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.
I’m a bit surprised Diamond v. Diehr (and example 45) couldn’t save a few of these claims. There must be a few “control signals” somewhere in those specs…
The claimed peptides are physical. End of discussion for 101 purposes. (And, despite the CAFC’s and SCOTUS’s best efforts to deny reality, those peptides as such don’t exist in nature, which means they pass muster under 102 as well.) Another piece of excrement decision from the CAFC, which lacks both a spine and gray matter.
Please Pardon Potential re(P)eatS…
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March 4, 2024 at 6:49 am (and 6:51 am)
AM,
Sadly, you are mistaken (“The claimed peptides are physical. End of discussion for 101 purposes.“).
As you appear to have forgotten, claims in Alice that were not at issue (both sides agreeing, so not up to the Court to decide otherwise) expressly included claims that were physical.
Physical can be Abstract (the term that the Court expressly chose NOT to define – among others).
But there are still those who insist on gaslighting that the jurisprudence from the Supreme Court makes sense.
SCOTUS is full of @#$%.
Peptide is physical. End of discussion for 101 purposes – in principle it’s patentable, just like any other molecule is in principle patentable, and the only questions regarding the patentability of the invention itself are 102 and 103.
There are four lights.
I hear you – but one must accommodate the Royal Nine.
No, I don’t need to accommodate wrong-thinkers (or outright liars). I must tell my clients about the likely result in the USA thanks to the bull$%^& of SCOTUS. But on this issue those judges are still wrong in every way, and I will continue to push back until they return to reality and sanity.
+1
Billion.
No court has ever held that “physical can be abstract.” That’s not what’s going on here. We are talking about patent claims and the alleged inventions protected by those claims. Anybody who isn’t in coma and who has thought about the issue for more than two seconds understands that, in view of the wide latitude given to claim drafters, it is not only entirely possible to protect ineligible abstractions with a claim that recites a non-abstract component, but its something that is attempted all the time.
Friendly reminder that the world of non-abstract things includes “books”.
“No court has ever held that “physical can be abstract.” That’s not what’s going on here.”
That is abundantly false.
See Alice.
“Friendly reminder that the world of non-abstract things includes “books”.”
Friendly reminder that you
S
U
C
K
at patent law – see the Written Matter Doctrine including the critical exceptions to see why you are peddling falsehoods here.
Ranter tranquility pill: Ex parte Ezerzer is a Pro-patent PTAB decision on a peptide non-natural fragment Reversing the examiner’d Myriad rejection
The write is a bit misleading as the summary reads as a conclusion. I added the implied words.
“Ex parte Ezerzer: CKRD peptides that can modulate immune system activity for treating autoimmune diseases – [is a] fragment of naturally occurring protein.”
Did you order the witty repartee about baseball bats already existing inside of trees?
1. A protein fragment is physical. Nothing abstract about it. Eligible under 101.
2. The protein occurs in nature. The fragment does not. No 101 issue, unless someone else has reported the fragment previously.
3. Only question is under 103.
Anyone who says otherwise doesn’t understand biochemistry. Even if that person sits on SCOTUS.
There are four lights.
“ 2. The protein occurs in nature. The fragment does not.”
LOL. Wanna bet?
“ No 101 issue, unless someone else has reported the fragment previously”
What if the naturally occurring fragment is detected one day after the patent application is filed?
“detected one day after”
I thought that you were an ultra-stickler for forbidding any post filing data?
Or is that only when it is convenient for you (read that as being anti-patent)?
How long are these never-before-contemplated non-obvious peptides we are talking about? I assume they are modified in some unusual manner. Hence the freaking out about this nefarious decision.
Why would manner of modification be pertinent to a physical object?
This is not a product by process scenario, is it?
“ Why would manner of modification be pertinent to a physical object?”
It’s not the process of modifying I’m referring to, Billy. It’s the modified structure itself. Please run along. You know way less about this than you do about most other subjects you know little about, which is alarming on its own.
Your own words:
“assume they are modified in some unusual manner.”
Your apology is accepted.
Meanwhile, in the world of non-abstract well-understood technology that has already saved millions of lives:
Trump said in Richmond, that he will take all federal funds away from public schools that require vaccines. Like most states, Virginia requires MMR vaccine, chickenpox vaccine, polio, etc. So Trump would take millions in federal funds away from all Virginia public schools.
Every one of the purported improvements was a species of new and useful information.
None of them were “physical products” any more than any other new and useful information requires some form of physical structure to encode it.
Encoding – you mean, not abstract?
Sort of like the difference between the thought of software and actual software…
… it’s akin to the difference of information and applied information.
But I doubt that you would grasp the nuance of that very real distinction.
Most all of those trained in the traditional hard sciences easily do.
Mmm hmmm “applied information” is not a justiciable concept & to the extent that it has any meaning at all, it suggests that something about the way the information is used would be pertinent to any legal distinction.
And I have an idea of what that distinction should be.
“applied information” is akin to engineering – very much a “justiciable” concept.
You are, of course, free to misapply this as you choose, given your reluctance to understand the terrain of patent law in favor of your own shallow puddle (in which, you long to gaze at your reflection).
bzzzbzbzbzbzbzb
Google says you are full of it, as usual:
Excluding the specific context of Applied Information, Inc., the term “applied information” lacks a universally recognized legal definition in patent law. However, we can understand its potential relevance in two ways:
Indirectly: Although not a direct legal term, “applied information” can be implied within patent claims that describe specific methods or processes for using information to achieve a particular result. For instance, a patent for a data analysis method might involve claims that encompass the specific steps of applying certain algorithms or statistical techniques to analyze data.
Generally: The concept of “applied information” can be relevant to the broader principles of patent law related to utility and enablement. To be patentable, an invention must be useful, meaning it has a practical application and solves a specific problem. Additionally, the patent needs to be sufficiently enabled, meaning it provides enough detail for someone skilled in the relevant field to understand and implement the invention. Therefore, patents often involve the application of specific information and knowledge to create a functional invention.
It’s important to remember that “applied information” itself wouldn’t be directly protected by patent law. However, the specific ways in which information is used and implemented within an invention can be crucial for establishing its patentability under the established legal criteria.
I think I’m a lot closer than you are (again as usual) to the concept
“the specific ways in which information is used and implemented within an invention can be crucial for establishing its patentability under the established legal criteria”
It’s really quite sad.
Your DK peak certainly combines with that fascination you have with shallow puddles.
You are not even close to understanding the realm of patent law or innovation.
“Yes but applied information” is one of Billy’s oldest and pointless quips.
Shockers that Malcolm and marty are like two peas in a pod.
The most abstract idea involved in section 101 analysis now is the analysis itself. It is no longer connected to any policy goal, reality or the rest of the patent statute. The originating policy goal behind the abstract idea exception to subject matter eligibility was preemption – preventing the patent law from preempting use of fundamental scientific tools and principles. What other possibly policy purpose is there for such a threshold screen? But preemption is now no more than a footnote; USPTO guidance says it basically doesn’t matter. Court decisions virtually never address it. Reality is a side note now too because almost every new development in technology now includes an aspect of novel information processing that causes it to be a desirable, valuable improvement. The current trend lines in section 101 analysis and technological innovation are taking us toward an intersection point when virtually nothing is patent eligible subject matter. And the rest of the patent statute? What does it matter if a so-called “novel and non-obvious abstract idea” is still an ineligible abstract idea? Patentability is supposedly determined based on the claim as a whole, except when someone wants to say it is ineligible, then it is just fine to pull out of the analysis anything you want by categorizing it as part of the abstract idea component of the claim then find everything else conventional.
What exactly is the policy goal advanced by prohibiting patent protection narrowly limited to a coffee maker because the coffee maker processes information to provide a more convenient product?
Even if the coffee maker is physically identical to prior art coffee makers but for the algorithm, if the claim is limited to coffee makers employing the algorithm, why shouldn’t it be patentable if the algorithm cannot be shown to be in the prior art? What is the harm? So, again, what is the goal?
History repeats (self-description of the Supreme Court):
“The only valid patent is one that has not yet appeared before us.”
“ The current trend lines in section 101 analysis and technological innovation are taking us toward an intersection point when virtually nothing is patent eligible subject matter.”
LOL
What color is the sky on your planet?
I apologize for expressing a sincere opinion based on personal experience without being snarky, narcissistic and myopic all at once in the same post. It was foolish of me to believe I could productively engage such an erudite harlequin as yourself, and for this I am profoundly sorry. I will leave you to enjoy this forum on your own terms and not again make that mistake.
Huzzah to you Mr. Profit.
tk,
Please reconsider.
Malcolm has been like this stretching back 18 years now, and despite that, others have enjoyed (even if rough and tumble at times) lively conversations.
Those like myself that are truly interested in strong innovation protection laws want more from the likes of you.
“ What exactly is the policy goal advanced by prohibiting patent protection narrowly limited to a coffee maker because the coffee maker processes information to provide a more convenient product?”
Keeping endless teams of total c r @ p out of the patent system is a worthy policy goal.
Why not start your own patent system with your fellow travelers in the world of patent maximalism? You can agree to abide by the rules and file a zillion claims to “smart this” and “smart that” “inventions”. Because nobody ever thought of them before and you are a very, very serious person. Now excuse me please my smart coffee cup just alerted me that I need a refill and WOW my smart coffee grinder told me which beans I used last so I know which bag to pull off my smart shelf. But wait! My smart health-o-meter is telling me I need to eat some yogurt. Better open the refrigerator with my smart refrigerator door switch that automatically tells me when the door is open or closed. EVERYTHING IS SO SHINY
You do know that you are under no obligation to partake in anything that you would deny innovation protection to, right buttercup?
Maybe less whining from you. Wouldn’t that be nice.
Ah, I got it: please tell us where you stand in the still ongoing (and you still being silent about) Israel/Hamas fiasco.
Non-sequitur meter on my comment reader just chimed twenty times. Neighbors heard it.
While I do not deny the character of the question is a non-sequitur to the legal points at hand, they are very much in line with your tendencies of “drive-by v0m1t-fests.”
But how about you addressing that issue? Certainly those chimes may as well call to attention how you have never stated your position – and there is no shortage of you posting in that exact same style of non-sequitur.
What will be your response? My money is on running away.
Again.
And running away it is.
poor marty is going to be in conniptions as you are ‘dominated’ once again (albeit, it is as usual your choice to not share your view on this topic).
Nothing is patentable anymore! says the mewling infant who lives in a bubble of willful ignorance, apparently unaware of the many many thousands of patents that are obtained, enforced and/or licensed every day.
and of those thousands, you have not a once ever indicated a single computing patent that you think to be valid.
But, you are not anti-patent now (as you have attempted to gaslight).
Out of curiosity, have you ever established that computing patents are supposed to be valid?
NS II – there are plenty with plenty of case law.
Why do you ask (I mean, other than to embarrass yourself as you usually do by jumping into a conversation squarely on the wrong side)?
Question back at you: why would you think that computing patents are NOT supposed to be valid?
Even for a mere litigator, you should be able to recognize why the patent bargain applies.
Saying “no” would have been faster.
You are welcome to believe that computing patents are supposed to be valid. I just thought it was interesting that you erected that hurdle with seemingly no basis. Thanks for the confirmation.
Your “interest” is noted as well as your lack of understanding of what “plenty with plenty of case law.” means.
You really do seem to enjoy being immolated when you show up and jump on the wrong side of simple patent law concepts.
But, you are merely a litigator after all…
I concur. The concern about preemption of an abstract idea is the policy goal underpinning the 101 judiciary exceptions, as is the case for the legal eligibility exceptions in European patent laws.
In this respect, it is noteworthy that the EPO equivalent to the case about coffee container management in Nespresso machines rejected by the PTAB was granted by the EPO (EP3379982 granted 19 April 2023). Eligibility was not an issue.
Countries with very different legal systems reach different results sometimes. Wow. Never thought about this before. Noteworthy indeed!
Here, I certainly agree that it is important to recognize the limits of any comparison across legal domains.
Is this one of the two times a day for the Malcolm broken analogue clock?
The divide as far as US law is concerned is between Diamond vs Diehr in which eligibility is assessed as to the claim taken as a whole and the first step of Alice which does the opposite i.e. isolate non-eligible claim features.
francis,
Malcolm really does not care (at all) what the divide as far as US law is concerned is.
ALL that he wants is his desired ends – by any means (no matter how contradictory) those may be.
He’s been like that now for…..
18 years.
(you can thank Night Writer for first pointing out how Malcolm has been like this from the beginning days of this blog)
Peptides are physical. End of discussion for 101 purposes…except in the CAFC’s fantasy land.
As noted – this is direct from on high.
It is too bad that the CAFC did not (does not) take a principled stand and expressly rule against what is so obviously an ultra vires expression of power by the Supreme Court.
Alas, no Giles Rich (that precipitated the clawback in Diehr.
“ Peptides are physical. End of discussion for 101 purposes”
“I claim a physical X, wherein X is enabled and has non-obvious properties Z1 to Z347.”
Just to be clear: you think the eligibility question for this kind of claim ends at “physical”? Because it has the word “physical”? Just not sure what your 101 test is, beyond a magic word.
?
I do not think that your hypo speaks to the issue that you think it does, as you conflate enablement into the eligibility issue.
I didn’t conflate anything. I just ended any discussion about enablement or obviousness by using magical words in my claim.
Your 5.4.2 does conflate.
That you attempt to gaslight otherwise…
Shockers.
. . . yet more body-blows to innovation.
Congress — where are you?!
Where the h.e.l.l. are you!?
Suffice it to say that logic never becomes protectable subject matter merely by adding a prior art context, i.e., the meaning of the data that is being “processed” (“trading card data” or “beer recipe data”) is irrelevant. The urge to pretend this is not true or to pretend that some types of data were believed to be “unprocessable” by computers is powerful and the failure to resist that urge has led to a lot of terrible case law and policy.
Your assertion of irrelevance is of course wr0ng.
Perhaps to the chagrin of Wt (maybe he does not ‘get’ it), but let me know what happens if you try to reformat your hard drive with a Britney Spears CD.
That “meaning of data” thing you have fundamentally 1gn0res context.
This also is why you have ALWAYS gotten wr0ng the Printed Matter Doctrine – and the critical exceptions to that doctrine.
But enough from me, I will invite Wt to provide the level of rebuff that he would find satisfying.
If he can.
Seeing as Wt as deigned to appear on another thread, perhaps he is busy researching and reminding himself of the principles involved in the Printed Matter Doctrine so as to be able to pen a response to his own desired level of thoroughness.
Or not.
This 101 case law just keeps getting wackier and less connected with product development in the real world.
What is the percentage of such ex parte PTAB application decisions sustaining examiner claim rejections for 101 unpatentable subject matter as compared to the total number of ex parte PTAB application decisions? I.e., how big is this issue?
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