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.”

Three Steps To Achieve Effective Delegation | The Gamechangers

If you want to do a few small things right, do them yourself. If you want to do great things and make a big impact, learn to delegate.”  

– John C. Maxwell

Do you ever feel as if your to-do list is never-ending or you are always short of time? In a survey conducted by the Institute for Corporate Productivity (i4cp), it was revealed that 46% of companies have a high level of concern about their workers’ delegation skills. Delegation of work takes a great deal of unlearning, particularly if you are of the habit of doing everything yourself. You will need to let go of the adage, “If you want something done right, you must do it yourself.”

At some point in your career, you will undoubtedly have achieved enough experience in your practice to have younger attorneys working under your guidance. When the time comes, you will have to learn a whole new set of skills to pass on the torch in a way that is productive both for them and for you. Delegation of work might not be easy but when done well it has tremendous value both in maximizing the limited hours you have available in a day and in allowing younger attorneys you might be assigning tasks to to learn the tricks of the trade.

As challenging as delegation can be, these three steps will help you delegate effectively:

  1. Delegate everything you can
  2. Recognize the things that can’t be delegated
  3. Change your ‘cannots’ into ‘cans’

#1. Delegate Everything You Can

Try to delegate every task which can be delegated to your team. If you don’t delegate, you’ll always be overburdened, putting you at risk of missed deadlines and slippages in work.

Once you start delegating, you’ll soon realize that it:

  • Reduces your mental load
  • Saves time
  • Improves client relations

For example, you don’t need to deal with invoice disputes yourself. If your client thinks that your billing hours are too high, let one of your (less senior) team members tackle the situation.

The delegation will have the added benefit of freeing up your mind and time to better handle the more important tasks on your plate, resulting in a job well done.

#2. Recognize the Things That Can’t be Delegated

You need to know what you can and cannot delegate. If you are anything like me, you won’t let anything get out of the door on your project, unless you are completely comfortable with it. If you delegate work to a team member who cannot handle the particular task, you’ll end up doing it yourself, which is an inefficient use of everybody’s time. Often, the task will end up getting done twice, as it is easier to redo something from scratch than to fix somebody else’s shoddy job.

To avoid this situation, you need to recognize which tasks can be delegated to your team and which you have to handle yourself. While there will always be some level of rework when delegating tasks, especially when you are training someone, it is important to consider the strengths of your team members when making assignments. You don’t want to delegate a task that your team member might still be too inexperienced to handle. Thus, the key is to delegate all you can, but to also recognize what you cannot delegate.

IP Toolworks Demo

#3. Change Your ‘Cannots’ Into ‘Cans’ 

The final step to effective delegation involves a special alchemy: transforming your ‘cannots’ into ‘cans’. To achieve this, a few things are essential:

Recognize the Strengths of Your Team Members

Knowing the strengths and abilities of your team members is key. For example, one colleague might be good at drafting patent applications, while another might be good at analyzing office actions in order to draft a meticulous response. Acknowledging these strengths will make your job reviewing their work easier and faster. Everyone wants their team to do a spectacular job—because, let’s be honest, at the end of the day, you are still accountable for the work done by your team. Therefore, learning what to delegate to whom is an art, which you need to master as a leader.

Train Your Team Members to Overcome Weaknesses

You also need to recognize the areas where your your team members might be less capable. Once these areas are identified, training can be provided to turn weaknesses into strengths. It is essential to build support for people working on the tasks you assign. For example, you might provide a library of template communications, to give your team members examples of how to respond to a particular kind of communication from the USPTO. This will make it much easier for a newer attorney to put together the expected response.

Provide The Right Kind Of Support At The Right Time

Make sure that while delegating, you provide your team members with the support they need when they need it. For example, if you have tasked a colleague with analyzing an office action and drafting a response, you must explain what to look for and how issues can be tackled. You might want to point out key areas to focus on and refer them to your library of office action responses for additional guidance.

As a matter of habit, during the last fifteen years of my career, I put together a document containing examples of successful office action responses, to help with future responses. It was, in effect, a small library of office action responses that I could use in my own practice and share with colleagues I might be assigning work to. Eventually, I thought, why not build a library of office action responses that encompasses the work of other attorneys as well? This is when I put together the Arguminer software. It allows you to upload your office action and will analyze various parameters within it to match it with relevant responses other attorneys filed. It looks something like this:

You can customize the results by selecting different parameters, such as successful responses to office actions by the same examiner. You might want to show your team member the arguments used in similar office responses, which will have higher chances of succeeding.

Getting a younger attorney to get the same results as you would, is good delegation, which is exactly what this software helps to achieve.

Takeaway:

The more you delegate, the more trust you place in your team members. It boosts their confidence, helps in improving the overall team effort, and gives you time to focus on more important tasks.

Practicing good delegation also gives you a breather to concentrate on the things that are important to you. This is a special category of “non-delegable duties” that for me includes making time each night to spend with my one-year-old daughter before bed. There are some things I don’t assign out, even on my busiest days.

 I believe that the more you can outsource, automate and delegate out, the more time you have for your family and loved ones.

Good luck! I hope you can put Arguminer to use, to effectively delegate and train the young 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.”