Monday, August 5, 2013

Board finds Machine-or-Transformation test, applied alone, insufficient to sustain 101 rejections

Posted by: Adam Ellsworth

 In an appeal involving e-learning games, the Board reversed a rejection under 35 USC § 101 of a method claim directed to constructing e-learning games, where the rejection was based solely on the grounds that the claims did not satisfy the machine-or-transformation test. The Board relied on the Federal Circuit's decision in Cybersource, stating that the Examiner should have determined if the claim was directed to an unpatentable mental process. The Board also suggested that claims be analyzed based on the “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos” to determine whether a claim is patent-eligible under 35 U.S.C. § 101.


Appeal 2011-001822, App. No. 10/853,298, Center 3700
Decided: May 31, 2013 

The application on appeal was directed to e-learning games. Two representative claims read:

1.     Apparatus for dynamic construction of e-learning games, said apparatus comprising:at least one learning object assessment object;   a repository comprising a plurality of video scenes; and  a game generator for associating a video scene with an assessment object, dynamically responsive to an answer to the assessment question by a student, whereinthe video scene is selected from a plurality of video scenes capable of being associated with the assessment question.

8.     A method for constructing e-learning games dynamically, comprising the acts of:          selecting a learning object from a repository of learning objects;selecting a learning object assessment object associated with the learning object from a repository of learning object assessment objects;testing an e-learning student according to an assessment question from the learning object assessment object; andselecting a video scene from a video repository, responsive to an answer to the question by the student, for display to the student, whereinthe video scene is selected from a plurality of video scenes capable of being associated with the assessment question.

The Examiner initially rejected claims 1-12 as being directed to non-statutory subject matter under 35 U.S.C. § 101, but the Examiner withdrew the rejections of the apparatus claims 1-7 on appeal. As a result, the only 35 U.S.C. § 101 rejections argued on Appeal were those directed to the method claims 8-12.

In rejecting claim 8, the Examiner applied only the machine-or-transformation test to determine whether the claim was directed to non-statutory subject matter under 35 U.S.C. § 101. The Examiner set forth the standard as follows:

“[I]n order for a claimed process to be considered statutory it must be: (1) tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing.”

On appeal, the Applicant, paraphrasing the Supreme Court decision in Bilski v. Kappos which had issued a few weeks previously, argued that the Examiner “failed to produce substantial evidence that the claim was directed to one of the exceptions to statutory subject matter.” The Applicant further argued that the claim was tied to a machine, stating:

“Specifically, claim 8 refers to ‘a repository of learning objects,’ ‘a repository of object assessment objects,’ and a ‘video repository.’ All of these items are devices, and thus, the claimed invention is not directed to one of the exceptions to statutory subject matter.”

The Examiner, ignoring the Applicant’s reference to Bilski, responded by stating that that “the claim does not make any implicit or explicit recitation of a particular machine which is critically tied to the performance of the method.”

Regarding the limitations recited in the claims of storing objects in a repository, the Examiner dismissed this limitation as merely being an extra-solution activity, stating that “it is not part of the critical steps and procedures of the claimed process.”

The Board agreed with the Applicant and reversed the rejection of claims 8-12 under 35 U.S.C. § 101 for not following the most recent guidance from the Supreme Court, the Federal Circuit, and the U.S.P.T.O. The Board stated:

“Following the Federal Circuit’s post-Bilski approach in Cybersource, the Examiner should have analyzed the method claim to determine whether ‘it is drawn to an unpatentable mental process-a subcategory of unpatentable abstract ideas.’ The Examiner’s analysis, however, is devoid of any mention of an ‘abstract idea’ or ‘mental process.’”

The Board noted that since the Examiner’s rejection was issued four months prior to the Supreme Court’s Bilski decision, the Examiner’s rejection in the Final Office Action was not based on the most recent guidance from the Courts or the Patent Office. The Board stated:

“[T]he Examiner presumably had neither the benefit of the Court’s analysis nor the benefit of this Office’s ‘Interim Guidance for Determining Subject MatterEligibility for Process Claims in View of Bilskiv. Kappos,’ 75 Fed. Reg. 43,922, 43926, which became effective July 27, 2010. The Guidance provides in exquisite detail the analysis that the Examiner should follow in determining whether a method claim is claiming an abstract idea.”

Although the Board reversed the § 101 rejections, the rejections of all of the claims were ultimately affirmed by the Board, either under 35 U.S.C. §§ 102 or 103.

My two cents:

The Board analyzed the rejections of claims 8-12 under 35 U.S.C. § 101 exactly right. The Examiner provided no analysis of whether the claims were directed to an abstract idea. In addition, the Applicant in this case was lucky that the Board was aware of the Interim Guidance and directed the Examiner to follow the Interim Guidance, since most Examiners and PTAB judges are either unaware of the Guidance or choose to ignore it.

Other panels of judges at the PTAB have interpreted the Supreme Court’s language in Bilski that “the machine-or-transformation test is not the sole test for determining the patent eligibility of a process” to mean that, although other tests may exist, the machine-or-transformation may be the sole test applied by an Examiner in any given application. This interpretation is inconsistent with the Supreme Court’s decision, which rejected the Federal Circuit’s application of only the machine-or-transformation test to reject the claims in Bilski, and this interpretation is definitely inconsistent with Cybersource, in which the Federal Circuit further stated that “the machine-or-transformation test is not dispositive of the § 101 inquiry.”

The more logical interpretation of Bilski is set forth in the “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos,” 75 Fed. Reg. 43,922, 43926. In the Interim Guidance, the machine-or-transformation test is one test to determine whether a method claim is directed to patent-eligible subject matter, but not the sole test. In addition to the machine-or-transformation test, the Guidance directs Examiners to determine whether an abstract idea has been practically applied. The Guidance includes factors that weigh in favor of patent-eligibility of a claim and factors that weigh against patent-eligibility of a claim.

Here, although the Examiner had access to Bilski at the time of the Examiner’s Answer, the Examiner did not have access to the Interim Guidance. Examiners do not generally follow or analyze court cases without guidance from the PTO, and this Examiner was no exception. When the Applicant relied on Bilski to argue that the Examiner had not provided substantial evidence that the rejected claims were directed to abstract ideas, the Examiner ignored the argument and instead relied upon the outdated guidance from the Patent Office that directed Examiners to apply only the machine-or-transformation test to method claims to determine patent-eligibility of the claims.

Prosecution Tip: My tip for responding to § 101 rejections in which an Examiner rejects a method claim using only the machine-or-transformation test is to direct the Examiner to the Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. Applicants should not only cite the location of the Interim Guidance in the Federal Register, and possibly even provide a hyperlink to the Guidance on the USPTO website, but Applicants should also point out the specific features in the rejected claims that weigh in favor of patentability according to the Interim Guidance. This provides concrete reasons on the record, supported by case law, why the claims are directed to patent-eligible subject matter.


  1. Have you actually read the interim guidance the Board cites? The "factors" are nothing more than the machine or transformation test written in as many ways as possible and couched as "factors".

    Furthermore the Board's decision on 101 is ironic because the Interim Guidance they tell the examiner to use have since been superseded by amendments to the MPEP in 2012 and further guidance memos and training also issued in 2012.

    1. The latest "guidelines" can be found here

      As a general matter, while citing the guidelines is OK, the guidelines are not necessarily an accurate reflection of the law -- more of a USPTO slanted version of what they think the law should be. I would rather cite case law than the guidelines. Case law is binding precedent -- guidelines are not.

      However, to the extent that the guidelines really work in your favor, then cite them. However, from experience, their citation value is of limited use since most examiners simply ignore the citation.

      Regarding this case, this looks like a situation of an examiner "stretching his legs" and seeing what he can get away with. Another thing, the Examiner wasn't affirmed on all of the 102/103 issues. The Examiner was actually reversed on a couple of the independent claims but the PTAB decided that they were going to step in and help the Examiner out. At least they designated it a new grounds of rejection -- oftentimes, the PTAB will ignore the examiner's analysis, insert their own, and then "affirm" the examiner's rejection.

  2. Another problem with the USPTO subject matter eligibility analysis procedure in MPEP 2106 is that it only sets forth factors. Not only do the factors themselves involve judgment calls, but the MPEP also says without elucidation that not all factors apply to a given invention; that the weight to be accorded a particular factor cn be different for different inventions, and that the presence or absence of any single factor is not determinative. In short, the Examiner can find support in the Guidelines for any position he or she wants to take.

    I'd suggest that a better approach might be to catalog for the Examiner each of the Federal Circuit cases that have come down on this issue since Bilski (there haven't been that many), describing the invention in column 1 and the holding in column 2, and showing how the subject invention is clearly closer to the inventions found patentable.

    Has anyone tried this strategy? What result?

    1. A couple of the comments have suggested citing Federal Circuit cases to the Examiners. I do this on occasion to drive home a point, but my experience has been that Examiners will follow the guidance from the PTO before they follow Federal Circuit cases. That's why I've suggested showing the Examiner the factors from the published Guidance that weigh in favor of patent eligibility.

      You point out that for every factor that weighs in favor of patent-eligibility, there are factors that weight against. This is true, but this is the state of 101 jurisprudence. The machine-or-transformation test was a pretty bright line rule, but it was rejected by the Supreme Court as the only test to be applied. As a result, Federal Circuit opinions, PTAB opinions and Examiner decisions are all inconsistent.

      I think the best course is generally to point out factors that weigh in favor of patentability from the Guidance, as well as one or two sentences about PTAB or Federal Circuit cases that support your position. Give a reasonable Examiner a well-supported reason to agree with you. I've found that most have withdrawn the 101 rejections when I've followed this course.

    2. "This is true, but this is the state of 101 jurisprudence."

      Not really, the jurisprudence involves no "factors" and involves only a finding or not, of some judicially exempt subject matter, or preemption thereof.

      If you really wish to overcome a 101 rejection that was actually done right, then simply point out why the claim does not preempt the abstract idea (or other judicially excepted subject matter at issue) which the examiner has taken issue with. Do that after having taken a few minutes out of your day to educate him on the law, and remind/ask him whether he is there to apply the law or to apply policy. It really is that simple, and it shouldn't take you more than a few minutes. Unless of course the rejection was properly made and there is in fact some judicially excepted subject matter being preempt. In that case, there is a problem.

  3. Adam, what a breath of fresh air you are good sir. Unlike Karen you seem to be all for applying the law.