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.
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.
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.