By Michael Borella –

Applicants who appeal a § 101 rejection to the Patent Trial and Appeal Board (PTAB) face long odds.  Our annual surveys have put the affirmance rate for examiner eligibility rejections at roughly seven out of eight, year after year, and Technology Center 3600 has historically been one of the least hospitable places on earth for a software-adjacent claim.[1]  So when the PTAB reverses a § 101 rejection out of Art Unit 3662, it is worth a look to see what went right for the Applicant.  The short answer, in Ex parte Martineau, is that nothing in particular went right on the merits.  Instead, the Examiner went wrong on the procedure, and the PTAB declined to paper over it.

In Alice v. CLS Bank Int’l, the Supreme Court set forth its now-familiar two-part test for patent eligibility under 35 U.S.C. § 101.  One first asks whether the claim is directed to a judicial exception, such as an abstract idea.  If so, one then asks whether any additional element or combination of elements supplies an “inventive concept” sufficient to transform the claim into something significantly more than the exception itself.  The USPTO has overlaid its own structure on top of this test by way of its 2019 Revised Patent Subject Matter Eligibility Guidance, now baked into the MPEP.  Under that framework, Alice step one is split into Step 2A Prong One (does the claim recite a judicial exception?) and Step 2A Prong Two (is the exception integrated into a practical application?), while Alice step two becomes Step 2B (do the additional elements amount to significantly more?).  The distinctions among these steps are not academic, as this case demonstrates.

The Claimed Invention

The application is directed to methods and devices for predictive maintenance of components of a road vehicle.  Claim 1 reads as follows:

A method for predictive maintenance of a plurality of components of a road vehicle, each of the components being connected to a computer, the road vehicle comprising a predictive maintenance display unit connected to the computer, the method comprising:

identifying, by operation of the computer, a plurality of predetermined wear parameters, each of which represents wear of a given one of the components, each of the wear parameters taking a value in a predetermined range of wear values corresponding to the component with which a given said wear parameter is associated,

dividing each said predetermined range of wear values, by operation of the computer, into a plurality of predetermined wear value intervals,

combining, by operation of the computer, at least some of the wear value intervals associated with a first of the components with at least some of the wear value intervals associated with a second of the components, according to a first predetermined combination pattern, so as to obtain a plurality of intervals of combination of wear parameters,

determining, by operation of the computer, a duration of use of each said interval of combination of wear parameters as a function of at least one distance traveled by the road vehicle, so as to obtain a determined wear profile,

comparing the determined wear profile, by operation of the computer, with a predetermined wear profile, and

giving a warning, by operation of the computer, via the predictive maintenance display unit upon detecting that the determined wear profile diverges from the predetermined wear profile.

In other words, the claim builds a wear profile for a vehicle’s components from per-component wear intervals and usage duration, compares that profile to a baseline, and triggers a warning on a dashboard-style display unit when the two diverge.  Based on the aggressive way that Alice has been applied to claims with similar language, one can see why an examiner in 3600 might reach for § 101.

The Examiner’s Rejection

And reach the Examiner did.  Claim 1 was rejected under § 101 as directed to patent-ineligible subject matter.  Under Step 2A Prong One, the Examiner concluded that “taken as a whole, the recited process [of the claims] is considered an abstract idea.”  Under Step 2A Prong Two, the Examiner determined that additional elements such as a computer, a predictive maintenance display, and sensors were recited at a high level of generality and did nothing more than what a generic computer, display, or sensor components “that are routine, well understood features of the art would enable.”  The Examiner went on to characterize the recited warning as encompassing, under its broadest reasonable interpretation, ordinary dashboard indicator lights, which the Examiner deemed routine in the art.  Under Step 2B, the Examiner concluded for the same reasons that the additional elements did not amount to significantly more than the judicial exception.

The PTAB’s Decision

The PTAB reversed the Examiner.  Notably, it did not hold that the claims are eligible.  It held that the Examiner failed to adequately show that they are not, and it found reversible error at all three steps.

Starting with Step 2A Prong One, the PTAB faulted the Examiner for reaching a conclusion about what the claims are directed to before completing the Prong Two analysis.  As the PTAB explained, Step 2A is a two-prong inquiry, and it is the two prongs together that determine whether a claim is directed to a judicial exception.  Even assuming some claim elements recite an abstract idea, that does not end the matter.

The more substantial problem arose at Step 2A Prong Two.  Here the Examiner asked whether the additional elements were well-understood, routine, and conventional.  That is the wrong question for this step.  As the MPEP makes clear, Step 2A specifically excludes consideration of whether the additional elements represent well-understood, routine, conventional activity.  Indeed, the Guidance instructs examiners that additional elements may integrate a judicial exception into a practical application even if those elements are themselves conventional, because the relevant inquiry is whether the claim improves the relevant existing technology, not whether it improves over routine activity.  The Examiner, in short, imported a Step 2B question into a Step 2A analysis.  The PTAB also observed that the rejection went so far as to quote from Alice step two while purporting to apply step one, when the proper Prong Two inquiry asks whether the claims focus on a specific means or method that improves the relevant technology or are instead directed to a result that is itself the abstract idea.

Compounding matters, the PTAB noted that the Examiner never performed the analysis that Prong Two actually requires.  The Applicant pointed to specific asserted improvements to vehicle maintenance technology, including enabling predictive rather than reactive maintenance through real-time monitoring and reducing unexpected component failures through early warning.  Under the Guidance, the Examiner was obligated to look to the specification to determine whether it provides sufficient detail that one of ordinary skill would recognize the claimed invention as an improvement, and then to evaluate whether the claims reflect that disclosed improvement.  The PTAB could not find that analysis in the record.

Step 2B fared no better, and here the defect is the familiar one from Berkheimer v. HP.  A conclusion that an additional element is well-understood, routine, and conventional is a factual determination, and it must be expressly supported in writing by one of the four forms of evidence the MPEP enumerates: a citation to the specification or to an applicant statement, a citation to one of the court decisions recognizing the conventional nature of the element, a citation to a publication, or a statement of official notice.  The Examiner asserted that the additional elements were well-understood, routine, and conventional but supported the assertion with none of the four.  As the PTAB put it, the Examiner failed to provide the requisite factual determinations to support the Step 2B conclusion.

Because the rejection failed to follow Office guidance at both Step 2A and Step 2B, the PTAB held that the Examiner had not adequately articulated why the claims are patent ineligible, and it reversed the rejection of all claims on appeal.[2]

Analysis

It would be easy to read Ex parte Martineau as a substantive win for predictive-maintenance claims, but that reading would be too generous.  The PTAB did not decide that the claims were eligible.  What it decided is narrower and, in its way, more useful – that an examiner cannot sustain a § 101 rejection by blurring the steps of the Office’s own framework together and asserting conventionality without evidence.

Three lessons stand out for practitioners.  First, the boundary between Step 2A and Step 2B is important, and examiners cross it more often than one might expect.  When a Prong Two rejection turns on whether the additional elements are routine and well understood, the rejection has wandered into Step 2B territory and is vulnerable on that basis alone.  Second, Berkheimer still has teeth at the PTAB, at least where the examiner makes no attempt to satisfy it.  A bare assertion that a computer, a display, or a dashboard light is conventional, untethered to any of the four enumerated forms of support, is not a factual finding.  Third, and most practically, the Applicant here gave the PTAB something to work with by articulating concrete technological improvements in the specification and the briefing.  Prong Two rewards that kind of record, and its absence is what the PTAB found missing in the examiner’s rationale.

None of this fixes the larger problem, of course.  The reason an examiner can run all three steps together and still issue a rejection that survives until appeal is that the underlying jurisprudence supplies so little discipline that the Office’s framework is doing most of the work.  When applicants prevail at the PTAB on § 101, it is frequently not because anyone has clarified what an abstract idea is, but because the examiner failed to follow the procedural guardrails the Office erected precisely because the case law would not. Ex parte Martineau is a clean example of the genre.  This decision can be helpful when you are dealing with an examiner who takes shortcuts in their § 101 rejections.[3]

Decision on Appeal
Panel: Administrative Patent Judges Horner, Jung, and Jeschke
Decision by Administrative Patent Judge Horner

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[1] See Michael Borella & Ashley Hatzenbihler, Think Twice About Appealing a § 101 Rejection to the PTAB, Patent Docs (Sept. 13, 2022), https://patentdocs.org/2022/09/13/think-twice-about-appealing-a-101-rejection-to-the-ptab/ (reporting an 87.1% affirmance rate for 2021); Michael Borella, PTAB Remains Hostile to Section 101 Appeals, Patent Docs (Feb. 1, 2023), https://www.patentdocs.org/2023/01/ptab-remains-hostile-to-section-101-appeals.html (88.4% for 2022); Michael Borella, Mackenna Dunn, & Garrett “Jake” Lee, 91%: That is the Rate at Which the PTAB Affirms Examiner Section 101 Rejections, Patent Docs (Aug. 12, 2024), https://patentdocs.org/2024/08/12/91-that-is-the-rate-at-which-the-ptab-affirms-examiner-section-101-rejections/ (91% for 2023); Michael Borella & Walter DeGroft, PTAB § 101 Appeal Stats for 2024: The More Things Stay the Same, the Worse They Remain, Patent Docs (Aug. 25, 2025), https://patentdocs.org/2025/08/25/ptab-101-appeal-stats-for-2024-the-more-things-stay-the-same-the-worse-they-remain/ (88.6% for 2024).

[2] As of this writing, the application has been returned to the examiner who has yet to take any further action on it.

[3] A glance at the examiner’s analytics supplies some useful context for how this rejection came to be. The examiner who issued it carries an allowance rate of roughly 43%, against an art unit average of about 82%. That is not a rounding error. It means an application drawn to this examiner is allowed at a little more than half the rate of the art unit as a whole. This serves as a tidy illustration of a point we have made before, that prosecution under § 101 can be far more a function of which examiner one draws than of the claim language actually at issue.