Applicant petitions when Examiner says claims do not read on elected figure

Takeaway: In response to a Restriction requiring restriction between species/figures, the Applicant elected the species of Fig. 4 and asserted that all claims (1-11) read on the elected species. The Examiner issued another Action indicating that the phrase "linear series of at least three [brushes]" did not read on elected Fig. 4. The Applicant petitioned the Examiner's decision, explaining why claim 1 did read on Fig. 4. The Technology Center Director found that the Examiner's interpretation of "linear" in claim 1 was not unreasonable, and that the Restriction Requirement was therefore proper. (Appl. 11/507,367.)

Details:

Application of Alfano
Appl. No. 11/507,367
Tech Center 3700
Petition Decision January 26, 2009 (available through Public PAIR)

 The Applicant filed an application directed to a therapeutic body brush, with one independent claim and ten dependents. (View published application here.)

As a first action, the Examiner issued a species restriction, naming Figs. 3, 4, and 5 as distinct species. The Restriction required the Applicant to elect one of these species and to identify "the claims encompassing the elected species."

The figures (shown below) were described in the Application as follows:

FIG. 3 is a perspective view of the preferred long handle version of the body brush.
FIG. 4 is a perspective view of the preferred short handle version of the body brush.
FIG. 5 is a side view of the flexible handle portion and telescoping handle portion body brush ...

In a Response to Restriction, the Applicant elected Fig. 4 and specified that all the claims (1-11) read on the species of Fig. 4.

The Examiner then issued a Miscellaneous Action indicating that the Response was non-responsive.

Applicant's response is non-responsive since Applicant has elected the species of Fig. 4 and claim 1 fails to read on the elected species of Fig. 4. Specifically, claim 1, lines 4-5 recite "a linear series of at least three brush head mounting structures" (emphasis added) which is not readable on elected Fig. 4. Moreover, the specification never describes such an arrangement for elected Fig. 4.

The Action indicated that the Applicant had one month to file a responsive reply, with extensions of time available for a fee.

The Applicant filed a "Miscellaneous Paper" arguing that the Response to Resriction was fully responsive. The Applicant explained how the embodiment of Fig. 4 fell within the scope of claim 1. First, the Applicant asserted that the claim term "linear series" included both rectilinear series and and curvilinear series. The Applicant then asserted since "[t]he series of mounting structures in FIG 4 is curvilinear," elected claim 1 read on the species of FIG. 4. This paper was filed at the three-month mark, but without an extension of time fees.

The PTO next sent a Notice of Fees due, essentially treating Applicant's last filed paper as responding to the outstanding Miscellaneous Paper, but being two months late.

The Applicant then filed a Petition Under § 1.181 requesting Supervisory Review by the Technology Center Director. The Petition requested, as relief, withdrawal of the Examiner's holding of non-responsiveness. The Petition also requested that the associated extension fees be waived.

In the Petition, the Applicant made several substantive arguments. First, the Response to Restriction was fully responsive. Second, the Examiner's position (as clarified in an Examiner Interview) made it "logically impossible" to select Fig. 4 and corresponding claims reading on that Figure. Third, the Examiner's standard for "fully responsive" was improper.

The Applicant's argument that the Response to Restriction was fully responsive hinged on the meanings of "linear," "curvilinear," and "rectilinear." The Applicant contended that "rectilinear" and "curvilinear" are both subsets of "linear." As evidence, the Applicant presented definitions of all three words that referred to "line." Under this interpretation, claims 1-11 did read on Fig. 4, and the Response to Restriction was thus fully responsive.

The Applicant then explained why the Examiner's position was a "logical impossibility." During an Examiner Interview, the Supervisory Examiner indicated that none of claims 1-11 read on Fig. 4. However, claims 1-11 were the only claims in the application – thus the "logical impossibility" of electing Fig. 4, even though the Restriction Requirement identified Fig. 4 as one of three species.

As a final point, the Applicant argued that the Examiner had applied an improper standard for responsiveness.

The examiner and his supervisor have taken the position that identifying claims believed to read on an elected species is responsive only if those claims happen to match the ones the examiner believes read on that species. In other words, an answer is not an answer at all unless he happens to agree with it.

According to the Applicant, "a response is responsive if every demand for a reply receives an answer."

The Technology Center Director dismissed the petition. The Petition Decision first disposed of the issue of extension-of-time fees, noting that the Examiner's refusal to consider the late reply was proper. Turning to the propriety of the Restriction Requirement itself, the Decision noted that claim 1 "does raise a question as to what 'linear' means with respect to the elected Fig. 4." The Decision found that the Examiner's interpretation of "linear" in claim 1 was not unreasonable.

The term "linear" is typically applied to mean "straight" in everyday language. It is clear that is how the examiner understood the term "linear." In this regard, the Examiner also questioned whether there was any support in the specification in regard to the elected species of Fig. 4 ... Under the circumstances, the examiner's Office action of Dec. 7, 2007 is deemed proper since the understanding of "linear" came to light.

The Decision indicated that the basis of the Petition was essentially that the Examiner's position was unreasonable. As such, the appropriate procedure was a Request for Reconsideration.

This argument is proper in a request for reconsideration before the examiner. If the examiner had erred upon reviewing applicant's arguments, it would be appropriate for the examiner to draft a corrected election requirement or, alternatively, in agreeing with applicant's argument, move forward, in the examination of what has been elected.

The Decision then explained that the Applicant's "Miscellaneous Paper" was essentially a Request for Reconsideration, but one filed after the one-month reply period.

The miscellaneous letter of Mar. 10, 2008, is essentially a request for reconsideration in that it presents arguments to support the applicant's position in the election and is in direct response to the Office action of Dec. 7, 2007. Therefore, the requirement for an extension of time is correct before the examiner can consider the paper. It is not properly filed until the fee has been paid - including additional fees to cover for the continuing running the period for response.

Thus, the Examiner's holding of non-responsiveness was proper, and the requirement for extension of time fees was correct.

The Application went abandoned after the Petition Decision.

My two cents: See, I told you: it's always about claim construction. While the issue decided in this Petition Decision was non-responsiveness of an Applicant's Reply, the underlying issue was claim construction.

The TC Director decided that the Examiner's interpretation was not unreasonable. However, I didn't see any analysis of Broadest Reasonable Interpretation, only a brief mention of "everyday language." And I note that it's very unusual for the TC Director to rule on claim construction. This is a strange intersection of restriction practice (decided via petition) and claim construction (decided via appeal).

If the Applicant really wanted to fight for examination of claims 1-11, I suppose the next step would be to file a Request for Reconsideration of the Petition Decision, this time with the Petitions Office. That's how you "appeal" a petition decision and take it up to the next level.

The attorneys at the Petitions Office may not be familiar with the law of Broadest Reasonable Interpretation. On the other hand, the are attorneys, so should be equipped to handle BRI, especially if the Applicant does a good job of briefing the issue. The PTAB is better equipped to deal with BRI, since they deal with it every day. But procedurally, I can't see a way to get this before the PTAB. The Rules are clear that the PTAB only reviews rejections, and there aren't actually any rejections here. 

Board finds "a portion of the adhesive strip" does not read on the entire strip

Takeaway: The Applicant appealed claims to a bookbinding system. One of the limitations at issue was "locally heating the adhesive strip to selectively melt a portion of the adhesive on the adhesive strip." The Applicant argued that the anticipatory reference disclosed melting all of the adhesive, while the claim specified "a portion." Without explanation, the Examiner took the position that "melting a 'portion' of the adhesive includes the 'entire' amount of adhesive in the strip." The Board found this interpretation to be unreasonable, and reversed the claim rejection. (Ex parte Hoarau, 2010.)

Details:

Ex parte Hoarau
Appeal 2009003673; Appl. No. 10/953,549; Tech. Center 1700
Decided: January 22, 2010

The application on appeal was directed to a bookbinding system. The Applicant appealed several independent claims, two of which are reproduced below:

     10. A method of binding sheets, comprising:
     accumulating plural sheets (206) to be bound by placing an edge of each sheet adjacent an adhesive strip (202);
     locally heating (208) the adhesive strip (202) to selectively melt a portion of the adhesive on the adhesive strip in a vicinity of less than all of the plural sheets to be bound.
     11. A method of binding sheets, comprising:
     accumulating plural sheets (206) to be bound, each of the plural sheets being sequentially placed adjacent to an adhesive strip (202); and
     locally heating (208)  the strip (202), wherein the adhesive strip is locally heated on a sheet-by-sheet basis, as each of the sheets is placed adjacent to the adhesive strip.

The Examiner rejected all three independent claims as being anticipated by Taillie, as follows:

Taillie teaches a method of binding multiple sheets to each other after heating an adhesive layer thereon, one sheet at a time. Multiple sheets can mean at least two sheets. By interpreting the claims, it is disclosed that plural sheets are bound through an adjacent adhesive strip.

The Applicant appealed. The Applicant argued that claim 10 specified binding a plurality of sheets with an adhesive strip, where in Taillie, "each single sheet is associated with a single adhesive, which is prefused in the sheet or an adjacent sheet." As another distinction, the Applicant also argued that claim 10 specified heating a portion of the adhesive, where in Taillie, "each adhesive area [is] heated in its entirety to bind the sheets."

With respect to claim 11, the Applicant argued that in Taillie "an adhesive is prefused into a surface edge of the sheet and the sheets are placed adjacent to each other" where claim 11 specified placing a sheet adjacent to an adhesive layer."

In the Answer, the Examiner explained claim interpretation as follows:

In interpreting claim 10, the limitation stating melting a "portion" of the adhesive includes the "entire" amount of adhesive in the strip.
With respect to claim 11 ... "locally heating the adhesive strip", this limitation refers to the previous set of sheets and is not limited to only one adhesive strip.

In a Reply Brief, the Applicant argued broadest reasonable interpretation. For claim 10, the Applicant argued that a reasonable interpretation "cannot include multiple adhesive strips such that more than one adhesive strip is used to bind the plural sheets." For claim 11, the Applicant argued that "the adhesive strip that the sets of sheets are sequentially placed adjacent to, is the same adhesive strip that is locally heated each time a new set of sheets is placed adjacent to it."

The Board was not persuaded by all of the Applicant's arguments, but did reverse both rejections.

The Board found that Claim 10 was not limited to single adhesive sheet as urged by the Applicant. The claim language "placing an edge of each sheet adjacent an adhesive strip" was therefore met by Taillie's "[placing] an edge of each sheet adjacent to the underlying sheet’s adhesive strip." br />
Continuing on to Applicant's second argument for claim 10, the Board found the Examiner's interpretation of "a portion of the adhesive" to be unreasonable. The Examiner read "a portion of" on the entire amount of adhesive in the strip. The Board referred to a dictionary definition for plain and ordinary meaning ("something less than the whole to which it belongs"), and Board noted that "[t]he Examiner has not established that the Appellant is giving the term 'portion' any meaning other than its ordinary meaning." Because the Examiner's interpretation of claim 10 was in error, the Board reversed the rejection of claim 10.

For claim 11, the Board also found the Examiner's interpretation "locally heating the adhesive strip," to allow for multiple adhesive strips, to be unreasonable. The Board explained as follows:

The Appellant’s Claim 11 requires that the adhesive strip is locally heated on a sheet-by-sheet basis as each of the sheets is placed adjacent to “the” adhesive strip, i.e., the same adhesive strip. Taillie locally heats each sheet’s adhesive strip when a sheet edge is placed on it (col. 6, ll. 49-59). Thus, Taillie’s local heating takes place when each sheet is placed adjacent to “an” adhesive strip, but not adjacent to “the” adhesive strip, i.e., the same adhesive strip.

My two cents: No surprise that "a portion" doesn't read on "entire," but it's a bummer that the Examiner dug in his heels and went all the way to appeal on this point

The Board's treatment of "an adhesive strip" seems inconsisent between claim 10 and claim 11. In claim 10, the Board said "placing an edge of each sheet adjacentan adhesive strip" allowed for more than one strip, with each sheet adjacent to a different strip. Claim 11 also recited "an adhesive strip," but the Board said the phrase "locally heating the adhesive strip" was limited to one strip, the same one each time.

Presumably the difference is "an" in claim 10 versus "the" in claim 11. So if claim 10 is reworded to look more like claim 11, does this avoid Taillie?

providing an adhesive strip;
accumulating plural sheets to be bound by placing an edge of each sheet adjacent the adhesive strip;

The "providing" step doesn't itself prohibit multiple strips, but the article "the" in the placing phrase does. Right?

PTAB finds that "arranged to enable particles to occupy the closest extreme position" is necessarily met since one of two extremes must be closest

Takeaway: An Applicant appealed claims to an e-ink display. The limitation at issue was a drive means with functional language "arranged for contolling the reset potential difference ... to enable particles to occupy the extreme position which is closest to ... the image information." The Applciant argued that the reference circuit did not control the particles to occupy a particular one of the extreme positions. The Examiner argued that the reference circuit did position the particle at both extremes at different times, and one of these extremes was the one closest to the image – which was all that the "arranged to enable" language required. The Board agreed with the Examiner and affirmed the rejection. (Ex parte Zhou, PTAB 2012.)

Details:

Ex parte Zhou
Appeal 2010002955; Appl. No. 10/542,910; Tech. Center 2600
May 14, 2012

The application on appeal was directed to an electrophoretic display, a technology commonly used for e-book readers. (See Wikipedia article here for more details.)

A relevant portion of a claim on appeal read:

     1. An electrophoretic display panel (1),  for displaying a picture corresponding to image information, comprising:
     an electrophoretic medium (5) comprising charged particles (6);
     a plurality of picture elements (2) ;
     a first and a second electrode (3, 4) associated with each picture element ... ; and
     drive means (100) ... arranged for controlling the reset potential difference of each picture element to enable particles to occupy the extreme position which is closest to the position of the particles which corresponds to the image information.
(Emphasis added.)

FIG. 2 of the application is shown below:

During prosecution, the Examiner rejected the claim as obvious using a combination of two references. According to the Examiner, the primary reference taught "the reset potential difference can enable particles to occupy either extreme position."

The Applicant argued that such a teaching was not enough to meet the "closest" limitation:

 [The reference] still does not disclose or suggest any relationship between the current position of the particles and their final or extreme position, let alone disclose or suggest controlling ... to enable particles to occupy the extreme position which is closest to the position of the particles which is closest to the image information.

In an Advisory Action, the Examiner further explained his reasoning. The reference's use of the reset potential difference allows the particle to occupy either extreme position (i.e., nearest either  electrode). Therefore, this same capability also allows the particle to occupy "the extreme position which is closest to the image" – whichever one that happens to be.

On appeal, the Applicant argued that the combination did not teach "controlling the reset potential difference of each picture element to enable particles to occupy the extreme position which is closest to the position of the particles which corresponds to the image information."

The Applicant repeated this argument in the Appeal Brief. In the Answer, the Examiner elaborated on how the particular claim language used to describe behavior allowed the rejection:

 [A]pplicant has not positively claimed that the particles actually occupy the extreme position which is closest to the position of the particles which corresponds to the image information;" rather, the applicant has merely claimed that the "drive means" are "arranged" to "enable" the particles to occupy this extreme position. ..[T]he position of the particles can be divided into three possible positions:  a position closest to the first electrode, a position closest to the second electrode, and an intermediate position between the two electrodes. ... [T]he position of the particles depends on the potential difference applied to the first and second electrodes (i.e., positively charged particles will migrate to a negatively charged electrode and negatively charged particles will migrate to a positively charged electrode).  Thus, it stands to reason that a "drive means" that is "arranged" to "enable" the charged particles to occupy either or both extreme positions can "enable" the charged particles to occupy the extreme position that "is closest to the position of the particles which corresponds to the image information.

The Applicant filed a Reply Brief and responded to the Examiner as follows:

[T]here is no need to include "actual" performance in the claims. A device or means which is arranged to perform a patentable function is patentably distinct from another similar device or means which is not arranged to perform this particular function. Accordingly, patentable weight should be given to the related features.

The Board briefly summarized the positions of the parties, and then affirmed the obviousness rejection. The Board explained that "[w]e agree with the Examiner since the closest position must be one of the two extreme positions disclosed by the prior art."

My two cents: The way I see it, the Examiner's position was that the primary reference "accidentially" taught the limitation at issue. According to the Examiner, all the claim required is that the voltage drove the charged particles to one end in one scenario and the other end in another scenario. One of those ends is necessarily the one closest to the image.

The Applicant seemed to argue that the reference didn't specifically control the particles in the manner claimed. But did the Applicant t claim the scenarios in enough detail to distinguish? 

The Examiner, and the Board, focused on the levels of indirection allowed by "arranged to" and "enable". But the claim did recite that the drive means controlled the voltage to achieve a specific result. Would it have helped if the Applicant had put an active verb such as "select" in the claim, along with some sort of selection criteria?

Was there a distinction here, and the Applicant just didn't capture it? Are there some distinctions that are impossible, or nearly impossible, to express in a claim? And was this one of them?

Board agrees with Applicant that "a common binder polymer for the core and the shell" means identical and not merely sharing some properties

Takeaway: In a claim to toner ink for printers, the Applicant went to appeal on the issue of the meaning of
"a common binder polymer for the core and the shell." According to the Examiner, the asserted combination met this element because one reference taught styrene for the core and the other reference taught styrene for the shell. Thus, the core and shell had styrene in common. According to the Applicant, identical polymers were required, and the references did not disclose identical polymers. Instead the references taught different concentrations of styrene in the core and the shell, resulting in a different glass transition temperature. The Board found that the Examiner's interpretation was unreasonable in view of the specification and reversed the rejection. (Ex parte Massa, PTAB 2013.)

Details:

Ex parte Massa
Appeal 2012009081; Appl No. 11/870,651; Tech. Center 1700
Decided  Sep. 25, 2013

The application on appeal was directed to toners for printer ink. A representative application on appeal read:

     1. A core-shell polymer particle comprising
a common binder polymer for the core and the shell
wherein the core has a porosity and
the shell is non-porous and
the particle has a porosity of from 10 to 70 percent.

During prosecution, this claim was rejected as obvious over a combination of two references. The Examiner relied on the primary reference for the core porosity and particle porosity elements, and the secondary reference for the non-porous shell. The Examiner relied on the combination for the "common binder polymer" element, since the primary reference dislcosed that sytrene is a suitable monomer for the core while the secondary reference disclosed that sytrene is suitable for the shell. The combination taught that the core and the shell have styrene in common, and thus taught "a common binder polymer for the core and shell."

The Applicant appealed and argued that the Examiner's interpreation of "a common binder polymer for the core and the shell" was unreasonable. The combination taught core and shell binder polymers having a monomer in common, but differering in the concentration of this monomer so as to produce a difference in glass transition temperature for core and shell. In contrast, the claim required "core and shell polymers being the same, i.e., common." As evidence that "common" meant "same," the Applicant referenced a sentence in the specification stating that "the porous particles of the present invention have the same polymer for the core and shell."

The Examiner maintained his position in the Answer. Nothing the Applicant's reliance on the specification, the Examiner asserted that a POSITA "would not conclude that appellant's use of 'the same' in a sole instance in the specification mandates replacement for 'a common' throughout  the specification." The Examiner then explained that, rather than being synonyms, the words "common" and "same" were instead genus/species: 

     The term "common" [in the term at issue] represents a large range of possibilities, similar to a genus.  For example, a core comprising a mixture of binder polymers A and B would have a common binder polymer with a shell comprising a mixture of binder polymers B and C; wherein the binder polymer C would read on the claimed "a common binder polymer for the core and the shell."
     On the other hand, the term "same" as recited in the specification represents a limited number of options.  Turning to the example above, a core comprising a mixture of binder polymers A and B, would not be "the same" as a shell comprising a mixture of binder polymers B and C,  because of the presence of A and C in the core and shell, respectively. (However, the use of comprising in the preamble opens up the claim to allow for the core and shell to read on "the same").  Similar to the genus/ species relationship in which the species in the written description cannot limit the claimed genus, the use of the term "the same" in the specification cannot be employed to limit the claimed term "a common."
(Emphasis added.)

The Board found the Examiner's interpretation to be unreasonable as applied to the facts of the case.

     [W]hen the claim language is read in light of the Specification by one of ordinary skill in the art as it must be, it defines a binder polymer for the core and the shell that is the same, or identical, polymer composition. Appellants' Specification describes "the same polymer for the core and shell" (page 6, lines 2-3).
     Accordingly, while the Examiner sets forth a rationale for how, in a different context, common polymers may not be identical, we concur with Appellants that such an interpretation is not reasonable in the context of Appellants' Specification and intent.
(Emphasis added.)

The Board then reversed the obviousness rejection as being based on a flawed claim interpretation.

My two cents: I can't decide how I feel about this one.I thought the Examiner's genus/species analogy was creative, but the Board apparent thought it was overreaching.

My gut feeling about common meaning is that "same" means "identical" while "common" requires less than identical. But I don't want cases being decided on gut feeling, so definition evidence would have helped here. Not much else to go on, since the spec itself uses "same" exactly once (as pointed out by the Examiner), and only uses "common" once – in the Summary of the Invention.

Often when the Applicant points to a statement in the spec as a reason to narrow a claim term, the Board notes that the relied-upon statement is couched in terms of examples or embodiments. But here the specification sentence that used the word "same" also used the term "invention". So you can't immediately discount the sentence by saying that it referred to a different embodiment than the one claimed.

Should the Applicant have amended the claim to use "same" rather than "common", since that was the meaning he was arguing? After all, hasn't the Applicant given up scope here with a clear disclaimer? Or would this Examiner gave a 112 1st Written Description rejection if the Applicant tried that?

Board reverses 101 rejection based on a server recited in the preamble

Posted by: Adam Ellsworth

Takeaway: In an appeal involving a computer-implemented method of matching mobile agents with location-based orders (such as assigning a taxi to a customer), the Board reversed the rejection under 35 U.S.C. § 101 of a method claim that recited a server in the preamble. The Board acknowledged that the machine-or-transformation test was not the sole test to apply, but found that the claims satisfied the “machine” prong of the test, which was sufficient to render the claims patent-eligible.

Details

Ex parte O’Meara

Appeal 2012-005110, App. No. 09/740,201, Center 3600

Decided: September 26, 2013

The application on appeal was directed to assigning mobile agents to location-based orders. Claim 1 reads as follows:

1. A computer-implemented method of allocating a location-related order to one of a plurality of mobile agents, said method being carried out by an ordering server programmed to carry out the steps of the method, which comprise: 

a) maintaining a current order record identifying a first location and first time at which each agent is expected to become free to fulfill a new order; 

b) maintaining a prioritized listing of locations including both scheduled locations which an agent is currently due to visit and unscheduled locations which said agent is not currently due to visit, with locations in said listing being prioritized to rank both the scheduled and unscheduled locations for said agent according to availability of the agent to reach each location after said first time, said availability having been calculated for each location irrespective of whether or not said agent is currently due to visit a particular location in said listing; 

c) receiving said location-based order and recording the location and time at which said order is to be fulfilled; 

d) determining from said prioritized listing of locations a suitable agent to fulfill said order; and 

e) allocating said order to said suitable agent.

The application first went to appeal in 2006 and the Board reached a decision in that appeal in 2009. In that decision, the Board reversed the Examiner’s obviousness rejections under 35 U.S.C. § 103(a), but the Board entered a new ground of rejection under 35 U.S.C. § 101, holding that the claims were directed to patent-ineligible subject matter. The Board applied the machine-or-transformation test to determine patent eligibility, which was the test of the time as set forth by the Federal Circuit. The preamble of the claim at the time of the first appeal recited only that the method was “computer-implemented.” The Board stated that the term “computer-implemented” in the preamble of the claims did not recite a “particular” machine, and no other elements of the claims tied the claims to a machine or transformed an article to another thing.

During the intervening prosecution between the first appeal and the present appeal, the Appellants amended the preamble of claim 1 to recite “A computer-implemented method of allocating a location-related order to one of a plurality of mobile agents, said method being carried out by an ordering server programmed to carry out the steps of the method, which comprise:”

The Examiner rejected the claims by applying only the machine-or-transformation test. Interestingly, the Examiner cited the Supreme Court decision Bilski v. Kappos, 95 USPQ2d 1001 (2010) as a reference in the Final Office Action, even though that case states that the machine-or-transformation test is not the sole test to apply to determine patent eligibility. The Appellants pointed out that reliance solely on the machine-or-transformation test was inconsistent with the Supreme Court decision Bilski, to which the Examiner responded in the Final Office Action: “The Examiner respectfully disagrees,” and the Examiner didn’t address the argument further. Nor did the pre-appeal review board address the error.

In maintaining the rejection, the Examiner argued in the Answer to the Appeal Brief that the “ordering server” recitation was (1) insufficient recitation of a machine or transformation, (2) the recitation was merely nominally, insignificantly, or tangentially related to the performance of the steps, and (3) merely recited the field in which the method was intended to be applied.

The Examiner also refused to give the amended preamble patentable weight, arguing that the preamble recited merely the purpose of the process, and was not required by the steps in the body of the claim.

The Board disagreed with the Examiner on both counts. First, the Board held that the preamble, and in particular the limitation that the method be carried out by an ordered server, should be given patentable weight. Since the “ordered server” was a required element for performing the steps in the claim, the ordered server gave “life, meaning, and vitality” to the claim,

Second, the Board held that the term “said method being carried out by an ordering server…” recited in the preamble rendered the claim patent-eligible under 35 U.S.C. § 101. The Board acknowledged that the standard for determining patent eligibility under § 101 had evolved since the first appeal, but stated that the machine and/or transformation prongs are factors for determining whether a claim is patent-eligible. The Board held stated that the recitation of the ordering server in the preamble of the claims sufficiently tied the claims to a machine, and so the claims satisfied the machine-or-transformation test and were patent-eligible.

My two cents:

This opinion is remarkable for two reasons. First, the Board held that a limitation in the preamble limited the scope of the claim. It is common practice for Examiners to refuse to give preambles any patentable weight, but the Board points out that the “ordering server” in the preamble is a required element for practicing the claim steps and thus gives meaning to the entire claim. The Board appears to have been swayed by the specificity of the recited machine, since the Board had previously rejected the claim when the preamble recited only “a computer-implemented method.” Second, the Board acknowledged that its previous opinion was based on outdated law, and reversed an Examiner who tried to rely on the Board’s previous opinion to maintain the rejection.

The Appellants in this case did a good job of referring to the “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos,” 75 Fed. Reg. 43,922, 43926 in their Appeal Brief. The Appellants pointed out that even though the machine-or-transformation test was not the sole test to apply, it was one test to be applied under the Interim Guidance, and the Appellants pointed to the specific prongs of the test described in the Interim Guidance that were satisfied by the claims. Although the Examiner ignored the Interim Guidance during regular prosecution and on appeal, the Board was persuaded by the Appellants’ arguments.

While the machine-or-transformation test is not the sole test to apply to determine patent-eligibility of a claim, the Board treated the test as a threshold in this case. Once it found that the claims satisfied the "machine" prong of the test, it didn't apply any other test. I agree with this approach. There are multiple tests available to demonstrate patent-eligible subject matter. In the Interim Guidance, some are listed as "Factors that Weigh in Favor of Patent Eligibility." Factors that are not part of the machine-or-transformation test include practical application of a law of nature and observable and verifiable performance of steps of a method. Not every test needs to be applied in each case, and a claim may be found patent-eligible based on only one of the tests. But if practitioners want an Examiner to apply any test other than the machine-or-transformation test, they should not merely state that "the machine-or-transformation test is not the sole test to apply." Instead, they should supply what they consider to be the appropriate test to the Examiner, supported by the Interim Guidance and other case law, as appropriate.