In Ex parte Alder (Appeal No. 2017-4809) (PTAB 2019), the PTAB recently found the claimed “snoring detection device” ineligble as directed to the abstract idea of “detecting snoring.”
1. A snoring detection device comprising:
a sensor configured to detect sounds during a breathing cycle; and
a processor configured to: [1] detect a noise level during an inspiration phase of the breathing cycle with said sensor; [2] detect a noise level during an expiration phase of the breathing cycle with said sensor; [3] determine an occurrence of a snore based on a difference in the noise levels detected during inspiration and expiration, the difference comprising a subtraction of the noise level during expiration from the noise level during inspiration.
Alder. This case followed the other recent PTAB decisions regarding the 2019 Eligibility Guidelines. In particular, the decision recites elements of the guidelines but then makes no real effort to actually apply the guidelines to the case-at-hand. Rather, the decision follows the usual approach of drawing analogy to the various appellate and Supreme Court cases to find the closest thread.
[Updated to correct typo in name – Alder not Adler]
Blocked by the Count Filter, here is an Omnibus rebuttal (to Malcolm):
at 8.1.1: “When you remove the prior art…,”
You mean when you violate the Court’s own prohibition about parsing a claim….?
Eligibility is NOT a question of “what’s left over.”
at 6.1.1.2.2.2.1: “The CAFC case law (McRo and Enfish in particular) is an incoherent mess. That’s the CAFCs fault, not the Supreme Courts fault.”
No Malcolm, the fault is DIRECTLY the fault of the Supreme Court and their officious intrusion and THEIR p00r scrivining and RE-writing of law that is Void for Vagueness (among MANY other faults).
The Supreme Court egregiously erred with an attempt to insert their UNDEFINED Common Law law writing and directed the lower Article III court to “fill in the blanks by writing more Common Law. To a certain point, surely that lower court is ALSO to be blamed with Common Law writings that ARE directly contradictory.
ALL of these points though are points that I have previously presented – and it is to be noted – points that you have NOT supported as I have made them.
The FACT that an incoherent mess IS present is nothing more than the fact that the Score Board is broken.
Below 6.1.2.1.1.1.1: “I’m still waiting for you to discuss your set theory, Mr Ethics’s. What’s holding you up?”
This is utter balderdash, as you play the Br’er Rabbit game here. I have so many times provided you with hyoper links as well as repeated verbatim the discussion that has been provided to you that you NOW claiming that I am the one “holding things up” is an outright L 1 E.
There is NO “waiting” for you waiting for me to do anything, as this is ENTIRELY in your court. It is plainly unethical for you to prevaricate and paint such a false picture.
At 4.3.1.1.1: “The Supreme Court has already interpreted the statute to include the exceptions. That ship sailed. The statute as written and interpreted “plainly” is unconstitutional. So go ahead and rewrite the statute to expressly recite the exceptions and send a letter to your Congressperson demanding that the fix it accordingly. That’s your solution. You’re never going to able to enforce the statute as literally written against me or anyone else. The Supremes know that as does every reasonable patent attorney and law professor who has ever thought about the issues raised for more than ten seconds.
[shrugs]”
Your [shrug] is disingenuous and IGNORES the fact that it is the Supremes that have broken the Score Board.
The Judicial Branch simply does not have the authority to re-write the law in the first instance by CREATING exceptions and THEN turning around and presuming that THEIR creation can be “interpreted into” the words of Congress.
Especially as I have provided that the historical context of the Act of 1952 was a REJECTION of the Court’s anti-patent “Gist of the Invention” muckery.
All that you have done is doubled down on the impropriety of the Court writing statutory law. Not only wrong, but egregiously wrong.
As to (emphasis added) “The statute as written and interpreted “plainly” is unconstitutional.” – that’s a nice admission against your interests, and notably, it is NOT within the authority of the Court to itself violate the Constitution** in order to “justify” the Ends that you so desire.
** I can give you a DETAILED (at least) three prong position as to the Constitutional infirmity of your (wanting to ignore) Means as employed.
at 4.3.1.1.2: “I don’t need to read Mayo again. I know more about 101 and that case in particular than 99.99% of the patent attorneys on the planet. Not bragging. Just a fact. Do some research and you’ll learn quite a bit.”
That is not only NOT “not bragging,” it is an UNFOUNDED bragging. What you “know” is only your feelings, and your lack of actual knowledge of the statutory law and recognition of the improper application of law as rendered by the Court IS your weakness.
Everyone “gets” that you have a desired Ends here – just as everyone “gets” that you avoid like the plague ANY inte11ectual discussion on the propriety of the actual Means in play to get to that Ends.
I will also note that while “B” and I do not see eye to eye across the board, his rebuttals to Malcolm on this thread deserve an ovation.
Pressing dialogue such that BOTH sides not only recognize but integrate valid points of conversation is an effective counter to mindless propaganda.
Some (it should be quite obvious who) simply are not interested in any actual dialogue on the merits of the issues. Others (also quite obvious) are VERY willing to fight through the mindless nonsense and press for points to be recognized and integrated. It is beyond question which “side” presents the more enlightened approach to resolutions of competing views.
This claim is not directed to a practical application!! What does it do?? Nothing. And it doesn’t improve any existing technology.
“This claim is not directed to a practical application!! What does it do?? Nothing.”
First, the claim “determine[s] an occurrence of a snore.” That certainly is a practical application. Perhaps you should read the claim you’re criticizing.
“And it doesn’t improve any existing technology.” Even if you were correct, s101 does not require an improvement in the relevant technology. In fact, requiring an improvement literally writes out some of the language of s101. Perhaps you should read s101 before commenting on the requirements of s101.
That said, I’m not trying to get on your case. I’m merely trying to address the statutory requirements of patentability
First, the claim “determine[s] an occurrence of a snore.” That certainly is a practical application.
Merely making a determination is not a practical application; you must do something with that determination. Think like an engineer rather than a patent attorney… Determining the occurrence of a snore is just a precursor to doing something useful. This is why Claim 13, which recites adjusting a blower speed based on the snore value, was not included in the 101 rejection.
The things that are done after the snore is detected are not part of the claimed invention. Why would one have to recite things that are merely post solution activity in the claim?
The things that are done after the snore is detected are not part of the claimed invention. Why would one have to recite things that are merely post solution activity in the claim?
Because current 101 jurisprudence at least requires that if the invention is directed to a mental process, as it is here, that there be some practical application of that process.
At least one policy argument for that is that if I told you that I snored last night by inhaling quietly and exhaling at a loud volume, you just infringed the claim by reading this sentence. Your visual sensors detected the noise levels I described, your mental processor subtracted quiet from loud and determined I snored. Now what – the patent owner should get an injunction telling you to stop thinking about that sentence? How exactly is a court to enforce that?
By requiring some application of the mental steps, there becomes a concrete step that you can avoid doing so as to not infringe.
The claim is not directed to a mental process – machines do not have mental processes.
(this will require you to NOT drink the Kool Aid and realize that the score board is broken)
In the words of the PTO:
“This limitation, as drafted, is a process that, under its broadest reasonable interpretation, covers performance of
the limitation in the mind but for the recitation of generic computer components. That is, other than reciting “by a processor,” nothing in the claim element precludes the step from practically being performed in the mind. For example, but for the “by a processor” language, the claim encompasses the user subtracting two volumes. The mere nominal recitation of a generic processor does not take the claim limitation out of the mental processes grouping. Thus, the claim recites a mental process.”
And as I noted below at 11.1, the claim covers a human “machine”.
See my note below about the impropriety of your attempted Unreasonably broad interpretation.
‘Nuff said.
nonsense.
The processor and sensors do preclude an assertion of mental steps. The Board is wrong. The board also says there was no improvement to a computer, when clearly there is. Before the computer couldn’t detect snores, now it can. The Board also said there was no transformation of something to a different state or thing, when clearly there is. A snore is clearly transformed from an undetected state to a detected state.
A snore is clearly transformed from an undetected state to a detected state.
Where’s that Tommy Lee Jones implied facepalm picture?
AiD,
Do not “faceplant” too quickly, as the reality of the actual world does — as I have indicated — place a very real “engineering” aspect to the “mere” action of detection.
Don’t go dismissing the science behind the engineering that you have admitted having a bias to, lest your engineering disappear like the grinning Chesire cat.
Lots of comments here deserve answers, but as the “Count Filter” has been tripped, I will likely be making an “omnibus” response.
That being said, the point being stressed here by Anstract iDan deserves its own response (at least for the fact that AiD it typically an earnest and inte11ectually honest poster.
I would posit that the statement itself of “not enough” is simply not correct.
The admonishment of “think like an engineer and not an attorney” is a give-away, as patents are NOT engineering documents and ARE legal documents.
Further – even in an engineering sense, the engineered process of detecting — in and of itself — is a practical application.
And if you want to raise the thought level, recall Schrodinger and concepts such as quantum entanglement that most definitely implicate a “mere detection” as a truly significant physical action.
So in both legal and engineering senses, AiD is not correct.
Schrodinger was a theorist, not an engineer. The admonishment to think like an engineer was somewhat tongue-in-cheek (and biased, from a former engineer), but has a grain of truth to it: scientists discover things, engineers build things. And the current jurisprudence of 101 protects building things, not discovering things.
Alas, you are wrong in more than one way here.
Legal, not engineering,
35 USC 100(a).
The act as I have noted IS an “engineered” act.
You have not actually responded to my points as much as you have merely attempted to dismiss them without engaging them.
The work of BOTH engineers and scientists may be patented. If you disagree with this, then you are not doing your clients justice.
At the end of the day, all these 101 rejections are crxp. They are nothing more than substitutes for 103, but without evidence and because a fact finder just feels they shouldn’t be patented.
Alice and the way 101 is being used is a form of equity, but without the high standards needed to apply equity. This is not law, but some form of power exertion.
+1
” They are nothing more than substitutes for 103, but without evidence and because a fact finder just feels they shouldn’t be patented. ”
Giles rich wrote EXACTLY THIS nearly sixty years ago. A patent veto
B,
Do you have a cite for this? I would love to add it to my Rich library.
anon,
You need to buy a book by John Witherspoon entitled “Nonobviousness – the ultimate condition of patentability,” which contains many of Rich’s writings. The particular cite comes from “The Vague Concept of ‘Invention'” at the very end. (p. 1:416)
Awesome – thank you!
+1 NW
The. Fundamental. Truth.
LAW360 this morning is carrying a message shared by Director Iancu in regards to the errant re-animated Zombie mental steps of trying to make a computer into a “proxy” for the human mind by declaring that the Alice decision is being wrongly portrayed as “mere automating” is per se ineligible.
Random, please take note.
From that article: “In the wake of the Alice ruling, “some have concluded that ‘doing it on a computer’ is not eligible for patenting, without any reference to what the ‘it’ might,” he said. “But the court did not necessarily go that far.”
and(tellingly, hint: Malcolm you might want to reflect on the fifth Kondratiev wave of innovation): “But the approach outlined in the guidance takes into account the nature of technological innovation in the 21st century, he said.”
Further, in a unstated reflection of Alappat remaining good law:
“Just because we are no longer automating using large machines that are tangible and easy to see and feel does not mean that today’s machines and processes should be any less eligible.”
Great post, anon.
Unfortunately, In re Venner (an automation case) is still listed in the MPEP as good law. It’s a 103 case post 1952 based on “invention.” According to In re Venner, any automation, no matter how novel and non-obvious, still fails 103 if the same results are achieved. Soooooo, you make a machine that’s 10,000% more efficient to produce a product – not patent eligible.
Later Graham v. Deere addressed this stupidity, but apparently no one at the USPTO or CAFC reads case law. Further, judges think they’ve had the right to re-write 101 and 103 since 1953.
Seriously, the only thing we disagree on is who are more to blame in this s101 nonsense – the CAFC or the SCOTUS. You make really good points I do admit, but the CAFC has made no serious effort to do anything but take Alice and Mayo and amplify the problem a 1,000-fold.
The CAFC deliberately misrepresents their own case law to come to absurd and inconsistent conclusions in cases that cannot be resolved.
Not a single CAFC judge has had the honesty to tell the SCOTUS “We’ll hold this claim patent-ineligible as soon as you explain what ‘invention’ is and where it appears in s101.” Yeah, a very few CAFC judges recognize the problem, and they’ve called for pleas from the legislature and the SCOTUS, but what’s the legislature supposed to do that they didn’t do in 1952? Say “This time we mean it?”
No the CAFC has assumed the position of being the all-knowing masters of “invention.”
Apologies for the damm count filter interference…
Upon reflection, I retract my position below that humans do not subtract sound levels.
Notwithstanding this retraction, the point remains that a machine — even one that IS performing an operation that may be performed in the mind of a human remains a machine, and it is simply improper to a read a claim that is directly to a machine as if the claim were written differently and not have the machine limitation (obstinately by a court imposing its policy concern of “scriveners” somehow merely working around the letter of the law).
The error of “Gist/Abstract” lies NOT if a particular claim element may be an item capable of being performed by a human – or a parsed “mental step,” but in the officious “I know that the patented is really trying to do here.”
The law as written by Congress gives this power (and responsibility) to a different entity. See 35 USC 112.
Notwithstanding this retraction, the point remains that a machine — even one that IS performing an operation that may be performed in the mind of a human remains a machine, and it is simply improper to a read a claim that is directly to a machine as if the claim were written differently and not have the machine limitation (obstinately by a court imposing its policy concern of “scriveners” somehow merely working around the letter of the law).
OTOH, this claim actually does cover a human. We currently understand the term “processor” to imply circuitry (but see virtual processors), but that term used to refer to the hordes of people in data processing rooms with slide rules and mechanical calculators. In fact “data processor”, as with “title processor”, “mortgage processor”, etc., are all terms for jobs held by humans. And similarly, the human ears are sensors, under a broad reading of that term (hearing being one of the five “senses”).
Given that broad interpretation, the claim recites exactly what humans do when they hear someone snoring: the ears detect noise during the inhalation and exhalation phase, the brain subtracts the two and determines that the exhalation is louder, and concludes that they’ve heard a snore.
A quick rejoinder here will suffice:
The canard of wanting to read a (relatively) ancient meaning into claim terms MOST LIKELY violates the fact that those claim terms are to be read in light of the specification and in accord with a Person Having Ordinary Skill In The Art.
Your attempt here is easily defeated as being an IMPROPER and unreasonably broad interpretation.
An even quicker rejoinder will suffice here… From the specification:
“It is to be understood that while the invention has been described above in conjunction with preferred specific embodiments, the description and examples are intended to illustrate and not limit the scope of the invention, which is defined by the scope of the appended claims.”
The Applicant explicitly instructs the reader to not interpret the claim terms as limited by the specification, but to take the broadest possible interpretation from the claims. At which point, the brain is a processor, and the ears are sensors.
I chuckle as I concede that you MAY have a point here – of course, such disclaimer may also not carry the weight that you suggest as the entirety of the specification – as well as what “Art” is indicated by the Person Having Ordinary Skill In The Art will dictate whether or not the (ancient) human “interpretation” is to be included.
Notwithstanding (quite possibly too loose use of) the boilerplate, and since this does indicate disappeared machines, I would bet that your attempt here remains Unreasonable.
Damm autocorrect…
“Disappeared” => “disparate”
Upon reflection, I retract my position below that humans do not subtract sound levels.
Notwithstanding this retraction, the point remains that a machine — even one that IS performing an operation that may be performed in the mind of a human remains a machine, and it is simply improper to a read a claim that is directly to a machine as if the claim were written differently and not have the machine limitation (obstinately by a court imposing its policy concern of “scriveners” somehow merely working around the letter of the law).
The error of “Gist/Abstract” lies NOT if a particular claim element may be an item capable of being performed by a human – or a parsed “mental step,” but in the officious “I know that the patented is really trying to do here.”
The law as written by Congress gives this power (and responsibility) to a different entity. See 35 USC 112.
In the next written lobbying effort for the much-needed IPO-AIPLA proposed Section 101 amendment, this thread of comments could be Exhibit 1—or Exhibit 10,749.
This was a good examiner. They recognized that the specification didn’t explain how to do it’s sole functional claim and they made 101 and 112 rejections. That’s the way it should go, as it creates a better record in 90% of cases than citing prior art does.
Question for the peanut gallery – Forget 101. If you have a claim that determines two values, subtracts one from the other, and comes to a conclusion based on an undefined threshold, and then an argument that the art already conventionally knew how to determine the two values, can any of you fashion an argument that the claim is non-obvious?
Once again the facts are:
1. I claim measuring A and B
2. I claim subtracting B from A
3. I claim that when B from A is large enough, I’m not saying how large, conclude X, but don’t do anything with X
4. The art could conventionally measure A and B.
I suppose one could make the argument that this is non-obvious to a field whose ordinary skill in the art is incapable of performing subtraction. But one of skill has at least the knowledge of a lay person, so no such fields exist. In other words, I would argue the claim is obvious solely over the admission of the applicant.
“This was a good examiner. They recognized that the specification didn’t explain how to do it’s sole functional claim and they made 101 and 112 rejections”
Did you actually read the PTAB decision? Obviously not. From the Decision:
We REVERSE the rejection of claims 7, 18, 20, and 21 under 35 U.S.C. § 112, first paragraph.
We REVERSE the rejection of claims 7, 8, and 18 under 35 U.S.C. § 112, second paragraph.
We REVERSE the rejection of claims 1-5 and 9-17 under 35 U.S.C. § 103(a) as unpatentable over Sullivan and Takeuchi.
We REVERSE the rejection of claims 1-5 and 9-17 under 35 U.S.C. § 103(a) as unpatentable over Sullivan, Zilberg, and Gavish.
We REVERSE the rejection of claims 7, 8, 18, 20, and 21 under 35 U.S.C. § 103(a) as unpatentable over Sullivan, Zilberg, Gavish, and Ariav.
This examiner threw ten pounds of crap not even a biased PTAB could swallow, and the 101 rejection was based on a lack of “inventive concept.” See p. 12.
Can you tell me what is an “inventive concept?” If you admit that you can’t, don’t interrupt the adults with your nonsense.
If you claim that you can, it means that you’re ignorant and you shouldn’t interrupt the adults with your nonsense
When you remove the prior art from the claim (a machine with sensors and a processor) the “inventive concept” is what’s left over. That’s one way of doing it.
Was this supposed to be a difficult question?
“When you remove the prior art from the claim (a machine with sensors and a processor) the “inventive concept” is what’s left over. That’s one way of doing it. . . . Was this supposed to be a difficult question?”
Actually its a simple question with an impossible answer. No court in nearly 170 years has been able to define “invention” or “inventive concept,” and twice the SCOTUS admitted “invention” is meaningless.
Second, comparing a claim against the prior art is 102/103. I suggest you actually read those for once in your life.
Now go find me where in s101 where Congress required “inventive concept” for patent eligibility.
Seriously, you sound like you are new to this stuff and frustrated that your tired script isn’t being taken seriously. Some of us have been thinking about this stuff a lot longer and a lot more carefully than you.
[shrugs]
“Seriously, you sound like you are new to this stuff . . . .”
I’ve represented clients on 101 issues before the PTAB, the CAFC, and now the SCOTUS.
“Some of us have been thinking about this stuff a lot longer and a lot more carefully than you.”
No, you’ve not been thinking at all. You’re too intellectually lazy and inept to address the questions before you.
Go ahead, define “inventive concept.” Also, show me where in 101 there’s a requirement for inventive concept and improvement. Do it or shut up, because anon is 100% right about your dishonesty
My posts are hitting a filter…
Did you actually read the PTAB decision? Obviously not.
I did, and I went so far as to read beyond the results too, believe it or not.
The Examiner finds that Appellants’ Specification “provides no
instruction on how to select two different ‘time constraints’, or how they are to be/can be ‘adjusted such that the treatment pressure does not cause false snore detection.”‘ Ans. 8. Appellants contend that such filtering time constants were well understood by those of ordinary skill in the art, citing references as evidence thereof, and submit that their Specification sufficiently describes the distinction between the filtering time constants for inspiratory and expiratory noise that one of ordinary skill in the art would understand how to adjust them so as to avoid false snore detection.
He noted that the specification did not teach how to perform the only possibly novel functionality and made an enablement rejection that forced the applicant to provide references to show that it was already known in the art. That is a hundred times better than making a strong 103 rejection, because applicant can’t argue around his own admission.
From the concurrence:
Claim 1 attempts to create the impression that a first noise level is detected “during an inspiration phase” and a second noise level is detected “during an expiration phase” of a breathing cycle. Claims App. However, in truth, the entire invention is devoted to simplifying the process of snore detection so as to eliminate the need to actually detect either inspiration or expiration. See Spec. ,r 11 ( explaining that the invention uses a microphone to detect snore and that pressure or flow sensors, that can actually differentiate between inhalation and exhalation, are optional)…
The Examiner is correct that claim 1 is nothing more than a generic listening device that subtracts softer sound amplitudes from louder sound amplitudes and then uses a generic processor to perform routine calculations and logic operations. The deduction that a “snore” has occurred is merely a logical deduction derived from a simple subtraction calculation in connection with a host of unclaimed assumptions regarding the environment in which the sound measurements are taken.
It’s not about whether the rejection gets upheld. There’s always someone else to appeal to. It’s about forcing the creation of a solid record so that future tribunals are capable of coming to proper conclusions. The question is whether the examiner created a good record. The enablement rejection made clear that the processor performing [1] and [2] was just a microphone receiving sound and splitting the input into two buckets in a conventionally-known manner, and it wasn’t the examiner finding that, it was the applicant arguing it. The conventionality of that feature is the only relevant fact the examiner needs to actually nail down. It doesn’t matter whether the office patents the claims or not now, because a district court has the only fact it needs to come to a proper conclusion on patentability.
Can you tell me what is an “inventive concept?” If you admit that you can’t, don’t interrupt the adults with your nonsense.
An art-improving disclosure apart from the ineligible subject matter which justifies the use of the patent power. In other words – the ability to point to a piece of information *that didn’t already exist in the world* and say “the art didn’t know this before my disclosure, and now they know it, which justifies congress granting me this patent.”
If you claim that you can, it means that you’re ignorant and you shouldn’t interrupt the adults with your nonsense
You sound frustrated, and not in the cute anon or nightwriter-like “this isn’t how the law should be” way but in the much less cute “I allegedly have a license and yet genuinely do not understand how the law works” way. My post wasn’t even about 101 and respond with “inventive concept? Don’t interrupt the adults with your nonsense”? You should revisit your tantrum after you take a nap to make you feel better, and apologize.
“but in the much less cute “I allegedly have a license and yet genuinely do not understand how the law works” way”
Random, you have picked up some bad habits from Malcolm, but the Accuse Others meme is perhaps the worst.
“I did, and I went so far as to read beyond the results too, believe it or not.”
No I have a hard time believing it. You cited the s112 rejection as if it meant something when even the PTAB rejected the Examiner’s nonsense.
The PTAB declared the claim limitations as a whole ordered combination novel and non-obvious under s103, then the PTAB declared the same claim limitations well-understood, routine, and conventional under s101.
It takes a special sort of stupid to believe that.
Another post – another filter hit.
Interestingly, it appears that “word-specific” filters are not objectively applied as words that I am cutting and pasting from existing posts are blocking my posts…
B,
You capture Random’s comment of “I did, and I went so far as to read beyond the results too, believe it or not.,” but you did not translate that comment correctly.
The correct translation of “I went so far as to read beyond” is that Random OVER-reads the case and is applying his well-known confirmation bias in order to twist the case to be some type of confirmation of his views regardless of what the case actually says.
Random does this so habitua11y, that he has lost the ability to actually learn anything from these cases.
Do you remember his very dark mood of a few weeks ago? I conjectured that THAT mood was because Random had been sma cked down internally for his Desired Ends approach NOT aligning with the new directives begin given to him for him to be doing his job. He simply views his job based on his own “locked-in” view of what the law “should be,” and cannot get out of his own way.
When you say “It takes a special sort of st u p1d to believe that.” you say that to a person that celebrates that specialty.
An art-improving disclosure apart from the ineligible subject matter which justifies the use of the patent power. In other words – the ability to point to a piece of information *that didn’t already exist in the world* and say “the art didn’t know this before my disclosure, and now they know it, which justifies congress granting me this patent.”
That would suggest that diagnostic “correlation” patents such as Mayo should be patentable.
Yes I can. If one reads the background of the invention portion of the application, one will see that there has been a long felt need for fast accurate snore detection and that some have gone to great lengths to achieve that goal, with only limited success. So, yes I can fashion an argument that the claim is non-obvious based on paragraphs 3 – 9 of the application:
link to patents.google.com
it’s “Alder,” Dennis
This is a claim to a machine! Should smoke detectors be non-patentable because they are directed to the abstract idea of detecting smoke?
And books are articles of manufacture.
What’s your argument? “My claim says ‘machine’ so it’s eligible?” That’s not how it works. No practically functioning eligibility screen can ever be so easily scrivened around as that.
It’s 2019. Catch up to reality.
I actually do not understand why this invention should not be eligible as a machine, but clearly fail for being obvious on 103 grounds, or fail on 112 grounds for not describing how to differentiate a snore from some other recurring sound pressure level variation.
I don’t think a lot of people involved, or not, with the patent system would understand it either.
+1
Hi Martin,
I did my best to analyze this claim based on the alice/mayo flowchart in MPEP 2106 and the current USPTO 101 guidance. I think the PTAB decided this correctly, and my analysis is below.
Look at the alice/mayo flowchart in MPEP 2106. The claim passes step one because it is directed to a machine. The machine is a device that includes two physical elements: a sensor and a processor.
Now move to step 2A. The steps of the claim form an “abstract idea” judicially recognized exception, where the abstract idea is “detecting snoring”. For this purpose, the sensor detects sound levels and the processor subtracts one level from another to obtain a difference in the sound levels.
This is purely a mathematical step and is akin to what my wife does when she hears me “sawing wood” in my sleep: at first she hears a low noise/pause, then a loud sound. The claim does not specify additional elements that do something “significantly more” than the judicially recognized exception (the abstract idea).
If the claim were amended such that the processor “does something” with this difference value, the claim would likely overcome the 101 rejection. For example, if the processor additionally compares the obtained difference to threshold values/a lookup table, and then the processor executed *something* in response to the threshold detection being met or exceeded (e.g. send an alarm or message to a graphical user interface of a mobile computing device).
As to obviousness/103, ask 10 different patent attorneys/agents/examiners what obviousness means, and you will likely get 10 different answers.
Best
JohnG
Thanks John,
But isn’t sending an alarm or a message trivial post-solution activity?
Would a claim to smoke detector really be any different if the detector did not include a beeping function? Or would the smoke detector claim really only be to a novel smoke sensor?
After all, detecting smoke is something your wife would use her senses for too. I suppose the decision to wake you or not would be something else 😉
This is a totally weak invention, but it does seem to be a machine and it does seek to claim some structural novelty as a machine to detect snoring. It just does not explain how it is supposed to do that or why the basic components to do that are not totally obvious to any potential PHOSITA.
What “smoke detector” are you talking about, Martin? Show us the claim.
It makes a huge difference.
US 9,396,637
1. A smoke detector comprising: a smoke detection chamber comprising: a light source operable to provide radiation to an interior space of the smoke detection chamber, and a light detector operable to receive radiation scattered by one or more radiation scatting particles in the interior of the smoke detection chamber; an alarm control module, in communication with the smoke detection chamber and a processor, operable to produce an alarm indicating a presence of a predetermined threshold of the one or more radiation scattering particles; the detector configured to perform an alarm compensation threshold method comprising: comparing a calibrated clear air voltage measurement with an average clear air voltage measurement; adjusting an alarm threshold, based at least in part, on the comparison of the calibrated clear air voltage measurement and the average clear air voltage measurement; wherein if the calibrated clear air voltage measurement is less than the average clear air voltage measurement, then an increased amount of dust in the smoke detector is indicated and the alarm threshold is increased; the detector further configured to perform the averaging clear air voltage method comprising: determining if the average clear air voltage measurement is to be updated; obtaining, if the average clear air voltage measurement is determined to be updated, a new clear air voltage measurement from the smoke detection chamber; and updating the average clear air voltage using the new clear air voltage measurement; wherein the average clear air voltage is not updated if one or more of the following conditions are detected: a smoke fault, a fatal fault, standby mode, smoke calibration mode not complete, or any detected abnormal operation or condition prevents CAY averaging.
Martin, please identify the “structural novelty” in this machine with a sensor and a processor.
How would one draft a claim with a controller or processor that performs a novel function? The processor is structure that has millions of logic elements wired within, the totality of which is configured and tied together to perform, let’s say, a completely novel function. How would one draft a claim without having to recite every single logic gate and its interconnections?
TB,
I have deconstructed Malcolm’s dissembling as to optional claim formats along the very lines of your post with the fact that a claim COULD be written in tens or hundreds of such detailed recitations of “every single logic gate and its interconnections.”
Patent law simple does NOT require that option, as claims are written — expressly — as to be understood by a Person Having Ordinary Skill In The Art; and thus such an option as the micro-detailing that your post presents is simply NOT a legal requirement.
The bigger concern here is that Malcolm insists on dissembling on such a point, and would rather obfuscate as to his own desired optional claim format that would involve that level of micro-detailing BE not an option at all.
Such prevarication is allowed to run rampant here.
‘Martin, please identify the “structural novelty” in this machine with a sensor and a processor.’
One doesn’t need to do so. One can describe a machine in terms of functionality.
Are you really a patent attorney?
Would a claim to smoke detector really be any different if the detector did not include a beeping function? Or would the smoke detector claim really only be to a novel smoke sensor?
As always, you can’t take something that exists in the world and say “That’s eligible.” All you can do is analyze a claim. “A machine that detects smoke” is ineligible (even the first one). You simply can’t be eligible by just nominating a function achieved by your machine rather than the means your machine employs to achieve the function. That’s literally one of the holdings in Morse.
That’s literally one of the holdings in Morse.
Granted. But what is the logic by which one arrives at the ineluctable conclusion that this Morse holding is to be given effect at the subject matter eligibility condition for patentability, rather than the sufficiency of description condition?
I do not believe that Martin is arguing that this claim should be regarded as patentable. I know that I am not making that argument, despite the fact that I agree with everything that Martin has said so far.
Not every failure of a claim must occur, however, at the §101 step. Why—as a matter of either law or policy—does it make sense to sort the failure of this claim (for failure there indubitably is) into the §101 bucket, from among the various buckets of patent claim failures?
Ah, please forgive the failure to close my bold after “description” in “sufficiency of description.”
But what is the logic by which one arrives at the ineluctable conclusion that this Morse holding is to be given effect at the subject matter eligibility condition for patentability, rather than the sufficiency of description condition?…Why—as a matter of either law or policy—does it make sense to sort the failure of this claim (for failure there indubitably is) into the §101 bucket, from among the various buckets of patent claim failures?
Well in this particular case, because the examiner made a 112a rejection and the applicant produced convincing evidence that the technological features were conventional.
On the broader question, I agree with you that sometimes it may be difficult to distinguish between an unenabled/undescribed technological advancement (a claim that fulfills 101 but fails 112a) and an idea to apply an abstraction in a particular field of use with no technological problem (a claim that fulfills 112a but fails 101), as they are different points on the same continuum.
I do, however, somewhat disagree on the bucket sorting complaint. I simply don’t think it matters which bucket you sort it into. When an applicant argues the unconventionality, it admits the enablement issue, and when they argue for enablement, it admits the conventionality and thus causes a 101 issue. The fact that an applicant/patentee can choose *why* their claims fail based on the argument they want to put forward isn’t relevant, the only thing that is relevant is that the claims are cancelled.
This isn’t the first time this has happened. Back when 112b had teeth, a claim to a functional result absent particular means became a modern-day 112b when the applicant argued the functional language should be construed as particular means (Gen Electric, Perkin’s Glue) and became a 112a when the applicant argued that particular means in the spec supported the entirety of the functional language (Morse).
Why—as a matter of either law or policy—does it make sense to sort the failure of this claim (for failure there indubitably is) into the §101 bucket,
Morse discloses a single means of “printing at a distance” to the public, but claims every means of printing at a distance. To whom should the burden be allocated of proving whether the telegraph is 1) a subset or 2) a full set of print-at-a-distance machines?
Under current 112a jurisprudence, the burden is on the public to essentially counter-invent (i.e. to present an example embodiment that lies within the claim scope but outside of the enabled disclosed means, e.g., your telegraph does not fit the scope of all machines that print at a distance because here is a cell phone text message)
Under 101 jurispruden, the burden is essentially on the inventor to right-size his scope – point to limitations that make the claim more than a drafting effort to claim an abstraction.
Now I agree that if courts actually followed the logic in Morse in a 112a context, it wouldn’t matter (i.e. The specification describes a telegraph, but you claimed all machines that print at a distance, and *you didn’t foreclose the existence of other machines that may print at a distance besides the telegraph* which is enough to be a 112a violation) because it puts the burden where it needs to be, but that isn’t the 112a world we live in.
But the burden has to be allocated to the applicant/patentee, or otherwise counsels are just going to run around creating and claiming abstract functionality rather than technological advancement in the hopes that they can sneak by overbreadth. In other words – when unsupported inductive reasoning is sprinkled to try and grow a disclosed particular means into a claimed functional genus, the burden of utilizing the inductive language needs to adhere to the person who chooses the language (in our system, the applicant/patentee) and not the person to whom the language acts upon.
“differernt points on the same continuum”…
That’s called conflation, Random.
Greg’s point is that the law is NOT so conflated.
He is correct.
You are incorrect.
That you are so confident in your error only shows how little that you understand the law.
Your “one continuum” is driven by the type of LACK of critical thinking that pervades a “Ends justifies the Means” mindset that corrupts the law and results in the broken score board condition that we currently have.
Your over riding tendency of confirmation bias adds to your other faults in making it such that you would prefer to stare at the incorrect score on that broken scoreboard and refuse to fix the broken scoreboard.
There is nothing “cute” about that.
I think we are on the same page here Greg. I don’t see the kind of eligibility controversy with machine, composition, or manufacture claims as arise with method claims, and really just the subset of method claims that result only in processed information.
Is there a substantial difference in the meaning of eligibility in the vernacular and as a term of art in patent law?
el·i·gi·bil·i·tyDictionary result for eligibility
/ˌeləjəˈbilədē/
noun
noun: eligibility
the state of having the right to do or obtain something through satisfaction of the appropriate conditions.
To me, section 101 lays out those conditions: an invention must be reasonably characterized as one of the four allowed conditions. Accepting the judicial exceptions, we just endlessly circle back to the meaning of abstraction, and much more rarely to what is a natural law or product of nature.
Bilski said firmly that mere intangibility cannot mean certain abstraction in the patent law.
I say (and by now you KNOW what I say) that the only certain, basic, and impossible to refute meaning of abstraction is that only a human mind can host one.
No human mind, no abstraction
But an abstract patent claim is not necessarily an abstract invention. They are distinguishable. The former is a 103/112 problem. The latter is the 101 problem.
That’s how the bucketing needs to occur.
“You simply can’t be eligible by just nominating a function achieved by your machine rather than the means your machine employs to achieve the function. That’s literally one of the holdings in Morse”
You are correct under the patent law of the 1850s.
However, s101 was expanded to include the word “process,” which wasn’t available to Morse. It may have been possible for Morse to make a broad method claim under s101 that did the same thing.
I’m not criticizing you, btw. I’m merely trying to raise awareness that the children running the SCOTUS were too lazy to consider the impact of the 1952 patent act – or even recognize it – when they wrote their Alice and Mayo decisions.
“forms” versus “directed to” – under the new protocol, are NOT the same thing John. A human does not “subtract sound levels” – and the claim is NOT “directed to (on a per se basis) the math of subtraction.