Key rules and issues for patent practitioners working on AI patent applications | Sheppard Mullen Richter and Hampton LLP

On September 22, 2022, the United States Patent and Trademark Office (USPTO) directed patent practitioners to current case law and Patent Examination Procedures Manual (MPEP) sections as reminders as patent practitioners continue to work in the artificial intelligence (AI) technology space. A summary of these reminders (and links to more information) are provided here.

MPEP sections must be known – especially for AI inventions

Two main areas of concern for applications for AI inventions are (1) the eligibility of the patent subject matter and (2) the availability of disclosure. Featured Sections Included MPEP 2106And the MPEP 2181And the MPEP 2173.05 (g).

MPEP 2106 Provides general guidance on subject matter eligibility, including specifying that a claimed invention must be in one of the four legal categories, and that a claimed invention must qualify as a subject matter eligible for a patent (for example, a claim must not be directed at a judicial exception The claim as a whole did not include additional limitations amounting to a much greater extent than the exclusion). The section also provides a flowchart that explains how examiners should analyze claims to determine whether they are directed to a patent-qualified subject matter (within Step 1, Step 2a, Tier 1, Step 2a, and Step 2b), and provides a few useful examples. For both eligible and ineligible claims. For example, for AI, MPEP 2106.03 describes products that do not have a physical or tangible form, such as information (often referred to as “data per se”) or a computer program per se (often referred to as “the program for each se”) when claimed as a product without any structural ramifications, it is not directed to any of the legal categories and thus does not mention subject matter eligible for a patent.

MPEP 2181 It provides general guidelines for examining additional means limitations (35 USC 112(f)) in order to avoid an unspecified claim. In these cases, the analysis of the additional means and function may be called using the terms “means” or “step” in the claim, or using the terms “general placeholder” rather than “means” or “step”. To get around this interpretation, the applicant may (i) make a sufficient offer to demonstrate that the claim restriction reads sufficient structure to perform the function required to avoid interpretation under paragraph 112(f); or (ii) modify the claim entries in a way that avoids interpretation under paragraph 112(f) (for example, by listing sufficient structure to perform the function claimed).

MPEP 2173.05 (g) It discusses functional limitations that do not warrant 35 USC 112(f), but can still make claims indefinitely. Under this section, the claim reads the feature of “what it does rather than what it is” (eg, as evidenced by its particular structure or specific components). In contrast to the language of the means and function claim that applies only to purely functional constraints, the functional claim often involves the recitation of some structure followed by its function. For example, the claim might read a cone-shaped faucet (structure) that “allows[ed] Several kernels of popcorn to pass at the same time” (post). The applicant should be careful not to formulate claims that are not specific to list functional limitations.

PTAB and USPTO Petition Decisions Related to Artificial Intelligence

As of the date of the meeting, two resolutions provide a good example of today’s AI patent landscape. The decisions are: Ex parte Hannun (formerly ex parte Linden), 2018-003323 (April 1, 2019)which applies the 2019 Patent Eligible Guidance (PEG) to the method for “improving speech-to-text transcription” of an invention, and in re-application. No. 16/524,350 (“DABUS”), which states that the invention should be restricted to natural persons, not artificial intelligence/machines. Additional details for each case are provided below.

in On the other hand, affectionateThe patent concerned a system and method for improving speech-to-text transcription. The claims were rejected by the PTO examiner because they were not directed to a patent-eligible subject matter. For example, the PTO examiner asserted that the claims were only directed at “mathematical relationship/formula” and also “certain ways of regulating human activity,” while also emphasizing that “since a human can listen to an audio file and transcribe audio data into text data it can be made All mentally.” The applicant appealed, and the Board agreed, that the claim was to a patent-eligible subject matter for several reasons. For example, as part of the Step 2a prong analysis, the Board emphasized that “[w]While transcription can generally be performed by a human, claims here are directed at a specific implementation including steps for normalizing the input file, creating a set of unstable audio files…”The Board also emphasized that”…the claims do not include fundamental principles or economic practices, commercial or legal interactions, and the management of personal behavior or relationships or interactions between people…” so as not to be directed to the abstract notion of “certain ways of regulating human activity.” In addition, the Board emphasized that “the claims are listed using the probabilities of the characters Expected to determine the transcription of the input sound, which the examiner decides, based on the specification, to use a mathematical formula. Namely, the examiner specifies that the specification reveals an algorithm to obtain the expected character probabilities…however, neither the algorithm nor the mathematical formula is listed in the claims.” Although the analysis could have stopped at Step 2A Prong One, the Board saw Also that “current application claims include specific features that are specifically designed to achieve an improved technological outcome” and “provide improvements to this technical area” (under Step 2a Prong II). The Board also addressed the PTO Examiner’s refusal under Step 2B. For example, Examiner concluded The PTO concluded that the claims did not include “any additional elements amounting to far more than a judicial exception” but failed to provide sufficient factual support, thus addressing another inefficiency of the refusal.

in in re-application. No. 16/524,350 (“DABUS”), the plaintiff attempted to claim a machine as an inventor who applied for a patent. For example, the Application Data Sheet (ADS) cited one inventor “DABUS” as the given name and “(Invention Created by Artificial Intelligence)” as the last name. The assignee is listed as “Stephen L. Thaler” (Legal Representative of DABUS). The “Invention Statement” stated that the invention was created by a “creativity machine” called “DABUS” and must be named after the inventor in Application 350. The United States Patent and Trademark Office (USPTO) issued the first notification to file missing parts of the unconditional application that indicated That ADS “does not identify each inventor by his legal name” and $80 for late filing of the inventor’s oath or declaration. The applicant filed a petition under 37 CFR 1.181 requesting a supervisory review of the notice, rescinding the notice for being unjustified and/or invalid. The USPTO then issued a second notice to file the missing parts of the non-provisional application and denied the applicant’s petition. The applicant submitted an application for reconsideration of the decision to reject the applicant’s petition. The USPTO considered that an “inventor” must be a natural person and cannot include machines (for example, neural networks) by reviewing case law, USC sections, and various USPTO rules mentioned in the MPEP, all of which refer to natural persons and pronouns;

Training of examinees on subject eligibility for artificial intelligence

The United States Patent and Trademark Office (USPTO) has published several examiner training materials for examining AI inventions. Examiner training materials are available over here. These training materials specifically cover current guidance on patent subject eligibility (eg, pre-2019 PEG guidelines, post-2019 PEG guidelines, nature and life sciences-based products, and a selection of court decisions).

Special attention is directed to 2019 Example PEG 39, which analyzes a patent claim addressed to a “method to train a neural network for face detection” and asserts that the claim lists a patent-eligible subject matter. For example, the claim’s preamble stated “a computer-implemented method for training a neural network for face detection”. Elements of the claim included:

  • Collect a set of digital facial images from a database;
  • apply one or more transformations to each digital face image, including reflection, rotation, smoothing, or contrast reduction to create a modified set of digital face images;
  • Create an initial training set comprising the assembled set of digital facial images, the modified set of digital facial images, and a set of non-face digital images;
  • Training the neural network in the first stage using the first training set;
  • Create a second training set for a second phase of training consisting of the first training set and non-facial digital images that were incorrectly detected as face images after the first phase of training; And the
  • Training the neural network in a second stage using the second training set.

Under Step 2A Prong One, the USPTO asserted that the claim does not mention any of the jurisdictional exclusions mentioned in the 2019 PEG, so the claim is directed to a patent-eligible subject matter. In particular, 2019 PEG asserts that the claim does not list any mathematical relationships, formulas, or calculations. While some of the limitations may be based on mathematical concepts, the mathematical concepts are not listed in the claims. Moreover, the claim does not narrate a mental process because the steps are practically not performed in the human mind. Finally, the claim does not mention any method of regulating human activity such as the basic economic concept or the management of interactions between people. Thus, the claim qualifies because it does not mention a judicial exception, and the analysis does not move to Step 2a Prong II or Step 2b.

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