The Patent Trial and Appeal Board (PTAB) recently designated three more decisions as informative, bringing the total number of informative decisions to 13 for 2019. Two decisions—one final and one on institution—address examples of insufficient rationale for combining prior art references to support obviousness under 35 U.S.C. § 103. The third decision applies the United States Patent and Trademark Office’s (USPTO) 2019 guidance on patent eligibility under 35 U.S.C. § 101 to reverse an examiner rejection, where the Board found that the claimed computer-implemented method was not an abstract idea.
Hulu, LLC v. Sound View Innovations, LLC, Case IPR2018-00582, Paper 34 (Aug. 5, 2019).
In Hulu, the claims were directed to the real-time processing of events generated by an application, such as fraud detection in a telecommunications network, comprising a real-time processor and main-memory database. Petitioner argued that the primary reference, O’Neil, disclosed a real-time processor and a database, and that it would have been obvious to upgrade the database to a main-memory database taught in the secondary references, Kao and Dewitt. According to Petitioner, a person of skill would have been motivated to combine the references based on the “tight timing requirements” in O’Neil’s real-time call monitoring system.
Citing evidence from O’Neil and its expert, Patent Owner argued that Petitioner’s reasoning was inadequate because the “tight timing requirements” in O’Neil’s system did not warrant the use of a main-memory database. The Board agreed and highlighted uncontested expert testimony that the “vast majority” of database systems at the time of the patent were conventional disk-resident database systems, which had adequate timing for O’Neil’s purposes. The Board also noted disadvantages of main-memory databases, such as cost, limited capacity and volatility, which undermine the combination in the absence of other persuasive reasons to modify O’Neil.
Practice Tip: A generalized desire for improvement may not be sufficient motivation to combine if the improvement could already have been achieved by conventional means at the time of the invention, particularly when there are disadvantages to the proffered combination. The obviousness analysis is fact-specific and should be supported by documentary evidence and reasoned expert testimony.
Johns Manville Corp. v. Knauf Insulation, Inc., IPR 2018-00827, Paper 9 (Oct. 16, 2018).
In Johns Manville, the claims were directed to insulation material comprising glass fibers and a certain binder. Petitioner argued that a combination based on two references, Srinivasan and Worthington, was obvious because they were analogous and disclose binders containing “reactants in similar endeavors related to each other.” The Board rejected Petitioner’s reasoning because demonstrating that references are analogous art, relevant to the field of endeavor of the challenged patent and compatible is not sufficient to establish a reason to combine.
Petitioner also argued that Srinivasan teaches methods lending themselves to the use of certain binder compositions, and Worthington expressly teaches that its methods are appropriate for those compositions. The Board, however, found that Petitioner’s argument did not compare the binder in Worthington to the binder in Srinivasan and did not give a reason to substitute Worthington’s binder for the one in Srinivasan. The Board noted evidence in the references that the binders in each reference were “considerably different” and that Petitioner and its expert did not sufficiently explain and cite evidence for why the combination would have been predictable.
Practice Tip: To show a reason to combine and a reasonable expectation of success, Petitioners should provide explanation and evidence specific to the proffered combination required to achieve the claimed invention—mere compatibility of the references is insufficient. Also, bare assertions that a combination would have been predictable is entitled to little weight.
Ex Parte Linden, 2018-003323 (Apr. 1, 2019).
In Ex Parte Linden, the claims recited a computer-implemented method for transcribing speech. The Examiner found that the claims were directed to the abstract idea of “using the predicted character probabilities (mathematical formula) to decode a transcription of the input audio into words or text data.” Applying prong one of step 2A of the USPTO’s 2019 guidance on patent eligibility, the Examiner categorized the abstract idea under mathematical formulae, organizing human activity and mental processes because a human can transcribe the audio data.
The Board disagreed the claims recite a mental process. According to the Board, the claims recite steps that cannot be performed by a human, e.g., normalizing an input file, generating a jitter set of audio files, generating a set of spectrogram frames, obtaining predicted character probabilities from a trained neural network and decoding a transcription of the input audio using the predicted character probability outputs. The Board also disagreed that the claims recite organizing human activity because they do not include fundamental economic principles, commercial or legal interactions, or managing personal behavior or relationships or interactions between people.
The Board also found that the claims do not recite a mathematical algorithm. The claims recite using predicted character probabilities to decide a transcription of the input audio, and the specification describes an algorithm to obtain those probabilities. The claims, however, do not recite the described algorithm. Applying prong 2 of step 2A of the USPTO’s 2019 guidance, the Board reasoned that even if the claims recited a mathematical concept, the claims themselves are not directed to an abstract idea because the alleged abstract idea is integrated into a practical application—namely, the claims “include specific features that were specific designed to achieve an improved technological result” and “provide improvements to a technical field.”
Practice Tip: In prosecution, patent applicants should draft claims to avoid the list of abstract ideas in the USPTO’s 2019 guidance, e.g., methods organizing human activity and mental processes. Also avoid reciting mathematical concepts, but to the extent the claims do so, draft the claims to also include specific features designed to achieve an improved technological result, such as the trained neural network and improved language model in Ex Parte Linden.
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