The USPTO’s data (here) on Office actions over the last two years confirms that Section 101 rejections are continuing to increase at a rate of approximately 15% year over year from the beginning of 2022 to the end of 2023. At the same time, the legal analysis to apply the so-called “test” to a given case remains fraught with uncertainty and ambiguity. Almost any claim can be picked apart and found too abstract, especially when most of the analysis under Section 101 is akin to arguing about how many angels can dance on the head of a pin.
A recent case on appeal at the USPTO shows that the PTAB is not even trying give the appearance of logic in sustaining rejections. The case is Appeal 2023-003722, Application 16/284,336. The invention relates to a battery monitoring system that determines that either of two secondary batteries has failed when a calculated abnormality level exceeds a predetermined threshold. Such features are obviously of great concern in vehicles relying on the secondary batteries. Claim 1 on appeal is below.
1. A battery monitoring system that monitors states of at least two secondary batteries, the battery monitoring system comprising:
a data acquiring device including at least one sensor, the data acquiring device being configured to acquire a plurality of types of monitoring data to monitor the state of each of the secondary batteries, and the secondary batteries and the data acquiring device are mounted in a vehicle;
a memory operatively coupled to the data acquiring device, the memory storing only an amount of the acquired plurality of types of monitoring data required to calculate a partial correlation coefficient matrix of the monitoring data; and
a failure determining device including a processor, the failure determining device being configured to determine whether the at least one of the secondary batteries has failed, the processor of the failure determining device being configured to:
acquire the stored monitoring data stored in the memory, perform sparsity regularization using the stored monitoring data of each of the secondary batteries as variables, and calculate the partial correlation coefficient matrix of the stored monitoring data, calculate, as an abnormality level, a difference in a partial correlation coefficient, which is a component of the calculated partial correlation coefficient matrix, between two partial correlation coefficient matrices respectively calculated using the stored monitoring data of the two secondary batteries, and determine that either of the two secondary batteries has failed when the calculated abnormality level exceeds a predetermined threshold, wherein the memory and the failure determining device are mounted in the vehicle or arranged outside the vehicle.
What is noteworthy about this case is that the specification contained extensive details about a technical problem with the prior art related to the need for large amounts of computer memory. From the specification (discussing issues with open current voltage (OCV) monitoring and state-of-charge (SOC) monitoring), here is an example:
Nevertheless, the examiner rejected the claim as abstract. On appeal, the applicant expressly pointed out the technical problems with the state of the art, and the way in which explicit claimed features enable the reduction of memory requirements (as stated in the specification). Further, the applicant pointed out (in the Reply brief) how the Federal Circuit, in Enfish, expressly mentioned how smaller memory requirements confirmed an improvement to existing technology.
The PTAB affirmed the rejection and explained their decision with the following:
We are not persuaded by Appellant’s argument that the claimed “requirement to store ‘only’ a particular amount of data, results in a reduction of memory needed in the computer system” and that this “improves the functioning of the computer.” Appeal Br. 8. Even if less memory is used, the reason is because the claimed technique selects a subset of monitoring data to store, not because the functioning of the computer has been improved. That is, less memory is used because the abstract idea selects less data for storage, not because the functioning of the computer is improved. Simply executing mathematical operations on a computer where the mathematical operations require less memory does not improve the computer because the mathematical calculation would be the beneficiary of the reduced memory and an improvement to an abstract idea itself does not make an abstract idea eligible under 35 U.S.C. § 101.
As one can see, this word salad of illogical statements makes little sense. The PTAB believes that math can somehow benefit from reduce memory. No citation is provided for this proposition. Nor does the PTAB explain how an abstract idea benefits from the practical impact of less computer memory being required. One would think abstract ideas are not impacted by real-world things like computer memory, especially since we are to believe that abstract ideas do not create real world technical improvements.
As an aside, the USPTO brushed away the citation to Enfish as being belated in the Reply brief, along with a slew of other technical arguments as to how claimed features provided real world technical improvements.
While the PTAB often faults Appellants for mere attorney argument as to technical reasoning, they seem more than willing to do so themselves. The idea that a mathematical calculation “benefits” in any way is, in and of itself, a novel thought. The reason math is an abstract idea is because it exists on its own and is not discovered or invented, and it certainly is not impacted by mortal things like computer memory. Further, if the abstract idea is so abstract as to be barred from patenting, the idea that it is so powerful as to affect math itself is quite a feat.
The PTAB’s illogical reasoning (while still fitting neatly into 101 jurisprudence) illustrates how the USPTO (or a defendant) can argue just about anything, and even a lack of logic or technical sense is of no concern. Unfortunately, even when clear evidence of record confirms a technical improvement, some PTAB members have no qualms with turning a blind eye to such evidence (and logic and case law) and affirming the rejection.