Petition : CAFC Alert


| May 21, 2020

In re Application of Application No. 16/524,350 (“Devices and Methods for Attracting Enhanced Attention”)

April 27, 2020

Robert W. Bahr (Deputy Commissioner for Patent Examination Policy)


The PTO denied a petition to vacate a Notice to File Missing Parts of Nonprovisional Application because an AI machine cannot be listed as an inventor based on the relevant patent statutes, case laws from the Federal Circuit, and the relevant sections in the MPEP.  The PTO did not find the petitioner’s policy arguments persuasive. 


            This application was filed on July 29, 2019.  Its Application data sheet (ADS) included a single inventor with the given name “DABUS[1]” and the family name “Invention generated by artificial intelligence.”  The ADS identified the Applicant as the Assignee “Stephen L. Thaler.”  Also, a substitute statement (in lieu of declaration) executed by Mr. Thaler was submitted, and an assignment document executed by Mr. Thaler on behalf of both DABUS and himself was submitted.  Finally, an “Inventorship Statement,” which stated that the invention was conceived by “DABUS” and it should be named as the inventor, was also submitted.

            Afterward, the PTO issued a first Notice to File Missing Parts on August 8, 2019, which indicated that the ADS “does not identify each inventor by his or her legal name,” and an surcharge of $80 is due for late submission of the inventor’s oath or declaration.

            Mr. Thaler filed a petition on August 29, 2019, requesting supervisory review of the first Notice. 

            The PTO issued a second Notice to File Missing Parts on December 13, 2019.  The PTO dismissed the petition filed on August 29, 2019 in a decision issued on December 17, 2019.

            Mr. Thaler filed a second petition on January 20, 2020, requesting reconsideration of the decision issued on December 17, 2019.

Relevant Statutes cited by the PTO

            35 U.S.C. §100(f):

The term “inventor” means the individual or, if a joint invention, the individuals collectively who invented or discovered the subject matter of the invention.

            35 U.S.C. §100(g):

The terms “joint inventor” and “coinventor” mean any 1 of the individuals who invented or discovered the subject matter of a joint invention.

            35 U.S.C. §101:

Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

            35 U.S.C. §115(a):

An application for patent that is filed under section 111 (a) or commences the national stage under section 371 shall include, or be amended to include, the name of the inventor for any invention claimed in the application. Except as otherwise provided in this section, each individual who is the inventor or a joint inventor of a claimed invention in an application for patent shall execute an oath or declaration in connection with the application

            35 U.S.C. §115(b):

An oath or declaration under subsection (a) shall contain statements that … such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.

            35 U.S.C. §115(h)(1):

Any person making a statement required under this section may withdraw, replace, or otherwise correct the statement at any time.

The PTO’s reasoning

            Citing the above statutes, the PTO found that the patent statutes preclude the petitioner’s broad interpretation that an “inventor” could be construed to cover machines.  That is, the PTO asserted that such broad interpretation could contradict the plain reading of the patent statutes.

            The PTO also cited the case law from the Federal Circuit to dismiss the petitioner’s argument.  For example, in Univ. of Utah v. Max-Planck-Gesellschajt zur Forderung der Wissenschajten e. V (734 F.3d 1315 (Fed. Cir. 2013), the CAFC held that a state could not be an inventor.  In Beech Aircraft Corp. v. EDO Corp. (990 F.2d 1237 (Fed. Cir. 1993), the CAFC held that “only natural persons can be ‘inventor.’”

            Furthermore, the PTO cited the relevant sections in the MPEP to support their position.  The PTO indicated that the MPEP defines “conception” as “the complete performance of the mental part of the inventive act” and it is “the formation in the mind of the inventor of a definite and permanent idea of the complete and operative invention as it is thereafter to be applied in practice.”  The PTO asserted that the use of terms such as “mental” and “mind” indicates that conception must be performed by a natural person.

            The PTO rejected the petitioner’s argument that the PTO should take into account the position adopted by the EPO and the UKIPO that DABUS created the invention, but DABUS cannot be named as the inventor.  The PTO indicated that the EPO and the UKIPO are interpreting and enforcing their own laws. 

            The PTO also rejected the petitioner’s argument that inventorship should not be a substantial condition for the grant of patents by arguing that “inventorship has long been a condition for patentability.”  The PTO rejected the notion that the granting of a patent for an invention that covers a machine does not mean that the patent statutes allow that machined to be listed as an inventor in another patent application.

            Finally, the petitioner provided some policy considerations to support his position: (1) this would incentivize innovation using AI systems, (2) would reduce the improper naming of persons as inventor who do not qualify as inventors, and (3) would inform the public of the actual inventors of an invention.  The PTO rejected the petitioner’s policy considerations by arguing that they do not overcome the plain language of the patent statutes. 


  • At this point, it appears that it is not possible to list an AI machine as an inventor in the U.S. patent applications.  The EPO reached a similar decision in December.  It is known that the Japanese Patent Act and the Korean Patent Act do not include an explicit definition of an inventor.  Also, the Chinese State Council called for “better IP protections to promote AI.”
  • Congress needs to work on this issue because the patent system is in place to incentive innovation in technology, and eventually, increase investment for more jobs.
  • A lack of patent protection for inventions developed by AI would decrease investment in the development and use of AI.
  • However, there is a concern, among other things, that the PTO may not be able to deal with situations where AI created enormous amount of prior arts to be reviewed by the Examiners.
  • Human programmer of AI or the one who defined the task of AI machine could be listed as the named inventor. 

[1] DABUS stands for “Device for Autonomous Bootstrapping of Unified Sentience.”  Mr. Thaler asserts that DABUS is a creativity machine programmed as a series of neural networks that have been trained with general information in the field of endeavor to independently create invention.  In addition, Mr. Thaler asserts that this machine was “not created to solve any particular problem and not trained on any special data relevant to the instant invention.”  Furthermore, Mr. Thaler asserts that this machine recognized “the novelty and salience of the instant invention.”


| February 5, 2020

Koninklijke Philips N.V. v. Google LLC, Microsoft Corporation, Microsoft Mobile Inc.

January 30, 2020


The Federal Circuit affirmed the PTAB’s final decision that claims of Philips’ ‘806 patent are unpatentable as obvious.  The Federal Circuit held that the PTAB did not err in relying on general knowledge to supply a missing claim limitation in the IPR if the PTAB relied on expert evidence corroborated by a cited reference.  The Federal Circuit also held that the PTAB did not have discretion to institute the IPR on the grounds not advanced in the petition.


The ‘806 Patent

            Philips’ ‘806 patent is directed to solving a conventional problem where the user cannot play back the digital content until after the entire file has finished downloading.  Also, the ‘806 patent states that streaming requires “two-way intelligence” and “a high level of integration between client and server software,” thereby excluding third parties from developing software and applications.

            The ‘806 patent offers a solution that reduces delay by allowing the media player download the next portion of a media presentation concurrently with playback of the previous portion.

            Representative claim 1 of the ‘806 patent:

1.  A method of, at a client device, forming a media presentation from multiple related files, including a control information file, stored on one or more server computers within a computer network, the method comprising acts of:

downloading the control information file to the client device;

the client device parsing the control information file; and based on parsing of the control information file, the client device:

identifying multiple alternative flies corresponding to a given segment of the media presentation,

determining which files of the multiple alternative files to retrieve based on system restraints;

retrieving the determined file of the multiple alternative files to begin a media presentation,

wherein if the determined file is one of a plurality of files required for the media presentation, the method further comprises acts of:

concurrent with the media presentation, retrieving a next file; and

using content of the next file to continue the media presentation.


            Google filed a petition for IPR with two grounds of unpatentability.  First, claims of the ‘806 patent are anticipated by SMIL 1.0 (Synchronized Multimedia Integration Language Specification 1.0).  Second, claims of the ‘806 patent would have been obvious in view of SMIL 1.0 in view of the general knowledge of the skilled artisan regarding distributed multimedia presentation systems as of the priority date.  Google cited Hua (2PSM: An Efficient Framework for Searching Video Information in a Limited-Bandwidth Environment, 7 Multimedia Systems 396 (1999)) and an expert declaration to argue that pipelining was a well-known design technique, and that a skilled artisan would have been motivated to use pipelining with SMIL.

            The PTAB instituted review on three grounds (including two grounds raised by Google and additional ground).  In other words, the PTAB exercised its discretion and instituted an IPR on the additional ground that claims would have been obvious over SMIL 1.0 and Hua based on the arguments and evidence presented in the petition.

            In the final decision, the PTAB concluded that while Google had not demonstrated that claims were anticipated, Google had demonstrated that claims would have been obvious in view of SMIL 1.0 and that they would have been obvious in view of SMIL 1.0 in view of Hua as well.


            First, the CAFC held that the PTAB erred by instituting IPR reviews based on a combination of prior art references not presented in Google’s petition.  Citing 35 U.S.C. § 314(b) (“[t]he Director shall determine whether to institute an inter partes review . . . pursuant to a petition”), the CAFC held that it is the petition, not the Board’s discretion, that defines the metes and bounds of an IPR. 

            Second, the CAFC held that while the prior references that can be considered in IPR are limited patents and printed publications only, it does not mean that the skilled artisan’s knowledge should be ignored in the obviousness inquiry.  Distinguishing this case from Arendi (where the CAFC held that the PTAB erred in relying on common sense because such reliance was based merely upon conclusory statements and unspecific expert testimony), the CAFC held that the PTAB correctly relied on expert evidence corroborated by Hua in concluding that pipelining is within the general knowledge of a skilled artisan.

            Third, with regard to Philips’ arguments that the PTAB’s combination fails because the basis for the combination rests on the patentee’s own disclosure, the CAFC held that the PTAB’s reliance on the specification was proper and that it is appropriate to rely on admissions in the specification for the obviousness inquiry.  The CAFC held that the PTAB supported its findings with citations to an expert declaration and the Hua reference.  Therefore, the CAFC found that the PTAB’s factual findings underlying its obviousness determination are supported by substantial evidence.

            Accordingly, the CAFC affirmed the PTAB’s final decision that claims of the ‘806 patent are unpatentable as obvious.        


  • In the obviousness analysis, the general knowledge of a skilled artisan could be used to supply a missing claim limitation from the prior art with expert evidence.
  • Patentee’s own disclosure and admission in the specification could be used in the obviousness inquiry.  Patent drafters should be careful about what to write in the specification including background session.
  • Patent owners should check whether the PTAB instituted IPR on the grounds not advanced in the IPR petition because the PTAB does not discretion to institute IPR based on grounds not advanced in the petition.

CBM Petitions – Second Chances Can Be Tough

| June 17, 2015 L.P., Inc., and Expedia, Inc. v. Cronos Technologies, LLC (Case CBM2015-00047)

June 15, 2015

Before:  Jennifer S. Bisk, James B. Arpin, and Lynne E. Pettigrew, Administrative Patent Judges.  Opinion by Arpin.


The Patent Trial & Appeal Board (“PTAB”) decided not to institute a covered business method patent review (“CBM”) of any challenged claim of U.S. Pat. No. 5,664,110 (“the ‘110 patent”).  Travelocity, Priceline, and Expedia’s (“Petitioner”) joint request was denied because the Petition included “substantially similar arguments presented and the same references applied” in CBM2014-00082, an earlier Petition filed by Petitioner that was denied by the PTAB.

The PTAB expressly cautioned against taking a “second bite at the apple” and remarked that “a decision on a petition for covered business method review is not simply part of a feedback loop by which a petitioner may perfect its challenges through subsequent filings.”

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