A Transformation of Matter Helps Secure Subject Matter Eligibility at the PTAB

December 30, 2024

In the matter Ex parte MICHAEL J. WEST, in Technology Center 1700 (USSN 16/078,845; Appeal 2023-003903) rejections for an alleged lack of patentable subject matter, a lack of enablement, indefiniteness, and obviousness by a primary examiner, Lore Jarrett, were reversed by a panel of the Patent Trial and Appeal Board (PTAB) made up of Jeffrey R. Snay, Whitney Wilson, and Jane E. Inglese. The first appealed claim recited (with the underlined portions added after the first rejection): 

    [a] method of estimating future build-up of at least one disinfection by-product (DBP) in water from a water supply, said method comprising:

    controlling an actuator on an intermittent basis to automatically draw a sample of water from the water supply;

    automatically transferring the sample to a vessel and heating the sample for a period of time, where both a temperature of the heating and the period of time of the heating are selected so as to simulate aging of the sample according to a selective age that has been correlated in advance with expected formation of the at least one DBP, given a normative amount of disinfection agent present in the water, and where the heating of the sample is to cause deliberate formation of the at least one DBP in the sampled water from un-neutralized disinfection agent present in the sampled water;

    following heating, passing the sample through a transfer mechanism to extract the at least one DBP and to transfer the extracted at least one DBP to a second medium of known volume;

    transferring the second medium of known volume to a measurement device, and measuring concentration of the at least one DBP in the second medium with the measurement device to generate at least one result; and

    estimating the future build-up dependent on the at least one result;

    wherein

    the measuring of the concentration comprises initiating a reaction in which a pyridine-based substance is added to the second medium of known volume, measuring a color that is dependent on the concentration, and identifying the concentration dependent on the measured color, and

    the controlling, the automatically transferring and heating, the passing, the transferring to the second medium and measuring and the estimating are each automated steps of a sequence for each sample performed on the intermittent basis under the control of one or more processors

The claims in this case were rejected throughout the process as obvious over the publication of one of the co-inventors, though the applicant also faced only a variety of hyperactive rejections under 35 USC § 112. The applicant responded in detail to the assertion that the claims were obvious over the co-inventor’s prior work by emphasizing that the claims of the present application distinctly recited that “the period of time of the heating are selected so as to simulate aging of the sample.” After failing to persuade the examiner on the first response to an office action, the applicant successfully pursued a Pre-Appeal Brief Request for Conference, leading to a reopening of prosecution, but a further rejection of the claims followed the first initial pre-appeal success.

In the initial Pre-Appeal Brief Request for Conference, the applicant argued that appealed subject matter relies upon causing sanitization agents to break down, i.e., thereby replicating the aging process, enabling prediction of future trihalomethane production - if drawn samples had all chlorine removed/neutralized, then “formation potential” (of additional trihalomethanes) would always be ZERO since there would be no chlorine to form additional trihalomethanes.

After the successful Pre-Appeal Brief Request for Conference, the examiner raised a rejection under 35 USC § 101, in addition to more thoroughly explained rejections for indefiniteness, lack of support in the written description, and lacking enablement, as well as the obviousness rejection. After the above-underlined amendments, the examiner largely maintained the rejections, and the applicant appealed, this time, via a second, unsuccessful Pre-Appeal Brief Request for Conference.

Regarding the lack of patent eligibility of the claims, the examiner argued that claim 1, reciting a method—two other independent claims covering apparatuses—related to estimating the future buildup of at least one disinfection by-product in water from a water supply by depending on at least one result, which is based on a measured concentration of at least one DBP after the at least one DBP has been extracted from a sample that has been heated for a period of time to simulate aging of the sample.  The applicant characterized this as a judicial exception not integrated into a practical application because the claim recites using one or more processors to perform generic computer functions of controlling, transferring, heating, passing, measuring, and estimating such that it amounts to no more than mere instructions to apply the exception using one or more generic computer components, particularly pointing to “estimating” and “measuring” features. 

The examiner argued to lack enablement the language “estimating the future build-up dependent on the at least one results,” as well as “calculate an estimate of the future build-up dependent on the at least one result” and “automatically calculate an estimate the future build-up dependent on the at least one result” in the other independent claims. On alleged indefiniteness, the examiner argued the claim language “correlated in advance with expected formation of the at least one DBP, given a normative amount of disinfection agent present in the water.”

In response to the patent eligibility rejection, the appellant noted the three features:

  • heating according to a specific heat profile that has been correlated in advance with a simulated age, i.e., in order to deliberately trigger the immediate formation of [disinfection by-products] DBPs from disinfectants present in water;
  • use of a transfer mechanism which extracts DBPs from the water sample and instead transfers them to a second medium of known volume; and
  • use of a specific chemical reaction chemistry and measurement device, i.e., based on the use of a pyridine substance and a color measurement process, to optically measure concentrations of at least one DBP (species).
The appellant argued that claims are necessarily statutory whether or not directed to an abstract idea if they articulate a practical application, and the claims were argued to define a practical application in the appealed case. The applicant noted three practical applications of the claims. Firstly, effectuating an improvement in a specific technology, argued here to be an improvement in water metrology, in a machine that sequences [disinfection by-products] DBP measurement using a pyridine-based chemical reaction and colorimetric measurement.  The appellant noted that the claims further recite a specific extension of its own technology by requiring, as a specific application of a specific heat profile correlated in advance with simulated aging, which had not been done before in the art, and permitted upstream measurement of DBPs expected at water delivery points (e.g., consumer taps).  Secondly, the appellant noted that a practical application was necessarily obtained by the claims by adding that specific heating/decomposition modelling limitation feature, which went beyond what is well-understood, routine, conventional activity in the field.  Thirdly, via the heating/decomposition modelling, the claims transform an article to a different state or thing, i.e., the modelling material is broken down.

Regarding enablement, the appellant pointed out that the claims were not unpredictable, as the potential contamination issues were known and known to vary in several regions discussed in the background of the application.  The appellant then explained, based on the description of the rejected application, how correlations and modelling were known and adequately described in the application such that no undue experimentation should have been necessary.  Several of the same sorts of description regarding such modelling, i.e., ascertaining appropriate heat profiles, handling of disinfection agents (e.g., a known amount corresponding to a calibration standard, although this is not required for all embodiments) in water, standards aging under controlled conditions, and accelerated aging, were submitted in support of the definiteness of the claims. 

The non-obviousness argument was restated as in the initial Pre-Appeal Brief Request for Conference, i.e., that the aging acceleration distinction was new and inventive over the appellant’s own prior art.

The PTAB reversed every position taken by Examiner Jarrett and the supervising examiners, Lyle Alexander and Michael Marcheschi. Perhaps most instructive, the PTAB detailed the reversal of the subject matter ineligibility rejection.

The PTAB found that the claims recite mental processes, i.e., Guidance Step 2A of the flowchart in MPEP § 2106 (from the 2019 Revised Guidance on Statutory Subject Matter, inserted below), including estimating future build-up of disinfectant by-products, which can be performed in the mind or with pen and paper:

However, the PTAB noted that an improvement in measuring disinfectant by-products is achieved by the claims and this improvement is reflected in each of the independent claims, e.g., “heating the sample for a period of time . . . to simulate aging of the sample” and “estimating the future build-up dependent on the at least one result” of claim 1. For the reasons detailed in the appellants arguments, the PTAB overturned the somewhat frivolous rejections under 35 USC § 112 as well as the obviousness rejection. 

The case of West appears instructive for a number of reasons. Firstly, subject matter ineligibility rejections are often poorly understood and applied by the USPTO examining corps, although the same seems to apply to many of the US district courts and potentially even the Federal Circuit itself. If your claimed process clearly transforms matter, it has a good chance of subject matter eligibility. Secondly, as here, it is often the case that the USPTO examiners raise a large number of rejections under 35 USC § 112, seemingly to antagonize applicants in cases the examiners do not wish to allow. Even at the PTAB, the applicant typically is more successful in overcoming rejections under 35 USC § 112 when the USPTO examiner is recalcitrant. Thirdly, however, as here, the Pre-Appeal Brief Request for Conference is not always as effective in overcoming unreasonable examiners, as the request does not go beyond the examining corps. If an examiner returns, as here, with similar logic in the rejections and maintains unreasonable rejections under 35 USC § 112, it may be better to directly file the appeal brief, rather than further arguing with the examiner and supervisors for further rounds of prosecution.