Artificial Intelligence And Subject Matter Eligibility In U.S. Patent Office Appeals – Part Three Of Three – Intellectual Property

Codi Saxon

&#13 To print this write-up, all you have to have is to be registered or login on This post is Element 3 of a Three-Aspect Short article Collection Artificial intelligence is changing sector and modern society, and&#13 metrics at the US Patent and Trademark Business office (USPTO) replicate its&#13 […]

To print this write-up, all you have to have is to be registered or login on

This post is Element 3 of a Three-Aspect Short article Collection

Artificial intelligence is changing sector and modern society, and&#13
metrics at the US Patent and Trademark Business office (USPTO) replicate its&#13
impact. In a the latest publication, the USPTO indicated that from 2002&#13
to 2018 the share of all patent applications relating to artificial&#13
intelligence grew from 9{565afb6a7dd3ab7cf54100f70e42ab263dca1ef4e5addf37831397e398fc3d13} to approximately 16{565afb6a7dd3ab7cf54100f70e42ab263dca1ef4e5addf37831397e398fc3d13}. See&#13
“Inventing AI, Tracing the diffusion of artificial&#13
intelligence with U.S. patents,” Business of the Chief&#13
Economist, IP Data Highlights (Oct 2020). For the foreseeable&#13
future, patent apps involving synthetic intelligence&#13
systems, like equipment finding out, will boost with the&#13
ongoing proliferation of these technologies. On the other hand, subject&#13
make a difference eligibility can be a major problem in securing&#13
patents on artificial intelligence and equipment finding out.

This 3-element write-up sequence explores USPTO managing of&#13
Alice concerns involving synthetic intelligence and device&#13
finding out by a sampling of latest Patent Trial and Attraction Board&#13
(PTAB) conclusions. See Alice Corp. v. CLS Lender Int’l,&#13
134 S. Ct. 2347 (2014). Some decisions dutifully applied USPTO&#13
pointers on subject matter make any difference eligibility, including Illustration 39&#13
thereof, to resolve enchantment concerns introduced to the PTAB. In one particular circumstance,&#13
the PTAB sua sponte made available eligibility advice even with&#13
no Alice attractiveness concern right before it. These choices advise&#13
approaches to optimize patent drafting and prosecution for&#13
synthetic intelligence and equipment understanding related&#13

Component A single can be viewed listed here.

Component Two can be seen below.

Section A few

“‘Machine Learning’ Is Small Additional Than&#13
Just A further, Recognized, Knowledge Processing Approach”

The PTAB can present issue issue eligibility steerage on&#13
artificial intelligence similar innovations even when not requested.&#13
Ex parte Kneuper, Attractiveness 2020-005835 (PTAB April 28, 2021)&#13
is a reminder to patent applicants about inherent unpredictability&#13
and danger in PTAB attraction, particularly in relation to Alice.&#13
In Kneuper, the sole issue on attraction right before the PTAB was&#13
irrespective of whether the statements ended up correctly rejected throughout examination under&#13
segment 103. The independent declare at problem recited:

1. An plane flight setting up apparatus comprising: a database&#13
which includes

a plurality of forecasting styles configured to

make predictions of a predetermined attribute on&#13
which at least a part of an aircraft flight system is dependent, exactly where&#13
the predetermined characteristic features at minimum a part of a&#13
weather forecast,

at minimum one particular knowledge matrix of take a look at predictions for the

predetermined attribute produced by every single of the plurality&#13
of forecasting products, each and every of the at minimum just one info matrix of exam&#13
prediction features a plurality of test prediction facts points&#13

an aircraft flight setting up controller coupled to the databases,&#13
the plane flight arranging controller becoming configured

to receive investigation forecast information obtaining at the very least a person

investigation data stage,

select a forecasting product, from the plurality of

forecasting designs, centered on a comparison among the at the very least&#13
1 assessment info point and the plurality of test prediction facts&#13
points of a respective forecasting product, and

supply a prediction of the predetermined

characteristic created with the forecasting model, chosen&#13
from the plurality of forecasting products, that corresponds to a&#13
examination prediction info issue that is representative of the at the very least&#13
one particular assessment knowledge position.

Id. at 2. Declare 4 in Kneuper depended from&#13
assert 1, and extra the subsequent limitation: “wherein every of&#13
the plurality of forecasting products are device mastering&#13
products.” As a result, claim 4 specially coated device finding out&#13
styles that make predictions of a predetermined attribute,&#13
which include a portion of a weather forecast, on which at minimum a&#13
part of an aircraft flight approach is based.

Prior to talking about the prior art situation on attraction, the PTAB&#13

Ahead of delving into the deserves of the art rejection, we would be&#13

if we failed to point out that Appellant’s promises look to&#13
recite very little much more

than working with personal computer program for data selection, evaluation, and&#13

This kind of is typically deemed an abstract strategy in the kind of a&#13
mental system

beneath our Guidelines for investigation less than 35 U.S.C. § 101 . .&#13

Id. at 3. The 1st a few paragraphs of the selection&#13
mirror the PTAB’s uninvited, albeit lively, skepticism&#13
relating to eligibility, a non-situation up to that point. Of note, that&#13
skepticism was not supported by any discussion of, for example, an&#13
abstract idea, specific limitations, further constraints, prong&#13
a single, prong two, an inventive strategy, or Case in point 39. With no regard&#13
to the analytical framework that generally supports an&#13
Alice selection, or an prospect for the patent applicant&#13
to make its scenario, the PTAB likely sealed the fate of the claims at&#13
problem with this directive to the examiner: “In the function that&#13
Appellant carries on prosecution soon after resolution of this attractiveness,&#13
the Examiner could want to assess the eligibility of this&#13
software underneath Section 101.” This admonishment as to&#13
eligibility was signaled by the PTAB’s later on observation in&#13
relation to section 103 that “[a]t the conclude of the working day,&#13
‘machine learning’ is very little much more than just another, identified,&#13
data processing technique.” The PTAB acknowledged but&#13
dismissed the truth that the specification in Kneuper&#13
referenced decision trees, random forest algorithms, polynomial&#13
in good shape, and k-closest neighbors as acceptable device understanding&#13

Kneuper is not surprising. Experienced practitioners&#13
know that the PTAB is not shy boosting concerns devoid of invitation.&#13
While there should be no doubt that such hazard also applies to&#13
synthetic intelligence and device studying associated inventions,&#13
the included unpredictability of Alice problems in certain&#13
exacerbates danger. In this regard, patent candidates should really try to remember&#13
that declare limits involving artificial intelligence and&#13
machine discovering may perhaps be considered so deficient in terms of eligibility&#13
as to warrant preemptive PTAB refusals.

Important Takeaways

Patent technique on synthetic intelligence and device mastering&#13
innovations must account for current PTAB conclusions. The choices&#13
explored in this three-section short article sequence show that claims&#13
reciting predictive capabilities of machine understanding styles, even&#13
when comparatively thorough, could not fulfill USPTO rules on&#13
subject subject eligibility. Drafters appropriately ought to prepare&#13
patent applications to guidance promises that recite detail about&#13
implementation and education of the types. In addition, dialogue&#13
in the specification about technological troubles defeat by&#13
equipment mastering claim limits might reinforce eligibility&#13

Other issues addressed by the PTAB decisions are also&#13
relevant to patent approach. As the conclusions mirror variation&#13
relating to PTAB focus on the first prong vs . the second prong of&#13
Stage 2A, patent candidates must seize possibilities to present&#13
arguments under equally. When device learning declare limits&#13
concerning implementation are comprehensive, the initially prong and Illustration&#13
39 additional easily support eligibility. This kind of specific claim restrictions&#13
also may well bolster arguments developing a specialized enhancement&#13
beneath the 2nd prong, specifically when complemented with strong&#13
distinctions over prior artwork. Even more, before captivating even&#13
non-Alice challenges, patent applicants must be organized for&#13
the PTAB proactively questioning the eligibility of claims relating&#13
to artificial intelligence and device discovering.

Note: To start with printed in The Intellectual Home&#13

The material of this post is intended to offer a normal&#13
guidebook to the matter make a difference. Professional information should really be sought&#13
about your distinct situations.

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