- IN RE NUVASIVE, INC. (Fed. Cir. 2016) (P) – Merely adopting one party’s position is generally insufficient to support the PTAB’s finding of obviousness
Merely adopting the position of one of the parties to an appeal or review is generally insufficient to support a finding of obviousness by the PTAB. Here, for example, the PTAB’s reliance on only a conclusory statement by an expert that the modification of the prior art references would provide “additional information” was found to be insufficient because it failed to explain why the additional information would provide a benefit, the type of information that would be obtained, or how the information would be used. “[I]t is not adequate to summarize and reject arguments without explaining why the PTAB accepts the prevailing argument.” This would be a good case to consult and cite in a request for rehearing in response to a PTAB decision based on conclusory statements.
Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO is directed to a spinal fusion implant of non-bone construction releasably coupled to an insertion instrument. In its decision finding the claims under review obvious, the PTAB effectively relied on only one conclusory statement by the petitioner’s expert that the modification of the prior art references would provide “additional information.”
Issue(s): Whether the PTAB’s decision adequately explained its findings as to why a PHOSITA would have been motivated to combine the prior art references.
Holding(s): No. “In its summary of [the third party petitioner’s] arguments, the PTAB never articulated why the additional information would benefit a PHOSITA when implanting a posterior lumbar interbody fusion implant, such as the implants disclosed by the [prior art] references. It also failed to explain the type of additional information a PHOSITA would obtain or how the PHOSITA would use that information.”
Computer-based automation of a desired result without reciting a particular method for achieving that result does not rise to the level of an inventive concept under step two of the Mayo/Alice framework for establishing subject matter eligibility. Here, for example, using a computer to link orders from a restaurant menu with the customers placing those orders was found to lack the requisite inventive concept under step two of the Mayo/Alice framework because there was no disclosure concerning how the linked orders would be technologically implemented. “Generally, a claim that merely describes an effect or result dissociated from any method by which it is accomplished is not directed to patent-eligible subject matter.” It may therefore be best to claim more specifically how a desired result is achieved technologically rather than merely the generic automation of that result.
Background / Facts: The patents on appeal here from rejection at the PTO under covered business method (“CBM”) proceedings are directed to computerized menu systems that can be used in the restaurant industry. The patent specifications disclose a first menu that has categories and items, and software that can generate a second menu from that first menu by allowing categories and items to be selected. The claims require that the second menu, after being modified, can be linked to a specific customer at a specific table.
Issue(s): Whether using a computer to link orders and customers in a restaurant rises to the level of an inventive concept under step two of the Mayo/Alice framework for establishing subject matter eligibility.
Holding(s): No. “Generally, a claim that merely describes an ‘effect or result dissociated from any method by which [it] is accomplished’ is not directed to patent-eligible subject matter.  Here, the linked orders claim limitation calls for the desired result of associating a customer’s order with said customer, and does not attempt to claim any method for achieving that result. … These claims cover the process of a restaurant server taking an order from a customer and keeping track of what customer placed that order, when done using a computer. We agree with the  petitioners that the claimed linking of orders to customers is a classic example of manual tasks that cannot be rendered patent eligible merely by performing them with a computer.”
A broad class of algorithms for performing the function of a computer-implemented means-plus-function element, as opposed to a single or small set of algorithms, is not sufficiently definite to provide the requisite algorithmic structure. Here, for example, the specification’s allusion to logarithmic algorithms for generating data indicative of an audio signal was found to be insufficient to render a corresponding means-plus-function element definite because the logarithmic conversion function could be implemented through multiple logarithmic algorithms, none of which the specification specifically described. “Disclosing the broad class of [algorithms] does not limit the scope of the claim to the ‘corresponding structure, material, or acts’ that perform the function, as required by Section 112.” It may therefore be best to ensure that the specification describes a relatively specific algorithm or set of algorithms for any means-plus-function element, rather than relying on reference to a broad class of algorithms.
Background / Facts: The patents being asserted here are directed to an ear implant with an internal implantable cochlear stimulator (ICS), which processes audio to stimulate the cochlea––the organ that converts sound to nerve impulses. The claims recite “means for generating data indicative of the audio signal.” It is not disputed that this is a means-plus-function limitation and that the corresponding structure is a microprocessor. Although the specification mentions using logarithmic conversion for this purpose, it does not describe which of multiple logarithmic algorithms is to be employed.
Issue(s): Whether, as required for definiteness under 35 U.S.C. § 112, second paragraph, the specification’s allusion to a general class of logarithmic algorithms for generating data indicative of an audio signal provides the requisite algorithmic structure for the microprocessor to use to perform the recited function.
Holding(s): No. “[T]he  patent does not disclose an algorithm, or even a small set of algorithms for performing the claimed logarithmic conversion function. Disclosing the broad class of [logarithmic conversion] does not limit the scope of the claim to the ‘corresponding structure, material, or acts’ that perform the function, as required by Section 112.  Although [the patentee] argue[s] that a person of ordinary skill in the art would know of potential logarithmic conversion functions to implement , this does not create structure in the patent where there was none to begin with.”
A prior art reference need not be directed to the claimed point of novelty in order to be analogous. Here, for example, prior art directed to the ordering of menu items was found to be analogous to the claimed prioritization of location-based search results because both were more broadly directed to interface design. “The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field.” This would be a good case to consult before arguing that a prior art reference is non-analogous.
Background / Facts: The patent on appeal here from inter partes review proceedings at the PTO is directed to providing wireless network subscribers (e.g., cell phone users) with prioritized search results based on the location of their mobile device (e.g., the nearest gas station). The prior art deals generally with graphical user interface design and includes a chapter devoted to menu design with specific suggestions for how to order menu items.
Issue(s): Whether the prior art is analogous to the claimed invention.
Holding(s): Yes. “The field of endeavor of a patent is not limited to the specific point of novelty, the narrowest possible conception of the field, or the particular focus within a given field. Here, both [the prior art] and the  patent are in the field of interface design, with [the prior art] focusing on graphical user interfaces and the  patent focusing on interfaces for location-based services. These two areas of focus overlap within the broader field of interface design because the teachings in graphical user interface design, including design principles for displaying text and ordering menus, have relevance in interfaces for location-based applications. Likewise, a skilled artisan seeking to apply interface design principles to display addresses—one of the particular problems dealt with by the inventor of the  patent—would reasonably look to [this prior art], which teaches solutions to this same problem.”