BPAI reverses Enablement rejection when Examiner confuses § 101 Non-Statutory Subject Matter with § 101 Lack of Utility

Takeaway: The BPAI reversed a § 112 First Paragraph Enablement rejection in a computer software application because the Examiner's rationale for the Enablement rejection related to lack of utility under § 101. The BPAI agreed that an Enablement rejection appropriately accompanied a lack of utility rejection under In re Kirk. However, here the outstanding § 101 rejection involved the non-statutory subject matter prong of § 101 rather than the lack of utility prong.


Details:
Ex parte Sun
Appeal 2009008503; Appl. No. 11/171,388; Tech. Center 2100
Decided  May 31, 2011

The invention related to "multimedia user interfaces that provide an intelligent interaction paradigm to help analysts better formulate, validate and manage analyses hypotheses." A representative claim on appeal read:

1. A computer implemented method supporting competitive intelligent analyses of information, comprising the steps of:
     generating, on a computer display device, a display of a hypothesis in a hypothesis space;
     generating, on said computer display device, a display of accumulated information in an information space that helps to evaluate the hypothesis;
     in response to user input, linking a hypothesis to relevant information in the information space;
in response to user input, linking information displayed in the information space to a particular hypothesis and its state; and
     if a particular hypothesis stands rejected or confirmed, generating, in the hypothesis space, a description of the state of the hypothesis as rejected or confirmed.

A first Office Action (issued in 2006) included a § 101 non-statutory subject matter rejection and a § 112 First Paragraph Enablement rejection, but no prior art rejections. In explaining the § 101 rejection, the Examiner asserted that "none of the claims are limited to practical applications," citing AT&T v. Excel Communcations, Inc. Furthermore, according to the Examiner, MPEP 21071.01 directed that an Enablement rejection should accompany a § 101 rejection:

Courts have also cast the 35 U.S.C. 101/ 35 U.S.C. 112 relationship such that 35 U.S.C. 112 presupposes compliance with 35 U.S.C. 101. See In re Ziegler, 992 F.2d 1197, 1200-1201, 26 USPQ2d 1600, 1603 (Fed. Cir. 1993) ("The how to use prong of section 112 incorporates as a matter of law the requirement of 35 U.S.C. 101 that the specification disclose as a matter of fact a practical utility for the invention. ... If the application fails as a matter of fact to satisfy 35 U.S.C. § 101, then the application also fails as a matter of law to enable one of ordinary skill in the art to use the invention under 35 U.S.C. § 112."); In re Kirk, 376 F.2d 936, 942, 153 USPQ 48, 53 (CCPA 1967) ("Necessarily, compliance with § 112 requires a description of how to use presently useful inventions, otherwise an applicant would anomalously be required to teach how to use a useless invention.").
(MPEP 21071.01.)

In the first response, the Applicant amended the method claims to include the phrase "on a computer display device" and argued that the amendment overcame both rejections. But the final Office Action maintained both rejections, and the Applicant appealed.

In the Appeal Brief, the Applicant explained how "the claims on appeal in this application are clearly directed to practical applications" and were thus directed to statutory subject matter as interpreted by In re Warmerdam, State Street Bank, and AT&T. The Applicant argued for reversal of the § 112 First Paragraph Enablement rejection because it explicitly relied on the § 101 rejection.

The Examiner maintained both rejections in the Answer, and explained that the Enablement rejection was appropriate because

... current case law (and accordingly, the MPEP [Manual of Patent Examining Procedure]) require such a rejection if a §101 rejection is given because when Applicant has not in fact disclosed the practical application for the invention, as a matter of law there is no way Applicant could have disclosed how to practice the undisclosed practical application.
(Emphasis in original.)

The application did not reach the BPAI until 2011. The Board affirmed the § 101 rejection under Bilski v. Kappos, finding that the method claims were not tied to a particular machine and also failed to transform  an article to a different state or thing.

However, the Board reversed the § 112 First Paragraph Enablement rejection, finding that the Examiner had confused a § 101 Non-Statutory Subject Matter rejection with a § 101 Lack of Utility rejection:

     The Examiner’s statement of the rejection of claims 1-25 under § 112, first paragraph appears to be couched in terms of the claims lacking enablement. However, the Examiner offers no analysis with respect to how the disclosure fails to enable the subject matter, other than reference to MPEP § 2107.01(IV) and In re Kirk, 376 F. 2d 936, 942 (CCPA 1967). See Ans. 10.
     MPEP § 2107.01(IV) and In re Kirk relate the statutory grounds of § 101 and § 112, first paragraph to a rejection for lack of utility. Although the Examiner rejects the claims under § 101 as being directed to nonstatutory subject matter, the Examiner does not show that the claims are deficient under the utility prong of 35 U.S.C. § 101.
     Accordingly, as the § 112 rejection appears to be based solely on a § 101 “lack of utility” rejection that has not been made, we do not sustain the rejection of claims 1-25 under 35 U.S.C. § 112, first paragraph.

My two cents:  I admit I've sometimes used the phrase "utility rejection" when I really mean a § 101 non-statutory subject matter rejection. I further admit that this usage is sloppy and incorrect. But I do know the difference between a non-statutory subject matter rejection – quite common in computer cases – and a rejection for lack of utility (sometimes referred to as a "specific utility" rejection) – which typically occurs in in a biotech case and is almost never appropriate in a computer case. So if an Examiner relied on In re Kirk to throw in an Enablement rejection in a computer case, I'm confident I'd know something was very wrong.

I found three other applications where this same Examiner has made this type of inappropriate Enablement  rejection in the past few years. In two of them, the issue went to appeal and the BPAI reversed (Ex parte Mitchell and Ex parte Griffith). In the third, the Examiner withdrew the Enablement rejection in the Answer without comment (Ex parte Aklilu).

How did I find other appeal decisions involving the same Examiner? I used the list of BPAI decisions available at the JIANQ CHYUN Intellectual Property Office blog. The list, which is compiled daily by James Long, includes the names of the ALJ, the Examiner, and the legal representative, as well as the rejections on appeal. So if you know the Examiner's name then you can use the blog's search box to search for other decisions involving the same Examiner. Same for law firm name. This blog is a great resource!