Getting Out of Autodrive: Arguments to Overcome “Automatic Means to Replace Manual Activity” in Obviousness Rejections

On its surface, the rationale behind “automatic means to replace manual activity” rejections seems to make sense. Simply replacing work done by hand with the same work performed by a machine hardly constitutes a new invention. However, automation is seldom so simple, and in this complexity lies the prospect of patentability. The question is, how do you demonstrate that your client’s invention is more than mere automation?

Keep reading to discover three arguments that have proven successful in overcoming § 103 rejections citing automatic means for replacing manual activity:

First Things First

The elements that underlie an automatic means rejection are straightforward: a manual activity, an automatic means, and a replacement of one for the other. In order to properly present an automatic means rejection, the examiner must be able to point to the manual activity from the prior art that forms its basis. If, however, the manual activity the examiner is alluding to does not exist in the prior art, the claimed activity may be patentable, whether it is performed manually or automated.

For example, suppose your client has an improved manufacturing process. The process uses sensors of varying voltages to monitor an assembly machine. The sensors measure vibration, pressure, and other characteristics. The information from these sensors provides a cheaper assembly process and extends the life of the assembly machine. If these parameters had never before been measured and used to monitor the manufacturing process, they would be patentable, irrespective of whether the sensors were adjusted automatically or required manual intervention. As such, an automatic means rejection would be improper. An examiner cannot recite automatic means for replacing a manual activity if the manual activity being automated does not exist in the prior art.

This was exactly the issue raised by attorney Mark Crockett, from Luedeka Neely Group PC,  while prosecuting an application claiming a sensor interface that connected sensors to an automatic monitoring system. Examiner Norman rejected the application, explaining that the invention merely replaced a manual activity with automatic means of accomplishing the same task.

In response, the applicant argued:

The Office Action invokes In re Venner (120 USPQ 192) to assert that “providing automatic means to replace manual activity which accomplished the same result involves only routine skill in the art.” First, it should be noted that In re Venner does not establish a per se rule regarding obviousness of replacing manual activity with automated means. The Office Action must still show prior art evidence of the “manual activity” that is being automated. In this case, the Office Action does not point to any manual switches connected to positive, negative, and neutral supply voltages in the prior art power supply that are being replaced by the claimed software-controllable switches.

The examiner acknowledged the argument, stating that “the prior art does not teach or suggest the sensor power and conditioning interface, as amended,” and the application went on to issue as U.S. Patent No. 10,175,148.

This case reminds patent practitioners to start at the beginning of the analysis. Ask whether the examiner has in fact found a manual activity within the prior art analogous to the claimed invention. If the examiner has skipped this step, an automatic means rejection is improper.

Improvement Does Not Necessarily Mean Replacement

Replacement of one element for another is requisite to the “automatic means to replace manual activity” rejection. Although no case specifically discusses what replacement means, one can infer that in order for the automatic means to replace the manual activity, it must perform the same functions and solve the same problem.

Consider a scenario in which the automated version of the activity in question performs additional functions or provides solutions not achievable using the manual process. Would the claimed invention still be considered a simple case of replacement? This situation is indeed likely, as automation brings many benefits, including:

  • Speed
  • Efficiency
  • Productivity
  • Accuracy

If any of the above improvements apply to the claimed implementation, it is logically rendered as something more; in other words, a patentable invention.

This argument was presented during the prosecution of an application involving machinery that prepares food using closed ingredient containers. The machine automatically cuts pouches and adds ingredients from the pouches to a recipe without human intervention.

Examiner Triggs rejected the claims asserting that automatically cutting and dispensing ingredients is merely the automation of a manual task. In response, attorney Silvia Salvadori, from Silvia Salvadori P.C.,  argued that:

[T]he presence of the hoppers with a cutting device inside, formed by toothed cutting blades angularly adjustable with teeth facing towards the hopper mouth, allows the preparation of recipes with an efficiency which could not be achieved by any manual operation. … As discussed above, the presence of the cutting blades angularly adjustable and with teeth facing the hopper mouth could not be exchanged by a human operator with the same reasonable expectation of success.

This argument overcame the rejection, and the patent issued as U.S. Patent No. 9,718,040.

This case teaches that replacement usually means that the invention performs the same structures, functions, and results as the manual activity cited as prior art. If your client’s invention adds new functionalities and outcomes, you can argue that it improves on the manual activity rather than replacing it.

Automatic Means is Merely Automation

The automatic means provided by the invention usually replace a human with a machine. When the machine performs something a human cannot do, you can argue that your client has not provided automatic means. Instead, the client has changed the function of the device and created a new invention.

Attorney Jay Franklin, from the law firm, Davis & Bujold,  presented this argument while prosecuting an application for a roller mill with an opening that automatically adjusts based on the pressure sensed in a grinding space and an aspiration space.

The purpose of this invention is to keep dust, like flour, from getting sucked into the mill’s aspiration space when the air pressure changes. For example, if an inspection door is opened, the mill automatically adjusts itself to stop the pressure change from pushing dust from the grinding space into the aspiration space.

Examiner Katcoff rejected the claims under § 103 using the automatic means rationale. In response, the applicant successfully argued that the examiner had misconstrued the claimed invention’s relation to the prior art:

This rejection appears to be based on a misunderstanding of the differences between the present invention and Kasada et al. ‘963. It appears from the present office action that the Examiner considered the essential difference between the present invention and Kasada et al. ‘963 to reside in the automation of the manual process already disclosed in Kasada et al. ‘963. However, this is not correct.

The application went on to issue as  U.S. Patent No. 10,946,385

Because the prior art did not show manually adjusting the roller mill opening to prevent dust movement, the invention could not represent automation of a manual activity. Moreover, the use of sensors to detect a pressure change presents an activity beyond the capacity of human actors. The invention was not mere automation, but a completely new concept, with no manual counterpart.

No Patent Holder Wants Unsupported Rejections

If automated means were always unpatentable, the patent system would have a built-in bias against robotics, control systems, driverless cars, autonomous drones, and many other emerging technologies. This cannot be the case.

Some aspects of these technologies might not be patentable under the automatic means rationale. For example, replacing a mechanical coupling with a computer-controlled servo in a car throttle probably replaces a manual activity with an automated means and should be rejected.

When you receive an “automatic means” rejection, it is helpful to keep in mind that you can guide examiners into supporting their rejections by clarifying your invention’s relationship to the manual activity identified in the prior art on more concrete terms. An unsupported rejection does not help anyone. You and your client are left wondering how to respond and the examiner faces reversal if you appeal. Supported rejections create a more robust process for all parties by producing better claims and stronger file histories.

Automatic controls are not per se unpatentable. By examining each element of the automated means rationale, you and the examiners will reach better outcomes.
These are just a few of the ways you can respond to an obviousness rejection based on the “automatic means” rationale. These cases were retrieved using the Arguminer software, a tool for finding specific issues for specific types of cases, art units, or examiners. You can find cases to help you prepare your next response using the Arguminer software. Contact IP Toolworks for a demo of this powerful product.

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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.”

More than “Just the Facts”: Exploiting Legal Arguments to Your Advantage in Obviousness Rejections

Obviousness rejections enter into the uncanny territory between objective fact and subjective interpretation, contributing to their status as the bane of most patent attorneys’ existence.  On the one hand, prior art is what it is. You cannot fundamentally change the invention or what came before. Too much modification of the claims risks obfuscating the invention and weakening the protection that your client can obtain. On the other hand, there is something supremely subjective about the selection and interpretation of relevant prior art. Arguing for or against obviousness often necessitates speculation on the motivation or lack of motivation of prior art inventions.  As a result, an examiner can persist in the rejection by focusing on facts that favor obviousness and downplaying your facts.

What’s more, crafting responses to § 103 rejections is labor intensive, requiring prosecutors both to engage in a deep discussion of the invention and to comb through prior art. But you have another tool in your toolbox to overcome § 103 rejections. In addition to arguing the features of the invention, you can exploit legal errors or weaknesses in the examiner’s construction of the rejection. Many of the tests for obviousness arise directly from caselaw. As a result, examiners must meet certain legal requirements to satisfy these tests.

By focusing attention on areas where the examiner has failed to provide sufficient legal support for the rejection, you rely less on factual arguments. This allows you to create repeatable arguments that do not depend on the specific invention at issue. These arguments can be reused whenever an examiner misuses these legal concepts.

Here is an overview of some common ways examiners make unsupported obviousness rejections, and how you can use legal arguments to attack them.

Not Everything is a Design Choice: Differences in Function Can Overcome Obviousness Rejections

It is hardly surprising that “design choice” is one of the most common phrases used by examiners in obviousness rejections. It is a simple, understandable phrase that captures an examiner’s intuitive sense that the inventor did nothing more than replace a prior art feature with a known equivalent.

However, it is important to keep in mind that “design choice” is a legal term and not merely a turn of phrase. Federal Circuit precedent sets out the important principle that “design choice” is not a catch-all for use by examiners. Instead, it is a specific legal test that can only be applied by examiners when a specific set of facts exists. To reject a claim based on “design choice,” an examiner must show that the claimed feature was a known substitute for the corresponding element in the prior art and that the new element performs the same function as the old element within the context of the invention.

This principle was used skillfully by Corning Optical IP attorney, Kapil Banakar, to overcome an obviousness rejection on an application for a fiber optic cable. In this case, the examiner asserted that prior art teaching reinforcing a splice with covers and adhesive materials rendered obvious the overcoated splice claimed in the application. The examiner asserted that the overcoat was an obvious design choice in view of the prior art.

In response, Mr. Banakar pointed out that the examiner had misused the design choice test. Specifically, a rejection of an obvious design choice requires that the prior art and the claimed feature provide the same function. As explained in the office action response:

Design choice applies when old elements in the prior art perform the same function as the now claimed structures. See In re Kuhle, 526 F.2d 553, 555 (CCPA 1975) (use of claimed feature solves no stated problem and presents no unexpected result and “would be an obvious matter of design choice within the skill of the art”). However, when the claimed structure performs differently from the prior art a finding of obvious design choice is precluded. In re Gal, 980 F.2d 717, 719 (Fed. Cir. 1992) (finding of obvious design choice precluded when claimed structure and the function it performs are different from the prior art). See In re Chu, 66 F.3d 292, 298-99 (Fed. Cir. 1995) (“design choice” is appropriate where the applicant fails to set forth any reasons why the differences between the claimed invention and the prior art would result in a different function).

In this case, the overcoated splice provided a fiber optic cable with greater density because the overcoated splice had a smaller diameter than a conventional splice. The examiner subsequently withdrew the rejection and the patent issued as U.S. Patent No. 10,976,492.

The takeaway from this case is that you can overcome a design choice rejection simply by pointing out the functional differences between features claimed in your client’s application and those in the prior art.

Automation is Patentable: Differences in Configuration Undercut Obviousness Rejections

Automation is one of the pillars of invention. Without automation, you would have a choke control on your car and need to turn on your air conditioner every time your office gets hot.  Yet, some examiners would have you believe that automation is not patentable. The phrase “automatic means to replace manual activity” populates many rejections in the computer, manufacturing, and automatic controls art units. However, while “automatic means” provides a catchy phrase, it also describes a legal standard that examiners sometimes overlook when making this rejection.

In re Rundell, a case from 1931, laid the groundwork for the “automatic means” rejection. This case is cited in In re Venner, which the MPEP uses as the exemplary “automatic means” rejection. Rundell affirmed a rejection of an automated bunch concentrator for making cigars. But the Rundell court was careful to include two limitations on its decision that continue to limit the use of the “automatic means” rejection. These limitations still exist today.

First, the court noted that the details of the automated mechanism were not included in the claims. Presumably, if the parts of the automated mechanism were recited in the claims, the court could have decided the case differently. See also Ex parte Bagnall, et al. (Appeal 2009-013429) (unfortunately, this decision is non-precedential but it illustrates the limitations of these rejections).

Second, the court noted that the safety function of the automated mechanism was not claimed or argued in the appeal. This is an odd statement from a court. Courts rarely talk about what was not argued unless they think it would have made a difference. As such, one can infer that the court could have reached a different outcome if the applicant had:

  • Claimed the safety device
  • Argued that the automated mechanism was safer than the manual one

This argument was put to effective use by lead IBM patent attorney, Nathan Rau, in overcoming an obviousness rejection on an application for a configurable door panel. In this case, the examiner rejected claims for a computer door panel with a spring and spacing mechanism that adjusts the angle of the door. The rejection asserted that the spring and spacing mechanism merely provided an automated or mechanical means to replace the manual activity of rotating the door.

In response, the applicant argued that an examiner can only use an “automated means” rejection when the claimed invention uses the same configuration of parts as the prior art.

[T]he Office Action asserts that this feature of claim 1 would be an obvious design choice and that “providing a mechanical or automatic means to replace manual activity which has accomplished the same results involves only routine in the art.” [I]n In re Venner, the claims at issue simply automated a prior practice, activating the prior arts already existing pressure release valve. In Venner, the only thing that was new was automating the activation of the pressure release valve. All of the components of Venner could be found in the prior art performing their intended functions in the same way with no change in their arrangement. In contrast to Venner, claim 1 recites a very specific structure and arrangement of the components. … [T]he Office Action has failed to show that this feature of claim 1 performs an already known function based on the same arrangement. Further, the Applicant notes that the arrangement of the features of claim 1 must also be found in the cited references. Even if the Office maintains that this feature of claim 1 is providing a mechanical effect, the Office still must consider the claimed arrangement of the components that permit the particular function to occur. The Applicant submits that the arrangement provided in the claim improves the corresponding functional aspects of the device.

The examiner withdrew the obviousness rejection and allowed the patent to be issued as U.S. Patent No. 10,362,716.

The takeaway from this case is that examiners meet a legal standard to use the “automatic means” basis for rejecting claims. The examiner must show that the invention uses the same configuration of parts, performing the same function as the manual device. If you show a different arrangement or function beyond simple automation, you undercut the examiner’s basis for the rejection.

Even Notoriously Well-Known Facts Require Support: Examiners are Constrained in Taking Official Notice

One of the most frustrating rejections to receive is one in which an examiner contends that claims are rendered obvious in view of information that is considered common knowledge in the art. Here you are dealing with official notice, meaning that the examiner has taken notice of facts not on the record. However, as slippery as citing common knowledge against your claimed invention may sound, there are legal procedures in place that constrain the manner in which examiners are permitted to introduce outside evidence. Keeping these limitations in mind as you prepare your response can make this one of the easiest legal errors to challenge. 

To begin with, the MPEP counsels that for examiners to take official notice of a fact, the fact must be capable of “instant and unquestionable demonstration of being well-known.” Some examples given in which notice can potentially be taken include:

  • Scientific facts, such as the fact that heat adjustment causes a change in temperature
  • Business facts, such as the desirability of making something “faster, cheaper, better, or stronger”

Beyond this, official notice without documentary support is permissible only in certain rare circumstances and particularly limited when issuing final rejections. The examiner is required to provide a clear and unmistakable technical line of reasoning for why official notice was taken in these situations. Moreover, if the applicant challenges the propriety of the way in which official notice was taken, it falls upon the examiner to support their finding with adequate evidence. The examiner may even be required to provide an affidavit or declaration if relying on personal knowledge to support their finding of what is known in the art. See 37 CFR 1.104 (d)(2).

One example of a successful argument that an examiner lacked legal support for his use of official notice was made by patent attorney, John Guerra, in a response to an obviousness rejection on an application for a contactless reception device and reception method:

Applicant respectfully maintains that the application of Official Notice in the outstanding Final Office Action is improper. The legal standard for applying Official Notice under MPEP § 2144.03 is rigorous. With respect to Official Notice, MPEP § 2144.03 states that “such rejections should be judiciously applied.” “It is never appropriate to rely solely on ‘common knowledge’ in the art without evidentiary support in the record, as the principal evidence upon which a rejection was based.” MPEP § 2144.03, emphasis added, citing Zurko, 258 F.3d at 1385, 59 USPQ2d at 1697. Contrary to the MPEP, in this case, the Final Office Action uses Official Notice as the principal evidence to reach a conclusion of obviousness.

The examiner withdrew the rejection and the application went on to issue as U.S. Patent No. 10,615,644.

The takeaway from this case is that the MPEP and caselaw place the burden on examiners to support their application of official notice. Examiners are responsible for providing documentary evidence when challenged, and allegedly well-known facts without this support can never serve as the primary grounds for a rejection.

Pushing Back on Obviousness Rejections

Obviousness rejections centered on phrases like “design choice,” “obvious to try,” “automated means to replace manual tasks,” “notoriously well known in the art,” and “common knowledge” can be among the most aggravating to argue on. Examiners sometimes introduce these terms as a placeholder with which to express a sense that the invention is not patentable in view of prior art, when in fact the grounds for rejection have not been fully articulated or supported. Because each of these phrases came from a case that imposed limits on its use, you can help bring the examiner to a clearer mutual understanding by drawing attention to the legal foundations for the grounds of rejection.  This focus on legal arguments may very well reduce friction, putting you on track for an issued patent, as the above examples illustrate.

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

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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.”