by Dennis Crouch
The six PTAB decisions reviewed below provide insight into the application of 35 USC 101 in cases involving more than just computer hardware and software. While the claims in each decision recite physical devices or molecules, the PTAB still found most to be ineligible as directed to an abstract idea and lacking an integrated inventive concept beyond well-understood, routine conventional activities. A core parallel across the decisions is the PTAB’s focus on whether the additional elements in the claims, including the physical components, integrate the judicial exception into a practical application or provide significantly more.
- Ex parte Ezerzer: CKRD peptides that can modulate immune system activity for treating autoimmune diseases – fragment of naturally occurring protein.
- Ex parte Magatti: Beverage preparation system (Nespresso) which monitors container consumption to enable convenient reordering.
- Ex parte Demou: System for predicting occurrence of adverse cardiovascular or cerebrovascular health conditions, including use of sensors attached to an artificial pump in a human body.
- Ex parte Mitchell: Automated beer brewing system that modifies beer recipes to adjust sensory characteristics based on user inputs.
- Ex parte Facchinetti: Continuous glucose monitor and insulin pump system that detects failures in glucose monitoring or insulin treatment in real-time.
- Ex parte Masherah: Claims a system for distributing physical trading cards by scanning them and offering electronic versions for purchase online.
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Ex parte Ezerzer, Appeal 2022-004253 (February 7, 2024) (Symthera Canada Ltd.) Decision_2022004253_02-05-2024.
The claimed invention claims specific CKRD peptides that can modulate immune system activity for treating autoimmune diseases. Citing Myriad, the examiner rejected the claims under Section 101 after concluding that the claims covered a fragment of polypeptides that naturally occur within the human body. On appeal, PTAB agreed that there is “no dispute that the peptides themselves are fragments of larger naturally occurring proteins.” However, the panel found “market differences” between the claimed peptide and the naturally occurring form. The patentee particularly provided evidence that its claimed sequence had a much higher ability to bind to inflammatory targets — suggesting an important practical and likely structural difference from the naturally occurring larger molecule. For example, it is likely that this protein fragment folds in a different way than the larger molecule from which it is derived.
The PTAB also recognized that there is some likelihood that the claimed invention has shown-up in nature. Relying on Myriad, the PTAB found that “the mere possibility that the peptides of claim 1 might have existed as a natural phenomenon is insufficient to establish that the composition is a product of nature and therefore a judicial exception” The Examiner had not shown that the specific peptides of SEQ ID NOs: 2 and 16 necessarily existed in nature.
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Ex parte Magatti, Appeal 2023-000550 (February 20, 2024) (Society des Produits Nestle) Decision_2023000550_02-15-2024.
The claimed invention in Ex parte Magatti relates to a beverage or foodstuff preparation system (including a Nespresso machine) which monitors container consumption to enable flexible and convenient reordering for the end user. The system includes subsystems for preparing containers, controlling preparation, monitoring consumption, and networking with external devices.
Regarding the 101 rejection entered by the PTAB, the claimed system was determined to be directed to an abstract idea of “keeping an inventory record of food or beverage containers for use with food or beverage preparation equipment.” Limitations reciting tracking stock state information and comparing order identifiers were found to be mental processes of observation, evaluation, and judgment. For example, a coffee shop barista tracking coffee pod usage and purchase orders with pen and paper.
The additional elements like the beverage preparation machine, computer subsystem, and networking subsystem did not integrate the abstract idea into a practical application or provide “significantly more.” Instead, these elements merely used generic components such as a (“generic beverage or foodstuff preparation machine”) as tools to implement the inventory management abstract idea without shifting the invention’s true focus from managing inventory.
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Ex parte Demou, Appeal 2023-004366 (February 27, 2024) (HeartWare) Decision_2023004366_02-23-2024.
The claimed invention relates to a system for predicting an “occurrence of an adverse cardiovascular or cerebrovascular health condition.” The claims particularly require an implantable pump having a variety of sensors attached to a rotor. But, the novel features of the invention is the capability to process the sensor data using a particular algorithms to predict a likely future cardiac event.
In its decision, the PTAB affirmed the examiner’s eligibility rejection under 35 USC § 101 — finding that the claim was directed to an abstract idea of “mental processes” because many of the claimed steps could be performed in the human mind but for the recitation of a generic computing device. The PTAB relied on CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) (holding the claims that could be “performed in the human mind . . . or by a human using a pen and paper” were directed to patent-ineligible mental processes). Although the patentee’s actual process involves quite complex data manipulations, the claim itself was “broad enough to encompass straightforward situations that involve little more than mental observations, calculations, and comparisons of features from a plot.”
The PTAB further determined that the additional elements in the claims, including the implantable pump, sensors, communication circuitry, memory, input/output interface, and processor, did not integrate the judicial exception into a practical application. The additional elements were described generically in the specification to perform well-understood functions such as gathering, transmitting, and processing data — finding that “the Specification does not indicate in any manner that the recited ‘one or more sensors,’ first and second ‘communication circuitry,’ and ‘processor’ of claim 32 are anything other than generic, off-the-shelf components.”
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Ex parte Mitchell, Appeal 2023-003309 (P.T.A.B. Feb. 21, 2024) (PB Funding Group) Decision_2023003309_02-21-2024.
The invention here is an automated beer brewing system that modifies beer recipes to adjust sensory characteristics of beer based on user inputs. The claimed invention allows users to select a baseline beer recipe and adjust its characteristics, such as bitterness, flavor, and aroma, to suit their preferences. The system then modifies the recipe accordingly, using a performance model to predict the outcome of these adjustments. The specification notes that beer making is an old practice, and the question here is whether the claimed invention constitutes an abstract idea rather than a patent eligible invention.
The PTAB affirmed the Examiner’s rejection of the claims — finding them directed to a mental process that could be performed by a human using pen and paper, involving thinking about and modifying a beer recipe. The Board found that the claims did not integrate the abstract idea into a practical application and did not add an inventive concept beyond the abstract idea itself. The use of a computer to automate this process was deemed insufficient to transform the claims into patent-eligible subject matter. In particular, the claims did not recite new technology. The Board concluded that mere automation of manual processes using generic computers does not satisfy the requirements for patent eligibility. “Nothing in claim 1 provides an inventive concept as the creation of beer recipes and determination of characteristics from a recipe are well-understood, routine, and conventional in the beer making arts and are more than capable of being performed in the human mind.”
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Ex parte Facchinetti, Appeal 2023-001547 (Feb. 28. 2024) (Dexcom) Decision_2023001547_02-26-2024
DexCom is a leader in continuous glucose monitoring. The claimed invention here relates to a method a safety method – looking for real-time failures of monitoring or insulin treatment. Claim 1 is directed to a “device” that includes a continuous glucose monitoring system and an insulin infusion pump, but the key advance is in the data processing that creates individualized model based upon patent data using a discrete reiterative filter to predict glucose levels with confidence intervals and then create an alert if the actual levels deviate.
Regarding the 35 USC § 101 rejection, the PTAB determined that claim 1 was directed to an abstract idea of “mathematical concepts and concepts that can be practically performed in the human mind or with the assistance of pen and paper (including an observation, evaluation, judgment, opinion).” The PTAB further determined that the additional elements in the claim, including the continuous glucose monitoring system, insulin infusion pump, alert device, and processor, did not integrate the judicial exception into a practical application. The additional elements were described in the specification as generic computer components being used in a conventional manner to manipulate data. The PTAB stated that “[m]erely adding generic data generating hardware and computer components, namely a generic processor, to perform an abstract idea does not integrate the abstract idea into a practical application.” Thus, the claims cannot be patented.
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Ex parte Masherah, Appeal 2022-004158 (P.T.A.B. March 4, 2024) (The Upper Deck Company) Decision_2022004158_02-29-2024.
The claimed invention relates to an electronic distribution system for physical trading cards that can be scanned into electronic trading cards and placed on a website for purchase. The claimed method involves first manufacturing “physical trading cards” and then “scanning” their images. At that point then we have an online inventory system that then facilitates orders and shipping of the physical cards.
Regarding the 35 USC § 101 rejection, the PTAB determined that claim 22, which was representative of the claims on appeal, was directed to an abstract idea of “offering trading cards for purchase and sale” by reciting certain methods of organizing human activity in the form of commercial interactions.
Although the claims require printing/scanning/shipping steps, the specification specifically identified that the invention “generally relates to an electronic distribution system for physical trading cards that can be scanned into electronic trading cards and placed on a website for purchase.” After finding the claims directed to an abstract idea, the PTAB the determined that the additional elements in the claim, including the recited scanner, website, and device, did not integrate the judicial exception into a practical application.