All Things Pros

Patent Board extends software per se, printed matter doctrines to reject computer-readable media (CRM) claims

noreply@blogger.com (Unknown) — Wed, 09 May 2018 07:34:00 +0000

Takeaway: Bucking decades of settled precedent and USPTO guidance, the Patent Board rejected claims reciting computer-readable media (CRM) as subject-matter ineligible software per se and printed matter, even as it reversed Alice rejections of the same claims.

Note: This is the second of two posts covering the same PTAB decision. For the other, see "IBM wins reversal of Alice rejections for targeted ad delivery at airports".

Details:

Ex parte Musial
Appeal No. 2017-001164; Application No. 13/396,177; Tech. Center 3600
Decided: Apr. 30, 2018

Inventors for IBM filed an application relating to "a computer implemented method, data processing
system, and computer program product for . . . distributing advertisements to receptive audiences", and more specifically captive audiences sitting in airport terminals waiting to board their flights, or aboard airplanes waiting to take off or deboard. The Board reproduced rejected independent claim 14 as representative:

14. A computer program product for selecting an advertisement, the computer program product comprising:
a computer readable non-transitory medium having computer readable program code stored thereon, the computer readable program code comprising:
program instructions to receive a first check-in corresponding to at least one person, wherein the first check-in is a indication of presence relative to an airport gate servicing a flight and the first check-in is received from a kiosk;
program instructions to receive a second check-in to form an aggregation of people, wherein the second check-in is a indication of presence relative to the airport gate servicing the flight;
program instructions to characterize the aggregation based on cumulative characteristics selected of at least one vital statistic of each person checking-in to form an aggregated population characteristic;
program instructions to receive flight details concerning the flight, wherein the flight details comprise a flight destination, and the advertisement concerns a service provider at the flight destination;
program instructions to select at least one advertisement based on the aggregated population characteristic and the flight details, in response to the second check-in;
program instructions to receive a check-out of at least one person, wherein the check-out comprises reading an identifier of an at least one person who departs;
program instructions to select at least one advertisement based on the aggregated population characteristic;
program instructions to second characterize the aggregation based on the cumulative characteristics to form a second cumulative characteristic based on the aggregation without at least one vital statistic corresponding to the at least one person who departs, wherein the program instructions to select at least one advertisement based on the aggregated population characteristic perform to select the at least one advertisement is based on the second cumulative characteristic;
program instructions to select at least one advertisement based on the second cumulative characteristic, and a destination of the flight details, wherein the destination is stated within the at least one advertisement;
program instructions to dispatch the at least one advertisement; and
program instructions to detect presence of a service vehicle associated with a flight near and outside an aircraft associated with the flight, wherein the detecting presence relies on at least one global positioning satellite (GPS) signal received at the service vehicle and reported as location data to the hardware processor, wherein program instructions to dispatch comprises instructions to dispatch the at least one advertisement to the service vehicle for rendering and such dispatching is responsive to detecting presence of the service vehicle.

(Emphasis added.) The examiner rejected the claims as subject-matter ineligible under the Alice framework and its judicially-made exceptions to 35 U.S.C. § 101, but the Board reversed those rejections, and entered new grounds of rejection, finding the claims to be subject-matter ineligible as "directed to software per se and, thus, are not within one of the four classes of statutory subject matter", and also as "a mere arrangement of 'printed matter' and merely claiming the content of 'printed' information."

My two cents:

There are a couple of ways to read this surprising decision, but either interpretation leads to the conclusion of egregious Board error. In the first and more generous interpretation of what happened in Musial's new grounds, the Board got distracted by the description in the specification and overlooked the limitations of the claims. This would explain why the Board devotes ink to two long footnotes (notes 4 and 5) quoting portions of the specification allegedly supportive of a software per se interpretation, including, among other selections, language providing that "one or more embodiments may take the form of . . . an entirely software embodiment." Although specification language may be used to construe or define claim terms, it would be an obvious misapplication of the law if the Board looked to the specification to override and effectively delete limiting language in the claims, in this case, the language specifying that the computer program product comprised a computer readable non-transitory medium having computer readable program code stored thereon. Recitation of computer-readable media (specified as non-transitory in compliance with the prohibition of claiming transitory signals per se, as discussed in In re Nuijten, 500 F.3d 1346, 1356-57 (Fed. Cir. 2007)) suffices to avoid a software per se rejection, as discussed below. The applicants' casting of the claims in CRM form must be seen as an express disclaimer of any broader scope inclusive of software per se, even if such may be described in the specification.

The theory that the Board simply got distracted by spec language is also difficult to reconcile with the Board's express finding that "the 'computer readable non-transitory medium' as claimed . . . also does not exclude it being software [per se]." Except that it does; see, e.g., MPEP § 2111.05(III); Ex parte Kouznetsov, No. 2007-003470 (B.P.A.I. June 30, 2008) (“When functional descriptive material is recorded on some computer-readable medium, it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized.”). The Board makes this conclusory declaration without any reasoning or citation to established law. Indeed, the Board's decision goes against established law, the MPEP, and published USPTO guidance. Thus, the second reading of the Board's decision is that it was made in ignorance.

The Board's new grounds of rejection cannot be reconciled with the ultimate outcome of the trilogy of mid-'90s Federal Circuit cases of In re Warmerdam, 33 F.3d 1354 (Fed. Cir. 1994), In re Lowry, 32 F.3d 1579 (Fed. Cir. 1994), and In re Beauregard, 53 F.3d 1583 (Fed. Cir. 1995), of which discussion can be found in the journal article by Vincent Chiappetta, Patentability of Computer Software Instruction as an 'Article of Manufacture": Software as Such as The Right Stuff, 17 J. Marshall J. Computer & Info. L. 89 (1998). These cases culminated in the February 1996 USPTO Examination Guidelines for Computer-Related Inventions. These guidelines state, with regard to functional descriptive material:

[C]omputer programs claimed as computer listings per se, i.e., the descriptions or expressions of the programs, are not physical "things," nor are they statutory processes, as they are not "acts" being performed. Such claimed computer programs do not define any structural and functional interrelationships between the computer program and other claimed aspects of the invention which permit the computer program's functionality to be realized. In contrast, a claimed computer-readable medium encoded with a computer program defines structural and functional interrelationships between the computer program and the medium which permit the computer program's functionality to be realized, and is thus statutory. Accordingly, it is important to distinguish claims that define descriptive material per se from claims that define statutory inventions.
Computer programs are often recited as part of a claim. Office personnel should determine whether the computer program is being claimed as part of an otherwise statutory manufacture or machine. In such a case, the claim remains statutory irrespective of the fact that a computer program is included in the claim. The same result occurs when a computer program is used in a computerized process where the computer executes the instructions set forth in the computer program. Only when the claimed invention taken as a whole is directed to a mere program listing, i.e., to only its description or expression, is it descriptive material per se and hence non-statutory.

(Emphases added.) These guidelines were published after Beauregard, wherein the USPTO finally ceded the issue and recognized that claims reciting software embodied on a tangible medium constituted patent-eligible subject matter. The '90s trilogy led to the evolution of the distinction between functional and non-functional descriptive material; even as late as Beauregard, software, despite being functional, was being rejected under the printed matter doctrine. As the Federal Circuit found earlier in Lowry, "the printed matter cases have no factual relevance where 'the invention as defined by the claims requires that the information be processed not by the mind but by a machine, the computer.'" 32 F.3d at 1583 (citing In re Bernhart, 417 F.2d 1395, 1399 (C.C.P.A. 1969), having an identical holding) (emphasis in original). Lowry's claim 1 read as follows:

1. A memory for storing data for access by an application program being executed on a data processing system, comprising:
a data structure stored in said memory, said data structure including information resident in a database used by said application program and including:
a plurality of attribute data objects stored in said memory, each of said attribute data objects containing different information from said database;
  a single holder attribute data object for each of said attribute data objects, each of said holder attribute data objects being one of said plurality of attribute data objects, a being-held relationship existing between each attribute data object and its holder attribute data object, and each of said attribute data objects having a being-held relationship with only a single other attribute data object, thereby establishing a hierarchy of said plurality of attribute data objects;
  a referent attribute data object for at least one of said attribute data objects, said referent attribute data object being nonhierarchically related to a holder attribute data object for the same at least one of said attribute data objects and also being one of said plurality of attribute data objects, attribute data objects for which there exist only holder attribute data objects being called element data objects, and attribute data objects for which there also exist referent attribute data objects being called relation data objects; and
  an apex data object stored in said memory and having no being-held relationship with any of said attribute data objects, however, at least one of said attribute data objects having a being-held relationship with said apex data object.

(Emphasis added.) With regard to this broadest claim, the Federal Circuit concluded:

More than mere abstractions, the [claimed] data structures are specific electrical or magnetic structural elements in memory. . . . [They] provide tangible benefits: data stored in accordance with the claimed data structures are more easily accessed, stored and erased. . . . [They] are physical entities that provide increased efficiency in computer operation. They are not printed matter. The Board is not at liberty to ignore such limitations.

Id. at 1583-84. In other words, Lowry's claims related to the physical organization imparted to the data in the memory, and not data in the abstract. Id. at 1583.

In Beauregard, the solicitor didn't even bother to defend the Board's affirmance of the examiner's rejection of computer program product claims as printed matter. The solicitor averred before the Federal Circuit "that computer programs embodied in a tangible medium, such as floppy diskettes, are patentable subject matter under 35 U.S.C. § 101". The CAFC appeal was withdrawn without a fight, and the February 1996 Guidelines were issued a few months later. The USPTO position as to functional descriptive material was repeated in the November 2005 Interim Guidelines for Examination of Patent Applications for Patent Subject Matter Eligibility ("When functional descriptive material is recorded on some computer-readable medium it becomes structurally and functionally interrelated to the medium and will be statutory in most cases since use of technology permits the function of the descriptive material to be realized."). CRM claims came to be known as "Beauregard claims". Although § 101 law as a whole has evolved considerably since the time of the February 1996 and November 2005 Guidelines, particularly with the Supreme Court's judicial-exception decisions in Bilski, Mayo, and Alice, that evolution is not pertinent in the present consideration rejecting Beauregard claims as software per se, since the Board found the claims not to be ineligible under the framework that evolved from the abstract-idea cases.

It's also notable that the Board made the software per se new grounds of rejection despite the claims being amended, immediately prior to appeal, specifically to recite the "computer readable non-transitory medium" by examiner request and with examiner assurance, in an interview, that such language constitutes the preferred phrasing.

As alluded to above, the Board's rejection of the claims under the "printed matter" doctrine (or what is modernly and more accurately termed "nonfunctional descriptive material" doctrine) is as flawed as the rejection of the claims as software per se. As explained in the "informative" Board decision of Ex parte Mathias, No. 2005-1851, 84 USPQ2d 1276, 1278-79 (B.P.A.I. Aug. 10, 2005),

[c]ommon situations involving nonfunctional descriptive material are:
- a computer-readable storage medium that differs from the prior art solely with respect to nonfunctional descriptive material, such as music or a literary work, encoded on the medium,
- a computer that differs from the prior art solely with respect to nonfunctional descriptive material that cannot alter how the machine functions (i.e., the descriptive material does not reconfigure the computer), or
- a process that differs from the prior art only with respect to nonfunctional descriptive material that cannot alter how the process steps are to be performed to achieve the utility of the invention

None of these scenarios are applicable here in Musial. The Board in the present case cites to In re DiStefano, 808 F.3d 845 (Fed. Cir. 2015), in support of its finding that the claimed CRM computer program product constitutes printed matter, but DiStefano does not support the Board's conclusion; on the contrary, the CAFC in DiStefano vacated a Board finding that web assets amounted to printed matter. "The common thread amongst all" printed matter cases, the reviewing court explained, "is that printed matter must be matter claimed for what it communicates", and the content of the information was not being claimed in DiStefano. In re Miller, 418 F.2d 1392 (C.C.P.A. 1969), also cited by the Board in the present case, likewise was a court reversal of a Board decision of unpatentability, and fails to support the Board's contention that the CRM claims are printed matter.

It is, of course, not correct to say that the nonfunctional descriptive material doctrine never applies to software claims. When the doctrine is properly applied, an isolated feature at the point of novelty is shown to be descriptive rather than functional. Mathias presents the classic case, wherein, in a claim directed to an "on-screen icon", the recited sporting event icon was "non-functional descriptive material [that] cannot lend patentability to an invention that would have otherwise been anticipated by the prior art." As a sampling of representative cases, one can point to, e.g., Ex parte Curry, No. 2005-0509, 84 USPQ2d 1272 (B.P.A.I. June 30, 2005); Ex parte Nehls, No. 2007-1823, 88 USPQ2d 1883, 1887-89 (B.P.A.I. Jan. 28, 2008) (precedential); Ex parte Kerr, No. 2009-013183 (P.T.A.B. Dec. 26, 2012); Ex parte Okamoto, No. 2012-000836 (P.T.A.B. Jan. 23, 2013); Ex parte Gooch, No. 2010-008687 (P.T.A.B. July 26, 2013); Ex parte Sen, No. 2011-006544 (P.T.A.B. Dec. 23, 2013); Ex parte Sharma, No. 2010-011909 (PT.A.B. June 7, 2013). However, the Board in Musial fails to explain how any of these cases are relevant or how the point-of-novelty feature (if any single one can be pointed to) amounts to matter that is purely nonfunctional and descriptive. Consequently, the rejection of the claims as printed matter is misplaced.

Generally, when the Board suspects a new reason for unpatentability but would prefer not to do the heavy lifting of demonstrating it with reasoned explanation in its opinion, the Board notes the potential new grounds, as in a footnote, by way of suggestion to the examiner to inquire into such grounds upon return of the application to the examiner's jurisdiction. The Board did not do that in this case, and instead made rejections inconsistent with the law in this area. The panel overlooked the significance of the physical media recitation or misapprehended the meaning of "software per se".

IBM wins reversal of Alice rejections for targeted ad delivery at airports

noreply@blogger.com (Unknown) — Wed, 09 May 2018 07:32:00 +0000

Takeaway: Finding, under step two of the Alice analysis, the rejected claims to recite an advancement to the technology for delivering targeted advertising, the Patent Board reversed § 101 rejections of claims directed to delivery of targeting advertising in airports.

Note: This is the first of two posts covering the same PTAB decision. For the other, see "Patent Board extends software per se, printed matter doctrines to reject computer-readable media (CRM) claims".

Details:

Ex parte Musial
Appeal No. 2017-001164; Application No. 13/396,177; Tech. Center 3600
Decided: Apr. 30, 2018

Inventors for IBM filed an application relating to "a computer implemented method, data processing
system, and computer program product for . . . distributing advertisements to receptive audiences", and more specifically captive audiences sitting in airport terminals waiting to board their flights, or aboard airplanes waiting to take off or deboard. The Board reproduced rejected independent claim 14 as representative:

14. A computer program product for selecting an advertisement, the computer program product comprising:
a computer readable non-transitory medium having computer readable program code stored thereon, the computer readable program code comprising:
program instructions to receive a first check-in corresponding to at least one person, wherein the first check-in is a indication of presence relative to an airport gate servicing a flight and the first check-in is received from a kiosk;
program instructions to receive a second check-in to form an aggregation of people, wherein the second check-in is a indication of presence relative to the airport gate servicing the flight;
program instructions to characterize the aggregation based on cumulative characteristics selected of at least one vital statistic of each person checking-in to form an aggregated population characteristic;
program instructions to receive flight details concerning the flight, wherein the flight details comprise a flight destination, and the advertisement concerns a service provider at the flight destination;
program instructions to select at least one advertisement based on the aggregated population characteristic and the flight details, in response to the second check-in;
program instructions to receive a check-out of at least one person, wherein the check-out comprises reading an identifier of an at least one person who departs;
program instructions to select at least one advertisement based on the aggregated population characteristic;
program instructions to second characterize the aggregation based on the cumulative characteristics to form a second cumulative characteristic based on the aggregation without at least one vital statistic corresponding to the at least one person who departs, wherein the program instructions to select at least one advertisement based on the aggregated population characteristic perform to select the at least one advertisement is based on the second cumulative characteristic;
program instructions to select at least one advertisement based on the second cumulative characteristic, and a destination of the flight details, wherein the destination is stated within the at least one advertisement;
program instructions to dispatch the at least one advertisement; and
program instructions to detect presence of a service vehicle associated with a flight near and outside an aircraft associated with the flight, wherein the detecting presence relies on at least one global positioning satellite (GPS) signal received at the service vehicle and reported as location data to the hardware processor, wherein program instructions to dispatch comprises instructions to dispatch the at least one advertisement to the service vehicle for rendering and such dispatching is responsive to detecting presence of the service vehicle.

(Emphasis added.) The Board summarized the claim as computer program products for distributing advertisements to an aggregation of people in an airport, using a service vehicle associated with a flight for which the people have checked-in, where such service vehicles can include fuel trucks, food and beverage delivery trucks, and baggage handling equipment.

The examiner rejected the claims under § 101 as being directed to ineligible subject matter, specifically, the abstract idea of "displaying advertisements based on an aggregation of people which falls into the category of . . . a method of organizing human activities, . . . [and] an idea of itself." Under step two of the Alice analysis, the examiner found the claim to offer "no more than the recitation of generic computer structure that serves to perform generic computer functions that are well-understood, routine, and conventional activities previously known to the pertinent industry."

The applicants argued that by placing its display apparatus on a service vehicle like a fuel truck, and detecting the presence of the vehicle near an airplane to display the selected ad, the computer program product permits useful information to reach its users within the airplane, which was unique and inventive:

[A] number of heterogeneous links between disparate machines and people occur, in some cases, in an ad hoc basis, to form a network that allows communication that would be impossible or difficult otherwise. In other words, a conventional approach would be to use extra machinery within the aircraft. But because aircraft need to be maintained when such machinery breaks, and weight is a factor in aircraft fuel efficiency, the more complex computer program product and supporting devices are necessary.

In an advisory action, the examiner "disagree[d]" that the claims presented significantly more than an abstract idea: "[T]here appears to only be an electronic device that runs/performs/executes the abstract idea manipulation. . . . [The asserted] improvements described by Applicant are not actual improvements to the technology." The applicants filed a pre-appeal request, relying solely on DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), but were told to take it to the Board.

The examiner argued, on appeal, that the service vehicle amounted to a kiosk, and that "[t]he claimed kiosk and GPS are electronic devices that run/perform/execute the abstract idea manipulation. These claimed devices perform the same functionality that they would normally perform and do not lend themselves to any type of unconventional processing." Rejecting the idea that the claims improved any technology, the examiner found that the

claims seek to address a problem that existed and continues to exist outside of the realm of the technology associated with the additionally recited elements (targeted advertising). The proposed solution is one that could have been implemented directly by a human performing analogous functions by hand and/or with the assistance of a general purpose computer applied to facilitate the functions at a high level of generality or with the assistance of additional elements performing well-known, conventional functions.

The appellants' reply brief complained that the examiner failed to explain

how dispatching an advertisement for rendering at a service vehicle would be conventional given that passengers/users who have checked-in/checked-out are not even on or in that service vehicle. A fair characterization would be that to render such advertisements (or even the mere dispatching of advertisements) to such a vehicle runs counter to the notion that passenger/users should be entertained/informed within the aircraft. Rather, such an approach, as described in the claim limitations, is odd, counter-intuitive and unconventional. . . . [An] unconventional feature is the feature of bringing destination related information to the eyes of network-stranded occupants of an aircraft—which is unheard of—given the frequent admonitions of flight crews to turn all connected devices to a disconnected state. . . . Certainly, it is unconventional to dispatch and/or render material for an audience on a vehicle that the audience does not even occupy. Accordingly, again, the Office again fails to consider the synergy of the claim combination, and incorrectly states that the ordered combination adds nothing.

Citing to the holding in Bascom Global Internet Services, Inc. v. AT&T Mobility LLC, 827 F.3d
1341, 1349-50 (Fed. Cir. 2016), that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces," the Board found that, contrary to the examiner's allegations, "[t]he ordered combination of Appellants' steps thus recites an advancement to the technology for delivering targeted advertising." Reversing the examiner, the Board found:

[T]he ordered combination of steps in claims 14 and 21 is directed to a specific technological solution to a specific problem pertaining to targeted advertising, namely the problem of assessing receptiveness to various advertisements and then advertising to changing captive audiences in airport areas where network access may be limited or constrained. . . . Therefore, claims 14 and 21 include "additional features" that ensure the claims are "more than a drafting effort designed to monopolize [an abstract idea]." Alice, 134 S. Ct. at 2357.

My two cents:

As noted in the Board's decision, targeted advertising claims have repeatedly been found to amount to unpatentable abstract ideas. Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015); Affinity Labs of Tex., LLC v. Amazon.com, Inc., 838 F.3d 1266, 1271 (Fed. Cir. 2016); ); Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709, 713 (Fed. Cir. 2014); Morsa v. Facebook, Inc., 77 F. Supp. 3d 1007 (C.D. Cal. 2014), aff'd, 622 F. App'x 915 (Fed. Cir. 2015); OpenTV, Inc. v. Netflix Inc., 76 F. Supp. 3d 886, 893 (N.D. Cal. 2014).

But there's a lot going on in the claims at issue, and the examiner's analysis was little more than conclusory. The examiner failed to contradict that the claims involved a number of interactive elements that inventively combined to produce what the applicants referred to as a "creepy" effect of seeing an evidently targeted ad on a vehicle out an airplane window. As such, the Board was able to find that the claims amounted to "something more" than an attempt at monopolizing "displaying advertisements based on an aggregation of people", which was the abstract idea to which the examiner found the claims to be directed. The examiner declined to consider that targeted advertising was a technology that could be improved and was, in fact, improved by the claims.

Although the examiner's analysis was deficient, it was all too typical of rejections made under Alice. The extent of the analysis in many rejections is still limited to whether claims include non-computing elements "[o]nce the abstract idea is removed", as went the examiner's reasoning in the advisory action. Even when such elements are present, examiners typically dismiss them as "insignificant extrasolution activity", making it difficult to draft and defend even inventive claims without having to go to the Board.

So, the Board got it right in reversing the Alice rejections, if for no other reason than that the examiner failed to set forth a prima facie case of ineligibility under the Alice framework. But right about here is where the decision in this case takes a left turn into the Twilight Zone, in a twist so surprising that it's worth devoting a whole other blog post to analyzing: although the claims clear Alice, they're still ineligible under § 101 as software per se and printed matter! (No way! Yes, way! No, actually, no way.)

Do examiners really need to follow the Berkheimer memo?

noreply@blogger.com (Unknown) — Fri, 04 May 2018 17:00:00 +0000

Takeaway: The argument that an Alice rejection failed to follow a USPTO requirement to identify abstract ideas by way of comparison to concepts already found by the courts to be abstract is not a successful argument before the Patent Trial and Appeal Board, because the case law on which Office guidance is based does not place the same requirements on examiners as the guidance does. The case for PTAB enforcement of the new Berkheimer memo may be stronger.

Details:

Ex parte Burchfield
Appeal No. 2016-007437; Application No. 12/016,280; Tech. Center 3600
Decided: Apr. 19, 2018

Ex parte Dominguez
Appeal No. 2016-008588; Application No. 12/903 ,916; Tech. Center 3600
Decided: Apr. 3, 2018

Ex parte Hammock
Appeal No. 2016-007736; Application No. 14/042,379; Tech. Center 3600
Decided: Apr. 3, 2018

Ex parte Hwang
Appeal No. 2017-007960; Application No. 13/809,835; Tech. Center 2600
Decided: Mar. 20, 2018

Ex parte Austin
Appeal No. 2016-004640; Application No. 12/787,721; Tech. Center 3600
Decided: Jan. 11, 2018

Dozens of Board decisions, the above listing including only a few among the more recent, contain nearly identical language redressing appellant arguments that an examiner's subject-matter eligibility rejections fail to follow USPTO guidance requiring examiners to liken the alleged abstract idea to which the claims are said to be directed to concepts already found by the courts to be abstract. It suffices to quote from two such cases:

Austin:

Appellants first argue that the rejection under § 101 cannot be sustained because the Examiner has failed to comply with the USPTO’s “July 2015 Update on Subject Matter Eligibility” . . . and, more particularly, because the Examiner failed in the Final Office Action to “explain how the alleged abstract idea recited in the invention is similar to one of the concepts previously identified [as patent-ineligible] by the courts” . . . . The July 2015 Update instructs examiners to refer to the body of case law precedent in order to identify abstract ideas by way of comparison to concepts already found to be abstract, and explains that “[t]his discussion is meant to . . . ensure that a claimed concept is not identified as an abstract idea unless it is similar to at least one concept that the courts have identified as an abstract idea” . . . . That argument is not persuasive at least because an examiner’s failure to follow the Director’s guidance is appealable only to the extent that the examiner has failed to follow the relevant statutes or case law. To the extent the Director’s guidance goes beyond the case law and is more restrictive on the examiner than the case law, the failure of the examiner to follow those added restrictions is a matter for petition to the Director. We are aware of no controlling precedent, nor do Appellants identify any controlling case law, that precludes an examiner from finding a claimed concept patent-ineligible unless it is similar to a concept that a court has previously identified as abstract.

(Emphasis added, citations omitted, and hyperlink and footnote text placed inline.)

Hammock:

Appellants also argue that the § 101 rejection cannot be sustained because the Examiner has not identified a case in which the courts have identified a similar concept as an abstract idea . . . . Yet, to the extent Appellants maintain that the § 101 rejection must be withdrawn because the Examiner has failed to comply with USPTO guidelines, i.e., the USPTO's May 4, 2016 Memorandum, "Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection," we note that an examiner's failure to follow the Director's guidance is appealable only to the extent that the examiner has failed to follow the statutes or case law. To the extent the Director's guidance goes beyond the case law and is more restrictive on the Examiner than the case law, the failure of the Examiner to follow those added restrictions is a matter for petition to the Director. We are aware of no controlling precedent, nor do Appellants identify any controlling case law, that precludes an examiner from finding a claimed concept patent-ineligible unless it is similar to a concept that a court has previously identified as abstract.

(Emphasis added and citations omitted.)

My two cents: Courts have long held abstract ideas to be unpatentable, and in Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Supreme Court set out a framework for determining whether patent claims should be rejected as abstract. As the Federal Circuit has pointed out, because there is no definition of "abstract idea" for the purposes of subject-matter eligibility analysis of claims with regard to that judicial exception to 35 U.S.C. § 101, we are resigned to compare each new case to prior cases:

The Supreme Court has not established a definitive rule to determine what constitutes an "abstract idea" sufficient to satisfy the first step of the Mayo/Alice inquiry. Rather, both this court and the Supreme Court have found it sufficient to compare claims at issue to those claims already found to be directed to an abstract idea in previous cases.

Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1334 (Fed. Cir. 2016) (internal citation omitted).

Following the Enfish decision, the USPTO memorandum "Formulating a Subject Matter Eligibility Rejection and Evaluating the Applicant's Response to a Subject Matter Eligibility Rejection", issued May 4, 2016, turned the Federal Circuit's lament into USPTO policy by requiring examiners to explain why the identified abstract idea corresponds to a concept that the courts have previously identified as abstract:

[W]hen an examiner determines that a claim is directed to an abstract idea (Step 2A), the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim and explain why it corresponds to a concept that the courts have identified as an abstract idea.
...
When the examiner has determined the claim recites an abstract idea, the rejection should identify the abstract idea as it is recited (i.e., set forth or described) in the claim, and explain why it corresponds to a concept that the courts have identified as an abstract idea. See, for example, the concepts identified on the July 2015 Update: Interim Eligibility Guidance Quick Reference Sheet, page 2. Citing to an appropriate court decision that supports the identification of the subject matter recited in the claim language as an abstract idea is a best practice that will advance prosecution. Examiners should be familiar with any cited decision relied upon in making or maintaining a rejection to ensure that the rejection is reasonably tied to the facts of the case and to avoid relying upon language taken out of context. Examiners should not go beyond those concepts that are similar to what the courts have identified as abstract ideas. Examiners are reminded that a chart of court decisions is available on the USPTO's Internet Web site.

However, as shown by the above Board cases, the options for applicant enforcement of the Enfish memo are few and poor. When examiners fail to follow the official guidance, applicants can complain to supervisors, TC directors, the ombudman, or, by way of petition, to the same supervisors or TC directors and ultimately the Office of Petitions, but applicants cannot go to the Board. None of the available options toll the prosecution clock, meaning that an application can go abandoned while an applicant fights a procedural battle that may have little bearing on the ultimate patentability of the claims.

On April 19, 2018, the USPTO released a new Alice-rejection-related guidance memo, following the decision in Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). Berkheimer held that whether a particular technology is well-understood, routine, and conventional is a question of fact within the legal determination of subject-matter ineligibility, and one that goes beyond what was simply known in the prior art. "The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional." 881 F.3d at 1369. In a nutshell, the Berkheimer memo instructs that examiners must provide record evidence supporting allegations that claim elements or ordered combinations of elements amount only to "well-understood, routine, and conventional" features that thus fail to add "significantly more" to the claims than the abstract idea to which they are alleged to be directed. Such record evidence can be based on applicant admissions, prior court decisions, or findings made from cited publications, but "cannot be based only on the fact that the specification is silent with respect to describing such element" and cannot be shown "merely [by] finding the additional element in a single patent or published application . . . unless the patent or published application demonstrates that the additional element[s] are widely prevalent or in common use in the relevant field."

There are generally good reasons for making USPTO policy dictating what an examiner must or must not do when setting forth a rejection procedurally enforceable at the Patent Trial and Appeal Board, but those reasons may be weaker when it comes to the first step of the Alice framework. To be sure, forcing examiners to adhere to USPTO policy provides safeguards to applicant procedural due process and helps to ensure that USPTO decisions are not arbitrary, capricious, or discriminatory. Additionally, the Board considers itself to be a reviewing body, and not a place of initial examination; as such, the Board ought to free itself of reviewing abstract-idea determinations made at Alice step one that do not comport with USPTO guidance, and should just summarily reverse such determinations. Austin, Hammock, and other decisions show that this is not the case, however, nor is this a particularly new position taken by the Board, see. e.g., Ex parte Lyons, No. 2009-007300 (B.P.A.I. Dec. 13, 2010) ("Failure to comply with guidance is not per se appealable to the Board, as the jurisdiction of the Board is limited to review of rejections rather than the conduct of the examination."), even if exceptions can be found in the appeal records.

But the appellants lost in those cases because they were not able to show binding precedential support for their suppositions as to what was required during examination. The Federal Circuit's Berkheimer decision, however, provides more definite precedential support for the content of the Berkheimer memo than Enfish does for the May 2016 Enfish memo. For instance, Berkheimer states in no uncertain terms that "The mere fact that something is disclosed in a piece of prior art, for example, does not mean it was well-understood, routine, and conventional." 881 F.3d at 1369. As such, applicants may have more success in asking the Board to uphold the procedural requirements imposed on examiners by the Berkheimer memo, at Alice step two, than they have had in trying to enforce the July 2015 and May 2016 guidance memos, relating to step one of the Alice framework.

Targeted advertising claims survive Alice step two

noreply@blogger.com (Unknown) — Mon, 30 Apr 2018 09:00:00 +0000

Takeaway: Improvement arguments succeeded in overturning § 101 subject-matter eligibility rejections of claims relating to Internet-based directed-advertising under circumstances involving broadcast TV and simultaneous chat room participation. The arguments had failed to persuade at step one of the Alice framework but worked at step two.

Details:

Ex parte Relyea
Appeal No. 2017-001443; Application No. 12/410,588; Tech. Center 3600
Decided: Apr. 18, 2018

Inventors for Verizon filed a patent application including the following representative claim for targeted advertising:

1. A method comprising:
providing, by one or more devices, broadcast programming to a plurality of user devices, associated with a plurality of users, via a television network;
hosting, by the one or more devices, at least one chat group associated with the broadcast programming provided via the television network,
hosting the at least one chat group including hosting a virtual chat room for the chat group that provides interaction via at least one of text-based discussion or a video client,
the at least one chat group being displayed with the broadcast programming;
determining, by the one or more devices and based on hosting the at least one chat group, information identifying a group of users, of the plurality of users, currently in a same chat group, of the at least one chat group, associated with the broadcast programming provided via the television network;
defining, by the one or more devices, a micro-group to include user accounts associated with the group of users in the same chat group, the user accounts being added to the microgroup based on the group of users joining and currently being in the same chat group associated with the broadcast programmmg;
creating, by the one or more devices, a profile associated with the micro-group based on user information associated with the user accounts;
monitoring, by the one or more devices and based on hosting the at least one chat group, real time behavior of the group of users in the same chat group to detect one or more actions taken by one or more users of the group of users, the one or more actions being associated with content of the chat group;
modifying, by the one or more devices, the profile associated with the micro-group based on the one or more actions;
retrieving, by the one or more devices, advertising content targeted to the group of users in the same chat group based on the profile that is created based on the user information associated with the user accounts of the group of users in the same chat group and that is modified based on the one or more actions taken by the one or more users of the group of users in the same chat group; and
providing, by the one or more devices, the advertising content to user devices, of the plurality of user devices, associated with users currently in the chat group, the advertising content being displayed in a same view as the chat group and being integrated into a television program included in the broadcast programming provided to the group of users in the same chat group.

As explained in the specification,

Target advertising typically seeks to generate improved customer response rates by directing particular advertisements to consumers based on observed behavior. Television service providers that can simultaneously direct a variety of advertisements to smaller similarly-interested groups may be poised to generate more revenue than those using a single advertisement to all viewers watching the same program. . . . Implementations . . . may allow a subscription television service provider to define micro-groups of users and identify micro-group tendencies to provide targeted advertising to members of the micro-group . . . of subscribers to the subscription television service that are associated by an expressed interest. The micro-group may be created based on a variety of techniques, including social networking (e.g., chat group participation, accepting an invitation as a group member, etc.), past viewing histories, and/or real-time viewing behavior. In some implementations, the micro-group tendencies may change dynamically as different users join or leave the micro-group. Implementations described herein may be incorporated using a television display and video client (e.g., a set-top box), a personal computer, a mobile telecommunications device, and/or combinations thereof.

The examiner identified the abstract idea to which the claims were allegedly directed as "targeting of advertisements to a micro-group of users based on profile data and chat group content." The examiner found that such a concept was similar to the decision SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014), in which new and stored information was compared and analyzed using rules to identify options. While acknowledging the more recent Enfish decision, the examiner nevertheless found that the claims merely used conventional computers to implement abstract ideas, unlike the self-referential table of Enfish which improved the computing technology itself.

Appealing the examiner's Alice rejections, the appellants argued that the claims were not abstract because they provided an improvement in a computer-related technology and addressed a problem "necessarily rooted in computer technology at least because the claims do not recite a process that can be performed in the human mind, or by a human using a pen and paper."

The Board did not credit appellants' arguments relating to step one of the Alice framework. The Board found that the claims did not attempt to solve a challenge particular to the Internet, and thus DDR Holdings was of no particular help. The Board also found the advertising claims not to be analogous to the rule-based automated computer animation claims found eligible in McRO.

However, the Board appeared to be persuaded by the appellants' arguments relating to step two of the framework, the "search for an inventive concept" step, i.e., that the claims "improve[d] the technical field of broadcasting television programs by dynamically integrating targeted advertising content into the television programs that are broadcast to users of the chat group," and thus provided "a detailed level of targeted advertising [that] was not technologically achievable for television broadcasting in the past"; further that the claims included limitations "not widely prevalent in the field" that "leverage[d] [the] real-time behavior of users in the chat groups to integrate targeted advertising content into broadcast programming"; and still further that the claims were confined to the particular useful application of integrating targeted advertising content "into a television program included in the broadcast programming provided to the group of users in the same chat group." The Board appeared to credit the appellants' assertion that "[t]he ability to integrate the claimed level of detailed targeted advertising was not achievable for television broadcasting in the past" and noted, as the examiner had, that the particular combination of circumstances recited in the claims appeared to be somewhat unique. Thus, the Board reversed the Alice rejections.

My two cents:

Claims for innovations in targeted advertising on the Internet have been prime targets for Alice rejection or invalidation. See, e.g., Affinity Labs of Tex., LLC v. DIRECTV, LLC, 838 F.3d 1253, 1271 (Fed. Cir. 2016); Intellectual Ventures I LLC v. Capital One Bank (USA), 792 F.3d 1363, 1369-70 (Fed. Cir. 2015) Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014); Ex parte Greene, No. 2016-007319 (P.T.A.B Apr. 18, 2018) (claims directed to "identifying indeterminacy for activity-based advertising" deemed an unpatentably abstract "method of organizing human activity"); Ex parte Ferber, No. 2016-008650 (P.T.A.B. Jan. 9, 2018) (claims directed to targeted advertising deemed an unpatentably abstract fundamental economic practice); Ex parte Malden, No. 2016-004867 (P.T.A.B. Jul. 24, 2017) (claims directed to targeted advertising and brokerage of ads held an unpatentably abstract comparison of new and stored information and using rules to identity options); Ex parte Kendall, No. 2015-008182 (P.T.A.B. Apr. 19, 2017) (claims directed to communicating actions within a social network for the purpose of advertising a product and/or selling advertising held an unpatentably abstract fundamental economic practice and method of organizing human activities), reh'g denied, Kendall (P.T.A.B. Aug. 23, 2017); Ex parte Kendall, No. 2015-008149 (P.T.A.B. Apr. 19, 2017) (same). An overarching reason for this may be because the benefits provided by such claims are characterized not as technical or technological improvements, but instead as business benefits in better targeting a customer's needs or dynamically adjusting to a customer's activity. So it is remarkable that the Internet advertising claims in Relyea passed muster at the Board. Why were they able to get past Alice?

The Board compared the claims to the dynamic-display electronic securities trading claims in Trading Technologies International, Inc. v. CQG, Inc., 675 F. App'x 1001 (Fed. Cir. 2017), pointing out that the claims in this case "provide a detailed level of targeted advertising that changes dynamically based on the real-time behavior of users in a chat group."

It may be that such dynamic functioning inventively amounts to "significantly more" than the identified abstract idea itself, but on the other hand, it is not clear why such is "more" than "using rules to identify options," the previously held abstract concept. The extension of the Trading Technologies holding to apply to dynamic advertising claims may just be yet another example of the subject-matter eligibility pendulum swinging back.

Improvement arguments and recitation of "time cell" win IBM reversal of Alice rejections at PTAB

noreply@blogger.com (Unknown) — Mon, 23 Apr 2018 09:00:00 +0000

Takeaway: The Patent Board reversed § 101 Alice rejections of commercial transaction processing claims when the claims relied on a "time cell" and thus presented an improvement of the "relevant technology."

Details:

Ex parte Berstis
Appeal No. 2016-007050; Application No. 12/366,951; Tech. Center 3600
Decided: Mar. 12, 2018

The application is a continuation-in-part with priority to a line of applications related to a "time cell," basically a charge storage element with a known electrostatic discharge profile by which an amount of time elapsed since the initial charge can be determined, and the use of said time cell in what essentially amount to self-expiring coupons. A representative claim on appeal read:

16. A method for processing a commercial transaction using data processing devices, the method comprising:
determining a state of a time cell that is associated with a commercial transaction that has been at least partially performed on a first data processing device at a time prior to a current time;
generating, at a second data processing device, a first time value that represents when the time cell was programmed at the time prior to the current time, based on the determined state of the time cell; and
processing information about the commercial transaction using the first time value to represent when the commercial transaction occurred at the time prior to the current time,
wherein:
the time cell is an electrical device having an insulating medium and an electrostatic charge storage element that is programmed by giving the electrostatic charge storage element a desired electrical potential,
the time cell discharges electrostatic charge from the electrostatic charge storage element through the insulating medium at a predetermined rate of discharge, and
determining the state of the time cell comprises detecting a current electrostatic charge stored in the electrostatic charge storage element.

(Emphasis added.)

The examiner rejected the claims as

directed to the abstract idea of processing information about a commercial transaction based on the timing of the commercial transaction. Analyzing a commercial transaction is a certain method of organization human activity related to commercial activity, an example of an abstract idea referenced in Alice Corp.

Under the second step of the Alice framework, the examiner still found the claims to be subject matter ineligible:

The additional element(s) or combination of elements in the claim(s) other than the abstract idea per se amount(s) to no more than a mere instruction to apply the abstract idea to a time cell that uses electrostatic physics. Viewed as a whole, these additional claim element(s) do not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself.

In the appeal brief, the appellants complained that the examiner had overgeneralized the subject matter, and submitted that the claims were

directed to mechanisms . . . for processing information about a commercial transaction that was at least partially performed on a first data processing device at a prior time based on a time value, generated at a second data processing device, that represents when an electrical device (time cell) was programmed at the prior time of the commercial transaction, based on a determined state of the time cell, where the state of the time cell is determined by detecting a current electrostatic charge stored in an electrostatic charge storage element of the time cell, and where the time cell has the physical configuration set forth in the claims. . . . [T]he claims are not directed to only [the identified] abstract idea and are not attempting to preempt every possible way of processing information about a commercial transaction based on the timing of the commercial transaction. To the contrary, the very recitation of the operation of processing information about a commercial transaction, at least partially performed on a first data processing device, is tied to the generation of the first time value, at a second data processing device, which is generated based on the determined state of the electrical device (time cell) which is determined at least by detecting a current electrostatic charge stored in the electrostatic charge storage element. Thus, the claims are clearly directed to a specific application and implementation of the concept of processing information about a commercial transaction with regard to a specific type of electrical device, referred to as a time cell, and specifically directed to mechanisms that detect the electrostatic state of the time cell as a mechanism for processing the commercial transaction.

The appellants further argued that the claims involved "a synergistic interplay between tangible, material elements", that the claims had not been properly examined as a whole, and that they did not relate to fundamental economic practices, methods of organizing human activities, abstract ideas of themselves, or mathematical relationships/formulas.

If the method claim recites operations that can only be performed within technology, then the method claim does not recite an abstract idea. That is, "inventions with specific applications or improvements to technologies in the marketplace are not likely to be so abstract that they override the statutory language and framework of the Patent Act" (see Research Corp. Techs., Inc. v. Microsoft Corp., 627 F.3d 869 (Fed. Cir. 2010)). In other words, if the claims recite specific applications or improvements to technologies, as in the present case, then the abstract concepts are not being preempted or "tied up" but rather, the claims are directed to a specific application of the abstract concepts which is statutory.

(Emphasis added.) Reviewing the specific time cell-related claim features, the claims were

clearly directed to an improvement to technology and [are] clearly not attempting to "tie up" or preempt the alleged abstract idea of "processing information about a commercial transaction based on the timing of the commercial transaction" but rather a specific mechanism for processing information about a commercial transaction that involves the programming of a time cell at the time the commercial transaction was at least partially performed, and detecting the state of the time cell at a second data processing device to thereby process information about the commercial transaction.

(Emphasis altered.)

The examiner answered that the claims' "limitations that describe the electrostatic physics behind the use of a time cell . . . merely link the use of an abstract idea to a particular technological environment: the field of time cells" and that "the aforementioned limitations do not improve the technical field of time cells." In the examiner's view, the claims also failed to improve a technical field, because "[d]ispensing an article of manufacture by a first data processing device is akin to dispensing a coupon through a vending machine". Finally, the examiner cited the old and discredited case of Ex parte Pfeiffer, 135 USPQ 31 (B.P.A.I. 1961), for the proposition that structural limitations (in this case, the structure of the time cell) carry no patentable weight in method claims.

In their reply brief, the appellants cited USPTO guidance issued in the wake of Enfish decision and argued that the claims were directed not to an abstract idea but to

an improvement to computer based processing of commercial transactions which is rooted in computer technology and directed to solving a problem in the computer arts by providing a new and non-obvious (as indicated by the fact that there is no prior art rejection against the present claims) mechanism that operates in conjunction with a time cell. Moreover, the present specification clearly sets forth numerous improvements made by the claimed invention with regard to processing commercial transactions using mechanisms that operate on and with time cells.

(Emphasis added.)

The Board found that "using a non-volatile memory cell . . . which does not require a battery to measure time is an inventive concept that provides a specific means or method that improves the relevant technology" and that the recited time cell was a particular machine, "not a generic machine, because, unlike a generic computer, which can perform many different functions when programmed, the recited 'time cell' can only be used for a single, dedicated purpose (measuring a predetermined passage of time as a function of the decay over time of an electrical charge)." Moreover, the provided time measurement could not be done as a mental step. The Board thus found the time cell features to lend the claims "significantly more" than the identified abstract idea and reversed the § 101 rejections.

My two cents:

This post is the sixth in a series about improvement arguments beating Alice rejections at the Patent Board. "Coupon" would seem to be patent profanity if one wants to avoid an Alice rejection. See, e.g., Ex parte MacNeille, No. 2016-004411 (P.T.A.B. Mar. 28, 2018). Here, although the claims do not use the word "coupon," the examiner likened the claims to coupon-related technologies, leading the applicants to protest that the USPTO had issued coupon-related patents in the past and thus presumably found them to be statutory ("see U.S. Patent Nos. 5,039,848; 6,648,761; 9,361,606, etc."). "But it worked in the past" is not an argument that carries much weight at the Board given the directive to consider each case on its own merits. See, e.g., Ex parte Heinrich, No. 2016-002486 (P.T.A.B. Feb. 27, 2018), citing In re Gyurik, 596 F.2d 1012, 1016 n.15 (C.C.P.A. 1979). It seems instead that the Board engaged in a much more variegated analysis, looking at the machine-or-transformation test and crediting or modifying the Enfish-based improvement arguments made by the appellant.

Although the application and its parents take great pains not to say so, the "time cell" of the invention sounds like it reads on a leaky capacitor, which is to say, any practical capacitor, of known discharge profile, that can be periodically sampled to determine remaining charge. If so, it is not something new; see, e.g., U.S. patent No. 5,760,644, "Integrated circuit timer function using natural decay of charge stored in a dielectric" (priority date 1995, approximately a decade before the priority dates involved in this application). If a time cell is old, one can understand why an examiner would take the position that it could not offer "significantly" more under the second step of the Alice framework, but even so, the Board found such novelty or lack thereof irrelevant in the § 101 consideration:

[E]ven if time measurement devices are notoriously well known in the art, this has no bearing upon our analysis under § 101. The Supreme Court guides: "[t]he 'novelty' of any element or steps in a process, or even of the process itself, is of no relevance in determining whether the subject matter of a claim falls within the § 101 categories of possibly patentable subject matter." Diamond v. Diehr, 450 U.S. 175, 188–89 (1981) (emphasis added). Our reviewing court further emphasizes: "[e]ligibility and novelty are separate inquiries." Two-Way Media Ltd. v. Comcast Cable Commc’ns, LLC, 874 F.3d 1329, 1340 (Fed. Cir. 2017) (emphasis added).

Citing a Board decision that briefly appeared in an old revision of the MPEP (see § 2117), the examiner argued that structural elements carry no patentable weight in method claims, but if the Board declined even to address that argument, it may have been because they discarded it many times in the past. See, e.g., Ex parte Sigler, No. 2016-001256 (P.T.A.B. Sep. 19, 2017); Ex parte Paul, No. 2011-006827 (P.T.A.B. Mar. 7, 2013); Ex parte Lind, No. 2010-005289 (B.P.A.I. Aug. 29, 2012); Ex parte Tuma, No. 2006-002308 (B.P.A.I. Sep. 26, 2006); Ex parte Holderness, No. 1998-000553 (B.P.A.I. Mar. 13, 2001); Ex parte Zeigler, No. 1996-002718 (B.P.A.I. May 18, 2000); Ex parte Kirkland, No. 1997-000172 (B.P.A.I. Aug. 25, 1998). However, the Board did drop a footnote instructing the examiner to consider whether the claims were indefinite under § 112 and MPEP § 2173.05(p)(II) as hybrid claims reciting an apparatus and method steps. I don't think mere recital of structure renders a method claim a hybrid claim, since, at bottom, the issue is whether the claim language creates confusion is as to when direct infringement occurs, and that would not seem to be the case here or in most method claims that describe what structural materials and tools are involved in the performance of the method.

The Board did not specify in their decision what "relevant technology" the claimed invention improves, but presumably the relevant technology is that of electronic couponing, or commercial transactions more generally. As noted in a previous post with practice tips for defeating Alice rejections, it can be important in making improvement arguments to state what the previous state of the technology field and how the claims at issue offer both a clear difference and a significant improvement over the state of the art. Defining the previous state of the technology field may not have been particularly important in this case because the cited prior art, and the claims' overcoming rejections in view of that art, inferentially defined the previous state of the technology field.

IBM's improvement arguments overcome Alice rejections, win random number generation claims at the PTAB

noreply@blogger.com (Unknown) — Mon, 16 Apr 2018 09:00:00 +0000

Takeaway: The PTAB reversed Alice rejections of pure-software random digital generation claims, crediting the appellants' improvement argument in the face of examiner criticism of that argument and even in the absence of a reply brief addressing that criticism.

Details:

Ex parte Sherwood
Appeal No. 2017-006552; Application No. 13/906,056; Tech. Center 2100
Decided: Sep. 28, 2017

The application on appeal, titled "Balancing Consumption of Random Data", described improved operation of an apparatus for generating random data in a computer system, and in particular, to the improved operation of obtaining entropy data for seeding the random data generation. A representative claim on appeal read:

21. A digital data apparatus for producing random digital data, comprising:
at least one physical processor;
a physical system memory;
a plurality of entropy sources each generating respective random source digital data having a corresponding level of entropy, including a first entropy source generating random source digital data having a first level of entropy, and a second entropy source generating random source digital data having a second level of entropy lower than said first level of entropy, said second entropy source being independent of said first entropy source;
a random number generator embodied as computer program code storable in said physical system memory and executable on said at least one physical processor, said random number generator receiving input from each said plurality of entropy sources, said random number generator generating a random digital data output by a deterministic algorithm using input from a selective one of said plurality of entropy sources as a seed for said deterministic algorithm;
an entropy manager embodied as computer program code storable in said physical system memory and executable on said at least one physical processor, wherein said entropy manager automatically selects one entropy source among said plurality of entropy sources as input for the seed for said deterministic algorithm used by said random number generator, said entropy manager automatically selecting one entropy source among said plurality of entropy sources by determining a minimum level of entropy required by a consuming entity from among multiple possible minimum levels of entropy required, wherein the consuming entity consumes random digital data output by said random number generator to perform at least one data processing function, wherein the minimum level of entropy required by the consuming entity is a minimum level required as input for the seed for said random number generator to produce the random digital data output consumed by the consuming entity, said entropy manager further automatically selecting an entropy source from among said plurality of entropy sources having the lowest corresponding level of entropy which meets said minimum level of entropy required by the consuming entity.

(Emphasis added.)

The final rejection held that the claims were directed to the abstract idea of "performing mathematical steps drawn to generating random data, receiving inputs, selecting entropy sources, determining levels of entropy, consuming random data, monitoring/analyzing events, accessing rules, determining levels of entropy, preventing flipping of entropy selection states, and performing cryptographic operations." The rejection stated that

[t]hese steps merely employ basic concepts drawn to manipulating information using mathematical and logical concepts which is similar to the basic concept of manipulating information using mathematical relationships found to be an abstract idea by the courts. The claims do not include additional elements that are sufficient to amount to significantly more than the judicial exception because the claims do not add a meaningful limitation to the abstract steps as they would be routinely used by those having ordinary skill in the art on a general purpose computer.

With regard to the second step of the Alice framework, the examiner found that the recitation of processor and memory in the claims did not amount to significantly more, and likewise,

the recitation of elements such as "entropy sources", "random number generator", "entropy manager", and "cryptographic apparatus" are also generic because there is no evidence in the specification that these elements must be specific hardware elements. For example, the claimed random number generator and entropy manager are embodied as code and the claimed cryptographic functionality is defined in the specification as software. A general purpose computer can be programmed to execute code and software.

The examiner also addressed the applicant's argument that the claims were directed to an improvement in computer technology:

[T]he invention as claimed is not drawn to an improved encryption engine for a computer system that improves efficiency. . . . [T]he applicant has failed to point to evidence that using "relatively lower entropy data for certain less essential purposes" improves efficiency of the claimed invention. The applicant's arguments cannot take the place of evidence.

(Emphasis in original.)

The appeal brief is worth quoting at length:

[The] invention relates to "improved operation of an apparatus for generating random data in a computer system, and in particular, to the improved operation of obtaining entropy data for seeding the random data generation" . . . Although improved performance is the primary motivation, Appellant's technique . . . may, by using highest quality random data only when necessary, permit a higher quality of randomness to be used in those circumstances which require it.
A computer-implemented cryptographic engine or random data generator necessarily receives input in the form of data, i.e., strings of '1's and '0's, and performs a series of mathematical steps and takes branches based on determinations made using data, to produce a final result, which is again data, i.e., strings of '1's and '0's. . . . [A]ny computer-implemented process can ultimately be reduced to receiving data as input, performing a series of mathematical steps and branches based on determinations made using the data, and producing a result in the form of data. That is the very essence of a deterministic sequential state machine. No computer, no matter how fast, sophisticated or advanced over other computers, can do anything beyond these basic steps.
If any machine or process which is limited to receiving data input, performing mathematical manipulations of the data, making decisions based on results, and outputting data, is deemed an "abstract idea", the Patent Office might as well give up patenting computer implemented inventions, for all such inventions, no matter how complex or sophisticated, ultimately can be broken down into simple mathematical steps and branches. This is clearly not what the law is and not what was intended by the recent Supreme Court decision in Alice Corp. v. CLS Bank. . . . [T]t is true that in a very general sense Applicant's invention does [manipulate information using mathematical relationships]. As does each and every computer-implemented invention that has been patented by the Patent Office. . . . The Examiner's reasoning appears to be exactly the type of overly broad application of the "abstract idea" doctrine which was disapproved by the Federal Circuit in Enfish. . . . Appellant's invention does not come close to pre-empting the field of "manipulating information using mathematical relationships".

(Emphasis in original.)

The examiner answered that:

[P]reemption is not the test for judging subject matter eligibility under the Alice analysis. Rather, the test consists of (in summary) determining whether the claimed invention is drawn to a judicially recognized exception. If so, then the claimed invention is further analyzed to determine whether there is additional subject matter recited that amounts to significantly more than the judicial exception.
The claims are drawn to apparatuses, methods, and computer program products which perform mathematical steps. These steps manipulate information using mathematical and logical concepts. Ideas such as this have been found by the courts to be abstract. See Parker v. Flook, 437 U.S. 584 (1978); Gottschalk v. Benson, 409 U.S. 63 (1972). In Flook, the claimed invention was drawn to the abstract idea of gathering numerical information and manipulating it mathematically. In the instant case, entropy information is gathered in the form of binary numbers and is manipulated mathematically to generate random data, which is also represented in binary.

The examiner called the appellants' improvement argument "flawed":

Appellant's only explanation that the claimed invention is an improvement is that computer system efficiency is improved "by using relatively lower entropy data for certain less essential purposes." . . . However, Appellant never defines what these "purposes" are. More importantly, the entropy data is used for random number generation, this being the only "purpose" that can be inferred from Appellant's argument. How this improves computer system efficiency is not explained in Appellant's argument. Appellant merely asserts that these purposes exist without citing any evidence as to what they are.

The appellants did not file a reply brief to address this rebuttal. Nevertheless, the Board "agree[d] with Appellants that the Examiner has overgeneralized the claimed invention by summarizing it as the mere performance of mathematical steps, or as information gathered in the form of binary numbers that is manipulated mathematically to generate random data", and took it upon themselves to scour the specification for the inventive concept:

[The] invention is directed to generating random digital data for use by a consuming entity. For certain purposes, e.g., strong encryption, random data having higher entropy is required; for other purposes, lower entropy (and thus quicker to gather) random data will suffice. . . . In the invention, an entropy manager determines the minimum level of entropy required by a consuming entity, and selects the random data (i.e., entropy) source that supplies random data having a requisite level of entropy for the consuming entity’s purposes.
We do agree generally with the Examiner’s conclusion that Appellants’ claimed invention is drawn to an abstract idea. The claims under appeal are drawn to method and apparatus for producing random digital data, including a random number generator for generating said random digital data by following a deterministic algorithm using input from one of a plurality of entropy sources as a seed.
Appellants persuade us, however, that the claims are, nonetheless, statutory under the second prong of the Alice analysis. Representative claim 21 recites, inter alia, an entropy manager that “automatically selects one entropy source” from among a plurality, as the seed for the deterministic algorithm. The entropy manager makes this selection “by determining a minimum level of entropy required by a consuming entity . . . the minimum level of entropy required by the consuming entity is a minimum level required as input for the seed for said random number generator . . . said entropy manager further automatically selecting an entropy source from among said plurality of entropy sources having the lowest corresponding level of entropy which meets said minimum level of entropy required by the consuming entity.”
In support, Appellants’ Specification discloses that “[h]igh-entropy data is difficult for a computer to generate,” and even if one resorts to techniques such as monitoring network traffic, “it takes time in order to gather such random data.” . . . Appellants’ invention, thus, sets forth a system that automatically balances the tradeoff between (a) high entropy, hard to predict (and thus hard to attack) data that is scarce, time-consuming to produce, or both, and (b) lower entropy, less difficult to predict (but less secure) data that is easier to gather, less computationally intensive to produce, or both. See Spec. 9-10.
We conclude that the function of the entropy manager in the claimed invention results in claims drawn to significantly more than an abstract idea. See Alice, 134 S. Ct. at 2355. Like the animation method in McRO Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), we conclude that the claims under appeal are limited to rules with specific characteristics. McRO, 837 F.3d at 1314—15. Like the self-referential logical table in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), we conclude that the appealed claims focus on a specific means or method that improves the relevant technology. See Enfish, 822 F.3d at 1335. Here, Appellants’ invention focuses on a specific method of providing an entropy manager to make a decision concerning the appropriate entropy level to be employed, in order to supply random digital data of sufficient entropy while conserving computer processing power and/or time.

(Emphasis added.) Thus, the Board reversed the subject-matter eligibility rejections, and the appellants were issued their patent (No. 9,934,000).

My two cents:

This post in the fifth in a series examining improvement arguments and their rapidly mounting significance in winning reversals of Alice rejections at the Board. The first post in the series provided a set of practice tips. This case is an example of an improvement argument winning at step two of the Alice framework, and illustrates the examiner demanding evidence in support of the improvement argument (see practice tip #7) but the appellants not needing it to win.

The abstract idea to which the examiner alleged the claims were directed ("performing mathematical steps drawn to generating random data, receiving inputs, selecting entropy sources, determining levels of entropy, consuming random data, monitoring/analyzing events, accessing rules, determining levels of entropy, preventing flipping of entropy selection states, and performing cryptographic operations") is a mouthful, but the Board nonetheless agreed that the claims were drawn to an abstract idea, albeit one of a different description: "producing random digital data, including a random number generator for generating said random digital data by following a deterministic algorithm using input from one of a plurality of entropy sources as a seed."

The Board gave no credit to the examiner's argument that additional evidence was required to show that using "relatively lower entropy data for certain less essential purposes" resulted in an efficiency improvement. Instead, the Board found the description in the specification to be self-evident of the cause and effect reasoning necessary to support the improvement argument.

Only about six months elapsed between the docketing of the appeal and the handing down of the Board's decision. This seems unusual, as most practitioners are more accustomed to appeal pendency on the order of years rather than months. According to contemporary PTAB statistics, average appeal pendency for cases originating from technology center 2100 at the time of this decision was 13.2 months, down a spectacular 11.1 months from the same time the previous year. Although appeal pendency has been dealt with very effectively and continues to fall (it's down to 13.0 months in 2100 at last count), this appeal was still delivered in less than half the average time. One can only speculate whether this case was hastened by a PTO directive to build Alice guidance by expediting appeals deciding § 101 controversies, or because of the particular Board section to which the appeal was assigned and the workload thereof, or because of the identity of the real party in interest (IBM) and the volume of applications filed by that particular assignee. Whatever the reason for the favoritism (if any), the appellants got a good deal with this appeal, only waiting about twice as long as they would have for another Office action.

We're not done yet with looking at improvement argument cases, so stay tuned for more.

Radar-based target determination method claims saved from Alice by improvement arguments at the PTAB

noreply@blogger.com (Unknown) — Mon, 09 Apr 2018 09:00:00 +0000

Takeaway: Viewing the claims as representing an improvement upon technology that uses synthetic aperture radar imaging to determine the position of a target at great distances, the PTAB reversed Alice rejections that had found claims to be directed to patent-ineligible subject matter. The broadest claim was what could be called a "pure software" claim, consisting solely of "determining" steps taking place inside a computer processor.

Details:

Ex parte Benninghofen
Appeal No. 2016-002156; Application No. 13/380,397; Tech. Center 3600
Decided: Oct. 16, 2017

The application on appeal described a method for determining the geographic coordinates of pixels in synthetic-aperture radar images. A representative claim on appeal read:

5. A method, comprising:
determining, by a processor of an airborne device, geographic coordinates of corresponding pixels of a target from first and second digital synthetic aperture radar (SAR) images by capturing, by the processor of the airborne device, the first and second SAR images in a form of slant range images;
determining, by the processor of the airborne device, a recording position of the respective first and second SAR images;
determining, by the processor of the airborne device, a distance between a corresponding resolution cell on a ground and the respective recording position of the respective first and second SAR images using coordinates of the corresponding pixels of the target in the first and second SAR images and corresponding range gates; and
determining, by the processor of the airborne device using the determined distances and associated recording positions of the first and second SAR images, the geographic coordinates of the corresponding pixels of the target in the first and second SAR images by producing, by the processor of the airborne device, a first and second sphere for the first and second SAR images using the determined distances and associated recording positions of the first and second SAR images; and
determining, by the processor of the airborne device, the geographic coordinates of the corresponding pixels of the target as a common intersection of the first and second spheres with the WGS84 ellipsoid.

SAR is a form of radar used to acquire high-resolution landscape data from aircraft or spacecraft using comparatively small physical antennas. Range gates appear to refer to the distances away from the SAR antenna at which are located resolution cells on the ground that correspond to the center of the SAR slant range images. WGS 84, the 1984 World Geodetic System standard, is the reference coordinate system used by the Global Positioning System (GPS), and its reference ellipsoid is a mathematically defined surface that approximates the geoid, i.e., the truer figure of the Earth. Thus, in essence, the application provides a way of matching SAR-sourced image pixels to geographic coordinates. The eight-page written description contains several of what appear to be basic Euclidean distance formulas, and is accompanied by seven drawings of basic geometric diagrams.

In a § 101 rejection, the examiner alleged the claims to be abstract since they "employ mathematical relationships/formulas to determine the geographic coordinates of the corresponding pixels of the target." The examiner found that the claims did not supply "significantly more" under the second step of the Alice framework because they required no more than a generic computer, in the form of the recited airborne device, "to perform generic computer functions that are well-understood, routine and conventional activities previously known to the industry."

The applicants conducted several examiner interviews and filed an after-final response, arguing that "the claims recite significantly more than mere computer implementation of an abstract idea and the ordered combination of steps improves the functioning of a processor itself." The claim 5 method, applicants asserted, "determines SAR image recording positions and distances based on the determined recording positions, and then uses this information to transform SAR images into first and second spheres, which are then used with a WGS84 ellipsoid to determine geographic coordinates of pixels in an image. Thus, the claims go beyond merely retrieving and combining data." The applicants further posited that the sole independent claim

improves the overall functioning of a processor because it is able to determine geographic coordinates in an image in a much less processor intensive manner than other techniques. Specifically, . . . the prior art cited to reject the claims [in other art-based rejections] determines geographic coordinates using interferomic SAR (InSAR or IFSAR), which determines phase differences between of master and slave SAR images to generate an interferogram characterizing topographic information. Obtaining the master and slave images requires the use of a diplexer because obtaining the images requires one transmission antenna and two receiving antennas, which significantly increases the required processing power. Further, the present invention avoids the additional processing required to generate the interferogram and thus improves the overall operation of the processor used for determining geographic coordinates of pixels of a target.

(Emphasis added.) When the examiner maintained the § 101 rejection, the applicants filed a pre-appeal conference request, arguing that, under the first step of the Alice framework, their claimed method

involves capturing images in which the target is located, which is not an algorithm and is not abstract. The method also involves determining a recording position of the images, which reflects real-world geographic coordinates, and is not an algorithm and is not abstract. The method further involves determining a distance between a resolution cell on the ground and the recording positions, which is not abstract.

The conference request also repeated the "significantly more" argument from the after-final response. The conference panel was not persuaded.

In their appeal brief, the appellants argued, among the many unavailing arguments presented, that the data gathering steps of the claim could not be performed by the human mind. However, they also repeated their inchoate improvement argument, asserting that the claimed method "is able to determine geographic coordinates in an image in a much less processor intensive manner, and with less error." The appellants were also able to point to support in their specification for a new assertion that the rejected independent claim "improves upon the technical field of position determination with SAR images by reducing error in the known techniques".

Answering the argument that the conventional pre-solution steps could not be performed in the human mind, the examiner cited CyberSource Corp. v. Retail Decisions Inc., 654 F.3d 1366, 1370 (Fed. Cir. 2011), for the proposition that mere data-gathering steps cannot make an otherwise nonstatutory claim statutory. The examiner found the processor in the airborne device not to qualify for "significantly more." The examiner did not address the improvement arguments in the answer brief, perhaps unsurprisingly, since Enfish and McRO were yet to be decided. The appellants filed a reply brief, but without anything in the way of new or expanded argument, so the case went to the Board, where the panel opined:

With respect to computer-enabled claimed subject matter, it is helpful to determine whether the claims at issue may readily be understood as simply adding conventional computer components to well-known business practices or not. The question is whether the claims as a whole “focus on a specific means or method that improves the relevant technology” or [by contrast] are “directed to a result or effect that itself is the abstract idea and merely invoke generic processes and machinery.”

(Citations omitted.) The Board noted that in Enfish, the Federal Circuit "found that the 'plain focus of the claims' there was on 'an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity.'" The Board thus held the claimed invention to be patent-eligible subject matter as "'an improvement upon technology that uses SAR image to determine the position of a target at great distances,' thus providing a specific improvement in computer capabilities". Quoting the appellants' arguments, the Board noted that "it does not appear that [the] claims simply add conventional computer components to an otherwise known practice, or invoke computer components merely as a tool to implement an otherwise abstract idea", and reversed the § 101 rejection.

My two cents:

This post is fourth in a series discussing how improvement arguments have saved the day for appellants facing Alice rejections. The original post predicted that such arguments will soon be on the ascendant as the weapon of choice in combating rejections alleging that claims are directed to abstract ideas, and gave a few relevant practice tips. Cases like this one make it look easy. Although the examiner was obstinate that the claims, which, at their broadest, were limited solely to data analysis steps, fell squarely within the abstract-idea judicial exception carved out of 35 U.S.C. § 101, the Board was easily persuaded that the claims did not tie up an abstract idea and reversed the rejection. The Board did not, for example, require the appellants to prove with quantitative data that the claimed method reduced processor effort and resulted in less error, as asserted in their arguments. Nor even did the Board require the appellants to provide detailed reasoning showing why such improvements were inherent to the method. The appellants' arguments look conclusory, but they were enough here, in part, probably, because the examiner did nothing to address them, despite full opportunity (unlike in the case discussed last week, in which the arguments were fleshed out only in the reply brief).

It's difficult to make sense of the applicants' "significantly more" argument as presented in their after-final response. It is not surprising that the examiner was not persuaded by the applicants' citing to a series of data collection and processing steps followed by a conclusory assertion that "the claims go beyond merely retrieving and combining data." The difficulty of formulating persuasive Alice second-step arguments in claims that more or less amount to pure software is one reason for the appeal of improvement arguments, which can apply even at step one.

Because the analysis is so thin on all sides, it's difficult to pinpoint why this improvement argument won, or if it would have won if challenged by the examiner. Likely, in absence of more detailed Supreme Court guidance, a lot of § 101 thinking is still "I know it when I see it." The improvement argument succeeded in this case where traditional "significantly more" arguments would probably not have been persuasive, since all of the recited or implied features outside the abstract idea itself were conventional components: an SAR sensor, a computer processor.

Stay tuned as we continue to look at how improvement arguments can prevail over Alice rejections of software claims.

Slots o' Fun: Reply brief improvement arguments rescue claims on networked casino game presentation control from Alice rejections

noreply@blogger.com (Unknown) — Mon, 02 Apr 2018 12:33:00 +0000

Takeaway: Finding improvement arguments set forth in a reply brief to be persuasive, the Patent Board reversed Alice rejections of claims directed to controlling content presentation on banks of networked casino game machines (the better to attract your attention to all those flashing lights and screens when you set foot in the casino).

Details:

Ex parte Greenberg
Appeal No. 2016-006337; Application No. 13/382,783; Tech. Center 3700
Decided: Sep. 29, 2017

A representative claim on appeal read:

1. A computer-implemented method of operating a gaming system primarily dedicated to providing at least one casino wagering game, the gaming system including a plurality of wagering game machines and one or more controllers, the method comprising:
selecting, by one or more processors of the one or more controllers, a plurality of content presentation devices for presentation of a gaming effect, wherein the plurality of content presentation devices comprise video, sound production or lighting devices associated with a plurality of wagering game machines, wherein each of the plurality of content presentation devices has an identifier, and wherein a portion of the gaming effect is configured to be synchronized across the plurality of content presentation devices and the plurality of wagering game machines, and wherein the portion of the gaming effect is presented without interruption via the plurality of content presentation devices during a time interval;
receiving, into a non-transitory machine-readable medium coupled to the one or more content controllers, presentation status information for at least one of the plurality of content presentation devices, wherein the presentation status indicates a state of availability of the at least one of the video, sound production or lighting devices;
determining, by the one or more controllers, based on the presentation status information, that the at least one of the plurality of content presentation devices is unavailable to present the portion of the gaming effect during the time interval; and
utilizing, by the one or more processors of the one or more controllers, the presentation status information and the identifier for each of the plurality of content presentation devices to generate a transmission schedule in the non-transitory machine-readable medium, that synchronizes timing of transmissions of content control data for the gaming effect to the plurality of content presentation devices, wherein the transmission schedule is configured to schedule content control data to be sent to eligible content presentation devices using the identifier for each eligible content presentation device of the eligible content presentation devices, and wherein the transmission schedule omits the at least one of the plurality of content presentation devices that is unavailable to present the portion of the gaming effect based, at least in part, on the presentation status information and the identifier of the at least one of the plurality of content presentation devices that is unavailable to present the portion of the gaming effect.

(Emphasis added.)

The application was filed by inventors for WMS Gaming, a subsidiary of WMS industries, then the third-largest manufacturer of slot machines. The disclosure explains that since "players are likely to be attracted to the most entertaining and exciting machines . . . there is a continuing need for wagering game machine manufacturers to continuously develop . . . gaming enhancements that will attract frequent play." To this end, game presentation features such as sound effects, music, voices, and animation in wagering game systems are provided from various sources to banks of networked gambling machines (e.g., slot machines) and need to be controlled in a coordinated way via the casino network. In particular, the invention strives to provide a way for bank-wide effects to exclude unavailable machines in the bank from coordinated content presentations.

After the applicants submitted amendments and arguments to overcome anticipation and obviousness rejections, a notice of allowance was issued in July 2014, but the application was withdrawn from issue the following month, before the issue fee could be paid, for reconsideration in view of the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014).

Upon reopening of prosecution, the examiner found the claims to be directed to the abstract idea of "determining a transmission plan for a plurality of devices based on determining if the devices are available", and so rejected them as subject-matter ineligible as a judicial exception to § 101. Under step two of the Alice analysis, the examiner held that the additional elements in the claims amounted "to no more than a recitation of a generic gaming machine and generic computer network including a gaming network", and thus did "not provide meaningful limitation(s) to transform the abstract idea into a patent eligible application of the abstract idea such that the claim(s) amounts to significantly more than the abstract idea itself."

In the final rejection, the examiner cited to the Internet video ad case of Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014), wherein the Federal Circuit found the claims to be directed to an abstract idea, specifically, a method of using advertising as an exchange or currency, on the court's second reconsideration of the case, made with the benefit of the Alice decision. (The appeals court had twice previously held the claims to be eligible after Supreme Court decisions came down in Bilski v. Kappos, 561 U.S. 593 (2010), see 657 F.3d 1323, and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), see 722 F.3d 1335.) One of the holdings of Ultramercial was that the mere inclusion of the Internet in a claim would not render an otherwise ineligible claim allowable. Here, the examiner found that "a network based gaming means is a well-known game concept . . . as much as the use of the Internet within the computer art and therefore would be considered a general purpose computer and not a novel machine or apparatus." Thus, the examiner found the claims to be "directed to an abstract idea in regards to scheduling machines in a network to carry out a task, if available, which is both well-known and obvious in order to have a task be carried out the machine must be free and available," and, in support of this finding cited to the prior art reference relied upon in the already-overcome anticipation and obviousness rejections. Even after consideration of the claims' recitations of the changing the communication paths and the inclusion of status identifiers, "applicant's claims are still directed to the abstract idea of determining when to display content on machines based on availability with the only modifications being to which part talks to which part of the system and how the system identifies when a part of the system is busy or how to schedule the transmission. This does not amount to a significant change over the current gaming network art."

The applicants requested a pre-appeal conference, arguing that, "viewed as a whole, the claims
are not of a scope to broadly pre-empt any of the concepts that the courts have found abstract", such as fundamental economic practices, methods of organizing human activities, idea of themselves, or mathematical relationships or formulas. The applicants compared and contrasted their claims to claims analyzed in USPTO guidance examples, and concluded that the claims "go far beyond" the alleged abstract idea. The pre-appeal panel was not persuaded and the applicants appealed.

In the appeal brief, the appellants set forth what has become the standard panoply of typically ineffective arguments: the examiner failed to examine the claims "as a whole"; the claims were lumped into a specious and overbroad category of abstract idea; the rejection did not properly determine what the claims were "directed to". The appellants again argued that the claims did not tie up any concept that courts have identified as abstract, and that the wagering game machines, gaming network, and other features were not generic and amounted to significantly more. Finally and most critically, the appeal brief contained the germ of an improvement argument, asserting that the claims were "directed to an improvement in a specific technology or technical field."

The examiner answered that "the method performed is a well-known and well-understood one wherein a check should be made to determine if a machine is available before assigning a task thereby insuring that the assignment is either carried out or not interfered with." Moreover, "a gaming machine is a broad and generic category of computers and includes many well-known embodiments and therefore is still a generic machine." Further, "just adding a network or computer to perform the basic abstract idea does not add significantly more since it is well-understood to automate a process using a network to communicate the automation so as to avoid assigning personal [sic] to perform the task which makes the operation more expensive." The examiner referred in passing to the case of Planet Bingo, LLC v. VKGS LLC, 576 F. App'x 1005 (Fed. Cir. 2014).

In the reply brief, the appellants protested that the claims found to be abstract in Planet Bingo were directed to solving a tampering problem and minimizing security risks during bingo ticket purchases, which the Federal Circuit found similar to the consumer-transaction risk hedging held abstract in Bilski, but which, according to the appellants, were nothing like "determining a transmission plan" (the allegedly abstract idea to which the examiner found the appellants' claims were directed).

More significantly, as happened in the Vortman case discussed last week, by the time of the reply brief, the Federal Circuit had decided Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), holding software claims directed to a self-referential table subject-matter eligible under step one of Alice framework. The appellants seized on the new holding, arguing that the alleged abstract idea was untethered from the claim language, and explicating an improvement argument:

The claimed invention is a specific implementation of an improvement in the functioning of a computer system by allowing a controller to synchronize the presentation of a gaming effect on a plurality of presentation devices spread across a plurality of wagering game machines, where the gaming effect is to be presented without interruption. . . . [It] does not comprise "simply adding conventional computer components to well-known business practices." . . . [G]ame developers can face the problem that controlling content from multiple different sources can be challenging. . . . [The claims] recite a solution implemented by a controller that synchronizes the presentation of a gaming effect on a plurality of available presentation devices spread across a plurality of wagering game machines, where the gaming effect is to be presented without interruption. Because the controller implements the solution, the game developer is freed from developing all of the software necessary to control the presentation. Further, the functioning of the gaming system is improved by providing gaming effects that are presented without interruption by using available presentation devices and omitting unavailable presentation devices.

(Emphasis added.)

With the further benefit of the Federal Circuit's approval of software claims as a patent-eligible improvement in McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299 (Fed. Cir. 2016), the PTAB panel agreed

that the claims on appeal are directed to a technological improvement rather than an abstract idea such as organizing human activity or a fundamental economic practice. The claims employ status information and identifiers for content presentation devices to generate a transmission schedule to send to a plurality of content presentation devices in order to synchronize a gaming effect across a plurality of content presentation devices in a specific time interval. Although the process claimed for synchronizing the gaming effect is perhaps simple and logical, the Examiner does not provide evidence that the claimed process is merely the automation of the same process previously performed by a human.

(Emphasis added.) The Board thus reversed the § 101 rejections.

My two cents:

The examiner's final rejection and answer brief provided a judicial exception analysis of the type upheld by the Board in countless other cases. The appellants won in this case thanks to the improvement arguments introduced in their reply brief. This blog's recent post forecasting the growing importance of improvement arguments in overcoming Alice rejections set out some practice tips on when and how best to use such arguments. This appeal win illustrates some of those tips in action.

The appellants made it explicit that they were arguing an asserted improvement (practice tip #3) and had the prescience or good luck to include at least the beginnings of an improvement argument in the appeal brief. (It is not clear that the timing of the decision in Enfish would have been good enough cause to skirt the general rule that arguments not presented in the appeal brief are waived. See Ex parte Borden, No. 2008-004312 (B.P.A.I. Jan. 7, 2010) (informative); Ex parte Nakashima, 93 USPQ2d 1834, 1840-41 (B.P.A.I. Jan. 7, 2010) (informative).) They appropriately rebutted examiner efforts to characterize the claims as ineligibly directed to solving "an entrepreneurial rather than a technological" problem, to use the language of the Ultramercial case cited by the examiner (practice tip #2). They explained the problem and were able to point to description in their specification as evidence of the problem, its substantiality, the intent to solve it, and thus the specific improvement rendered (practice tips #2, #4, #5, and #7). Finally, the appellants had the examiner on record as to the closest prior art and were able to show a difference over that art, having already overcome art-based rejections that relied upon the reference (practice tip #8).

The appellants might also have had a bit of an upper hand over the examiner in this case, given that Enfish was decided between the time of the appeal brief and the reply brief and the examiner did not have the ability to respond to the improvement arguments. In the time of the old MPEP § 1208.02, the examiner could have withdrawn the case to prosecution to address the improvement argument, but that appears to no longer be the case. See MPEP § 1208(II) (jurisdiction passes to the Board after filing of a reply brief and the examiner will not "normally" have an opportunity for further argument without a Board remand with instructions to furnish a substitute examiner’s answer).

Next time we'll look at another software case in which the appellants managed to retrieve claims from the jaws of Alice rejections thanks to Board recognition of improvement arguments.

PTAB finds claims directed to tissue volume movement monitoring not ineligible as law of nature, abstract idea

noreply@blogger.com (Unknown) — Tue, 27 Mar 2018 00:03:00 +0000

Takeaway: The applicants appealed subject-matter eligibility rejections made under 35 U.S.C. § 101, alleging that the tissue volume monitoring claims were directed to a law of nature and an abstract idea. Persuaded by the appellants' improvement arguments, the PTAB reversed the rejections, holding that "while using generic and known tracking modalities (such as ultrasound and MRI), [the claimed invention] improves the internal tissue monitoring by using the slower rate modality to adjust parameters of the physical model to predict target volume location, which, in turn, is used to determine a tracking error for deciding when to turn off treatment."

Details:

Ex parte Vortman
Appeal No. 2017-003076; Application No. 13/226,060; Tech. Center 3700
Decided: Feb. 16, 2018

The application on appeal described methods and systems for continuously monitoring movement of an internal volume of tissue during treatment. A representative claim on appeal read:

1. A method of continuously monitoring movement of an internal volume of tissue during treatment thereof, the method comprising the steps of:
using a physical model of anticipated movement of an internal target volume to predict a target volume location as a function of time;
  continuously and directly tracking the internal target volume during treatment thereof using two tracking modalities, wherein
the first tracking modality provides initial estimated target volume locations based directly on first image contents of the internal target volume obtained at a first information update rate, and
the second tracking modality identifies subsequent estimated target locations of the internal target volume based directly on second image contents of the internal target volume obtained at a second information update rate lower than the first information update rate wherein the subsequent estimated target locations are more accurate than the initial estimated target volume locations;
  comparing the initial estimated target locations to the predicted target volume locations to determine a tracking error;
  if the tracking error exceeds a safety threshold, suspending treatment; and
  adjusting one or more parameters of the physical model based on the subsequent estimated target locations of the target volume.

(Emphasis added.)

The examiner found the claims to be directed to a law of nature because they contained "nothing more than 'well-understood, routine, conventional activity previously engaged in by researchers in the field."' The examiner further found the claims to be directed to an abstract idea because "there is no clear transformation of the determination and/or image data," no machine was required to obtain the physical model recited in the claims, and all the steps could be "derived by mind or by hand with writing utensil and writing surface."

In the appeal brief, the appellants argued that the claims' "approach clearly does not occur in nature and has markedly different characteristics compared to any natural phenomenon. Indeed, the subject matter of claim 1 is not even remotely relevant to the concepts that courts have found to be laws of nature (such as an isolated DNA, a correlation that is the consequence of how a certain compound is metabolized by the body, electromagnetism to transmit signals, and the chemical principle underlying the union between fatty elements and water)." The appellants asserted that the examiner had skipped to the second step of the Alice/Mayo framework without properly analyzing the claims under the first step, i.e., the examiner's attempt to characterize the claims as directed to a law of nature was improper in the first place.

As to the allegation that the claims were directed to an abstract idea, the appellants argued:

[N]o case has held, and the Office's guidelines do not state, that a transformation of image data is necessary for patent eligibility under § 101. Rather, to determine whether the claim contains a judicial exception, the Office's guidelines identify several categories of subject matter that represent "abstract ideas" within the scope of binding judicial precedent: fundamental economic practices, certain methods of organizing human activity, an idea "of itself," and mathematical relationships/formulas. Claim I of the present application recites a method of treatment involving target tracking, i.e., continuously monitoring movement of an internal volume of tissue during treatment using two tracking modalities; this hardly qualifies as an "abstract idea" that is merely being applied. It can hardly be characterized as a fundamental economic practice, a method of organizing human activity, an idea "of itself," or a mathematical relationships/formula, nor can it even be analogized to such concepts. . . . [W]hether or not image data is "transformed" in some way is not germane to the patentability of claim 1, because the claim is not limited to mere acquisition of image data, nor does it recite merely recognizing data within collected data sets or a mental process that "can be performed in the human mind, or by a human using a pen and paper."

The appellants further argued that the recitations of suspension of therapy if necessary and updating the basis on which target tracking occurs amounted to a transformation of the image data. Finally, noting the criticality of "determin[ing] whether the target volume location during treatment significantly deviates from the predicted target location," appellants threw in a brief improvement argument: "this advantageously allows the treatment to be suspended before the healthy, non-target tissue is damaged. Accordingly, claim 1 provides safety improvements in treatment and contains real-world application" (emphasis added).

In the examiner's answer brief, the examiner argued again that the claims amounted to "nothing more than routine data collection and/or insignificant extra-solution activity." The examiner alleged that "the abstract idea is a critical aspect of the claimed invention." The examiner also addressed the improvement argument by arguing that it amounted to mere attorney argument and was not supported by evidence such as experimental data.

By the time of the reply brief, the CAFC had favorably decided the pure-software, "self-referential table" case of Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016). The appellants were thus prompted to expand somewhat on their improvement argument, the germ of which had been included in their appeal brief:

[In Enfish,] the Court of Appeals for the Federal Circuit determined that a claimed invention qualified as patentable subject matter under step 1 of the Alice framework because the claims focused on an improvement to computer functionality. Here, the claims focus on an improvement to medical imaging and require operations on image contents based on tracking modalities. If anything, the present claims recite specialized equipment with even greater specificity than in Enfish.

The appellants also challenged the examiner's assertion that experimental evidence was required to demonstrate that the claims were directed to an improvement:

Characterizing the claimed invention as an improvement for § 101 purposes requires no evidence because the proposition is, in fact, self-evident: paragraph [0006] of the specification explains the challenge encountered during tissue treatment; paragraph [0007] describes the drawbacks of conventional approaches; and paragraph [0009] sets forth an approach utilized in the present application to overcome the treatment challenge while avoiding the drawbacks of conventional approaches. . . . [T]o the extent evidence is needed, it is supplied by the present specification.

After finding that the claims amounted to "significantly more" under the second step of the Alice/Mayo framework, the Board further found the improvement argument to be sufficient to overcome the allegation of subject-matter ineligibility:

The holding in [Enfish] also supports the patent eligibility of the claims. . . . In this case, the claims improve the way the tracking modalities operate in determining the movement of tissue volume to determine when to suspend treatment. Thus, the claimed subject matter is not merely an algorithm or natural phenomenon, but constitutes an improvement to how tracking systems operate, such as ultrasound and MRI, that improves their ability to monitor tissue movement during treatment. Thus, unlike the claims in In re TLI Commc’ns LLC Patent Litig., 823 F.3d 607, 610 (Fed. Cir. 2016), the claims include a sufficient inventive concept to satisfy § 101.

(Emphasis added.)

My two cents:

I don't want to say the Board got the outcome wrong. It is my sense that the claims are not directed to an abstract idea under the framework established by the Supreme Court, as elaborated and expounded upon by the Federal Circuit. But, I think, even if the Board arrived at the right answer, some of their reasoning gets it very wrong indeed.

In my last post, I highlighted the growing importance of improvement arguments, and provided a series of practice tips for successfully rebutting judicial-exception subject-matter eligibility rejections with improvement arguments. In this and the next few posts, I'll look at recent PTAB decisions in which improvement arguments helped win reversals of Alice rejections.

It's worth noting that the application was filed on an 8-page specification without drawings. There is no minimum specification length and no statutory requirement for a drawing so long as none are "necessary for the understanding of the subject matter sought to be patented." 35 U.S.C. § 113. (It's an interesting question whether the absence of any drawing renders an application immune to the annoyance of objections lodged under Rule 83 ("[t]he drawing in a nonprovisional application must show every feature of the invention specified in the claims"). However, I note that 35 U.S.C. § 113 and Rule 81(c) appear to authorize the examiner to demand a drawing whenever the "subject matter admits of illustration.") But a thin description may lead to trouble in prosecution, inasmuch as it can give the practitioner very little to lean on when the going gets tough. In my last post, I discussed the desirability, when making improvement arguments, of underscoring with sufficient explanation the real-world benefits of the improvement (practice tip #5), providing evidence to support the improvement (practice tip #7), and carefully identifying the previous state of the technology field (practice tip #8). Evidently, the specification was ample enough in this case to provide the needed explanations and evidence. But if any of the information necessary to make the improvement argument had been culled from the spec in the drafting phase, it could have complicated matters for the prosecuting practitioners, who might have been challenged to provide documentary or testimonial evidence to support their arguments.

But there's a bigger problem here, one that was not addressed by any party or the Board on appeal. The conditional clause near the end of claim 1, directing the suspending of treatment "if the tracking error exceeds a safety threshold," is properly afforded no patentable weight when considering the patentability of the claim, either under an eligibility rejection or an art-based one. See MPEP § 2103(I)(C), 4th paragraph, 4th sentence: "Language that suggests or makes a feature or step optional but does not require that feature or step does not limit the scope of a claim under the broadest reasonable claim interpretation." See also Ex parte Schulhauser, No. 2013-007847 (P.T.A.B. Apr. 26, 2016) (affirming obviousness rejections where a broadest reasonable reading of the claim excised method steps that only needed to be performed if certain conditions precedent are met, and holding that "[a] proper interpretation of claim language, under the broadest reasonable interpretation of a claim during prosecution, must construe the claim language in a way that at least encompasses the broadest interpretation of the claim language for purposes of infringement."); In re Johnston, 435 F.3d 1381 (Fed. Cir. 2006) (optional elements do not narrow claims as they can be omitted).

In the last post, I discussed the importance of the scope of the improvement argument matching the scope of the claim (practice tip #6). Here, because the claim reads as much on a method that does not suspend treatment as one that does, and because the improvement argument leans heavily on the functionality of this clause that might as well be stricken from the claim (see, e.g., the boldfaced portions of the appellant argument and the decision on appeal, quoted above), there is a potentially crippling scope mismatch between what is actually claimed and what it is argued that is claimed. Consequently, the applicability of the improvement argument might have been more limited than the examiner, appellants, and Board realized.

It is not clear whether, absent an effective improvement argument, the Board would have given the appellants the win based on their Alice step 2 arguments ("[W]e agree with Appellants that the claim as a whole is significantly more than the ineligible concepts."). This is because the Board's step 2 analysis seems to rely on the appellants' improvement arguments: "We are persuaded that the claimed
method . . . improves the internal tissue monitoring" (emphasis in original). As the Federal Circuit has held in various cases, improvement arguments are applicable at either step of the framework.

So, although an improvement argument won this case, perhaps it shouldn't have, at least not as argued and decided, and the Board likely erred in not realizing that a conditional limitation is no limitation. Possibly, the appellants could have avoided this issue with more artful drafting; "based on the tracking error exceeding a safety threshold, suspending treatment" gets the job done without the complication of patentably weightless conditional claiming language.

Beating Alice: Improvement arguments win Apple claims on context-based to-do list item generation

noreply@blogger.com (Unknown) — Fri, 16 Mar 2018 14:55:00 +0000

Takeaway: Apple Inc. inventors filed a patent application for an invention relating to context-based to-do list reminders, of the type that might be entered to a smartphone via voice command. Pertinent to the claims at issue, the specification describes automatically applying context on initial entry of the reminder (e.g., "Remind me to call George," or even "Remind me to call him," can be automatically disambiguated to "George Smith" based on, for example, the recentness of a phone call or e-mail with that particular George). The applicant appealed a subject matter eligibility rejection of claims to methods for storing, in association with a task item, a plurality of attributes derived from context data. Likening the claims to those found ineligible in SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014), as mere mental steps performed by a computer, the examiner held that the claims were directed to the "abstract idea of gathering of user information related to tasks that are based on user input and contextual data to display and assign task to a user which is viewed as the comparing of new and stored information and using rules to identify options." The examiner further found the context-based attribute derivation to be insignificant extra-solution activity that did not "amount to significantly more than the judicial exception because it is not clear that there is any meaningful improvement in the technology or to the technological environment." The appellants argued that the claims were directed to intelligent generation of reminders and tasks in electronic to-do lists based on user input and context data separate from the user input, and not to a fundamental economic practice or mathematical algorithm, or to anything that would preempt all practical applications of an abstract idea. The appellants further argued that the claimed subject matter represented a technological improvement over the previous state of the art in digital assistants. Noting that the examiner failed to adequately address the appellants' improvement arguments, the Board reversed the judicial-exception eligibility rejection.

Details:

Ex parte Gruber
Appeal No. 2017-001924; Application No. 13/251,088; Tech. Center 3600
Decided: Feb. 27, 2018

Improvement arguments would seem to be the fissure in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), that patent seekers are now laboring to widen into a gaping portal. Apple eked through this portal after throwing a litany of arguments at the Board and sticking one that persuaded the panel—an improvement argument.

The application on appeal described techniques for processing task items, among them, one in which a task item is generated based on input from a user and context of the input. A representative claim on appeal read:

1. A method comprising:
  at an electronic device comprising one or more processors and memory storing one or more programs for execution by the one or more processors, the method comprising:
  receiving, from a user, input that expressly specifies one or more first attributes of a task;
  based on the input, generating a task item for the task;
  automatically without user intervention, retrieving context data that is separate from the input;
  deriving from the context data one or more second attributes of the task; and
  causing a plurality of attributes to be stored in association with the task item, wherein the plurality of attributes includes the one or more first attributes and the one or more second attributes, and wherein the task item is stored in a list of task items to be displayed to and performed by the user.

(Emphasis added. The unorthodox "at an electronic device" element—unorthodox because it stuffs a structural element in a method claim—was added in response to a pre-Alice subject-matter eligibility rejection, in a May 2013 amendment that also deleted "wherein the method is performed by one or more computing devices" from the end of the method. The same amendment fleshed out the retrieving step a bit more.)

The meaning of the claim can be understood in light of an example provided by the appellants in the specification and appeal brief (at page 55):

[U]pon receiving an email from "Jack Bauer" asking for a status update about a project named "Project Bunny," a user can provide to a device the voice input "Send him an email about the project when I get home," which expressly specifies a first attribute of a task (e.g., send an email regarding the project). Using contextual data (e.g., the email from "Jack Bauer"), the device can determine second attributes of the task (e.g., that "him" refers to "Jack Bauer" and that "project" refers to "Project Bunny"). The device can then generate or store a task item that includes the first and second attributes (e.g., "Send Jack Bauer an email about Project Bunny").

(The specification also describes later triggering a notification that can be context-based. For example, a reminder to "pick up my dry cleaning" can be delivered when it is next detected that I am driving, as opposed to the reminder being delivered at a set time, when I might happen to be at my office or home and thus not especially disposed to running an errand. However, it seems that no claims at issue were directed particularly to this alternative/additional context-based notification trigger feature.)

After a long prosecution that included an RCE and an interview, the examiner finally rejected the claims under 35 U.S.C. § 101 as directed to

the abstract idea of gathering of user information related to tasks that are based on user input and contextual data to display and assign task to a user which is viewed as the comparing of new and stored information and using rules to identify which is the mental steps done on a computer. The mental steps include the insignificant extra solution activity of receiving data from a human which is not a statutory category, retrieving data regarding the user and task, saving data related to the task, and displaying information. These insignificant extra solution activities are used to derive information about the assignment of tasks is seen as the use of the use of mathematical relationships/formulas of data in order to provide the required tasks of a user which is seen as a form of using mathematical relationships/formulas to determine the organizing of human activities thus an abstract idea.

(Emphasis added.) The final rejection also stated that "it is not clear that there is any meaningful improvement in the technology or to the technological environment," despite an improvement argument having been placed on the record in response to the previous Office action. See March 2, 2015 filing, pages 11-12.

The appellants repeated and expounded on the improvement argument in the appeal brief:

The claimed invention . . . contemplates the intelligent use of "context data" in addition to user input to improve the accuracy, relevance, and usefulness of tasks generated for electronic to-do lists. As a result, fewer interactions between the digital assistant and the user are needed to adequately define the generated task, which enhances the computing efficiency and battery life of the electronic device and improves user experience. These improvements represent improvements to the technology and technical field of digital assistants specifically, and computers in general. For example, no general purpose computer could perform the complex association of task attributes based on context data without the instant invention.

In the answer brief, the examiner even went so far as to argue that "the claimed invention is not a technical problem being solved, it is a managerial problem being solved as invention seeks to notify the assignment of tasks to workers . . . and this is worker reminder to perform tasks."

In their reply brief, the appellants leaned on recent case law, including BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir 2016), and argued that the examiner's finding that the claims related to a managerial problem were a mischaracterization.

The Board found that the examiner failed to address the specific recitations of the claims, including those that resulted in relieving the user of making further input of context data after the first attribute of the task is received. The panel held that the record contained no explanation as to "why the derivation of context data without user intervention is not a technical improvement to the process of gathering user information," and reversed the subject-matter eligibility rejection.

My two cents:

The appellants won here not only because they were able to offer facially plausible improvement argument, but also because the examiner did not effectively address it. Below, I'll offer some tips for making improvement arguments that are proofed against a wider arsenal of examiner countermeasures. First, I want to talk more broadly about the increasing importance of improvement arguments and why patent practitioners ought to know how to make good ones.

At the moment, improvement arguments are among the most promising approaches to countering Alice rejections alleging that colorably statutory subject-matter claims are directed to mere abstract ideas, given how unadministrable the Supreme Court's separation of the abstract-idea analysis into two "steps" of dubious distinction has proven to be. (What is "significantly more," really? And if a claim has the magic "significantly more" in step two, how is it right to label the claim an abstract idea in step one?)

A brief historical background might start with the text of § 101, the relevant portion of which, declaring patentable "any new and useful improvement" on any "process, machine, manufacture, or composition of matter" (emphasis added), dates to 1793 statutory language attributed to Thomas Jefferson. Following a tradition established by a line of pre-1952 cases, the binary coded decimal conversion method case of Gottschalk v. Benson, 409 U.S. 63 (1972), judicially supplemented the statute, declaring "[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work." The tension between the statutory prescription and these judicial proscriptions has undergirded all subject matter eligibility jurisprudence since, including the abstract-idea cases of Bilski v. Kappos, 561 U.S. 593 (2010), and Alice.

The potential success to be had in overcoming abstract-idea subject-matter-eligibility rejections with improvement arguments was augured in the Alice decision itself, wherein the Supreme Court noted that the claims at issue in that case did not "purport to improve the functioning of the computer itself or effect an improvement in any other technology or technical field," unlike those at issue in Diamond v. Diehr, 450 U.S. 175 (1981), which "were patent eligible because they improved an existing technological process, not because they were implemented on a computer."

In the e-commerce patent case of DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014), claims variously characterized as being directed to, among other allegedly abstract ideas, "making two web pages look the same," "syndicated commerce on the computer using the Internet," and "making two e-commerce web pages look alike by using licensed trademarks, logos, color schemes and layouts" were held patent-eligible because the claims did "not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet. Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks."

The Federal Circuit further latched on to the implication in Alice of an "improvement" solution to the "abstract-idea" problem in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), deciding that pure software claims could be eligible under step one of Alice test where "the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity." Several months later, the appellate court's decision in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), held that claims for automatically animating characters using particular information and techniques were directed to a "technological improvement over the existing, manual 3-D animation techniques" and not to a mere abstract idea of "automated rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation."

Subsequent USPTO guidance issued November 2, 2016 urged that an "improvement in computer-related technology" is "not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of 'rules' (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer." The January 2018 revision of the MPEP now discusses improvement arguments in sections 2106(II), 2106.04(a)(I), 2106.04(a)(1)(II), 2106.05(I)(A), 2106.05(a), 2106.05(d)(I), 2106.05(f)(2), 2106.06(b), and 2106.07(b) and (c). Favorable improvement cases continue to trickle from the CAFC, like Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017) (finding eligible claims directed to an improved method of calculating the position and orientation of an object on a moving platform), Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) (finding eligible claims directed to an improvement behavior-based virus scan), and Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) (finding eligible claims directed to an improvement in user interfaces).

A survey of recent PTAB decisions will show that improvement arguments are not easy to win at the Board—affirmances far outnumber reversals—and a survey of final rejections will show that examiners are often confused when it comes to asserted-improvement law. For example, some examiners wrongly believe that for an improvement argument to overcome a subject-matter eligibility rejection, the asserted improvement must improve the speed, efficiency, security, etc., of one or more hardware elements such as a computer processor. This misimpression is discredited with citation to McRO, where the improvement was to the state of the art of computer animation and had nothing to do with making computers themselves faster, more efficient, more secure, etc. The same point could be made by reaching back to Diehr, in which the claimed invention likewise merely used a computer as a tool for improving an art, and nevertheless was found patent eligible. Some examiners also misread the "effect an improvement in any other technology or technical field" language from Alice to mean that the asserted improvement must be effected in a different technology or technical field than that to which the claims pertain, which, of course, is nonsensical. The rules of English grammar suggest that, as used in the quoted language, the word "other" is only meant to convey that computer functioning is itself one technology or technical field among many amenable to patentable improvement.

Even so, as the present case of Gruber shows, improvement arguments can be won, so let's dive into some practice tips.

1. Know that "improvement" means a technical benefit that comes out of the claims.
What is an "improvement"? Necessary but not sufficient to every improvement argument is demonstration of a clear difference between the claimed invention and the previous state of the technology field. A showing of such a difference, while sufficient to overcome an anticipation rejection made under § 102, is not all that is needed to overcome a subject-matter eligibility rejection made under § 101. Ultimately, a successful showing of an improvement requires answering the questions of (1) what benefit relative to the previous state of the technology field comes from the demonstrated difference, and (2) how does that benefit inure from positively recited claim elements?

2. Don't argue non-technical improvements.
In order for an improvement argument to hold water, the claimed invention should improve a technical problem, not, for example, a business problem.  See, e.g., Ex parte Xiao, No. 2016-002437 (P.T.A.B. Nov. 30, 2017) (finding ineligible claims directed to an improved methodology for forecasting new product sourcing). Any examiner efforts to recharacterize technical-problem claims in an ineligible light (as the examiner attempted to do in Gruber by recasting the invention as solving only a "managerial problem") should be called out and credibly controverted on appeal. Merely automating previously manual processing by using computers does not qualify as an eligibility-rejection-defeating improvement.  Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017). So, it is helpful if the specification and claims are drafted with these prohibitions in mind to better draw out the improvement and the technological field it relates to and to distinguish the invention in its fundamental character from those inventions already judicially prohibited as abstract.

3. Make it clear that you are attempting to overcome a rejection with an improvement argument.
Any improvement argument should be placed clearly on the record. A patent practitioner should consider using the phrase "specific asserted improvement" in the argument and should consider at least citing to one or more cases like Enfish, McRO, and Thales, signaling the line of eligibility argument being pursued. More preferably, if possible, the patent practitioner will clearly analogize the disputed claims to claims from one or more Federal Circuit or Board cases already held patent-eligible in consideration of improvement arguments.

4. Be specific as to the asserted improvement.
Another mistake that applicants make is merely stating that an invention improves a technology field, without showing exactly how the field is improved or what the precise improvement is. In accordance with the Enfish requirement for a "specific asserted improvement," the improvement asserted should be sufficiently particularized, for example, by showing in a non-conclusory fashion that a better result is achieved by the claimed invention, or that the claimed process is more efficient, etc. Asserting an "improvement" in only a general sense, without supportive detail, is unlikely to be looked on favorably by an examiner or the Board. See, e.g., Ex parte Spears, No. 2017-009838 (P.T.A.B. Mar. 8, 2018) (sustaining an eligibility rejection where the contended improvement was "provid[ing] access to content . . . in a non-conventional manner that substantially improves a user experience").

5. Explain real-world benefits of the improvement.
The argument should explain how the asserted improvement is substantial, i.e., provides a real-world advantage to practitioners of the art. An alleged improvement that lacks substantiality may be looked on by PTO as not a real improvement and therefore disqualified from the improvement exclusion to the judicial exception to § 101. Especially to the extent that an improvement can be characterized as a mathematical one (e.g., reduced noise in a signal), it can sound abstract, and it may need to be shown how the mathematical improvement relates back to the real-world invention practitioner.  There is no wasted ink spent convincing examiners and APJs what the invention practitioner is getting out of the invention that couldn't be gotten before.

6. Through argument or amendment, make sure the asserted improvement is commensurate with claim scope.
Asserted improvements can be explicitly recited in claims (e.g., in a "postamble" clause introduced by "thereby," "whereby, or the like), or inherent to the claims; the improvements can be quantitative or qualitative; but in any case, they are more easily discounted if they are not shown to apply to all claimed embodiments within recited claim scope. Just as a claim can be properly rejected under § 112(a) for greater breadth than the disclosure enables (see MPEP § 2164.08), an improvement argument can fail if claims can be reasonably read to be broader than embodiments to which the asserted improvement is confined.

If the explanation of the improvement shows that it applies to a limited subset of the claim scope, then either it should also include an explanation that a person of skill would understand that the improvement applies to more than just the explained claim scope subset (i.e., the explanation should be "scoped up" to the full scope of the claim), or the limited scope subset should be recited in the claim (i.e., the claim should be "scoped down" to what the improvement has been explained to apply to). The applicant should ensure that changes to claim scope are afforded patentable weight.

Consider, for example, method or computer-readable media (CRM) claims directed to vehicle maneuvering software used in a self-driving car, rejected under § 101 as allegedly directed to an abstract idea. The motivation behind the invention was to solve a problem with the parking phase, and a good improvement argument can be made that the claims provide a substantial, particular improvement in the parking of self-driving vehicles. Yet, the claims do not recite parking, but instead recite vehicle navigation more generally. Under such circumstances, it may make sense to narrow the claim scope to parking embodiments of the invention via amendment before proceeding to appeal, if a broader improvement argument applicable to all claim embodiments cannot be made.

7. Provide evidence in support of the improvement argument where necessary.
Successful improvement arguments have often been very simple ones, pointing to the art problems and solutions described in the specification. In some cases, however, the improvement argument may require explanation that is extrinsic to the original disclosure. This is permissible; like all other arguments for patentability made in response to a rejection, an improvement argument is not an amendment to the disclosure and cannot be considered new matter. As such, where an improvement argument cannot ride solely on scientific reasoning (e.g., showing cause and effect), it can resort to evidence comparing claimed results to conventional results. Such evidence can be documentary (e.g., white papers, book chapters) or testimonial (e.g., declarations entered under Rule 132), and is not limited to reference materials from before the priority date of the invention. In some instances, the argument can be bolstered by collected data and visual aids such as graphs and charts. Just as it is important to marshal the needed evidence at the procedurally appropriate time prior to appeal when combating anticipation or obviousness rejections at the Board, it can be important to build the evidentiary record to support an improvement argument before going to appeal.

8. Identify the previous state of the technology field carefully.
Any improvement argument will need to identify the previous state of the technology field in order to illustrate the distinction from, and provided benefit over, this previous state. This identification can be done by way of example, and is sometimes already done by the examiner elsewhere in prosecution via the one or more references produced to support one or more art-based rejections. Thus, it may be that the previous state of the technology field is that described in art from an overcome or still-disputed § 102 or § 103 rejection, and it might still be clear that the improvement is relative to that art. In other instances, particularly following amendment to distinguish art that is not particularly relevant to the intended invention, it may no longer be appropriate to use examiner-cited art as the basis for comparison, and the applicant may want to select a different example as the basis for comparison.  Where art-based rejections have been overcome, an advantage to using examiner-cited art as the basis for comparison is that there is already agreement that there is a difference between the claims and the eliminated-art examples. If that art does not best represent the previous state of the technology field, perhaps because it addressed a fundamentally different problem or involved fundamentally different means, then it may be advantageous to carefully select an example best suited to illustrate the asserted improvement.

I hope these tips have provided some food for thought when next crafting improvement arguments to overcome judicial-exception subject-matter eligibility rejections. In future posts I'll cover a few more recent Board decisions in which improvement arguments won the day.

Procedural bait and switch: withdrawn rejections as undesignated new grounds in Examiner's Answers

noreply@blogger.com (Unknown) — Fri, 03 Nov 2017 21:45:00 +0000

As discussed in MPEP § 1207.03(b), 37 C.F.R. § 41.40 sets forth the exclusive procedure for an appellant to request review of an examiner’s failure to designate a rejection made in an examiner's answer brief on appeal as a "new ground of rejection": the appellant must file a petition under 37 C.F.R. § 1.181, which petition tolls the time period for filing a reply brief under the current rules. If the appellant does not petition, the Board will not dismiss the new ground of rejection on appeal, but will affirm it if the appellant's arguments do not otherwise overcome the rejection. This is because, absent such a petition, the Board's review is limited to whether the appellant identifies reversible error in the examiner's position. In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011). 37 C.F.R. § 41.40 thus permits a procedural trap for the unwary that can be set by an examiner to ensnare unwitting appellants. And sometimes, the trap can be set without even the examiner realizing it.

More nefarious versions of the trap go something like this: an examiner may withdraw a ground of rejection during prosecution, luring the applicant into a false sense of security, only to reintroduce the rejection during appeal, after the appellant has not the opportunity to introduce evidence in rebuttal of the reintroduced rejection, and without designating the reintroduced rejection as a "new ground" of rejection or withdrawing the application from appeal back into prosecution to give the applicant an opportunity to address the renewed rejection. Once the applicant complains to the Board about the procedural unfairness of the reintroduced rejection, perhaps futilely raising the specter of deprivation of due process or violation of the Administrative Procedure Act, rather than filing the required petition, the trap is sprung. The appellant's election to proceed to the Board leaves the Board powerless to address whatever unfairness may inhere in the situation, since 37 C.F.R. § 41.40 deprives the Board of any such power by making the matter a petitionable one.

The trap may even be set by the examiner unwittingly, as where the examiner copies and pastes from the text of the final Office action without reference to any effect of a subsequent advisory action. This would seem to be a plausible explanation for what happened in Ex parte Schultz, No. 2015-005690 (P.T.A.B. Sep. 26, 2017). In that case, in an advisory action, the examiner withdrew a written description rejection made under pre-AIA 35 U.S.C. § 112, first paragraph, following the applicant's arguments after final rejection, and the applicant appealed the remaining obviousness rejection. The examiner then re-introduced the written description rejection in the examiner's answer brief—despite the answer brief including an opening statement identifying the obviousness ground as the only remaining ground for rejection. The appellant complained to the Board about the impropriety of the re-introduced rejection in a reply brief, but the Board considered the rejection as maintained on appeal, despite the advisory action and the inconsistent opening statement of the answer brief. Fortunately for the appellant, even without substantive argument addressing the written description rejection in the reply brief, the Board exercised its discretion to take up the issue and reversed, finding no prima facie case of lack of written description had been made. The appellant in Schultz lucked out. Other appellants may find the Board not to be so accommodating in their own appeals.

To complicate matters, it may not always be easy for appellants to spot a "new" ground of rejection in an examiner's answer brief. Taken together, 37 C.F.R. §§ 41.30 and 41.39(a)(2) provide that, for the purposes of the examiner's answer brief, any rejection that relies upon any evidence (not including dictionaries) not relied upon in the Office action from which the appeal is taken, as modified by an advisory action, is a new ground of rejection and must be so-designated, except that, as discussed above, any failure in designation is of no consequence to the examiner, despite being consequential to the appellant. But what about where no new evidence is entered? A position or rationale that does not change the "basic thrust" of a rejection and does not deprive the appellant a fair opportunity to respond generally does not give rise to a "new ground." In re Kronig, 539 F.2d 1300, 1303 (C.C.P.A. 1976). New motivations to combine references can constitute a "new ground". Rambus Inc. v. Rea, 731 F.3d 1248 (Fed. Cir. 2013). Reliance on a portion of a reference not earlier cited by examiner, even where the reference had been cited, can constitute a new ground of rejection. Ex parte Rogers, No. 2014-000330 (P.T.A.B. June 9, 2016). Even so, this blog previously discussed a PTAB decision in which a new reference citation was held not to amount to a new ground of rejection when the reference was in the priority chain of previously used references.

In the recent case of Ex parte Roussos, No. 2016-005524 (P.T.A.B. Nov. 3, 2017), the examiner relied upon five references, newly introduced in the examiner's answer, to prove the meaning of a claim term ("ethylene-alpha olefin copolymer"). While acknowledging that "[a]n examiner cannot . . . newly cite to patent documents not relied upon previously without designating the Answer as including a new ground of rejection" and that the examiner "failed to comply with the Office’s rules by failing to" make the requisite designation, the Board took the appellant's failure to petition to be an acquiescence to their procedural propriety and considered the substance of the appellant's arguments, on which the Board reversed the examiner ("it is clear from Appellant’s Specification that a broader unconventional definition [of the disputed claim term as urged by the Examiner on the basis of the five newly cited patents] was not intended"). Again, the appellant was lucky, but also smart, to have included at least something of a substantive rebuttal of the new grounds.

Board records are replete with instances where the appellants were not so lucky. In Ex parte Snyder, No. 2017-004918 (P.T.A.B. Sep. 19, 2017), where the appellants argued that shifting examiner interpretations of how the cited art read on the claims constituted a new ground of rejection, the Board affirmed. "We will not consider Appellants’ argument that the Answer includes an undesignated new ground of rejection. This issue is addressable by petition to the Director, not appeal to the Board." See also Ex parte Peltz, No. 2017000970 (P.T.A.B. Sep. 5, 2017) ("Appellant[s] did not avail [themselves] of the [petition] provision . . . . Instead, Appellant[s] filed a Reply Brief in timely fashion without presenting substantive arguments addressing the disputed new issue (rejection).").

Usually, the Board dispenses with appellant arguments that examiner's answer arguments constitute new grounds with no more than a terse footnote. See, e.g., Ex parte Baltes, No. 2016005613 (P.T.A.B. Sep. 19, 2017) ("We deem Appellants, by their presentation of arguments in the Reply Brief in rebuttal to the Answer, to have waived any argument that the rejection must be designated a new ground."); Ex parte Holtzman, No. 2016-001992 (P.T.A.B. Sep. 15, 2017) ("By filing a Reply Brief rather than filing a petition under 37 C.F.R. § 1.181, Appellants waived any argument that the Answer included a new ground of rejection."); Ex parte Chidambaran, No. 2017005099 (P.T.A.B. Aug. 23, 2017). (The Board ultimately did reverse in Baltes.)

Once, the Board "declined" an "invitation to announce and apply a new legal rule" in denying a request for rehearing in Ex parte Kreiling, No. 2014-005850 (P.T.A.B. May 21, 2017), the requested "new rule" being: "when an examiner’s answer contains a new ground of rejection, the Board should ignore the examiner's new arguments and/or new findings of fact as untimely for purposes of determining patentability and consider the inclusion of the new grounds of rejection as a tacit admission that the rejections in the final office action are fatally flawed." To back up the request, the appellants cited to Ex parte Yudoovsky, No. 2011-006238 at 5 n.3 (B.P.A.I. Feb. 16, 2012), in which the Board "decline[d] to consider [a] new [rejection] rationale because it implicitly constitutes an unauthorized new ground of rejection" and "[t]he 'Response to Arguments' section of the Answer is not an appropriate place to raise a new rationale for unpatentability", and Ex parte Haalck, No. 2010-002620 at 3-4 (B.P.A.I. July 14, 2010), where the Board decided that "[t]he Examiner’s Answer does not contain a statement that a new ground of rejection was entered into the record", so "the rejections relying on the full disclosures of [three cited references] are not properly before this panel." Aside from finding the requested "new rule" in contravention of 37 C.F.R. § 41.40(a), and the two cited decisions non-binding, the Board also found that the

proposed rule represents poor policymaking. Were we to adopt the proposed rule, an applicant would be able to avoid addressing the merits of an undesignated new ground of rejection—whether by presenting evidence, amending claims, or presenting argument—merely by asking the Board to recognize the examiner's undesignated new ground of rejection as such. The public interest is not served by allowing an applicant to avoid addressing the merits of a new ground of rejection—whether or not it is so designated—presented for the first time in the examiner’s answer. Nor is treating the inclusion of a new ground of rejection in an examiner’s answer as a tacit admission by the examiner that the rejections in the final office action are fatally flawed consistent with the law. As our reviewing court stated, "[p]atent examiners are quasi-judicial officials" and therefore do not make admissions, but rather make findings of fact and conclusions based on their factual findings. Western Elec. Co. v. Piezo Tech., Inc., 860 F.2d 428, 431 (Fed. Cir. 1988).

Although no serious fault can be found in this reasoning, it can scarcely be disputed that the procedural setup for responding to new grounds of rejection on appeal places multiple burdens on the appellant: the burden of catching the newly introduced or re-introduced ground; the burden of recognizing the rejection as an undesignated "new ground"; and the burden of making the strategic decision of whether to proceed to the Board in spite of the new ground, or if not, the burden of filing the petition to have the rejection denominated as a new ground and to return the application to prosecution to address it. By contrast to the waiver imposed on the appellant who does not petition, there is no consequence for the examiner who violates the rules by not properly designating a new ground of rejection. On top of these applicant burdens, costly appeal forwarding fees can be wasted if new grounds on appeal are not timely caught. Appellants should never assume that a withdrawn ground reintroduced in an examiner's answer brief will be taken by the Board for the copy-and-paste error that it appears to be.

Doubtless many applicants—even those represented by experienced practitioners, in some cases—have fallen prey to various forms of the "undesignated new grounds" trap and will continue to do so as long as the rules favor examiner trickiness or carelessness over balance in procedural burdens.

PTAB reverses obviousness based on inherency and design choice – but then enters new design choice rejection

noreply@blogger.com (Karen G. Hazzah) — Fri, 04 Nov 2016 02:12:00 +0000

Takeaway: In an obviousness rejection, the Examiner relied on several alternative theories for the range of values claimed for a material property of foam: inherency, design choice, and overlapping ranges. The Applicant appealed, and the Board reversed the Examiner's rejection. The Applicant's specification was persuasive evidence that the claimed property wasn't inherent, the Examiner's design choice rationale amounted to an impermissible per se rule, and the overlapping ranges theory relied on data in the Applicant's own specification. However, after finding that the claimed effusivity values weren't described by the Applicant as critical, the Board went on to enter a new obviousness rejection. On the basis of these additional factual findings, the Board found that "the mere selection of a known plastic material having the claimed ranges for effusivity and thermal conductivity to make Reinke's plastic container, as modified by Ishikawa, would have been an obvious design choice for a person skilled in the art." (Ex parte Gehring, PTAB 2016.)

Details:

Ex parte Gehring
Appeal 2014004556; Appl. No. 12/485,073; Tech. Center 3700
Decided: June 10, 2016

The application on appeal was directed to a case for dispensing cleaning wipes. The specification taught that some consumers prefer a case that feels warm to the touch. This property of a material, known as effusivity, is calculated as the square root of the product of the material's thermal conductivity, density, and specific heat capacity. The originally filed claims recited a foam material with a specific effusivity range.

A representative claim on appeal read:

1. A reusable container for storing and dispensing wipes, the wipes container comprising:
a. an upper container shell hingedly joined to a lower container shell
such that the upper and lower shells can be configured in an open position and a closed position,
wherein an interior storage space is defined by the upper and lower shells when the shells are in the closed position,
the upper and lower shells being at least partially separable from one another to enable a user to replenish a depleted wipes supply in the container;
b. an opening in the upper shell that enables a user to access at least one wipe stored in the interior storage space, and
a lid connected to the upper shell and disposed over the opening;
wherein the upper and lower shells are formed of a molded synthetic polymeric foam material
wherein the synthetic polymeric foam has an Effusivity value at 23° C and 32° C of from 200-300, according to the Sensory Warm Test, and
the lid is formed of a different polymeric material than the shells.
(Emphasis added.)

The Examiner initially rejected the claim using a combination of Reinke and Guy. Guy taught a wipes container having a foam insulator, and the Examiner asserted "it appears that Guy's insulator would inherently have the claimed effusivity value." The Applicant amended to specify the foam's location (outer surface of the shell). The Examiner's next rejection used a new secondary reference Abramson, plus a third reference Lee. Abramson taught a wipes container with outer surface made of leather, and Lee taught foamed EVA as replacement for leather. According to the Examiner, it was obvious to substitute foam for leather, and "it would appear that the foamed EVA of Lee inherently has the claimed effusivity value." The Applicant amended again, adding a lid formed of a different polymeric material.

The next rejection added a third reference Ishikawa for the lid, and switched to a different secondary reference Miller ("Vascular Access Kits and Methods"). Miller disclosed a two part case made of EVA foam, and taught that "EVA may be generally described as a polymeric material with some of the characteristics of elastomeric materials and some characteristics of thermal plastic materials." The Examiner asserted the obviousness of making Reinke's case out of Miller's EVA foam "for the predictable result of obtaining good thermal characteristics." The Examiner further asserted that "it appears that the EVA of Miller would have the claimed effusivity value," and indicated that the burden of proof had shifted to the Applicant. (“[T]he PTO can require an applicant to prove that the prior art products do not necessarily or inherently possess the characteristics of his [or her] claimed product." In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433-34 (CCPA 1977).)

In response, the Applicant amended the foam characteristics to narrow the claimed effusivity value, from "less than about 550" to "from 100 to 400." In addition, the Applicant traversed the Examiner's reliance on Miller by noting that while the Applicant's specification taught that EVA foams have differing effusivity properties, Miller did not discuss any reason to use materials with particular thermal conductivity or effusivity properties. According to the Applicant, the fact that containers formed of EVA foam were known did not amount to a suggestion to use a material with the particular property claimed.

The Examiner maintained the rejection. In the Response to Arguments, the Examiner asserted that it was "within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of design choice" (citing to In re Leshin, 277 F.2d 197 (CCPA 1960)). The Examiner also explained that even if Miller didn't discuss the desirability of particular effusivity values, recognition by the Applicant of a different advantage that flowed naturally from the prior art doesn't confer patentability (citing to Ex parte Obiaya, 227 USPQ 58 (BPAI 1985)).

The Applicant once again narrowed the effusivity range (now "from 200-300"), and this time argued there was no suggestion or teaching in the references to both replace Reinke's material with Miller's EVA form and to "select and/or process such material such that it would have an Effusivity Value [as claimed]." The Examiner maintained the rejection, and addressed the narrowed effusivity range by reiterating his position that Miller's EVA foam was presumed to inherently have the claimed effusivity value.

The Applicant appealed. In the Appeal Brief, the Applicant first attacked the Examiner's rationale for combining as follows:

Although Miller et al. mentions at [0055] that its molded case may be formed of compression molded EVA foam, it also states that it may be formed of any of a number of other materials "including, but not limited to, nylon, cordura type materials, various types of polymeric and plastic materials,'' and "relatively soft materials such as canvas, polyesters and similar materials,'' "materials such as lightweight aluminum alloys and similar hard materials," and "a wide variety of polymeric materials, elastomeric rnaterials and/or thermoplastic materials" including urethane and PVC. Contrary to the Office's assertion, Miller et al. contains no mention of "good thermal characteristics." Regardless, this phrase is undefined and ambiguous, and therefore, devoid of any suggestive content. Miller et al. provides no particular reason why compression molded EVA would be desired over any of these other materials in any particular circumstances.
(Internal citations omitted.)

The Applicant then attacked the Examiner's reliance on inherency:

Here, the Office has not shown that the EVA foam mentioned by Miller et al. would necessarily have only a particular range of Effusivity (falling within the range of Applicant's claims), or that this would be recognized by a person of ordinary skill in the art. Further, data in Table l of Applicant's specification, and the associated explanatory text, show that compression molded EVA foam as taught by Miller et al. may have an Effusivity Value outside of the recited range. ... This [data] shows that the Effusivity of compression molded EVA foam is not necessarily 200-300, contrary to the Office's assertion of inherency.(Emphasis added, internal citations omitted.)

The Examiner maintained his position in the Answer. After reiterating the previously stated rationales (design choice; and Miller's brief mention that EVA has thermal characteristics), the Examiner then brought up a new benefit of an EVA foam liner, as taught by Miller: "protect the contents carried in the resulting kit from being damaged or crushed."

With regard to the Applicant's argument that the Office Action had failed to show inherency, the Examiner responded as follows:

It has been held that in the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. [Citing to In re Wertheim, In re Woodruff, and In re Geisler.] Similarly, a prima facie case of obviousness exists where the claimed ranges and prior art ranges do not overlap but are close enough that one skilled in the art would have expected them to have the same properties.

The Appeal Brief had referred to the specification as evidence that EVA foam doesn't necessarily have the properties claimed. In the Answer, the Examiner noted that "Miller et al. may also have an Effusively Value inside the recited range" and explained that prima facie obviousness exists when claimed ranges "overlap or lie inside ranges disclosed by the prior art." Finally, the Examiner stated again that the burden of proof on inherency had shifted to the Applicant.

The Board reversed the Examiner's rejection, finding several errors. First, the data in the Applicant's specification was "persuasive evidence" that Miller's EVA foam may have effusivity values outside the claimed range, which meant the Examiner's use of inherency was improper. Next, the Examiner had relied on the same Applicant data as evidence that some EVA foams have an effusivity value overlapping the claimed range. This was also error: "because sample 12C is part of Appellant's Specification, it does not constitute prior art against the claimed effusivity range subject matter. Finally, the Examiner's use of design choice was also in error:

... the Examiner's mere reliance on In re Leshin amounts to a per se rule that eliminates the need for fact-specific analysis of claims and prior art and is legally incorrect. Our precedents do not establish any rules of obviousness, just as those precedents themselves expressly declined to create such rules. In re Ochiai, 71F.3d 1565, 1572 (Fed. Cir. 1995).

The Board did, however, make a new ground of rejection that found the claim obvious over the primary reference Reinke in combination with the tertiary reference Ishakawa. (The Board's rejection did not rely on Miller.) Reinke disclosed upper and lower shells and a lid, and Ishakawa taught a lid made of a different material. And although neither reference taught the claimed effusivity range, the Board found that "the selection of a suitable material is a matter of obvious design choice."

The Board supported the rejection with additional findings, and provided additional explanation. First, the Board noted that the relevant issue for design choice is whether the alleged differences between the claimed invention and the prior art "result in a difference in function or give unexpected results" (citing In re Rice, 341 F.2d 309, 314 (CCPA 1965)). Next, the Board noted that the materials described in Applicant's Table I were commercially available, and found that the material properties of effusivity and thermal conductivity were well known. In making this "well known" finding, the Board relied the specification's characterization of effusivity as a "commonly known" property, as well as case law that "[a]n artisan must be presumed to know something about the art apart from what the references disclose." In re Jacoby, 309 F .2d 513, 516 (CCPA 1962).

The Board then found there was "no evidence of record to express the criticality of the claimed ranges." The specification merely identified any value less than 550 – whether inside the claimed range or outside – as "suitable" for holding wipes. The effusivity and temperature ranges weren't critical, and did not "result in a difference in function or give unexpected results." "Accordingly, the mere selection of a known plastic material having the claimed ranges for effusivity and thermal conductivity to make Reinke's plastic container, as modified by Ishikawa, would have been an obvious design choice for a person skilled in the art."

My two cents: It was clear from the very first Office Action that the Examiner wasn't relying on a specific teaching for the claimed effusivity range, but was instead relying on other rationales – first inherency, then design choice, then overlapping ranges. Yet the Applicant narrowed the range not once, but twice, without even addressing these rationales.

Huh? If the Examiner took the position that "less than 500" was inherent in the reference, what reason did the Applicant have to think that a narrower range would not be viewed as inherent?

Seems to me the Applicant could have ended prosecution sooner and just gone to appeal on the claimed range. I think the Examiner's rejection had plenty of holes in it, so I'd probably appeal. Wouldn't have changed the end result – the Board fixes the Examiner's mistake by issuing a new rejection – but would have saved an RCE fee and attorney fees for two responses.

It's also true that the claims were vulnerable to a properly articulated design choice rejection – which is exactly what the Board did. Was it wise to appeal such a vulnerable claim? Not a clear call. Sometimes the Board does the extra work to enter a new rejection, but sometimes the Board just reverses the Examiner. I think I would have appealed – but probably without narrowing the originally claimed range.

PTAB reverses indefiniteness for a "system" claim having a single (regulator) element

noreply@blogger.com (Karen G. Hazzah) — Thu, 13 Oct 2016 03:50:00 +0000

Takeaway: The independent claim on appeal was a "system" with a single "regulator" element in the body of the claim. The regulator was defined in the body of the claim with several structural elements and one functional limitation. The Examiner found it unclear as to whether the functional language was limiting or not, and so rejected the claim as indefinite. The Board reversed, finding that "['system'] simply connotes the following parts are intended to move and/or work together." Since the claim clearly described a regulator as parts intended to work together, "there is nothing ambiguous with describing, in the preamble, the claimed regulator as a 'system.' " (Ex parte Bell, PTAB 2016.)

Details:

Ex parte Bell
Appeal 2014-009335; Appl. No. 13/050,752; Tech. Center 3700
Decided: September 28, 2016

The application on appeal was directed to a hydraulic pressure regulator. A representative claim on appeal read:

     1. A system comprising:
     a spring-loaded hydraulic pressure regulator having a maximum deadband of less than 200 pounds per square inch when coupled to a source of pressurized fluid having a supply pressure of at least 1000 pounds per square inch,
     the spring-loaded hydraulic pressure regulator comprising:
     a housing having first and second inner chambers;
     a spring disposed within the second chamber;
     a sensing piston disposed within the housing and responsive to pressure within the first inner chamber and to a biasing force generated by the spring; and
      at least one supply seal ring disposed within the first chamber.

The Examiner rejected claim 1 as indefinite. The Examiner explained that the only structural limitations of the claim were parts of the regulator. This indicated that the claim was drawn to a regulator, even though the preamble read "a system comprising." It was therefore unclear whether the functional language "having a maximum deadband ..." was part of the preamble (and thus non-limiting) or part of the body (and thus limiting).

On appeal, the Applicant argued that the deadband functional language was clearly part of the body, since it followed the preamble. The Applicant further noted the dependent claims included further elements in the system of the independent claim. Finally, the claim was definite because "it sets out and circumscribes a particular subject matter (i.e., a specific type of spring-loaded hydraulic pressure regulator) with a reasonable degree of clarity."

The Examiner responded in the Answer as follows:

[T]he claim includes two transitional phrases, and the argued limitation also precedes the second transitional phrase, under which logic the argued limitation should be considered part of the preamble, because it precedes a transitional phrase.

The Examiner summarized up his stance on indefiniteness as: "reasonable artisans could disagree as to the limiting effect of the argued limitation."

The Board reversed the indefiniteness rejection as not being supported by a "rational underpinning." Referring to a dictionary definition of "system," the Board explained that the word "simply connotes the following parts are intended to move and/or work together." Since the claim clearly described a regulator as a combination of parts intended to work together, "there is nothing ambiguous with describing, in the preamble, the claimed regulator as a 'system.' "

My two cents: I suppose the Applicant could have avoided/overcome the rejection by using "regulator" in the preamble. But maybe using "system" instead avoided arguments in litigation about the meaning of "regulator" ?

Some of the Applicant's comments suggested that the use of "system" rather than "regulator" in the preamble was related to the dependent claims. "System" allowed dependent claims with additional elements (e.g., blowout preventer, fluid source) that were external to the regulator.

Would the Examiner have given the same indefiniteness rejection if the preamble recited device or apparatus?

PTAB reverses 103 when secondary reference feature would not provide benefit if incorporated into primary reference

noreply@blogger.com (Karen G. Hazzah) — Wed, 21 Sep 2016 03:47:00 +0000

Takeaway: The Examiner rejected claims to a citrus reamer as obvious over a combination of three references, with two references disclosing the claimed features and a third providing a reason to combine. The Applicant successfully argued the the Examiner's reason to combine wasn't rational, by providing a technical explanation of why the feature from the second reference wouldn't work in the primary reference. The Board agreed and reversed. (Ex parte Hensel, PTAB 2016.)

Details:
Ex parte Hensel
Appeal 2014-006258; Appl. No. 13/306,946; Tech. Center 3700
Decided: June 9, 2016

The application was directed to an electric citrus reamer. The only independent claim on appeal read:

     15. A citrus press device with a motor for rotating a citrus reamer comprising:
     ...
     a fruit dome that cooperates with the reamer;
     the reamer having primary ribs,
     each rib having an apex, the apex comprising an elevated projection;
     the elevated projections spaced from and surrounding a central pin that acts as a spacer between the reamer and the dome.

The Examiner rejected the claim as obvious using a combination of three reference. The Examiner found that the primary reference De Zarate (a utility patent) disclosed all limitations except for the projections. For that feature, the Examiner turned to the secondary reference Reinicke (a design patent). The Examiner proposed using Reinecke’s ribs in De Zarate’s reamer 25 so that the De Zarate’s protuberance 26 (mapped to the claimed "central pin") was "surrounded by ribs and was at a higher elevation than the ribs.” For a reason to combine, the Examiner turned to a teaching in the third reference Jakovicz (also a utility patent) "... portions formed to grip the fruit section [would] prevent undue slipping during use of the device."

The Applicant made two arguments on appeal. One, the combination of the primary and secondary references did not suggest the claimed cooperation between ribs and central pin. Two, the third reference did not provide a motivation to combine the first two references.

More specifically, the Applicant argued that the primary reference De Zarate taught a central pin but no ribs, while the secondary reference Reinicke taught ribs but no pin. In combining the two, the Examiner did not account for the claim language which required the projection at the apex of each rib to be spaced apart from the central pin, and also required these projections to surround the central pin. According to the Applicant, the Examiner had improperly isolated the pin and rib features and did not consider the claim as a whole.

Reinicke's ribs

De Zanate's reamer

The Applicant also traversed the Examiner's rationale for combining, by arguing that the advantage described in Jakovicz – prevention of undue slipping during use of reamer – didn't make sense when applied to De Zanate's reamer. De Zarate’s device extracted juice from a fruit section by pressing the fruit section between dome (33) and rotating reamer (25), whereas Jakovicz disclosed a fruit press juicer, which did not suggest inclusion of a rotating reamer. Based on this difference in operation, Jakovicz’s teaching of “rib-like parts being formed to grip the cut edge of the fruit section and prevent undue slipping thereof” was not a rational basis for modifying De Zarate’s reamer 25 to include the claimed ribs, since the principle of reamer 25 requires rotation relative to the fruit. The Applicant concluded this portion of the argument by framing the issue as "no reasonable expectation of success," and noting that "Reinecke is a design patent that provides little or no teaching in regards to any operation of the reamer" (emphasis added).

The Board reversed, finding that the Examiner's rationale for modifying De Zarate’s reamer to include ribs was not rational. The Board agreed that Reinecke extracted juice by relative rotation between the ribbed mound and the fruit section. This involved some slippage between the ribbed mound and the fruit section, so preventing slippage wasn't a reason to incorporate this feature into De Zarate’s. The Board then dug deeper into the teaching in Jakovicz cited by the Examiner cited as a reason for using ribs – and found that this teaching applied to Jakovicz’s annular ribs, not radial ribs (as claimed).

It is not clear how the structure of Jakovicz’s annular ribs 24 would lead a person of ordinary skill in the art to modify De Zarate’s rotating reamer 25 to include Reinecke’s radial ribs to prevent undue slipping between reamer 25 and fruit during use. Jakovicz’s annular ribs 24 grip the outer edges of the fruit section as plunger 27 presses the fruit section into member 20, thereby providing a complete expressing of juice from the fruit section. That is a markedly different juicing operation than De Zarate’s rotating of reamer 25 within the fruit section, as the fruit section is pressed on to reamer 25 by cap 33. Due to the differences in structure and function between De Zarate and Jakovicz we determine the Examiner errs in determining it would have been obvious to modify De Zarate’s rotating reamer 25 to include Reinecke’s ribs, in light of Jakovicz, to prevent undue slipping between reamer and fruit during use of De Zarate’s device.
(Emphasis added, internal citations omitted.)

My two cents: This case caught my eye because the Examiner used a third reference only for a rationale for combining. Theoretically possible, I suppose, to find one reference teaching a feature (here, Reinecke’s ribs) but not an advantage, and another reference (Jakovicz) that taught an advantage for the feature. And of course Reinicke couldn't discuss any advantages or benefits, since it was a design patent, so the Examiner had to turn to a third reference.

But wait ... if the reference teaching the advantage of the claimed feature (Jakovicz) also taught the claimed feature, why use the intermediate reference (Reinicke) at all?

Maybe because the reference-with-advantage doesn't teach all the claimed structure. That's what got the Examiner into trouble here. Jakovicz’s statement about the advantage of ribs applied to annular ribs, not radial ribs as claimed (and as allegedly disclosed in Renicke). I think the Examiner's rationale was irrational for this reason alone.

The Applicant didn't dig that deeply into Jakovicz (and shouldn't have to), and instead focused more on why the combination of ribs and reamer wouldn't work. I might have framed this more narrowly as "change to principle of operation" rather than more general "motivation isn't rational." But the important thing is the technical explanation about why the combination didn't make sense, and kudos to the Applicant for focusing on that.

PTAB reverses § 103 when secondary reference teaches image processing during capture where claim requires post-capture processing

noreply@blogger.com (Karen G. Hazzah) — Wed, 31 Aug 2016 04:40:00 +0000

Takeaway: The Examiner rejected claims to user-initiated post-capture zoom processing of facial images as obvious over zoom processing taught by a primary reference in view of user-initiated zoom during image capture. The Applicant appealed, arguing that the secondary reference relied on by the Examiner taught zoom before capture while the claims required zooming in a digital image that was already in existence. The Board agreed with the Applicant and reversed: "[the secondary reference] zooming by half-pressing a shutter button occurs before capture of an image with its 'image taking device,' whereas the claims are directed to post-capture processing of images with a computer system. (Ex parte Bhatt, PTAB 2016.)

Details:
Ex parte Bhatt
Appeal 2014-009532, Appl. No. 13/182,409, Tech. Center 2600
Decided: June 13, 2016

The application on appeal was directed to image processing, and more specifically, to presenting zoomed views of multiple faces. Each particular zoom level maximizes the fraction of the image occupied by the face. As explained in the application:

... it would be desirable to present zoomed views of multiple human faces depicted in the images 350-A, 350-B, 350-C and 350-D to allow a user associated with the system 300 to determine one or more faces from among the multiple faces are in focus or otherwise desirable and the image(s) from among the images 350-A, 350-B, 350-C and 350-D corresponding to the determined faces. To this effect, the GUI 302 can also include a control 320 through which the user can request that the system 300 concurrently zooms to portions of the multiple images 350-A, 350-B, 350-C and 350-D depicting faces of several persons.

... Upon receiving user input via the arrows of the control 320, the system 300 can switch, based on a display index/order associated with an anchor image, from concurrently presenting zoomed views associated with the detected instances of a person's face to concurrently presenting zoomed views associated with the detected instances of another person's face.

A representative claim on appeal read:

     1. A method performed by one or more processes executing on a computer system, the method comprising:
     presenting, on a user interface viewable on a display coupled to the computer system, one or more digital images;
      receiving user input requesting to zoom to faces depicted in the one or more digital images, where the faces include either human faces or animal faces; and
     in response to receiving the user input and for each of the one or more digital images, automatically presenting on the user interface a zoomed view of the digital image
     that displays an enlarged representation of a portion of the digital image showing an instance of a face depicted in the displayed portion of the digital image,
     the zoomed view of the digital image covering an [entire] area of the user interface configured to present the one or more digital images,
      the zoomed view being presented at a zoom-level that is selected to maximize a fraction of the displayed portion of the digital image occupied by the face.

The Examiner rejected the independent claims as obvious. According to the Examiner, the primary reference Shiritani taught most of the zoom limitations. In discussing the feature "zoom level selected to maximize a fraction ... occupied by the face," the Examiner relied on Shiritani's teaching "... in the case of an upright full-length figure image or the like, because the face area is small, the user has to observe the face area by enlarging the full-length figure image to be full-screen."

The Examiner acknowledged that the primary reference did not teach zooming on multiple faces in response to user input, or doing so automatically. The Examiner turned to Nose for the zoom-in-response-to-user-input feature, the rationale for combining being "in order to allow users more flexibility in image zooming." Finally, for the feature of "automatically presenting ... a zoomed view," the Examiner relied on In re Venner, explaining that "it has been held that broadly providing an automatic or mechanical means to replace a manual activity which accomplished the same result is not sufficient to distinguish over the prior art." (MPEP 2144.04.III.)

The Applicant appealed and made multiple arguments against obviousness. With respect to the "maximize a fraction ... occupied by the face" limitation allegedly taught by the "full-screen" discussion in Shiratani, the Applicant argued that the reference did not teach making the face full-screen, but rather making the entire image full-screen. The Applicant then focused on the claim limitation "zoomed view covering an area of the UI configured to present the ... digital images," which the Examiner read on FIG. 9B of Shiratani.

The Applicant suggested that since Shiratani's UI included multiple images in the same window, the zoomed view did not cover the area presenting the digital image.

Finally, the Applicant traversed the Examiner's reliance on Nose for image zooming in response to user input. The Applicant pointed out that Nose described a two-step shutter button in a digital camera, where a half-press of the shutter button zoomed in on a face, and a full-press recorded the current image. Thus, zoom feature in Nose was a zoom before an image is captured, where the claim referred to zooming in a digital image already in existence.

In the Answer, the Examiner responded to the Applicant arguments with additional explanation. First, the Examiner reiterated that "Paragraphs 0017-0020 & Figures 9A/9B [of primary reference Shiratani] disclose maximizing or zooming an image which is already occupying an entire area of the user interface." The Examiner then explicitly explained how the combination was used to reject the claim: "Shiratani ... discloses enlarging the image after capture [while] Nose's contribution surrounds the ability to use the half-press [by the user] to zoom" (emphasis added.)

In a Reply Brief, the Applicant noted an inconsistency in the Examiner's position.

... [t]he Examiner has also made competing assertions with respect to Shiratani ... the Examiner has explicitly acknowledged that "[p]aragraphs 0017-0020 & Figures 9A/9B disclose an album with different faces being disclosed in two or more different images." ... In doing so, the Examiner has contradicted his previous assertion [in the Answer] that Shiratani's "[p]aragraphs 0017-000 & Figures 9A/9B discloses maximizes or zooming an image which is already occupying an entire area of the user interface.
(Emphasis in original.)

The Board agreed with the Applicant that the Examiner's reliance on Nose was in error.

Nose's zooming by half-pressing a shutter button occurs before capture of an image with its "image taking device," whereas the claims are directed to post-capture processing of images with a computer system.

Because the Examiner also admitted that Shiratani failed to teach this feature, the Board reversed the obviousness rejection.

My two cents: The Board got this one wrong: the Examiner's Answer clearly stated that it was the combination of Shiratani and Nose that taught the claimed feature. Nose provided a generic zoom-in-response-to-user-action, while Shiratani taught the claimed zoom details.

The Examiner made it easy for the Board to reach this conclusion, by presenting disjointed findings instead of a single coherent rejection. That is, the body of the rejection in the Answer explicitly stated that Nose taught the entire zoom limitation – and apparently that's the part the Board read. Then, the Response to Arguments section of the Answer contradicted the earlier statement, and explained instead that Nose taught zoom-in-response-to-user and Shiritani taught all other zoom details.

This habit – never revising a position, instead always piling on new stuff – is common practice by both Examiners and Applicants. I certainly appreciate it when the Examiner specifically responds to my arguments, but prefer that the Examiner do so by updating the rejection to take my arguments into account. If the Examiner instead reiterates the errored rejection then provides new information in a "Response to Arguments" section – as he did here – then the Applicant has two choices. One, file a response that goes point-by-point to address each contested Examiner statement as a separate argument. Alternatively, the Applicant could synthesize the total of all the Examiner's findings, resolving any internal contradictions, and make a coherent argument against this synthesized rejection.

Most Applicants take the first approach, even though it results in a disjointed argument – and IMHO a disjointed argument is by definition weaker than one that is coherently presented. I imagine there are a variety of reasons why Applicants don't incorporate multiple (and sometimes contradictory) Examiner findings into a single "synthesized" rejection. One, the Examiner contradicting himself is a good thing, right – highlight the contradiction and characterize it as error. Two, the Applicant's job is only to traverse the specific rejection on the record. I have a different viewpoint. As far as I know, an internal inconsistency or contradiction in a rejection isn't fatal error, so I don't see this as a strong argument. Moreover, assuming I'm confident about the "synthesized" rejection,* I am addressing the rejection on the record –I'm just doing a better job of explaining it than the Examiner did.

*I limit this "synthesized rejection" approach to instances where I am confident that I can resolve the internal contradictions/inconsistencies in the rejection. Ex parte Bhatt seems like a good candidate.

PTAB Finds Claims Directed to Point-of-Sale System for Printing Coupons for a Third Party to be Patent-Eligible Subject Matter

noreply@blogger.com (Tyson Benson) — Tue, 30 Aug 2016 15:44:00 +0000

Takeaway: The PTAB reversed an Examiner's rejection under 35 U.S.C. § 101 of claims to a retailer's point-of-sale (POS) system that printed coupons for a third-party's unrelated goods or services. In part, the PTAB focused on the specific limitations of the claims to find that the claims do not preempt the abstract idea as defined by the Examiner. (Ex parte Barous, Appeal No. 2016-003320, PTAB, August 1, 2016).

Details:
Ex parte Barous
Appeal 2016-003320; Application No. 10/397,778; Technology Center 3600
Decided: August 1, 2016

In Ex parte Barous, the PTAB reversed an Examiner’s rejection of claims that recited utilizing a retailer's point-of-sale (POS) system that printed coupons for a third-party's unrelated goods or services under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.

The PTAB identified claims 14 and 43 as being representative of the claimed subject matter:

14. A system for distributing third-party coupons by a retailer on the Internet, the Internet including a computer with a monitor and a printer, the third-party coupons being associated with goods or services of a third-party retailer, which goods or services are unrelated to the goods or services of the retailer and wherein the third-party retailer purchases advertising from the retailer, the system comprising:

a server configured to:

cause a graphical user interface (GUI) to be displayed on the monitor;

display an advertisement associated with a third-party coupon of the third-party retailer;

display a threshold value in the GUI;

calculate a value of a transaction based on a purchase of goods or services made from the retailer by a consumer;

display the value of the transaction in the GUI; and

enable the computer to print the third-party coupon when the value of the transaction exceeds the threshold value;

wherein the third-party coupon is redeemable for the goods or services of the third-party
retailer; and

wherein goods or services of the third-party retailer are unrelated to the goods or services sold by the retailer and therefore are unpurchaseable from the retailer.

43. A checkout system for a retail outlet for distributing third- party discount coupons associated with one or more third-party retailers comprising:

a printer; and

a point-of-sale register having a processor configured to:

add prices of items purchased by a shopper to reach a total sale ST;

compare the total sale ST of the shopper to a threshold sale value T; and

print one or more third-party coupons for use with a respective third-party retailer to purchase goods or services unrelated to the goods or services offered by the retail outlet if the total sale ST of the shopper exceeds the threshold sale value T.

At step one of the Alice/Mayo framework, the Examiner found that the claims were directed to the abstract idea of distributing coupons by a retailer for the purpose of enhancing revenue, and the Appellant did not dispute the Examiner's characterization. However, during its analysis, the PTAB disagreed with the Examiner and found that the Examiner's characterization of the abstract idea as being too broad. Instead, the PTAB found that the claims were directed to "much more limited systems and methods distributing only coupons redeemable at a third-party retailer for goods that were unpurchaseable at the issuing retailer and/or are unrelated to the goods or services offered by the issuing retailer, and then only upon the occurrence of certain conditions."

Regarding step two, the Examiner stated "[t]he steps or acts performed (utilizing a processor) in independent method claims 27 and 50 are not enough to qualify as 'significantly more' than the abstract idea itself, since the claims are a mere instruction to apply the abstract idea. Furthermore, there is no improvement to another technology or technical field, no improvements to the functioning of the computer itself, and no meaningful limitations beyond generally linking the use of an abstract idea to a particular technical environment, and the claims require no more than a generic computer to perform generic computer functions that are well-understood, routine and conventional." The Appellant argued that, in the prior art, retailers commonly distributed coupons to enhance sales of goods or services provided by the retailer. The Appellant contrasted the prior art with the claimed invention by stating the claimed subject matter:

entails systems and methods that enable a retailer to distribute coupons in a different way. For example, the retailer's point- of-sale (POS) register distributes a so-called third-party coupon that is redeemable for a discount on the goods or services sold by some other retailer. These goods or services of the third- party retailer are unrelated to the goods or services offered by the retailer distributing the coupon. The retailer's POS register is configured to print this coupon for a shopper when the register determines that the value of the goods or services purchased by the shopper from the retailer exceeds a threshold value. This enhances the retailer's revenue because the shopper increases his or her purchase from the retailer in order to receive discount coupons for a third-party retailer.

The Appellant further argued that the claims meet the specific threshold set forth in step two because the claims "add specific limitations to what is known in the art" because:

[i]t is unconventional for a retailer's POS register to print a coupon for the purchase of a third-party retailer's unrelated goods or services. It is especially unconventional for the retailer's POS register to condition doing this on a shopper's total purchase from the retailer exceeding a certain threshold sale value. None of this is routine or well understood. In fact, twelve years of prosecution reveals that nothing in the prior art teaches these additional features or even renders them obvious. Nothing of record demonstrates that this sort of activity has ever been previously engaged in by those in the field.

In its analysis, the PTAB relied upon the specific limitations of the claims to find that the claims do not preempt the "abstract idea" as defined by the Examiner. To support this conclusion, the PTAB related upon the 2014 Interim Guidance on Patent Subject Matter Eligibility to identify that “specific limitations other than what is well understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application” qualify under the "significantly more" exception of step two. The PTAB went on to state that these guidelines require that if an Examiner decides the limitations do not add "significantly more" to the claim, the Examiner must identify the limitations and explanations provided as to why this is the case. The PTAB found that the Examiner failed to provide persuasive arguments or evidence as to why the limitations were not "significantly more" (i.e., the argument “are generic computer functions (e.g. adding, comparing and printing) that are well-understood, routine and conventional activities previously known to the industry” did not suffice.)

Based upon these findings, the PTAB reversed the Examiner’s rejections of the claims as being directed to patent-ineligible subject matter finding that the claims did add "significantly more" to the abstract idea.

My two cents: Appellants may look to contrast specific limitations within the claim with the prior art to illustrate that those claims limitations add "significantly more" to the alleged abstract idea. Additionally, these types of limitations may be utilized to argue that the claimed subject matter is an "unconventional" arrangement of elements.

PTAB Reverses Examiner’s Patent-Ineligible Subject Matter Rejection of Method Claims for Using Multi-Pixels Spectral Images to Identify Microorganisms

noreply@blogger.com (Tyson Benson) — Wed, 24 Aug 2016 15:16:00 +0000

Takeaway: The PTAB reversed an Examiner's rejection of claims for utilizing multi-pixel spectral images to identify microorganisms under 35 U.S.C. § 101 as being directed to patent-ineligible subject matter. In part, the PTAB focused on the practical application of the claimed subject matter to find that the claims do not preempt the abstract idea or any natural law. (Ex parte Ismail, Appeal No. 2014-005477, PTAB, July 1, 2016).

Ex parte Ismail
Appeal 2014-005477; Application No. 11/630,856; Technology Center 1600

Decided: July 1, 2016

Details: In Ex parte Ismail, the PTAB reversed an Examiner’s rejection of claims for using multi-pixels spectral images to identify microorganisms under 35 U.S.C. § 101 for being directed to patent-ineligible subject matter.

Claim 1, which is representative of the claimed subject matter, recites:

1. A method for characterizing a microorganism said method comprising:

a) obtaining at least one multi-pixels spectral image of a sample of said microorganism, wherein each pixel of said multi-pixels spectral image has a corresponding spectrum;

b) selecting one or more spectra from said multi-pixels spectral image, wherein said selecting is based on one or more spectral characteristics of said corresponding spectrum; and

c) identifying said microorganism by comparing said one or more selected spectra with spectra of reference microorganisms from a database to determine an identity of said microorganism.

At step one of the Alice/Mayo framework, the Examiner found that the claims were directed to the abstract idea of data manipulation. More specifically, the Examiner found that the claims recite “methods for characterizing a microorganism by determining an identity of an organism” through “empirical and data analysis and acquisition steps [that] are well-understood, conventional, and routine in diagnosing imaging microorganisms.” Additionally, the Examiner found “there is no clear-cut practical application of the objective of the claim” and thus concludes the claims are drawn to a patent-ineligible “law of nature/natural principle.” The Examiner then went on to find that the claims “recite neither a physical transformation nor a critical tie of a significant step to a particular machine.”

The PTAB agreed with the Appellant in finding that the Examiner did not persuasively show that the claims, considered in their entirety, are limited to an abstract idea or natural principle. For example the Appellants argued that the claim limitations of claim 1 require obtaining a multi-pixels spectral image of a sample and then selecting a spectra from that image based on its spectral characteristics. Additionally, the claim limitations required that selected spectral data of the sample be compared with spectral data of reference microorganisms in a database to identify the sample microorganism. The Appellants argued that these limitations tied the claim to a particular machine and that comparing spectra from pixels of the image with spectra from a database is not merely a mental process as argued by the Examiner. For instance, the Examiner argued that the “body of independent claim 1 relies on image data analysis of image data … [that] may be interpreted to be obtained empirically.” However, the PTAB found that the Examiner did not adequately explain this contention to find that the claimed subject matter was not an abstract idea under step one of the Alice/Mayo framework.

The PTAB then addressed the claimed subject matter under step two of the Alice/Mayo framework (whether the claimed subject matter includes an “inventive concept”). Similar to the findings with respect to step one, the PTAB was unconvinced that the Examiner set forth reasoning that the “steps recited in the claims are so conventional and routine that the claims, in their entirety, lack any inventive concept.” For this portion, the PTAB seemed to focus on whether the claims would wholly preempt “access to the building block itself.” More specifically, the PTAB stated that “the Examiner has not persuasively demonstrated that the claim elements here add nothing of substance such that the claims stand to preempt any law of nature or abstract idea alone.” In contrast, the PTAB found that “the rejected claims include multiple steps directed to a practical application of a particular type of spectral-image analysis.”

Based upon these findings, the PTAB reversed the Examiner’s rejections of the claims as being directed to patent-ineligible subject matter.

My two cents: In line with the decision in BASCOM, the PTAB and courts are starting to focus on whether the claims are directed to a practical application of the alleged abstract idea or whether the claims encompass the abstract idea (and thus preempt that abstract idea). Applicants may wish to utilize these type of arguments, as it appears that some decisions are relying on the practical application aspect of the claimed subject matter.

PTAB Utilizes Enfish to Find Claim Directed to Bit Slipping is Directed to Patent-Eligible Subject Matter

noreply@blogger.com (Tyson Benson) — Mon, 11 Jul 2016 19:35:00 +0000

Takeaway: The PTAB issued a decision overturning an Examiner's rejections of method claims directed to bit slipping as being directed to patent-ineligible subject matter. The Examiner rejected the method claims at issue as being directed to an abstract idea under step one of the Alice/Mayo framework. In overturning the Examiner's rejection, the PTAB utilized the decision in Enfish v. Microsoft to find that the claims were directed to improving the functioning of a computer. (Ex parte Carvalho, Appeal 2015-001076, PTAB July 6, 2016)

Details:

Ex parte Carvalho
Appeal 2015-001076; Application No. 12/283,652; Technology Center 2600
Decided: July 6, 2016

In a decision released on July 6, 2016, a PTAB panel found method claims directed to "bit slipping according to information regarding aligning of words" as directed to patent-eligible subject matter under 35 U.S.C. § 101. Claim 14, which is illustrative of the subject matter rejected as directed to patent-ineligible subject matter, recites:

14. A method comprising:

aligning words to a desired word boundary, wherein each of the words has a plurality of bits;

receiving from a word aligner, by a bit slipper, information regarding the aligning; and

slipping bits of the words, wherein total delay due to the aligning and the slipping is constant for all phases of a recovered clock signal,

wherein the aligning and the slipping are performed by a transceiver system.

The Examiner rejected claim 14 as being directed to patent-ineligible subject matter because claims 14 was "a mere statement of a general concept," and that its recitation of a "transceiver system," a "recovered clock signal," and the functions of aligning and slipping are insufficient to make the claim patent eligible. More specifically, the Examiner found that claim 14 was directed to the abstract idea of "bit slipping according to information regarding the aligning of words."

The PTAB disagreed with the Examiner and cited the recent Federal Circuit decision in Enfish, LLC v. Microsoft Corp.,_F.3d_, No. 2015-1244, 2016 WL 2756255, (Fed. Cir. May 12, 2016) for its support. Specifically, the PTAB explained that Enfish looked to "improvements in computer-related technology, including software improvements, are not inherently abstract, and thus, it is 'relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis'" to find the claims at issue in Enfish as directed to patent-eligible subject matter.

The PTAB then explained that the rejected method claims were directed to "an improvement in the functioning of a computer (i.e., eliminating word aligner latency delay uncertainty) and not to the addition of general-purpose computer components to a fundamental economic practice or mathematical equation." To support this decision, the PTAB looked to the specification of Appellant's application to justify that the claims were directed to the improvement in the functioning of a computer. More specifically, the PTAB identified that the specification taught how prior art systems would introduce "a Deserializer/Word aligner latency uncertainty." The PTAB then contrasted the deficiencies of the prior art with the solutions set forth in the specification. Specifically, the PTAB cited that, in an embodiment, the invention "solves this problem of latency uncertainty by using a bit slipper so that the total delay from word aligning and bit slipping is constant for all recovered clock phases, which 'allows for having a fixed and known latency between the receipt and transmission of bits for all phases of parallelization by the deserializer.'"

As such, the PTAB found that claims at issue were not directed to an abstract idea under step one of the Alice/Mayo framework but instead were directed to patent-eligible subject matter because the claims were directed to an improvement in the functioning of the computer.

Takeaway: This a useful decision by the PTAB illustrating how to rebut an Examiner's rejection under step one of the Alice/Mayo framework. For example, Applicants and practitioners may contemplate including prior deficiencies to illustrate the technological improvements and benefits of the invention in order to align the claims at issue with the decision in Enfish (illustrating that claims are directed to improving the functioning of the computer).

Federal Circuit Further Defines Alice Step Two to Find Claims Reciting Conventional Computing Components to Include Inventive Concept

noreply@blogger.com (Tyson Benson) — Thu, 07 Jul 2016 02:47:00 +0000

Takeaway: The Federal Circuit issued a decision expanding upon "inventive concept," finding that the inquiry requires more than identifying that each claim element, by itself, was known in the art. Based upon this finding, the Federal Circuit found that claims directed to a specific implementation of filtering content on the Internet did include an inventive concept where the claims set forth a "non-conventional and non-generic arrangement of known, conventional pieces." (BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC, No. 2015-1372 (Fed. Cir. June 27, 2016)).

Details: BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC
No. 2015-1372
Decided: June 27, 2016

On June 27, 2016, the United States Court of Appeals for the Federal Circuit issued a decision in BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC further expanding upon step two of the Alice/Mayo framework. As a quick refresher, step one of the Alice/Mayo framework determines whether the claims recite merely an abstract idea, and step two of the Alice/Mayo framework determines whether the claims, if directed to an abstract idea, include an "inventive concept." As stated in Alice v. CLS Bank, "an inventive concept that transforms the abstract idea into a patent-eligible invention must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer."

The patent at issue, U.S. Patent No. 5,987,606, included two groups of claims: a first group limited to individual-customizable filtering on a remote ISP server, and a second group further limited to a hybrid filtering scheme implemented on the ISP server comprised of a master-inclusive list, an individual-customizable set of exclusive lists, and an individual-customizable set of inclusive lists. Claim 1 was representative of the individual-customizable filtering and recited:

1. A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:

a local client computer generating network access requests for said individual controlled access network accounts;

at least one filtering scheme;

a plurality of sets of logical filtering elements; and

a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filter- ing scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

Claim 23, which depends upon claim 22, was representative of the hybrid filtering scheme, and claims 22 and 23 recited:

22. An ISP server for filtering content forwarded to controlled access network account generating network access requests at a remote client computer, each network access request including a destination address field, said ISP server comprising:

a master inclusive-list of allowed sites;

a plurality of sets of exclusive-lists of excluded sites, each controlled access network account associated with at least one set of said plurality of exclusive-lists of excluded sites; and

a filtering scheme, said filtering scheme allowing said network access request if said destination address exists on said master inclusive-list but not on said at least one associated exclusive-list, whereby said controlled access accounts may be uniquely associated with one or more sets of excluded sites.

23. The ISP server of claim 22 further comprising:

a plurality of inclusive-lists of allowed sites, each controlled access user associated with at least one of said plurality of inclusive-lists of allowed sites, said filtering program further allowing said network access request if said requested destination address exists on said at least one associated inclusive-list.

This case came to the Federal Circuit through on an appeal filed by BASCOM from a district court's decision to grant a motion to dismiss under Rule 12(b)(6). In its analysis, the Federal Circuit agreed with the district court's assessment that the claims were directed to the abstract idea of filtering content on the Internet at step one of the Mayo/Alice framework.

However, the Federal Circuit disagreed with the district court's assessment that the claimed subject matter did not include an "inventive concept." The district court found that BASCOM did not adequately assert that the claims included an "inventive concept" because "considered individually, or as an ordered combination, are no more than routine additional steps involving generic computer components and the Internet, which interact in well-known ways to accomplish the abstract idea of filtering Internet content.”

The Federal Circuit agreed that the limitations of the claims, when taken individually, did recite "generic computer, network and Internet components." However, the Federal Circuit stated that the "inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art" and that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." To support its decision, the Federal Circuit stated that the claims did not preempt "all ways of filtering content on the Internet" but instead were directed to "a particular, practical application of that abstract idea."

The Federal Circuit went on analogize the claims at issue with the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). For example, the Federal Circuit identified that the present claims were claiming a technology-based solution to filter content on the Internet that overcomes existing problems with other Internet filtering systems much like the claims present in DDR which were claiming a technical way to satisfy an existing problem for website hosts and viewers.

My two cents: Finally, a Federal Circuit decision providing applicants and appellants the ability to rebut step two assertions from the Patent Office that the claim elements merely recite a "generic," "routine," and/or "conventional" components.

Claims Directed to Prioritizing Events on an Electrical Power System Found Invalid as Being Directed to Patent-Ineligible Subject Matter Under 101

noreply@blogger.com (Tyson Benson) — Fri, 17 Jun 2016 14:12:00 +0000

Takeaway: A PTAB panel introduced a new ground of rejection sua sponte finding that the claimed subject matter was directed to patent-ineligible subject matter. The panel found that the claimed subject matter was directed to prioritizing events within an electrical power system and that the Applicant's patent application described nothing more that mere data collection within the system and prioritizing events based upon a ranking. In other words, the Applicant's patent application admitted that it was known to gather data about abnormal conditions within an electrical system. As such, the panel equated the technical details of the claimed subject matter to limiting the use of the abstract idea of prioritizing events to a particular technological environment. (Ex parte Muthu-Manivannan, Appeal 2014-006595, PTAB June 13, 2016.)

Details:
Ex parte Muthu-Manivannan
Appeal 2014-006595; Application 12/031,990; Technology Center 2400
Decided: June 13, 2016

In a recent decision in which the Applicant appealed an examiner's rejection under 35 U.S.C. 103, the Board entered a new ground of rejection under 35 U.S.C. 101 for method claims that were directed to "prioritizing events on an electrical power system." Claim 1, which was illustrative of the claimed subject matter, recited:

A method for prioritizing events on an electrical power system, comprising:
(a) acquiring at least one data portion representative of the behavior of an electrical power system, where the electrical power system comprises all or a part of a system that conducts electrical power between an electric power source and an electric load, the at least one data portion containing at least one power system event which represents a deviation from steady-state operation of the electrical power system;
(b) assigning at least one rank value to the at least one data portion based on the type of power system event, the rank value indicative o f a priority o f the event; and
(c) conducting subsequent data processing operations on the at least one data portion in accordance with the at least one rank value.

The Board began its analysis with first determining "whether the claims at issue are directed to one of those patent-ineligible concepts" (e.g., fundamental economic practice, method of organizing human activity, an idea of itself, or mathematical formula or relationship).

In this analysis, the Board noted that claim 1 was directed to a method that comprised "(a) acquiring data containing an event representing a deviation from a steady state operation of a power system, (b) assigning a rank indicative of a priority based on the type of event, and (c) conducing data processing operations in accordance with the rank." Based upon this finding, the Board found that the claim was only directed "to the idea of prioritizing events based on type and processing data in accordance with the rank." The Board went on to state that "this idea, which amounts to a scheme for organizing and using information, is abstract, as were similar to concepts that have been considered by both the Supreme Court and our reviewing Court" and referred to decisions finding claims directed to patent-ineligible subject matter such as in In re TLI Communications LLC Patent Litigation, No. 2015-1372, 2016 WL 2865693 (Fed. Cir. May 17, 2016) and in Intellectual Ventures I LLC v.Capital One Bank (USA), 792 F.3d 1363, 1367 (Fed. Cir. 2015).

Finding that the claimed subject matter was directed to an abstract idea, the Board transitioned to determining whether the claimed subject matter was directed to significantly more than the abstract idea itself (i.e., directed to a patent-eligible application of the abstract idea). In this analysis, the Board pointed to the background and specification portions of Applicant's patent application to find that "it was known to gather information about abnormal conditions in an electrical system for used by operations and maintenance personnel" and that "the claim merely acquires data, ranks the data, and 'conduct[s] subsequent data processing operations' according to the ranking." Based upon these findings the Board found that claim 1, as a whole, comprised "conventional steps involved in managing an electrical system (i.e., processing events), to which the abstract idea of ranking is applied, where the steps are performed on a computer." The Board went on to note that "neither limiting the use of an abstract idea to a particular technological environment nor using a general purpose computer can transform the idea into a patent-eligible invention."

Based upon these findings, the Board concluded that independent claim 1 did not amount to more than an abstract idea and entered a new ground of rejection.

My two cents: This decision provides further support that any description of "conventional," "known," and "routine" usages of technology within the specification may come back to bite an applicant since the Board, patent examiners, and the courts have utilized these types of descriptions to support a finding that an abstract idea was merely being implemented within a particular technological environment or being implemented using a general purpose computer.

PTAB: Nuijten Doesn't Apply to Method Claims

noreply@blogger.com (Karen G. Hazzah) — Tue, 24 May 2016 17:36:00 +0000

[Today's guest post is from Robert K S, who is a patent attorney from Cleveland, Ohio.]

Takeaway: The 35 U.S.C. § 101 prohibition against claims covering transitory signals per se, as articulated by the Federal Circuit in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), does not apply to method claims, since methods are processes and are therefore among the expressly permitted categories of statutory subject matter. Ex parte Kosuru, No. 2014-005593 (P.T.A.B. May 19, 2016).

Details:
Ex parte Kosuru
Appeal 2014-005593; Appl. No. 13/406,478; Tech. Center 2100
Decided: May 19, 2016

In the application underlying this appeal decision, all of the independent claims were method claims, and each recited an "input file being stored on a computer readable storage medium." Initially, the word "storage" was absent from the claims, and the examiner rejected all of the claims as directed to non-statutory subject matter under § 101, citing to In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) ("A transitory, propagating signal . . . is not a 'process, machine, manufacture, or composition of matter.' Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.") The claims were amended to specify that the "medium" was a "storage medium," as above, but the examiner maintained the rejection on final.

The Federal Circuit held in Nuijten that a propagating signal itself, such as a radio broadcast, an electrical signal through a wire, or a light pulse through a fiber-optic cable, is not patentable subject matter. According to then-director David Kappos's January 26, 2010 memo to the examining corps, entitled "Subject Matter Eligibility of Computer Readable Media," the PTO interpreted the Federal Circuit's decision in Nuijten to mean that "[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter." The memo references the Nuijten opinion as well as the August 24, 2009 PTO memo, "Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101."

In their briefs in Kosuru, the appellants conceded that their claims were "drawn to" a computer-readable storage medium, but emphasized that the use of the word "storage" meant that the claims could not read on transitory signals and thus were subject-matter eligible. In support, the appellants referred to Ex parte Hu, No. 2010-000151 (B.P.A.I. Feb. 9, 2012), which held that "[w]hile a computer-readable medium is broad enough to encompass both tangible media that store data and intangible media that carry a transitory, and propagating signal containing information, a computer readable storage medium is distinguished therefrom as it is confined to tangible media for storing data" (emphasis added).

The examiner's only response was an allegation that the specification did not refer to "storage" media—a weak response given that the claims clearly recited "storage" and no rejection was made on § 112 grounds for lack of written description or enablement. The appellants' reply brief noted several specification paragraphs that mentioned algorithms "stored on" computer-readable media or on "a disk," but even absent this support, PTO policy evidently tolerates amendment language limiting claims to non-transitory embodiments even when such language is not explicitly supported, so long as non-transitory interpretations are not ruled out by the specification. See the above-mentioned 2010 memo ("A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments . . . . Such an amendment would typically not raise the issue of new matter, even when the specification is silent . . .").

The PTAB resolved the appeal of the § 101 rejection on much broader grounds than the examiner and appellants had argued: "Unlike the claims at issue in In re Nuijten, each of the pending claims here recites a method—a series of acts or steps—and thus falls under the statutory category of 'process.'" Indeed, the examiner (and the Board) had only to read the opinion cited in support of the rejection to realize that, in Nuijten, disputed independent claim 14 was directed to "[a] signal," while claims 1-10, directed to "[a] method," and 11-13, "[a]n arrangement for embedding supplemental data in a signal," were not appealed because the PTO found them statutory without any fuss.

My two cents: Nuijten did not expressly hold that process claims cannot be rejected as "covering" transitory signals, because that issue was not before the Nuijten court. This case may provide useful support for countering Nuijten-type rejections of method claims.

Kosuru may have been a case of an examiner attempting to follow a PTO directive rather than the law upon which it was based. Transitory signal subject-matter analysis is a narrow area of subject-matter eligibility analysis. Like the words "directed to" used in broader subject-matter eligibility jurisprudence, including abstract-idea jurisprudence (see, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014); In re Benson, 441 F.2d 682, 684 (C.C.P.A. 1971)), the word "covers" used in the Kappos memo ("[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected . . .") can be interpreted overly broadly. When "covers" is read to mean "includes" or "involves" rather than "effectively claims" or "ties up," the PTO interpretation of Nuijten can be read as making ineligible even statutory categories like processes. The examiner and appellants got lost on a wild goose chase over whether the specification taught "storage" media, whereas the real question was the propriety of the examiner's initial decision as to whether the claims could be interpreted as attempting to capture, among whatever else, transitory signals per se.

Another potentially winning argument in this case might have been to argue that the claimed "input file" cannot reasonably be interpreted as encompassing transitory signals, since, even under broad interpretations, "file" has a meaning of a record of greater-than-transitory permanence such that it can be stored and retrieved at arbitrary times. After this PTAB decision, such an argument is superfluous in view of the fact that an Applicant can simply point out that the claims are couched as methods.

Enfish Mayo Step One Inquiry Fails to Save Claims Directed to Assigning Classification Data to Digital Images From Being Deemed an Abstract Idea

noreply@blogger.com (Tyson Benson) — Tue, 17 May 2016 18:14:00 +0000

Takeaway: The Federal Circuit utilized the updated Mayo analysis set forth in the recent Enfish v. Microsoft decision to affirm a lower court’s ruling that the claims at issue were directed to patent-ineligible subject matter. In part, the Federal Circuit found the claimed subject matter was directed to the abstract idea of assigning “classification data” to digital images and that the claims merely recited generic components that did not provide an “inventive concept” that would transform the otherwise patent-ineligible abstract idea into a patent-eligible application of the concept. (TLI Communications LLC, v. AV Automotive, L.L.C., 2015-1372, -1376, -1377, -1378, -1379, -1382, -1383, -1384, -1385, -1417, -1419, -1421, May 17, 2016)

Details:
TLI Communications LLC, v. AV Automotive, L.L.C.
2015-1372, -1376, -1377, -1378, -1379, -1382, -1383, -1384, -1385, -1417, -1419, -1421
Decided: May 17, 2016

In a recent precedential decision, the Federal Circuit invalidated claims reciting an invention that assigns “classification data,” such as a date or a timestamp, to digital images as being directed to an abstract idea under 35 U.S.C. § 101 even in light of the updated Mayo step one inquiry as set forth in Enfish, LLC v. Microsoft Corp., No. 2015-2044 (Fed. Cir. May 12, 2016). More specifically, the decision in Enfish clarified that the relevant inquiry at Mayo step one was “to ask whether the claims are directed to an improvement to computer functionality versus being directed an abstract idea. See Enfish slip op. at *11.

Claim 17, which is representative of the subject matter, recited:

A method for recording and administering digital images, comprising the steps of:

recording images using a digital pick up unit in a telephone unit,

storing the images recorded by the digital pick up unit in a digital form as digital images,

transmitting data including at least the digital images and classification information to a server, wherein said classification information is prescribable by a user of the telephone unit for allocation to the digital images,

receiving the data by the server,

extracting classification information which characterizes the digital images from the received data, and

storing the digital images in the server, said step of storing taking into consideration the classification information.

At Mayo step one (i.e., determining whether the claims at issue are directed to a patent-ineligible concept), the Federal Circuit found that the subject matter of claim 17 was drawn to the concept of classifying an image and storing the image based on its classification. The Federal Circuit noted that the claim required “concrete, tangible components such as 'a telephone unit' and a 'server.'“ However, the Federal Circuit went on to state that the “specification makes clear that the recited physical components merely provide a generic environment in which to carry out the abstract idea of classifying and storing digital images in an organized manner” and that the specification's emphasis that the “present invention 'relates to a method for recording, communicating and administering [a] digital image' underscores that claim 17 is directed to an abstract concept.”

As mentioned above, the Federal Circuit utilized the recent clarification to Mayo step one set forth in Enfish to examine whether the claimed subject matter was directed to an improvement in computer functionality or whether the claimed subject matter was directed to an abstract idea. In supporting its conclusion that the claims were directed to an abstract idea, the Federal Circuit found that the claims were not directed to a specific improvement to computer functionality. Instead, the Federal Circuit found that the claims were directed to usage of conventional or generic technology in a well-known environment.

Of note, the Federal Circuit focused its discussion on the appellant's specification. For instance, the Federal Circuit states that the “specification does not describe a new telephone, a new server, or a new physical combination of the two” and that the “specification fails to provide any technical details for the tangible components, but instead predominantly describes the system and methods in purely functional terms.” The decision points to the description of the “telephone unit” in the specification as having “the standard features of a telephone unit” and that “cellular telephones may be utilized for image transmission.” Additionally, the decision points to the description of the server as being described “simply in terms of performing generic functions such as storing, receiving, and extracting data.”

In concluding its Mayo step one analysis, the Federal Circuit likened the claims at issue to the claims at issue in Content Extraction v. Wells Fargo Bank, which were directed to “collecting data,” “recognizing certain data within the collected data set,” and “storing the recognized data in memory.”

In its Mayo step two analysis (i.e., whether the claims at issue include an “inventive concept”), the Federal Circuit found that the claims failed to recite any “elements that individually or as an ordered combination transform the abstract idea of classifying and storing digital images in an organized manner into a patent-eligible application of that idea.” Similar to its analysis set forth above with respect to Mayo step one, the Federal Circuit found that the claims at issue merely recited generic computer components “insufficient to add an inventive concept to an otherwise abstract idea” and that ”the recited physical components behave exactly as expected according to their ordinary use.”

As such, the Federal Circuit affirmed the lower court's decision that the claims at issue were directed to an abstract idea and, thus, invalid under 35 U.S.C. § 101.

My two cents: Again, this decision provides a lesson that the any specification should include as much technical detail as possible. For example, this Federal Circuit decision focused on the inadequacies of the specification (e.g., the specification described the system in purely functional terms, only describing the components in terms of performing generic functionality, etc.). Additionally, the Enfish decision notes that the specification in that case explained that the prior art database structures were inferior to the claimed invention. Thus, Applicants may consider including explanations of why Applicant’s technology is superior to the prior art in the specification.

PTAB Deems Method for Providing Funds to a Player at a Gaming Facility as Patent-Ineligible Subject Matter

noreply@blogger.com (Tyson Benson) — Tue, 03 May 2016 14:02:00 +0000

Takeaway: A PTAB panel affirmed an Examiner's rejection of the claimed subject matter as being directed to patent-inelgible subject matter. In part, the panel found the claimed subject matter was directed to the abstract idea of transferring funds between various institutions and that the claimed subject matter did not include additional elements that would provide an "inventive concept" transforming an otherwise patent-ineligible abstract idea into a patent-eligible application of the concept. (Ex parte Nicholas, No. 2016-003046, PTAB Apr. 22, 2016)

Details:

Ex parte Nicholas
Appeal 2016-003046; Appl. No. 14/186,522; Technology Center 3700

Decided: April 22, 2016

In a recent decision, the PTAB upheld an Examiner's rejection that a method for providing funds to a player (using a portable electronic device) for providing funds to a player at a gaming facility as directed to patent-ineligble subject matter. Claim 18, which was illustrative of the subject matter claimed, recited:

A method of providing funds to a player at a gaming facility comprising:

a portable electronic device sends a wireless communication to a funding establishment that supports a financial card;

the funding establishment supporting the financial card by storing an authorized level of credit available to the player from the financial card in memory;

the wireless communication containing data that identifies a) a specific financial card and a specific electronically-stored account established at the gaming facility on a server and b) an amount of funds to be applied against the financial card and transferred to the specific financial account;

the specific financial account receiving the transferred amount of funds and the gaming facility allowing electronic transfer of the transferred amount of funds; and

the specific financial account electronically transferring funds to a fund-providing electronic apparatus in the gaming facility.

In upholding the Examiner's rejection under 35 U.S.C. § 101 as directed to patent-ineligible subject matter, the PTAB analyzed the claim utilizing the Mayo framework set forth in Alice v. CLS Bank. In its analysis, the PTAB agreed with the Examiner that the claim was directed to the patent-ineligible abstract idea of "the fundamental economic practice of funds transfers" under Mayo Step 1.

The Appellant disagreed with this characterization by stating “there is no substantive evidence according to any authoritative definition that supports the [Examiner’s] assertion [that claim 18 is directed to an abstract idea].” Then, the Appellant asserted that the claimed subject matter did “not represent a fundamental economic [practice], but encompasses a series of steps among multiple defined apparatus in which distinct lines of communication and specific steps are performed . . . in a specific field of actual transfer of value in a specific business field.”

The PTAB dismissed this characterization by finding that the claimed limitations of transferring funds between various institutions and facilities as "well-established and fundamental building block of the modern financial system."

The PTAB then moved its analysis to Mayo Step 2 to determine whether the claimed subject matter recited any additional elements that would transform the subject matter into "a patent-eligible application of the abstract idea." However, the PTAB utilized the Appellant's specification and prior art to find that the recited elements of "a portable electronic wireless device capable of wireless communication, a gaming facility server, and a financial institution memory are generic electronic components that are well-understood, routine, and conventional in the industry." For instance, the PTAB cited to the Appellant's specification to find that casino patrons routinely carry portable electronic devices on their persons and that gaming kiosks were “mainstays within casinos."

Appellant argued that the claimed subject matter recited "three or more distinct and separate electronic elements (personal data transmitter, electronic gaming machine, local gaming server with accounting functions, and financial institution server) which 'represent far more than an abstract idea in itself'" and that the claimed subject matter increased the speed and the security of financial transactions "in which value is immediately made available for wagering[, which] has been a long felt business need improved by the present technology.”

The PTAB quickly dismissed with this argument by reiterating that the Appellant's specification described electronic components that were well-understood, routine, and conventional in the industry and that the speed/security of the claimed subject matter were "merely characteristic of electronic funds transfers generally."

Based upon these findings, the Board sustained the Examiner's rejection of the claimed subject matter as being directed to patent-ineligible subject matter.

My two cents: This decision provides a lesson that the any specification should include as much technical detail as possible such that an Applicant can rebut any assertions that the specification merely describes devices/components that are well-understood, routine, and conventional.

Obviousness Reversal Roundup for March 2016

noreply@blogger.com (Karen G. Hazzah) — Thu, 21 Apr 2016 14:57:00 +0000

[Today's guest post is from Robert K S, who is a patent attorney from Cleveland, Ohio.]

Countering obviousness rejections can be both the most quotidian and the most challenging task of the patent practitioner or pro se applicant. For those who enjoy feeling hopeless, the decisions of the PTAB are fraught with examples of losing arguments. But not here. Please enjoy this review of six of last month's PTAB decisions reversing obviousness rejections.

Ex parte Sewell
Appeal 2013-008463; Appl. No. 11/847,474; Tech. Center 2600
Decided: March 7, 2016

In this case, the Board found no prima facie case of obviousness where the examiner did not rationally articulate the how or why of the allegedly obvious combination. The appealed final rejection alleged as a "suggestion/motivation" for combining the teachings of cited references, to arrive at the claimed printing system having a GUI, a desire "to eliminate the need for a personal computer as disclosed by [one reference] in the Background [section]." The panel "concur[red] with Appellants’ assertions . . . that the Examiner has not rationally articulated how/why one of ordinary skill in the art at the time of Appellants’ invention would combine the [references'] collective teachings and/or suggestions . . . as claimed . . . ." It is tough to determine what "assertions" the Board was referring to, since a review of the briefs shows that the appellants' arguments were directed more toward showing that the proposed modification would have rendered the prior art device unsatisfactory for its intended purpose. Although this can be a winning argument (as discussed below with respect to Ex parte Hager), it doesn't seem to be what won here. The panel appears to have reinterpreted the appeal arguments and reversed the rejections on a different basis than what had been argued. Although the Board rarely takes it upon itself to fashion un-argued grounds for reversal, it is the Board's prerogative. The application has subsequently been allowed.

This decision serves as a reminder that it is always incumbent upon the examiner to adequately establish not just that different references show different elements of the claims, but also that a person skilled in the art would have had reason to combine or modify the references. A lack of adequate explanation as to what specific understanding or technological principle within the knowledge of one of ordinary skill in the art would have suggested the combination should lead the Board to infer that the examiner selected the references with the assistance of hindsight. See In re Rouffet, 149 F.3d 1350, 1357 (Fed. Cir. 1998).

Ex parte Kuijper
Appeal 2014-000569; Appl. No. 12/515,963; Tech. Center 3700
Decided: March 18, 2016
The Board reversed here because a "broad general statement" of motivation is impermissible use of a per se rule. The final rejection alleged that "it would have been obvious to one of ordinary skill in the art, at the time of the invention, to have provided [one reference] with the corrugation shape, as taught by [another reference], because the substitution of one known element for another would have yielded predictable results and all claimed elements were known in the prior art and one skilled in the art could have combined the elements as claimed by known methods with no change in their respective function and the combination would have yielded predictable results." The rejection further cited to In re Dailey, 357 F.2d 669 (C.C.P.A. 1966) for the proposition that a "change in form or shape is generally recognized as being within the level of ordinary skill in the art, absent any showing of unexpected results." The appeal brief complained that the alleged motivation offered "no rational reason as to why a person of ordinary skill in the art would substitute the single-cutter structure . . . for one of the cutters in the multiple cutter structure of [the base reference]. Not only is this illogical, but also the results of such a substitution, if even possible, would not be predictable to one of ordinary skill in the art." The Board agreed that the examiner's "overly broad, general statement" was insufficient, and quoted In re Ochiai, 71 F.3d 1565, 1571 (Fed. Cir. 1995): "This method of analysis is founded on legal error because it substitutes supposed per se rules for the particularized inquiry required by section 103. It necessarily produces erroneous results. . . . [E]liminat[ing] the need for fact-specific analysis of claims and prior art may be administratively convenient for PTO examiners and the Board . . . But reliance on per se rules of obviousness is legally incorrect and must cease."

Here, like in Sewell, the Board's reasoning did not exactly mirror the arguments presented by the appellants, inasmuch as the appellants did not cite Ochiai and did not identify the rejection as being grounded only in a "per se rule". Even so, this decision shows that general statements that references would have been combinable is insufficient grounds for an obviousness rejection, where such allegations do not show how or why a person skilled in the art would have been led to select and combine the particular prior art features from different references to arrive at the appealed claims. Such is the burden of the examiner in order to make a prima facie case of obviousness. See In re Vaidyanathan, 381 F. App'x 985, 993 (Fed. Cir. 2010) (nonprecedential).

Ex parte Elder
Appeal 2014-004233; Appl. No. 12/818,592; Tech. Center 1700
Decided: March 23, 2016

Like in Sewell and Kuijper, the Board reversed here because the examiner did not identify a sufficient reason for a person of ordinary skill to have modified the base reference in the proposed manner. Independent claim 7 was finally rejected as obvious over two references. The action set out detailed factual findings and concluded that "[o]ne of ordinary skill in the art . . . would have been motivated to provide the [first reference device] with a [second reference's filter having a particular flow passage configuration] since [the second reference] states . . . that such filters 'have a very high mechanical stability and a relatively high insensitivity to impact, as can happen during transport and assembly,' 'remain operative for a considerably longer period, before cleaning is required,' and also have 'very good rejection properties for the washing off of the sediment in rewashing operations.'" The applicant argued that the cited "reasons" for motivation were with reference not to the particular claimed configuration, "but rather the overall filter". As such, "[t]here is no reason disclosed why the [first reference's] openings would benefit from having" the particular claimed flow passage configuration. The reply brief noted that "it is still unclear why one would bring the opposed first/second openings and the third/fourth openings together" [as in the proposed modification]. The Board agreed, concluding that "the modification proposed in the rejection is the result of hindsight and would not have been obvious at the time of the invention."

The examiner fought this case about as hard as I've seen, going so far as to provide marked-up drawings comparing the filter structures in the cited references. Valid factual findings necessarily underlie every obviousness rejection under Graham, but they are insufficient to make the case where the references do not make clear why the combination would have been motivated and no other supporting reasoning is supplied.

Ex parte Metz
Appeal 2014-002549; Appl. No. 12/598,492; Tech. Center 3600
Decided: March 24, 2016

The appealed rejection cited to In re Japikse, 181 F.2d 1019 (C.C.P.A. 1950), for the proposition that "rearranging parts of an invention involves only routine skill in the art", in support of a rejection based on a single reference. Independent claims required a "disk having an outer lateral area defining a ring shaped circumferential surface with a knurled section". The reference was alleged to show the claimed disk, but with knurls elsewhere than on the circumferential surface. ("Knurl" is a great word to Google image search.) The rejection alleged that it would have been obvious to provide the knurls on the circumferential surface to "provid[e] a better frictional surface to prevent unwanted sliding". The applicants countered that moving the knurls wouldn't have worked to solve the problem (a problem that didn't actually exist to begin with), would have been contrary to the functioning of the reference device, and besides, "'the mere fact that a worker in the art could rearrange the parts of the reference device to meet the terms of the claims on appeal is not by itself sufficient to support a finding of obviousness. The prior art must provide a motivation or reason for the worker in the art, without the benefit of appellants specification, to make the necessary changes in the reference device.' Ex parte Chicago Rawhide Mfg. Co., 455 F. 2d 563 (Bd. Pat. App. & Inter. 1984)," MPEP § 2144.04 (VI)(C). The Board agreed that "it is not apparent why it would be desirable to . . . to increase friction of the cam member" by moving the knurls in the reference device since the reference already addressed unwanted torque rotation, the problem allegedly solved by the proposed knurl relocation. The Board thus found that the modification reasoning lacked rational underpinnings and appeared to be the result of hindsight analysis.

The record shows that multiple telephonic interviews and a pre-appeal conference were expended without persuading the examiners of the fault in the rejection. Applicant tenacity prevailed, likely in part because there were multiple good arguments, factual as well as legal, deployed to counter the rejection. Examiners frequently make use of boilerplate citation to legal precedent to support spurious rejection rationales (MPEP § 2144.04 provides a big list, where both Dailey and Japikse appear), but these citations can be rebutted by showing how the cited cases are not applicable to the facts and circumstances of the case at hand.

Ex parte Tatarka
Appeal 2014-007414; Appl. No. 13/066,118; Tech. Center 1700
Decided: March 28, 2016

This decision in a chemical composition case in part stands for the proposition that a prior art reference that includes a "laundry list" of candidate features does not make any particular one of those features "obvious to try" (within the meaning of KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)) where the cited reference does not present a finite number of identified, predictable solutions. On appeal, the rejection hinged on whether or not the single reference in the obviousness rejection taught or suggested the claimed cycloolefin containing modifiers with a crystalline content of 0-10%. The appellants complained that the examiner's "insistence that it is obvious to pluck norbomene from the disclosure of [the reference] which includes 8 Columns of cyloolefin structures involving thousands of potential monomers is conclusory". The panel concurred, noting that the rejection failed to "provide any specific rationales for why a person of skill in the art would choose a norbornene/ethylene elastomer as the flexible polymer among the many possibilities" offered in the reference. "Because of [the reference's] lack of guidance towards selecting norbornene/ethylene over other possibilities in [the reference's] broad disclosure," the rejections were reversed.

Examiners love to rely on "laundry list" references, and not just in the chemical arts, because they seem to throw in everything and the kitchen sink. But just because a reference provides in a single document all the building blocks of a rejected invention does not mean that it would have been obvious, in view of the reference, to put together the building blocks in the same way as in the claims. An examiner is not necessarily free to pick and choose from among myriad possibilities that a reference might offer in making a rejection; a valid motivation for doing so must still be articulated. The Board may have been more sympathetic to the applicants in this case because the record showed the lengths to which they had gone to demonstrate the differences in the optical properties of their invention versus the prior art, even providing samples in an interview, which they photographed for the record.

Ex parte Hager
Appeal 2014-000978; Appl. No. 13/014,796; Tech. Center 1700
Decided: March 29, 2016

The decision in this case reiterates the "teaching away" lesson of In re Gordon, 733 F.2d 900 (Fed. Cir. 1984), that a proposed modification would not have been obvious if it would render the device or method of the reference unsatisfactory for its intended purpose. Representative claim 1 related to a silicon semiconductor wafer production method. However, one of the three references relied upon in the rejection required conducting its respective chamber etch and coating steps without a wafer, "so that all parts of the chamber, including the susceptor, are etched and then coated". The appellants recognized that the primary reference required the absence of the wafer, and cited W.L. Gore v. Garlock, 721 F.2d 1540 (Fed. Cir. 1983), and DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1326 (Fed. Cir. 2009) for the respective "teaching away" holdings of those cases. The examiner responded with the following remarks: "The mere fact that [the primary reference] teaches that the cleaning and pre-coating are performed without a wafer present on the susceptor does not preclude the implementation of an improvement to the process of [the primary reference] by, for example, utilizing a dummy wafer as per the teachings of [the secondary reference]. If appellant's 'teaching away' logic were followed, then any modification to the teachings of any primary reference would not be valid as the reference implicitly 'teaches away' from making such modifications. This logic does not hold unless the reference clearly and specifically states that the proposed change would render the disclosed process untenable or unworkable." The Board helpfully recognized that "teaching away" doctrine doesn't require a reference to expressly shoot down not-yet-invented modifications, and noted that the examiner ignored that the primary reference required the absence of a wafer in making rejections that modified the primary reference by adding a dummy wafer. Thus, the Board reversed the rejections.

This is another instance of the Board showing largesse, in conjuring up Gordon to support the appellants' position, even though the appellants did not themselves cite to that case. "Teaching away" is not always a winning argument, but it's always good to keep Gordon and the other "teaching away" cases in mind when considering the propriety of obviousness rejections that rely on a combination of references.

Board reverses 101 rejection of a method claim reciting particular machine components

noreply@blogger.com (Tyson Benson) — Thu, 14 Apr 2016 18:15:00 +0000

Takeaway: A PTAB panel found that the Examiner failed to establish a prima facie case of unpatentability in reversing an Examiner’s § 101 rejection relating to hardware/software technology for establishing credit on an automatic vending machine. In part, the panel found that the Examiner did not establish that the claims were directed to an abstract idea. Even if the Examiner had established that the claims were directed to an abstract idea, the claims were tied to particular machine (allowing this panel to reiterate that the machine-or-transformation test remains a useful investigative tool for § 101 analysis). (Ex parte Krampe, No. 2013-010784, PTAB Mar. 31, 2016)

Details:

Ex parte Krampe
Appeal 2013-010784; Appl. No. 12/653,741; Technology Center 3600
Decided: March 31, 2016

In a recent decision, a PTAB panel reversed an Examiner’s rejection that the claims at issue were directed to an abstract idea. The PTAB began its decision by framing the claims at issue as relating “to establishing credit on an automatic vending machine . . . using a cellular telephone, or other personal wireless communication device, using an applet placed on the personal communication device that can communicate with a vending universal wireless device placed on the vending device.” Claim 1, which was illustrative of the subject matter on appeal, recited:

A method of establishing credit on a vending device by a consumer comprising:

coupling a vending universal wireless interface to a vending device controller;

activating an applet on a personal wireless communication device to establish a wireless link with said vending device controller;

communicating between said personal wireless communication device and said vending device to acquire the vending device’s identification number and vending information;

establishing a wireless link between said personal wireless communication device and a remote computer server;

transmitting information acquired from said vending device from said personal wireless communication device to said remote computer server along with a request for credit approval for use on said vending device;

determining credit availability for said through said remote computer server;
generating a transaction record from the transmitted request;

transmitting a response from said remote computer server to said personal communication device authorizing a predetermined credit for use on said vending device when such credit is authorized;

transmitting said credit approval from said personal wireless communication device to said vending device; and

activating said vending device to dispense a product therefrom;

thereby eliminating the need for currency or the surrendering one’s credit card for swiping by a third party, or of a dedicated connection between a vending device and a remote computer server to activate a vending device is eliminated.

The panel began its analysis by determining whether the claims at issue were directed to a patent-ineligible abstract idea (Mayo step 1). In quick order, the panel found that the Examiner failed to establish that claim 1 was directed to an abstract idea. Instead, the Examiner merely argued that claim 1 “do[es] not involve a general concept.” As such, the panel concluded that the Examiner failed to establish a prima facie case of unpatentability.

However, the panel did analyze the claims at issue under Mayo step 2 (whether the claimed subject matter included an "inventive concept." Under this analysis, the panel was not persuaded that the Examiner considered “all of the claim elements both individually and in combination to assess whether the claim amounts to significantly more than an abstract idea.” Instead, the Examiner found “that the step of determining credit availability … is ‘a significant solution step,’ but is not recited as being ‘performed by an automated programmed computer, thus failing to make method claim 1 statutory.'” The Examiner then concluded that the remaining elements of claim 1 “have no explicit or inherent recitation of a machine nor qualifying transformation.”

The panel agreed with the Appellant that the claims at issue were tied to a particular machine. The panel reiterated that the machine-or-transformation test, while not dispositive of a section 101 inquiry, remains a useful investigative tool.

In supporting its decision, the panel identified that the claims at issue were directed to establishing credit on a vending device (e.g., a machine). Claim 1 recited ten steps and many of these steps/elements referenced “particular components of a vending device, information associated with the vending device, and/or communications established and exchanged between the vending device and other devices.”

The panel then found that the Examiner did not address the Appellant’s arguments. Instead, the Examiner merely repeated the Examiner’s earlier assertions that “the finding that the “claimed significant solution step [(i.e., the step of determining credit availability)] is not automated, thus making insignificant use of the machine.”

Based upon the above reasoning, the Board reversed the § 101 rejection.

My two cents: This is a case where the Board could have ended its analysis at Mayo step 1 since the Board found the Examiner's argument that claim 1 "do[es] not involve a general concept" suggested the claim was not directed to an abstract idea. However, the Board went to provide potential additional guidance in overcoming § 101 rejections insofar as the Board finding that a majority of the method steps included recitation of a particular machine components (in this case particular machine components of a vending machine) and the use of the machine-or-transformation test remaining a useful investigative tool.