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.”

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