Arguing Section 101 rejections is still as much an art as a science. Today we review a Phillips invention related to a patient monitor. The Appellant’s invention relates to a capnography apparatus for monitoring the end-tidal CO2 (etCO2) which conceptually is the CO2 partial pressure at the end of the exhalation phase. Appeal 2021-004451, Application 15/751,253. Claim 1 is reproduced below:

1. A capnograph device comprising:
[a] a carbon dioxide measurement component configured to measure respiratory carbon dioxide level; and
[b] an electronic processor programmed to:
[i] generate a capnogram signal comprising respiratory carbon dioxide level measured by the
carbon dioxide measurement component as a function of time; and
[ii] compute an end-tidal carbon dioxide (etCO2 ) signal as a function of time by operations including performing a sliding window maximum operation on the capnograph signal wherein the sliding window maximum operation employs a sliding time window (W) encompassing several breaths and computes the etCO2 signal as a maximum value of the capnogram signal within the sliding window.

The PTAB rigorously follows the steps as laid out in the guidance:

1. STEP 2A, Prong 1

2. STEP 2A, Prong 2

3. STEP 2B.

STEP 2A, Prong 1: 101 rejection by the examiner asserted that the claim recited the mathematical calculation in limitation [b][ii], which could be done mentally by looking at the signal within the sliding window. Further, the examiner asserted the other elements ([a] and [b][i]) were mere extra-solution activity. The guidance specifically endorses this approach by noting that if “a claim, under its broadest reasonable interpretation, covers performance in the mind but for the recitation of generic computer components, then it is still in the mental processes category unless the claim cannot practically be performed in the mind.” Phillips tried to argue that the claim was to a device, but such arguments have little chance based on the current Section 101 jurisprudence and the PTAB dismissed it quickly - “We are not persuaded by Appellant’s arguments because such arguments are not commensurate with Step 2A, Prong 1…”

STEP 2A, Prong 2 (integrated into a practical application): This is where the applicant has a shot if they can put together a convincing line of reasoning tied to specific claim elements and solving a technical problem. Phillips argued that the alleged abstract idea was integrated into a specific device (capnograph device). However, the PTAB was unconvinced.

We are not persuaded by Appellant’s arguments because the question here is whether the claims as a whole “focus on a specific means or method that improves the relevant technology” or are “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1314 (Fed. Cir. 2016). In this case, Appellant’s claim 1 is distinguished from those claims that our reviewing court has found to be patent eligible by virtue of reciting technological improvements to a computer system because claim 1 employs generic elements, such as, the “carbon dioxide measurement component” and the “electronic processor,” to implement the abstract idea without any improvement to the capnograph device itself. Stated differently, the judicial exception is not integrated into a practical application because the “carbon dioxide measurement component” and the “electronic processor” represent generic elements

Appellant’s disclosure makes clear that the recited “carbon dioxide measurement component” and “electronic processor” are generic components, do not invoke particular hardware or software, and are described by their function (e.g., measuring, generating/processing, computing). See FairWarning IP, LLC v. Iatric Sys., Inc., 839 F.3d 1089, 1096 (Fed. Cir. 2016) (“[T]he use of generic computer elements like a microprocessor or user interface do not alone transform an otherwise abstract idea into patent-eligible subject matter.”). For example, the “carbon dioxide measurement component” is to “measure respiratory carbon dioxide level,” and, the “electronic processor,” is to “generate a . . . signal” and to “compute an end-tidal carbon dioxide (etCO2 ) signal.” See Spec. 1, ll. 27– 31. Thus, Appellant does not persuasively explain why the additional elements discussed supra are other than known machinery that perform an existing process.

* * *

As such, for the foregoing reasons, we determine that claim 1 of Appellant’s invention: (1) does not improve the functioning of a computer or other technology; (2) is not applied with any particular machine; (3) does not effect a transformation of a particular article to a different state; and (4) is not applied in any meaningful way beyond generally linking the use of the judicial exception to a particular technological environment.

Thus, relying on the claimed device could not avoid the examiner’s determination that the claims recited an abstract idea and that idea was not integrated into a practical application.

STEP 2B: Here, the applicant has little chance as the specification showed that the CO2 measurement component and processor were known, standard, components.

It is very difficult to overcome Section 101 rejections at the PTAB. If all that one has is the argument that the abstract idea of a mathematical calculation is integrated into a known device, even if that device is quite specific, the chances of success remain low.