the recitation of generic computer components,” as alleged by the Office, as the work tool adjustment and seeding actuation are significantly more than mere mental processes.

This argument succeeded. In the next office action, the examiner Mohamed A. Algehaim withdrew the § 101 rejection.

Looking for Inspiration in Your Art Unit?

In Art Unit 3668, you have a fair chance of overcoming a § 101 rejection by arguing the novel features of the invention, the technical improvement brought about by the invention, or tying the control method to a physical process. These arguments can be reasonably adapted to argue on other electronic and computer-controlled processes.

In other units, you can use Arguminer to identify arguments proven to be successful. In fact, you can also use Arguminer to find out what didn’t work to avoid any mistakes. To learn more about Arguminer, contact IP Toolworks.

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Originally published on IPWatchdog.

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Celebrating Excellence: Women Patent Prosecutors with Remarkable Track Records in 101

We used our extensive database of patent prosecution documents to identify patent attorneys and agents with the highest performance, based on their ability to overcome 101 rejections, considering both granted patents and applications in which all 101s were overcome but that may not have ultimately issued for other reasons. The seven women selected for recognition boast exceptional track records, having each successfully prosecuted between fifty and ninety applications facing 101 rejections at time of publication. Such achievement rightly affords best-in-class status, placing our recipients within the top 0.3% of patent prosecutors in this challenging field.  

Subject matter eligibility rejections, particularly post-Alice, are notoriously among the thorniest faced by patent prosecutors. As guidance and rulings surrounding this area of law have taken form so dynamically over the past seven years, the success of our featured patent attorneys and agents is not only a testament to their considerable acumen, but demonstrates a remarkable mental flexibility. Moreover, as several of our featured attorneys and agents note, significant variability in interpreting these changing standards means that it is often necessary to create diverse strategies to situate legal arguments for each response within the context both of the claimed technology and assigned art unit. Doing so can help to break through boiler-plate language and get to promising arguments or amendments. Our selectees additionally speak to the importance of getting to know the preferences of individual examiners, often exercising finesse in working creatively and collaboratively with the examiner and relevant supervisors to lay the groundwork for allowance during the interview phase and beyond. 

It is our belief that there can be no more powerful opportunity for learning how to succeed than to draw upon the knowledge and experience of those who have already achieved it. For this reason, we asked each of the seven women featured if she would be willing to share insights into the practices that contributed to her impressive results. Below you will find a bio for each recipient followed by a practice tip that each personally contributed, designed to offer guidance to new practitioners facing 101 rejections

Yvonne Morriss  

IP Toolworks Cofounder and CEO 

Anne Davis Barry

Cantor Colburn LLP

Anne Davis Barry is a Partner at Cantor Colburn LLP and co-chairs the Computer Science Practice Group. She is responsible for leading her team in securing patent protection to meet client product launch deadlines; for partnering with clients on-site in patent mining sessions to form patent protection strategies; and for management of final work product of associates. Anne focuses her practice on obtaining patents in computer technologies including computer hardware, databases, networks and operating systems, as well as cloud computing, artificial intelligence, and software applications to solve real-world problems. Her experience also encompasses drafting opinions and providing support for patent litigation.

Prior to her legal career, Anne worked for IBM for more than 15 years in various technical positions including computer programmer and on the implementation of database and storage technologies at client locations. As an IBM Certified Project Manager, she successfully managed several large fixed-price consulting projects. Anne is an Adjunct Professor at UConn Law, where she has been teaching both Intros to Patent Law and Advanced Topics in Patent Law since 2002.

Practice Tip [for new attorneys facing subject matter eligibility rejections]:

You have received an Office Action from the PTO stating that your client’s patent application has been rejected under Section 101 as being directed to ineligible subject matter.  You are grappling with how to respond to the rejection as there are still a wide range of interpretations and applications of the Alice decision and its progeny by Examiners (see e.g., “Adjusting to Alice” at uspto.gov).  All is not lost!  There is something that you can do that has a real of chance of giving you the direction that you need to address the 101 rejection and to advance prosecution of your client’s patent application:  schedule a thirty-minute interview with the Examiner.

Prepare for the interview by reviewing the latest PTO Subject Matter Eligibility Guidance and finding the examples of eligible subject matter that are most like your case.  Create an agenda for the interview that points out these examples while being mindful that the agenda will become part of the record.  Be sure to send the agenda to the Examiner a couple of days in advance of the interview so that they have time to prepare for the interview.  During the interview, be respectful and actively listen to the Examiner’s position and pursue suggestions they have for getting around the 101 rejection.  Once you understand the Examiner’s position, you can better advocate for your client during the interview and when responding to the Office Action.  Examiner interviews, which provide the chance to have a conversation with the Examiner, are an important patent prosecution tool that should not be overlooked, particularly when faced with a 101 rejection. 

During the interview, be respectful and actively listen to the Examiner’s position as well as any suggestions they have for getting around the 101 rejection.  Once you understand the Examiner’s position you can better advocate for your client during the interview and when responding to the Office Action. 

Kelly S. Horn      

Finnegan, Henderson, Farabow, Garrett & Dunner

As a registered patent attorney, Kelly Horn combines her extensive knowledge of Patent Office practice with her experience as a patent litigator to help clients build, assert, and defend strategic portfolios of utility and design patents worldwide. She maintains an active patent prosecution and counseling practice and draws on her experience before the USPTO to help clients assert and defend patent infringement claims before the U.S. International Trade Commission (ITC) and in U.S. district courts.

Kelly’s technical experience spans a broad range of technologies, including medical imaging, biosurgical products, welding systems, control systems, automotive systems, power production systems, blockchain technology, and communications systems. Prior to entering the legal field, Kelly performed undergraduate research in bioinformatics and completed a graduate thesis directed to the engineering of magnetic viral nanoheaters for the targeted hyperthermic treatment of cancer. She has worked for Johnson & Johnson, performing research within its medical device division. Kelly also represents clients including military veterans and disabled Americans on a pro bono basis before the U.S. Court of Appeals for Veterans Claims and the Social Security Administration (SSA).

Practice Tip:

Don’t hesitate to conduct Examiner interviews early in prosecution, even after receiving the first non-final Office Action.  If you prepare with a proposed amendment and 1-2 of your best arguments based on the amendment, the Examiner will usually provide guidance as to whether the amendment will likely overcome the Section 101 rejection or needs to be adjusted.  Because each art unit has interpreted the USPTO and court guidance slightly differently for the subject matter in that unit, the Examiner can be a helpful resource in tailoring your amendments and arguments in a subject matter specific manner.  By conducting early interviews and getting Examiner feedback before multiple rounds of prosecution, prosecution can often be compacted.

Because each art unit has interpreted the USPTO and court guidance slightly differently for the subject matter in that unit, the Examiner can be a helpful resource in tailoring your amendments and arguments in a subject matter specific manner. 

Bea Koempel-Thomas

Lee & Hayes

Bea leads Lee & Hayes’ International Practice where she advises on a variety of intellectual property matters including inventor agreements, drafting and prosecuting US and PCT patent applications, and managing international patent portfolios.  Bea applies her knowledge of US patent policy and procedures to meaningfully advance her clients’ interests and enhance the business value of their assets. 

Her technical expertise spans information security, artificial intelligence including machine learning, machine vision, data mining and related computer technologies, mechanical and electrical devices, energy management solutions, business methods, and financial technology.  While her practice largely focuses on computer-implemented inventions, she facilitates international IP protection for clients across the firm with an emphasis on partnering with the right foreign counsel for each client.

Bea served as a Patent Examiner at the USPTO in the technologies of computer security and cryptography.  She applies that experience to more efficiently prosecute applications for her clients.  She has regularly been honored as one of the top 1000 patent practitioners worldwide by Intellectual Asset Magazine (IAM).  Bea has long been active in the firm’s Diversity and Inclusion efforts and is passionate about supporting DEI initiatives in STEM and the legal profession.

Practice Tip:

My primary tip for new patent practitioners is to focus on answering questions related to “what” (performs an action or causes an action to be performed), and “how” (a result is achieved, or an action is performed or caused to be performed).  Also, conduct an interview with the Examiner as soon as possible in prosecution, which can help you get on the same page in terms of claim focus.Bea enjoys speaking on many IP topics including how US activities shape the international patent landscape, drafting patent applications to computer-implemented inventions for successful prosecution in the US, China, Japan, Canada, and before the European Patent Office, patentable subject matter, patent quality in the US, international protection of intellectual property, and foreign filing license and inventor remuneration requirements. 

Focus on answering questions related to “what” (performs an action or causes an action to be performed), and “how” (a result is achieved, or an action is performed or caused to be performed). 

Mollie Smith

Shook, Hardy & Bacon

As a Patent Agent with 14 years of experience in the intellectual property field, Mollie applies her technical expertise to patent application drafting and prosecution, patent-product portfolio analysis, and related matters.  Her practice focuses on computer software, applications of artificial intelligence, digital health, and technologies that fall under Technology Center 3600 at the USPTO.  Mollie’s technical experience encompasses firmware, software, microcontrollers, digital electronics, and hardware/firmware integration, in the fields of avionics, remote sensing, and healthcare.  She received her BSEE from the University of Missouri-Rolla (now the Missouri University of Science and Technology). 

Practice Tip:

Under Mayo Step 2A (Prong Two) and Step 2B, don’t let the examiner ignore any of the “additional elements” in a claim. Examiners often focus only on hardware elements, using language such as “This judicial exception is not integrated into a practical application because the additional elements of processors and computer storage media are recited at a high level of generality . . . .” However, additional elements include any features/limitations/steps beyond the identified judicial exception.  MPEP 2106.07.  As described in the 2019 PEG Examples 37, 40, 41, and 42, these may include steps such as receiving, transmitting, collecting, transforming, generating, storing, and steps performed via a GUI.  Other GUI-related features can also be additional elements.  Use the combination of additional elements to attack the examiner’s boilerplate language.  This can be especially effective under Step 2B in combination with the Berkheimer Memorandum (now incorporated into MPEP 2106.05(d)).

Don’t let the examiner ignore any of the “additional elements” in a claim … Use the combination of additional elements to attack the examiner’s boilerplate language.  This can be especially effective under Step 2B in combination with the Berkheimer Memorandum (now incorporated into MPEP 2106.05(d)).

Ruthleen Uy

Kilpatrick Townsend & Stockton

Ruthleen Uy is counsel at Kilpatrick Townsend and Stockton in their San Diego office and has 19 years of patent experience.  Ruthleen focuses her practice on the preparation and prosecution of patent applications in the computer, electrical, and mechanical arts including applications directed to computer architecture, computer hardware, databases, financial technology, mobile communications, mobile devices, and telecommunications. Additionally, Ruthleen has experience prosecuting applications in medical devices. 

Practice Tip:

I find it extremely beneficial to discuss 35 USC 101 rejections (abstract idea rejections) with Examiners through Examiner interviews. When scheduling your interviews, make sure that your Examiner has authority to agree with you regarding arguments and amendments for overcoming 101. If your Examiner does not have the authority to indicate whether the arguments/amendments will overcome the 101 rejection, then try to get the Examiner’s Primary Examiner, Supervising Examiner, or the Technology Center (TC) specialist for the art unit to join your interview. 

During the interview, I ask the Examiners what they look for in overcoming 101. For example, some Examiners want claims to be similar to the USPTO subject matter eligibility examples. Some Examiners are looking for specific hardware or specific software in the claims. Some Examiners want arguments laid out in a manner that clearly follows the eligibility analysis flowchart. I have also noticed that Examiners in an art unit tend to address 101 issues similarly. For example, in an attempt to be consistent, Examiners in one or more art units may agree that certain types of subject matter would overcome a 101 rejection. I usually ask my Examiners what the practice is for their art unit and try to determine arguments and/or amendments based on the current practice for their art unit. 

Another option is to use tools that provide you with statistics on Examiners. You can see which arguments and types of responses (e.g., amendment, pre-appeal brief, appeal brief, etc.) worked in overcoming 101 rejections for certain Examiners.

Based on the recent guidance (2019 PEG), the number of 101 rejections (abstract idea rejections) being issued has decreased. Further, Examiners are more amenable to discussing arguments and/or amendments that they agree will overcome the 101 rejection, which is the suggested best practice for Examiners per MPEP 2106.07(a)(II) (“In the event a rejection is made, it is a best practice for the examiner to consult the specification to determine if there are elements that could be added to the claim to make it eligible. If so, the examiner should identify those elements in the Office action and suggest them as a way to overcome the rejection.”).

… Some Examiners want claims to be similar to the USPTO subject matter eligibility examples.  Some Examiners are looking for specific hardware or specific software in the claims. Some Examiners want arguments laid out in a manner that clearly follows the eligibility analysis flowchart.

Linda M. Vierra

Bryan Cave Leighton Paisner

Linda M. Vierra is a registered patent attorney whose practice focuses on intellectual property law including drafting patent applications and patent prosecution. Her legal experience encompasses areas of computer science, artificial intelligence, machine learning approaches, mobile applications, and business applications. Linda has a B.S. in molecular biology and a B.A. in economics. Prior to joining Bryan Cave Leighton Paisner, Linda’s legal experience encompassed all areas of complex litigation with a law firm in Oregon.

Practice Tip:

Here is a tip that I use as a constructive way to engage with a patent examiner during prosecution of a patent application for a 101 or a prior art rejection from an Office Action:

Use each interview with a respective patent examiner for a 101 rejection as a collaborative experience rather than an adversarial one. During the interview, engage in a type of “active brainstorming” with the patent examiner based on support you can readily point to in the specification. Such an approach often leads to determining more than one way to amend the claims that move prosecution forward even when no agreement was reached in the interview.

Use each interview with a respective patent examiner for a 101 rejection as a collaborative experience rather than an adversarial one… Such an approach often leads to determining more than one way to amend the claims that move prosecution forward even when no agreement was reached. 

Jennifer A. Wilson

Buchanan Ingersoll & Rooney

Jennifer Wilson is a patent agent in Buchanan’s Intellectual Property section. Her practice focuses on the representation of high-technology clients in connection with patent prosecution in the electrical and mechanical fields. She prosecutes domestic and international patent applications in a range of technologies including computer/business methods, semiconductors, computer architecture and wireless technologies. Early in her career, Jennifer served as a patent examiner for the USPTO within its electrical division, where she reviewed U.S. and international patent applications in a wide range of technologies, including transformers, capacitors, inductors, converters, integrated circuits, semiconductors, electrical switches and ignition coils.

Jennifer earned a B.S. cum laude, in Theoretical Physics from the Edinboro University of Pennsylvania. While earning her undergraduate degree, she conducted research in the Astronomy and Astrophysics Laboratory at the Pennsylvania State University, where she assisted in the development of a double pendulum for gravitation wave detectors for the LIGO (Laser Interferometer Gravitational-Wave Observatory) project. Jennifer has also conducted research in the areas of fluid dynamics at the Ohio State University where she focused on yield stress transition in gas fluidized sand.

Practice Tip: 

It is important to note that each patent eligibility rejection raises its own challenges. Although individual tips will not necessarily fit all circumstances, the following are some items I have found to be useful in starting an analysis and in presentation to examiners:

  • Verbal discussions with an Examiner can sometimes be very beneficial.  Some Examiners will be straight forward in what they (or the SPEs) are looking for in either claim amendments and arguments, so going this route first could reduce your work in the long run.
  • For each step of the Alice test, if the Examiner has improperly applied the wrong standard and has not properly followed the USPTO guidelines, you should explain what the proper standard is and present detailed arguments as to where/how the Examiner has failed to properly follow the USPTO guidelines.
  • Try to compare/equate your claims to a claim of the USPTO examples (e.g., 2019 PEG Examples 37-42 or October 2019 Examples 43-46).  Because Examiners are trained on a basis of the PEG and these USPTO examples, this can significantly increase your chances in overcoming a 101 rejection.
  • If possible, reference portions of the specification when arguing under Step 2A, Prong I.  For example, when presenting arguments against an Examiner’s assertion that the claims are directed to the “certain methods of organizing human activity” grouping of abstract ideas, argue that the claimed recitations (particularly those identified by the Examiner) do not fall within the scope of this grouping’s enumerated sub-categories (e.g., fundamental economic principles or practices, commercial or legal interactions, managing personal behavior, and relationships or interactions between people) and point to portions of the specification for support.  When presenting arguments against an Examiner’s assertion that the claims are directed to the “mathematical concept” grouping of abstract ideas, argue that the claims are merely based on or involve a mathematical concept and that they are not directed to nor recite a mathematical concept itself (i.e., the claims are not limited to a mathematical concept). Be sure to reference portions of the specification in support.  Finally, when presenting arguments against an Examiner’s assertion that the claims are directed to a “mental process,” argue that claimed recitations (particularly those identified by the Examiner) cannot be performed mentally or with a pen and pencil as they recite technologies that cannot be performed by human mental work.  Reference portions of the specification in support.
  • Reference portions of the specification when arguing under Step 2A, Prong II that the claim recitations integrate any alleged abstract idea into a practical application.  Explain the technological problems associated with conventional systems and methods (and point to portions of the specification – typically the background section).  Then, explain how the claimed invention provides a technical solution to and improves upon the problems associated with the conventional systems/methods.  Be sure to point to specific claim recitations (i.e., meaningful recitations) and reference specific portions of the specification that discuss the technological improvements.
  • Finally, reference the PEG/update when applicable in support of your arguments.

 If possible, reference portions of the specification  [both] when arguing under Step 2A, Prong I … and under Prong II when arguing that the claim recitations integrate any alleged abstract idea into a  practical application.

Disclaimer – “The statements and views expressed are the personal opinions of the individual contributors. They are intended for general informational purposes only, and do not constitute legal advice, legal opinion, or the views of a contributor’s law firm.”

Protecting Oligonucleotides and Antibodies: 3 Proven Arguments to Overcome §101 Rejections in Molecular Biology

Patent lawyers love the overused quote from Diamond v. Chakrabarty, “everything under the sun invented by man.” Forty years later, this remains good law in most situations. However, Mayo v. Prometheus and AMP v. Myriad Genetics went on to make clear that not everything under the sun is patentable when it comes to biology. Most recently, Alice, and the associated 2019 PEG have come to dominate how examiners and attorneys approach subject matter eligibility arguments, even when it comes to inventions within the life sciences.

Even with the most conscientious claim drafting, rejections under §101 are not unlikely when the claimed subject matter centers on organic molecules or other “products of nature.” Given the dynamic state of legal arguments in this field, it can be particularly helpful to look at successful responses prepared by other attorneys facing similar rejections.

If you are dealing with §101 rejections involving molecular biology, or other technology classes where “natural phenomena” are frequently cited, you may want to consider taking a prong, (or better, two), from the winning arguments we’ve selected,  below:

Molecules Created Through Human Efforts Can Lay a Path

If the subject matter is artificial, it does not fall under a judicially-created exception to §101 and, therefore, constitutes patent-eligible subject matter.

In biology cases, the examiners typically rely on the “natural phenomena” judicial exception in their §101 rejections. The Patent Office does not want to be responsible for issuing a patent on a biological matter that occurs naturally. This would potentially turn every living organism into an infringer.

To overcome this rejection under the Alice test and the 2019 examination guidelines, you must show the subject matter does not fall into the “natural phenomena” category or the claims include substantially more than a natural phenomenon. Where the claimed subject matter is artificial and the hand of an engineer or scientist is needed to produce it, the invention is legitimately the product of human ingenuity and human effort must be made to infringe the claims.

This argument succeeded in an application for a “Vesicular Linker and Uses Thereof in Nucleic Acid Library Construction and Sequencing” This case was filed in 2017 and issued in 2020.

The examiner issued a rejection under §101 citing the judicial exception for “natural phenomena.” In response, the applicant amended the claims to clarify the claimed kit did not contain a naturally occurring molecule, but rather an engineered product.

With respect to claim 3 as currently amended, the claim now recites “a first primer, having the same sequence as at least a portion of the first strand of the vesicular non-paired region of the oligonucleotide vesicular adaptor” and “a second primer, specifically paring with the second strand of the vesicular non-paired region of the oligonucleotide vesicular adaptor”. Thus, it would be appreciated by the one skilled in the art that the structures of the first primer and the second primer tightly depend on the oligonucleotide vesicular adaptor which is not a naturally occurring product and is instead is a novel and non-obvious presentation for constructing a nucleic acid library and of which specific nucleotide sequences are artificially selected in accordance with actual needs.

Specifically, the claims recited an oligonucleotide vesicular adaptor that connected to a first primer at one location and a second primer at another location. The first primer and second primer are molecules that can occur in nature. But the applicant argued the claimed kit was not a natural phenomenon for two reasons.

  1. The oligonucleotide vesicular adaptor does not occur naturally. Rather, the inventors developed this molecule.
  2. Although the molecules that make up the first primer and second primer occur in nature, a scientist must select and artificially design the first primer and second primer claimed in the application based on the application of the invention. As a result, the primers were not randomly assembled, as would occur in nature, but deliberately created, as would occur in an engineered molecule.

The examiner found these claim elements established that the claimed molecule could not occur naturally. The examiner withdrew the §101 rejection and allowed the claims.

The lesson drawn from this case is that your claims can include molecules that may occur in nature. But make sure that your claims either include non-natural molecules with them or make clear that the molecules are not the naturally occurring variety.

Kudos to Z. Peter Sawicki from Westman, Champlin & Koehler for exemplary work in drafting winning office action responses!

IP Toolworks Demo

A Combination of Humanized and Natural Molecules Can Save the Day

This argument is a close corollary of the first argument. If the subject matter contains molecules that are arguably naturally occurring, you may be able to argue that the combination cannot occur in nature. This moves you out of the judicial exceptions for “products of nature” and “natural phenomena” and allows you to escape the second prong of the Alice test.

Avoiding Alice’s second prong can substantially improve your chances of allowance. The test’s second prong, which asks whether the invention includes substantially more than the ineligible subject matter, is highly subjective. Therefore, qualifying under the first prong should be your first, strongest, and best thought-out argument.

This argument was used in an application for “Humanized Antibodies” This application was filed in 2016 and issued in 2020. Prior to allowance, the applicant received a rejection under §101 on the ground that the claimed invention comprised products of nature.

The antibody or antigen-binding fragment thereof of the pending claims exhibit “markedly different characteristics” as compared to a naturally occurring counterpart in at least two ways. First, one of ordinary skill in the art would understand that the non-human donor antibody is itself “man-made” … Second, … the antibody, or antigen-binding fragment thereof of claim 1, and those dependent thereon, is eligible subject matter because it exhibits structurally distinct characteristics as compared to a naturally occurring counterpart by comprising both non-human donor and human donor residues, introduced into the claimed antibody by the “hand of man.”

In response, the applicant amended the claims to clarify that the claimed invention included a humanized antibody from a non-human donor. This gave the applicant three strong arguments in the office action response:

  1. The humanized antibody behaved differently from naturally occurring antibodies. It did not behave like the non-human donor antibody because it had been humanized. And it did not behave like a human antibody because of its non-human donor origins.
  2. The humanized antibody was not naturally occurring because artificial processes were needed to humanize a non-human donor antibody.
  3. The final product, a humanized antibody, could not occur in nature because it contained both human and non-human residues.

The examiner allowed the claims. Although the examiner did not identify which of the arguments ultimately persuaded the examiner to allow the claims, all three of the arguments are powerful.

The lesson to be drawn from this case is that your chances for allowance improve if you can claim and argue for the non-natural creation, structure, and behavior of the claimed molecule.

Kudos to Elizabeth M. Rohlfs from Pfizer Inc for exemplary work in drafting winning office action responses!

A Real-World Application Can Carry You Through

Although you would prefer to satisfy the Alice test’s first prong rather than battling over the more subjective second prong, you should not limit your arguments to the first prong. If an examiner disagrees with your arguments under the first prong, you will need to present something under the second prong to try to satisfy the Alice test.

This occurred in an application for “Predicting the Ability of Atlantic Salmon to Utilize Dietary Pigment Based on the Determination of Polymorphisms” This application was filed in 2016 and allowed in 2020, although it has not yet issued as a patent because the applicant has not paid the issue fee.

The application claimed a process for sequencing the genes of an Atlantic salmon to detect cytosine at a particular location in the gene sequence. The examiner rejected these claims as directed to a natural phenomenon.

[A]lthough nature-based product limitations are recited by claim 15, analysis of the claim as a whole indicates that claim 15 is focused on a process of detecting the presence of a specific nucleic acid sequence in a sample from a salmon, and is not focused on the nature-based product per se. Id. at 11. For example, as amended herein, claim 15 recites, in part:

a) obtaining a nucleic acid sample from a salmon; and

b) assaying the nucleic acid sample to detect a presence of one or more alleles in the nucleic acid sample;

c) detecting the presence of a cytosine at position 36 in SEQ ID NO: 14.

In response the applicant amended the claims and presented two arguments:

  1. Under the first prong of the Alice test, the applicant argued that the claims were not directed to a natural phenomenon. Specifically, the applicant pointed out that the process of obtaining a DNA sample from the fish, sequencing it, and looking for a particular gene was an artificial process even though it worked on a naturally occurring molecule. As stated by the applicant, the claims were focused on the process of detecting the naturally occurring product and not the naturally occurring product per se.
  2. Under the second prong of the Alice test, the applicant argued that the claims were not merely directed to detecting the naturally occurring product. Instead, the results of the process were used to guide the selective breeding of the fish tested so that the desired characteristic was passed to the offspring. Thus, the claims recited “substantially more” than the process of detecting the naturally occurring product. Specifically, the test results had a real-world use in improving fish husbandry.

The examiner allowed the claims. But the examiner did not identify which of these arguments was found persuasive.

The takeaway from this case is that you should always present arguments on both prongs of the Alice test. In this case, while each argument was powerful independently. the applicant took measures to avoid prolonged prosecution, by presenting both sets of arguments in the office action response.

Kudos to Bradley W. Thomas from Shook, Hardy & Bacon LLP for exemplary work in drafting winning office action responses!

Overcoming §101 Rejections in Molecular Biology Cases

Although some patent practitioners might view Chakrabarty as dated, the “made by man” phrase remains one of the most powerful arguments you have to secure allowance of artificially-created biological inventions.

But you should not limit yourself to “hand of man” arguments. The chances for allowance increase as you present more ways that the claimed molecule differs from its natural counterparts. Look for specific differences in structure and behavior between the claimed molecule and naturally occurring molecules and recite these differences in the claims.

Finally, do not ignore the second prong of the Alice test. Even if you feel optimistic about your arguments that the claims do not embody a natural phenomenon or a product of nature, an examiner might disagree. As a result, you should also present arguments that the claimed invention includes substantially more than a natural phenomenon or product of nature. You can do this by reciting in the claims a real-world application for the invention.

These arguments were found using Arguminer. Visit IP Toolworks to learn more about using Arguminer to find proven arguments for your office action responses.

Disclaimer – “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

3 Inspiring Responses to Office Action from Techs where 101 Rejections are Rare

In some technology classes, subject matter eligibility rejections are par for the course, but in others, they can come as more of a surprise. Take, for example, the field of printing/measuring and testing. Whereas attorneys drafting applications in fields such as these may expect to spend the majority of their prosecution time fine-tuning technology-specific claims around prior art rejections, the continued prevalence of Alice and the increasing use of computer-implemented components across mechanical fields means that the ability to craft a convincing argument on subject matter eligibility can be critical here as well. We took a look at three examples of winning responses to office action examples from Art Unit 2862 to find out how their arguments were able to stand up to the test.

Additional Steps and Elements: Prong Two  of the Alice Test

As is well known, Alice, the Supreme Court set forth a two-pronged test for patent-eligibility. First, a determination is made as to whether the claim is directed to a law of nature, a natural phenomenon, or an abstract idea (collectively, called the “judicial exceptions”). If the answer is yes, then the second step is to further determine whether any element or combination of elements, in the claim is sufficient to ensure that the claim amounts to something significantly more than a judicial exception. 

Whereas the Alice test would seem to present an either/or situation, it is nearly always to the prosecutor’s benefit to cover all bases by presenting arguments on both prongs and leave it to the examiner to determine which they find convincing.

An example of arguments directed to the Alice test in the printing/measuring and the testing domain is in an Office Action response dated October 28, 2019, from application 15/448,587 for an “Apparatus and Method of Processing Multi-Component Induction Data.” 

First, the applicant argued that claim 1 was not an abstract idea. Specifically, it was argued that the claim recited, “acquiring signals based on the multicomponent tool having a plurality of receiver arrays,” which is not abstract. Furthermore, claim 1 was not directed to a mathematical concept and did not recite any mathematical relationships, formulas, or calculations. Therefore, the applicant argued, the contention that claim 1 was directed to an abstract idea of mathematical concepts was an overgeneralization and ignored the clear claim language and presence of non-abstract ideas. 

Second, the applicant argued that even if claim 1 had failed under step one of Alice, the claim would meet step two. In the applicant’s case, the recited exception was integrated into a practical application of the exception. The claim recited the additional element of generating data with “improved resolution at multiple depths of investigation compared to the acquired signals” and practically applied the alleged abstract idea to improving the acquired signal of the multi-component induction logging tool. Accordingly, the applicant argued, the claimed combination was an inventive concept for generating improved data with an improved resolution at multiple depths of investigation compared to the acquired signals, and therefore claim 1 recited significantly more than the alleged abstract idea.

Examiner Brent Alan Fairbanks’s response to these arguments focused on those relating to the second step of Alice. In an office action dated December 4, 2019, the Examiner withdrew the Alice rejection, stating:

The additional element of a receiver triad, the additional step of “correlates the electromagnetic properties of the downhole formation”, and the additional step of “the data has an improved resolution at multiple depths of investigation compared to the acquired signals” integrates the abstract idea into a practical application that reflects an improvement to another technology or technical field. Therefore, the claim is eligible at Prong Two of the revised step 2A (see 2019 Revised Patent Subject Matter Eligibility Guidance – Revised Step 2A). The rejection of 29 July 2019 has been withdrawn.

A notice of allowance was sent on March 6, 2020, and the resulting patent issued as U.S. Patent No. 10,670,767 on June 2, 2020.

Kudos to Neilesh R. Patel from Gilliam IP PLLC for exemplary work in drafting winning office action responses!

Software-Related Claims are not Automatically Judicial Exceptions Under Enfish 

Before Enfish, courts had generally found that software-related inventions, requiring the computer, represented abstract ideas. Because of this, when the Alice test was applied to any software-related claims, the analysis generally assumed that step one was met and moved on to step two. However, in Enfish, the court found that the software claims at issue were not directed to an abstract idea.  Accordingly, the patent-eligibility analysis did not need to proceed beyond step one. 

A case involving a printing/measuring and testing invention in which Enfish was successfully argued against an Alice rejection is in an office action response dated June 3, 2019, from application 15/649,571 for a “Methods for Improved Heading Estimation.” 

The applicant quoted Enfish to assert that step one of Alice asks whether the focus of the claims is on the specific asserted improvement in computer capabilities or is an abstract idea invoking computers merely as tools:

“[T]he first step in the Alice inquiry … asks whether the focus of the claims is on the specific asserted improvement in computer capabilities … or, instead, on a process that qualifies as an ‘abstract idea’ for which computers are invoked merely as a tool.” Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335-36 (Fed. Cir. 2016). 

Applicant went on to argue that in their case, the claims could not be simplified into mere mental steps. The claims provided a practical application for determining a global rotation estimate, applying spatial magnetic filtering, and generating accurate path data based on magnetic and gyro sensor data collected at a computing device. When considered as a whole, the applicant argued that the claims recited significantly more than mental processes or instructions performed on generic computer components that are well-understood, routine, and conventional. 

In a notice of allowance dated June 12, 2019, examiner John H. Le explained how the applicant had overcome the Alice rejection:

Claims 15-30 are allowable over the rejection under 35 U.S.C. 101 because the claim does not recite any [sic] the judicial exceptions enumerated in the 2019 PEG. For instance, the claim does not recite any mathematical relationships, formulas, or calculations. Further, the claim does not recite a mental process because the steps are not practically performed in the human mind. Finally, the claim does not recite any method of organizing human activity such as fundamental economic concepts or managing interactions between people. Thus, the claim is eligible because it does not recite a judicial exception.

The resulting patent was issued as U.S. Patent No. 10,393,543 on August 27, 2019.

Kudos to Timothy D. Casey from Baker & Hostetler LLP for exemplary work in drafting winning office action responses!

No Monopolization of an Abstract Idea

An example focusing on step two of Alice did not emphasize whether the claims included a judicial exception but instead focused on whether the claims attempted to monopolize the judicial exception for all uses. 

In application 15/438,259 for “Expected Sensor Measurement Receipt Interval Estimation,” the applicant presented arguments in response to an Alice rejection in an office action response dated March 23, 2020. The applicant contended that, when making the determination of whether a claim is directed to an abstract idea, the examiners should keep in mind that some inventions pertaining to improvements in other technologies are not abstract when appropriately claimed. The applicant argued that the claims at issue provided a particular improvement to the technology of sensor systems by automatically performing the remedial action of restarting or rebooting the system. 

In a notice of allowance dated July 10, 2020, examiner Leonard S Liang referenced the fact that the claims were not monopolizing an abstract idea as dispositive:

However, when considering the claims as a whole, the examiner determined that there was enough in the additional elements to be indicative of integration into a practical application. Here the claim is not monopolizing the abstract math for all purposes, just those relating to rebooting/restarting the sensor system. And the sensor system can still be rebooted/restarted even if another mathematical technique is used. Therefore, the claims are not directed to a judicial exception. They qualify as eligible subject matter under 35 U.S.C. 101.

Although the case was allowed, it was abandoned before issuing as a patent for failure to pay the issue fee.

Kudos to John C. Garza from Trop, Pruner & HU, P.C. for exemplary work in drafting winning office action responses!

Conclusion

In technology areas where such rejections are rare, patent practitioners are less likely to be experienced with crafting office action responses to Alice, making the task more daunting. Nonetheless, as the cases above demonstrate, it is indeed possible to overcome an Alice rejection in technology domains where Alice is rarely encountered. You just need to know-how.

The cases for this article were found using Arguminer – patent prosecution software from IP Toolworks. The Arguminer software automatically sifts through millions of office action responses, finding examples that worked (or didn’t if you’re looking for negative examples) when dealing with office actions similar to those faced by its users.

We shared a similar post with proven arguments for the ‘Gaming’ domain. How about sharing that with your colleague who deals with patent prosecution in gaming?

Visit IP Toolworks to learn more about how you can use Arguminer as an assistant to help you find proven arguments to use in your next Office Action. Arguminer not only helps you level up your prosecution practice but can assist in training new attorneys working with you.

Disclaimer - “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

5 Anti-Alice Arguments from Responses that Worked

5 Anti-Alice Arguments from Responses that Worked

Since the patent office first started applying it in late 2014, the case of Alice v. CLS Bank has been a persistent thorn in the side of patent attorneys, particularly those prosecuting applications in the technology center which deals with business method inventions.1 This has inspired articles addressing anti-Alice arguments, including those that have succeeded in courts and at the PTAB.2

However, as the overwhelming majority of patent applications will neither be litigated nor appealed to the PTAB, it seems that there would be independent value in looking at arguments that have overcome Alice rejections during the one process that all patent application have to go through – i.e., examination. I used IP Toolworks’ Arguminer software to look for office action responses which were followed by withdrawal of responses would be beyond the scope here, I have identified five arguments from them that I feel are particularly worth relaying.

These success cases utilize creative and unexpected strategies, drawing upon “ancient knowledge,” latest cases and unexpected leveraging of the Administrative Procedure Act.

#5 Pre-Alice Training Materials Presented by the Patent Office in 2012 Can Still be Applied to Show Eligibility Post-Alice in 2016 (as seen in prosecution of 14/452,375)

While the patent office has issued numerous memoranda, updates, and similar documents regarding the application of Alice v. CLS,3 the February 17, 2016 response to the rejection of Warehouse Management System application 14/452,375 (the “‘375 Application”) demonstrates that there can be value in applying ancient (i.e., pre Alice) knowledge rather than simply trying to fit the patent office’s latest guidance to the facts of your case. In that case, the claims were initially rejected as directed to an abstract idea, based largely on the post-Alice case of Planet Bingo, LLC v. VKGS LLC.4 However, rather than relying on the patent office’s training material which specifically addressed either Planet Bingo or other post-Alice cases,5 the applicant’s response reached back to the examiner Olusegun Goyea and patent office’s August 2012 subject matter eligibility update, explaining that that document was important because:

While the discussion of what amounts to significantly more than a patent-ineligible concept in the document relates to determining whether a claim amounts to significantly more than a law of nature or natural principle, the analysis is reasonably applied to abstract ideas as well since the factors for considering whether an idea is “significantly more” are not tied specifically to laws of nature.6

The applicant then explained how applying the factors laid out in the August 2012 guidance showed that the claims in question were patent eligible, and in the next office action the examiner withdrew the subject matter eligibility rejections of all but one of the pending claims.7 When responding to that last rejection, the applicant shifted from relying on the pre-Alice guidance to a detailed application of Enfish, Bascom, and other post-Alice cases.8 However, that shouldn’t undermine the lesson that pre-Alice materials can still be useful, especially since, as shown in the next example …  

  #4 Diamond v. Diehr and other pre-Alice Supreme Court Opinions are Still Good Law and can Establish Eligibility (as seen in 14/137,530)  

When it was originally filed in December of 2013, application 14/137,530 for Semiconductor Manufacturing using Design Verification with Markers (the “‘530 Application”) included 20 claims, all of which were rejected by examiner Bryce M. Aisaka in early 2015 based on Alice.9 At that time, while the patent office had issued relatively less material than by the time of the response discussed above for the ‘375 Application, it had still provided interim eligibility guidance for applying Alice v. CLS,10 as well as examples of the application of that case in the context of the abstract idea exception.11 However, rather than arguing in favor of patentability based on those documents, the applicant reached all the way back to the 1981 decision of Diamond v. Diehr, explaining that, under that case, the method defined by the first independent claim was patent eligible because

[the claimed method] provides that the circuit design that is cleared of design rule violations by the EDA computer system is used in manufacturing a system. Thus, there is more than mere abstract manipulation of numbers by a computer. Instead, the design is used to manufacture a physical device that is free from design rule defects. Such an interaction between a program and a controlled physical process has been ruled to be allowable over a 35 U.S.C. § 101 rejection.12

While, some lingering 103 issues have (as of writing) prevented the ‘530 Application from being allowed, the next action did withdraw the 101 rejections, further illustrating that sometimes the best way to respond to new rejections may be with old cases. Of course, that doesn’t mean that there’s nothing to be gained from being aware of, and applying new cases. Indeed, the next example makes clear that arguments based on post-Alice cases can also be successful since …  

#3 Bascom v. AT&T Mobility Can Establish Eligibility even if a Claim is Directed to an Abstract Idea (as seen in 13/757,470)  

When the claims to a method and system for obtaining location information from a wireless network in application 13/757,740 (the “‘740 Application”) were rejected by examiner Nizar N. Sivji for being directed to a judicial exception without significantly more, the applicant didn’t turn to pre Alice guidelines or cases. Instead, in a response filed on November 9, 2016, the applicant focused on much more recent material, including the case of Bascom Global Internet Services, Inc. v. AT&T Mobility LLC,13 which had been decided only that summer. In particular, the applicant relied on Bascom for the proposition that claim which recite a “specific, discrete implementation of” a purportedly abstract idea were not ineligible under section 101, and then identified specific steps recited in the claim as “transform[ing] the purported abstract idea of mobility management into a particular practical application of that purported abstract idea.”14

The next office action showed that this focus on more recent material was effective, stating that “With regards to Applicant argument, for rejection under 35 USC 101, the argument is persuasive and therefore, the rejection is withdrawn.”15

Unfortunately for the applicant, like the ‘530 Application, the ‘740 Application has not (as of writing) been allowed due to some lingering 103 issues, though that should in no way detract from the efficacy of the November 9, 2016 response’s subject matter eligibility arguments, especially since using those arguments allowed the applicant to overcome the subject matter eligibility rejections without any claim amendments. Of course, approaches that differ from those described above in more than just the recency of their supporting citations are also possible. For example, rather than just explaining why a response is substantively wrong…  

#2 You Can use the PTAB Decision ofEx Parte Poisson to Argue that there is no Prima Facie case ofIneligibility (as seen in 13/886,540)  

The Federal Circuit has been generally skeptical of the patent eligibility of systems which apply rules for various purposes.16 Thus, it isn’t a surprise that the claims of application 13/886,540 for Rule-Based Archival Maintenance (the “‘540 Application”) were rejected by the examiner Shya Jau Meng based on Alice for being directed to an abstract idea without significantly more.17 In responding to these rejections, the applicant began by explaining what was necessary to establish a prima facie case of ineligibility based on the MPEP and the patent office’s subject matter eligibility guidance.18 Then, it analogized the pending rejections to those addressed by the PTAB in Ex Parte Poisson to explain why the requirements for a prima facie case had not been met:

Instead of addressing the specific recitations of the claims, the Office oversimplifies the claimed invention by asserting that the claims are directed to the abstract idea of a series of steps to manage information. In this regard, Applicant draws attention to a recent PTAB decision, in Ex parte Poisson, where the PTAB overturned a finding by the Office that the claims were directed to an abstract idea. Ex part Poisson, No. 2012-011084, (P.T.A.B. Feb. 27, 2015). The Board noted that the Office failed to perform a proper claim construction of the claims and consider the claims as a whole. Id. at 4-5.

This failure, the Board determined, caused the Office to misinterpret the claims and oversimplify the claims in making its determination that the claims were directed to an abstract idea. Id. at 4-5.19 In the next office action, the 101 rejections were withdrawn,20 though some 103 and 112 issues remained which prevented the case from being allowed until December of last year. Of course, you don’t just have to rely on patent-specific jurisprudence when responding to Alice rejections.   

IP Toolworks Demo

#1 You can use the Administrative Procedure Act to Combine Subject Matter Eligibility and Art-Based Arguments (as seen in 13/229,755)  

On March 28, 2016, the claims of application 13/229,755 for systems and methods for discovery of related interactable items in a mobile store environment (the “‘755 Application”) were rejected by examiner Lance Y. Cai under 35 U.S.C. §§ 101 and 102. 21 While, technically, eligibility under section 101 and patentability under section 102 are separate questions, the applicant on the ‘755 Application leveraged 102 arguments to respond to the 101 rejections with the following application of the administrative procedure act:

whether or not specific claim features are “well-understood, routine and conventional,” and thus amount to significantly more than the judicial exception itself, is a factual analysis that must be based on evidence. The standard of review applied to findings of fact is the “substantial evidence” standard under the Administrative Procedure Act (APA), 5 U.S.C. 500 et seq.

as discussed below, Drucker [the reference cited in the rejections under 35 U.S.C. § 102] does not disclose or suggest at least the feature of “wherein the new graphical presentation data includes a visible link between the seed interactable item and the selection indicating that a user navigated from the seed interactable item to the selection,” as recited in exemplary independent claim 1. Because Drucker does not disclose or suggest at least this feature of independent claim 1, this feature is not “well-understood, routine and conventional,” and as such, independent claim 1, and similarly independent claims 10-13, 22, and 28-31, clearly recites “significantly more” than the alleged abstract ideas.22

In the following office action, all rejections under 35 U.S.C. § 101 were withdrawn though, ironically, the rejections under section 102 were maintained23 and have since been appealed to the PTAB.24As the above responses demonstrate, applicants have successfully overcome subject matter eligibility rejections without having to resort to the PTAB or the courts using a wide variety of arguments. While, ultimately, there’s no guarantee that any particular argument will work to overcome a rejection in any particular case, considering past arguments, including those described in this paper, can at least provide inspiration and possible tactics for attorneys who are seeking to establish the subject matter eligibility of their own clients’ inventions.    

References

 1In particular, the patent office’s open data portal indicates that the allowance rate for class 705 – Financial, Business Practice, Management, or Cost/Price Determination (Data Processing) – dropped from 31.2% pre-Alice, to 23.5% in 2014, to 9.4% in 2015, to 4.7% in 2016. See United States Patent and Trademark Office, Allowance Rate by USPC Class, Open Data Portal (beta) at https://developer.uspto.gov/visualization/allowance-rate-uspc-class (visited 5/7/2017). 

2 Daniel A. Parrish and Amir N. Penn, 5 Ways To Overcome An Examiner’s Post-Alice 101 Rejection, LAW360, available at www.law360.com/articles/801995/5-ways-to-overcome-an-examiner-s-post-alice-101-rejection (visited 5/7/2017) (addressing PTAB decisions as a source of authority for responding to Alice in light of the dearth of guidance from the Federal Circuit); 7 Post-Alice Patent Cases That Survived 101 Rejections – Clearing Some Cloud of Doubts on Software Patent Eligibility, GREYB SERVICES, available at https://www.greyb.com/post-alice-patentcases-surviving-101-rejection (visited 5/7/2017) (reviewing seven court decisions in which patents survived Alice based section 101 challenges). 

3 See United States Patent and Trademark Office, Subject Matter Eligibility, available at https://www.uspto.gov/patent/laws-and-regulations/examination-policy/subject-matter-eligibility (visited 5/7/2017). 

4 Office Action of December 4, 2015 at 2-4, ‘375 Application. 

5 E.g., 2014 Interim Guidance on Patent Subject Matter Eligibility, which specifically addressed Planet Bingo in its section on Abstract Idea Decisions from the Federal Circuit since Alice Corp. 

6 Amendment and Remarks of February 17, 2016 at 8, ‘375 Application. 

7 Office Action of June 6, 2016, ‘375 Application. 

8 Amendment and Remarks of September 6, 2016 at 7-11, ‘375 Application. 

9 Office Action of February 23, 2015, ‘530 Application. 

10 United States Patent and Trademark Office, 2014 Interim Guidance on Patent Subject Matter Eligibility, available at https://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf (visited 5/7/2016). 

11United States Patent and Trademark Office, Examples: Abstract Ideas, available at https://www.uspto.gov/patents/law/exam/abstract_idea_examples.pdf (visited 5/7/2016). 

12 Amendment and Remarks of May 26, 2015 at 5, ‘530 Application. 

13 Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016). 

14Amendment and Remarks of November 9, 2016, at 14, ‘740 Application. 

15Office Action of December 27, 2016 at 13, ‘740 Application. 

16See SmartGene, Inc. v. Advanced Biological Laboratories, SA, 555 Fed. Appx. 950, 955 (Fed. Cir. 2014) (“Whatever the boundaries of the ‘abstract ideas’ category, the claim at issue involves a mental process excluded from section 101: the mental steps of comparing new and stored information and using rules to identify medical options.”). 

17Office Action of March 10, 2016 at 3-4, ‘540 Application. 

18Amendment and Remarks of May 20, 2016 at 10, ‘540 Application. 

19Amendment and Remarks of May 20, 2016 at 11-12, ‘540 Application. 

20Office Action of September 9, 2016, ‘540 Application. 

21Office Action of March 28, 2016, ‘755 Application. 

22Amendment and Remarks of June 27, 2016 at 22, ‘755 Application. 

23Office Action of September 14, 2016 at 5, ‘755 Application (“Rejection of claims under 35 USC 101 is withdrawn. Rejection of claims under 35 USC 112 and 35 USC 102 are maintained.”). 

24Appeal Brief of January 13, 2017 at 11, ‘755 Application: Claims 1-35 are rejected under 35 U.S.C. § 102(b) for allegedly being anticipated by U.S. Publication No. 2007/0033220 (“Drucker”). The Appellant respectfully traverses this ground of rejection.

Disclaimer - “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”

Office Action Responses | How these attorneys beat Alice Rejections in Gaming Technology?

Office Action Responses Where Gaming Inventions Beat the House on Alice

Is there an easy way to find proven office action responses?……. Read on to find out!

While the USPTO has reported that the number of, and variability in, rejections based on Alice v. CLS Bank have decreased following 2019’s eligibility guidance, Alice rejections continue to be among the most challenging to overcome and disproportionately affect certain technologies and categories of filers1. One area of technology which continues to be substantially impacted by Alice rejections is gaming, with some rejections appearing to be based on a categorical rule that any gaming claims are per-se directed to an abstract idea2.  However, while dealing with Alice rejections may seem like a roll of the dice, it isn’t necessarily a rigged game, and having a system can help even the odds.  To that end, patent agents and attorneys working on gaming technologies may want to keep these proven strategies up their sleeves to help strengthen their hands when representing their clients.

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3. Turning Lemons Into Lemonade with In re Guldenaar

On its face, In re Guldenaar3 is not a great case for gaming inventions.  Essentially, Guldenaar appealed a rejection in which the examiner argued that the invention was directed to “rules for playing a game” which  fell within the realm of “methods of organizing human activities.” The Federal Circuit sided with the examiner, referring back to its prior decision in In re Smith4 as establishing that rules for playing a game is an abstract idea, and finding that the claims did not include an inventive concept that could transform them into a patent eligible application. Guldenaar also featured a concurrence by Judge Mayer, in which he took the position that “[w]hile games may enhance our leisure hours, they contribute nothing to the existing body of technological and scientific knowledge.  They should therefore be deemed categorically ineligible for patent.”5

Despite its apparent negativity toward gaming patents, going below the surface allows Guldenaar to be applied in support of eligibility of gaming inventions.  This was illustrated in an office action response from application 15/785,865 for an “Electronic Gaming Machine and Method.”  In July of 2018, that application had been rejected by examiner Ronald Laneau based on the argument that “managing a game of chance on a plurality of reels” was an abstract idea based on In re Smith6.  However, despite the fact that Guldenaar (like the office action) had relied on Smith, the applicant was able to turn that case in its favor, arguing that:

As to the subject matter recited in claim 1 then, it first should be noted that the Federal Circuit has issued no blanket prohibition against the patent eligibility of gaming machines.  In fact in In re Smith, 815 F.3d 816 (Fed. Cir. 2016), the Federal Circuit specifically stated that their decision was “not to say that all inventions in the gaming arts would be foreclosed from patent protection under §101.” Id. at 819 (emphasis added).  This was confirmed recently in In re Marco Guldenaar Holding, B.V., 2018 US App. LEXIS 36645, *9 (Fed. Cir. 2018). For example, the Federal Circuit suggested in In re Smith, “claims directed to conducting a game using a new or original deck of cards” potentially could survive a challenge under §101 (a point which the Office admitted during oral argument).7

This was then followed by a notice of allowance, with the result that the Electronic Gaming Machine and Method is now U.S. patent 10,366,569.

Kudos to Paul C. Craane from Cook ALext Ltd for exemplary work in drafting winning office action responses!

2. Threading the Needle with 2019 Guidance’s Abstract Idea Categories

In re Smith isn’t the only obstacle that prosecutors working on gaming patent applications may face.  For example, the office action dated 12/14/2018 on application 15/861,431 (Apparatus and Methods for Multimedia Games), acknowledged that the subject invention was not a “fundamental economic practice” under Smith8, yet still rejected it under § 101 based on the conclusion that it was within the category of “certain methods of organizing human activity.”9

However, despite not being able to rely on Guldenaar to reinterpret Smith as described in the preceding section, the applicant was still able to prevail by pointing out that the 2019 guidance defined “certain methods of organizing human activity” in terms of specific subcategories, and none of those subcategories was relevant in that case: Applicant respectfully notes the allegation in the Office Action that the claims “involve arranging portions of multimedia content for presentation to a user to create a multimedia game.”  Even if this allegation were taken to be accurate (which applicant does not concede), applicant respectfully submits that “arranging portions of multimedia content” is not a “human activity” as that term is defined in the 2019 Guidance.  Rather, the 2019 Guidance defines this category in terms of “fundamental economic principles or practices,” “commercial or legal interactions,” or “managing personal behavior or relationships or interactions between people.”  See 2019 Guidance at 52.  Applicant therefore respectfully submits that, under the 2019 Guidance, the pending claims do not recite any of the enumerated “certain methods of organizing human activity.”

Accordingly, because the pending claims do not recite any concept that falls within the enumerated subject matter groupings in the 2019 Guidance, the claims pass Prong One of Step 2A of the revised subject matter eligibility test and are thus patent-eligible.  Applicant therefore respectfully requests withdrawal of the rejections and allowance of the claims.10

Similar category arguments can also be made in office action response to Smith-based rejections.  For example, in office action response to a rejection which stated that all wagering games were similar to In re Smith11, the attorney prosecuting application 15/626,422 (method of gaming, a gaming system and a game controller) argued that:

Claim 43 is directed to displaying a plurality of cloned symbol display potions adjacent to the selected at least one reel at a display device of a gaming machine, the plurality of cloned symbol display positions displaying the plurality of symbols selected for display in the initial outcome for the selected at least one reel, and determining an outcome, based at least in part on, the plurality of symbols in the initial outcome and the plurality of symbols displayed at the cloned symbol positions.  Thus, the limitations of Applicant’s independent claim 43 are unrelated to mathematical concepts, mental processes, and certain methods of organizing human activity.  Moreover, even if an enumerated judicial exception were present (which it is not), the limitations of independent claim 43 convey specific graphical information in a specific way at a display device of a gaming machine.  Thus, the recited display control is a practical application in gaming technology.

Accordingly, Applicant respectfully submits that claim 43 of the present application is directed to statutory subject matter under 35 U.S.C. § 101, and the section 101 rejection is appropriately withdrawn based on the appropriate legal standards, including 2019 PEG.12

Both OA responses were followed by new actions which withdrew the 101 rejections, with the action on 15/861,431 specifically stating that “[t]he examiner (Nathaniel J. Kolb) is persuaded that the current claims are not directed to an abstract idea in light of the 2019 Revised Patent Subject Matter Eligibility Guidance.”13

Kudos to Jerry Turner Sewell from Patterson Intellectual Property Law, P.C. for exemplary work in drafting winning office action responses!

1. Bringing it Down to Earth with Concrete Limitations and Physical Applications

A third approach to showing that a gaming abstract is to emphasize its concreteness in implementation and physicality of its application.  An example of this can be found in the prosecution of application 15/495,973 for Electronic Fund Transfer for Mobile Gaming.  In January of 2019, that application was rejected by examiner Ross A. Williams under § 101 as being directed to a fundamental economic practice and the sort of organizing of human activities that were identified as ineligible in previous cases.14 In office action response to this rejection, the applicant emphasized both the components recited in the claim and the real world impact of its application:

Claims 1 and 2 stand rejected under 35 U.S.C. § 101 as allegedly being directed to abstract ideas.  Applicants respectfully disagree.  To advance prosecution, claim 1 has been amended to include eligible subject matter such as a location tracker.

The location server and/or tracker, when considered in combination with the vessel and mobile gaming device provide for meaningful limits.  The claims are not simply “a method of exchanging and resolving financial obligations between a player and an operator of the gaming machine” as alleged in the Office Action.  The location server and/or tracker acts in concert with the recited features of the vessel and mobile gaming devices to enable the mobile gaming devices to permit a game of chance to be played on the mobile gaming devices.

Moreover, the enablement of a fund transfer to be approved for a particular requesting mobile device and the enablement of a game to be played by a user or player based upon the determining of a physical location of a game device upon a vessel and the physical determination of a location of a vessel being determined require activity outside of a person’s mind.  Furthermore the determination of an actual physical location of a mobile game device upon a vessel in addition to the determination of an actual physical location of the vessel is not an abstract concept. (See, CG Technology Development, LLC et al., vs. Bwin Party (USA),

Inc., et al. (2:16-cv-0087-RCJ-VCF)).  These features are not long-prevalent and fundamental practices in current business practices, in comparison to the abstract ideas of risk-hedging and intermediated settlement relied upon by the Alice court, which have been in widespread use for many centuries throughout the world.15

This office action response was followed by an office action in which all § 101 rejections had been withdrawn16, and 15/495,973 subsequently issued as patent 10,586,425 on March 10, 2020.

Kudos to C. Douglas Thomas from TI Law Group for exemplary work in drafting winning office action responses!

Conclusion

The above office action responses, and countless others that have worked to overcome § 101 rejections on gaming patent applications, provide both examples and building blocks which can be used to make the right calls in what may look like a longshot situation.   However, while the file wrappers which include those office action responses may theoretically be publicly available, the patent office hasn’t laid its cards on the table – neither PAIR nor the newly released patent center (in beta as of the time of writing) provide functionality that could allow a practitioner to find responses that may be relevant in any particular situation.  

So how can the value inherent in past office action responses be unlocked?  One way would be for a practitioner to look at patents for inventions like the one he or she is working on, look at their file wrappers in PAIR or patent center, and hope to get lucky with something that can be applied to his or her case.  However, we would propose a better way.  The cases for this article were all found using the Arguminer patent prosecution software from IP Toolworks.  The Arguminer software automatically sifts through millions of documents, finding office action responses, appeal briefs and other documents that worked (or didn’t if you’re looking for negative examples) when dealing with office actions similar to those faced by its users. 

Visit IP Toolworks to learn more about how you can use Arguminer as an assistant to help you discover game changing strategies to use in your next Office Action.

References

1Andrew A. Toole & Nicholas A. Pairolero, Adjusting to Alice: USPTO patent examination outcomes after Alice Corp. v. C LS Bank International, U.S.P.T.O., Office of the Chief Economist, IP DATA HIGHLIGHTS  3, (Apr., 2020). Available at https://www.uspto.gov/sites/default/files/documents/OCE-DH_AdjustingtoAlice.pdf.Mark A. Leml & Samantha Zyontz, Does Alice Target Patent Trolls? (Mar., 2020). Available at SSRN: https://ssrn.com/abstract=3561252 or http://dx.doi.org/10.2139/ssrn.3561252.

 2E.g., Office Action of July 17, 2019 on application 15/626,422 at 10:

The examiner finds that wagering games are all rather similar: accepting a wager, playing the game according to the rules comprising generating random outcomes according to the rules, determining winning outcomes, determining how much is to be paid for a winning outcome, and paying out the winnings.  This breakdown of wagering claim language is similar to that in precedential case in re Smith (in re Smith (Fed. Cir. 2016), appeal 2015-1664, U.S. patent application 12/912,410) [in which a subject matter eligibility rejection was appealed and affirmed by the PTAB and the Federal Circuit]. 

 3In re Marco Guldenaar Holding B.V., 911 F.3d 1157 (Fed. Cir. 2018).

 4815 F.3d 816 (Fed. Cir. 2016).

5In re Marco Guldenaar Holding B.V., 911 F.3d 1157, 1166 (Fed. Cir. 2018) (Mayer, J. Concurring).

 6Office Action of July 10, 2018 on application 15/785,865 at 5.

 7Response to office action of July 10, 2018 on application 15/785,865 at 5 (underlining, italics and bold formatting from response).

8Office Action of December 14, 2018 on application 15/861,431 at 10:

The term “fundamental” is used in the sense of being foundational or basic, and not in the sense of necessarily being “old” or “well-known.”  See, e.g., In re Smith, 815 F.3d 816, 818-19, 118 USPQ2d 1245, 1247 (Fed. Cir. 2016) (describing a new set of rules for conducting a wagering game as a “fundamental economic practice”).

The present claims do not fall within the category of “fundamental economic practices”.

9Id. at 11:

The present claims involve arranging portions of multimedia content for presentation to a user to create a multimedia game.  This makes the present claims very similar to the claims recited in DietGoal, Ameranth, and Electric Power Group.

The present claims are therefore directed to the certain methods of organizing human activity.

 10Response to Office Action of December 14, 2018 on application 15/861,431 at 17.

 11Office Action of July 17, 2019 on application 15/626,422 at 10.

 12Response to Office Action of July 17, 2019 on application 15/626,422 at 13-14.

 13Office Action of August 28, 2019 on application 15/861,431 at 4.

 14Office Action of January 11, 2019 on application 15/495,973 at 3-4.

 15Response to Office Action of January 11, 2019 on application 15/495,973 at 4-5.

 16Office Action of August 8, 2019 on application 15/495,973

Disclaimer - “The statements and views expressed in this posting are my own and do not reflect those of my law firm, are intended for general informational purposes only, and do not constitute legal advice or a legal opinion.”