Wednesday, March 9, 2016

Snapshot of 101 Patent Eligible Subject Matter Decisions in May 2014

Posted by: Adam Ellsworth

As the PTAB recently admitted, "the case law regarding 101 continues to evolve" (Ex parte Fickle, Appeal No. 2011-007587).

I thought it might be helpful to look at cases decided by the PTAB in the last month to see if there are any patterns in how the Board is deciding issues of patent-eligible subject matter under 35 U.S.C. 101. It turns out that the case law regarding computer-readable media has pretty-well settled at the PTAB, but it is harder to define clear patterns in decisions regarding the patent-eligibility of other types of methods and systems.

The Rejection of Computer-Readable Media

I considered 32 cases that addressed issues of patent-eligible subject matter under 35 U.S.C. 101. The majority of these cases (22 cases) involved computer-readable media. The takeaway from all of these cases is that in light of Ex parte Mewherter, 107 USPQ2d 1857 (PTAB 2013 (precedential), do not expect to prevail at the PTAB by arguing that a "computer-readable medium," or even a "computer-readable storage medium," does not include transitory signals. The decisions were unanimous.  If a claim directed to a computer-readable medium omits the words "non-transitory" and lacks other structural limitations, then the computer-readable medium encompasses transitory signals and the claim is not patent-eligible.

Among the cases directed to computer-readable media, Ex parte Makkinejad (Appeal 2011-012801; Decided May 15, 2014) is interesting, because it was not directed to just a computer-readable medium, but rather to a computer-readable storage medium. The result, however, was the same.
Claim 19 of the application is directed to a "computer readable storage medium" and the claim was rejected by the Examiner under 35 U.S.C. 101 as being directed to patent-ineligible subject matter, since, the Examiner argued, the claim encompassed transitory signals. The Appellant argued that "the term 'storage media' would not include any embodiments in which the medium is merely a propagation medium, as opposed to a medium that actually stores data." The Board disagreed and cited as an example, "circulating memory," which uses a delay line to store information in the form of a pattern of pulses. (I'm not convinced by the Board's example, since circulating memory is in itself a physical structure, and the "pattern of pulses" cannot exist without the delay line, sensors, and amplifiers described by the Board. But the Board sustained the rejection of claim 19 under 35 U.S.C. 101.) 

The Rejections of Other Types of Claims (Not Computer-Readable-Media)

Among the non-computer-readable medium cases, two were cases involving biological processes, Ex parte Schatteman (Appeal No. 2011-013696) and Ex parte Cardwell (Appeal No. 2012-001657). In both of these cases, the Board reversed rejections under 35 U.S.C. 101. Among the remaining eight cases, the Board reversed 101 rejections in three cases and upheld 101 rejections in five cases.

101 Rejections Reversed

In the cases in which 101 rejections were reversed, the claims recited physical structures.

Processor and Memory: In Ex parte Cutlip, Appeal No. 2011-011658, rejected claim 7 recited a system comprising a processor and memory configured to provide instructions to the processor, and multiple "modules" to perform various functions. The modules are not explicitly tied to the processor and memory in the claim (such as by having the processor execute instructions of the module), but the specification described functions being performed by the processor. The Board reversed the Examiner's rejection of claim 7, stating that the Examiner had not established a prima facie case of non-statutory subject matter.

Data storage device: In Ex parte Bogues, Appeal No. 2011-013523, the Board held that a claim directed to a "data storage device" excludes transitory signals.

LAN and WAN: And in Ex parte Waites, Appeal No. 2012-000932, the Board held that claim elements "local-area network" and "wide-area network" include computers and associated devices, and therefore the claim did not encompass software per se.

101 Rejections Sustained

Computer program products: In the cases in which 101 rejections were sustained, one of the cases (Ex parte Arrasvuori, Appeal No. 2012-002671) included claims directed to computer program products, and the Board held that the claims could encompass software-only embodiments, and therefore were directed to patent-ineligible subject matter.

Hardware System: In one case, Ex parte Adam (Appeal No. 2012-002144), the claims recited a method in which requests are received, and messages published "by a publish/subscribe hardware system." However, the Board held that this recitation was insufficient to render the claims patent-eligible, stating that the "publish/subscribe hardware system" was merely a "nominal recitation of a computer."


While decisions directed to computer-readable media are consistent in stating that such media encompass transitory signals, other 101 decisions appear to vary on a case-by-case basis. Claims reciting physical structures that perform the steps of the claims are more likely to overcome 101 rejections at the PTAB, but a claim reciting a generic physical structure, such as a "hardware system," may not be patent-eligible.


  1. Good summary. Thank you.

  2. I thought it was a poignant bit of ironic humor that your lead-off sentence is "As the PTAB recently admitted, 'the case law regarding 101 continues to evolve'". And the name of the case is Fickle. The name sums up the PTAB's behavior precisely.

  3. "As the PTAB recently admitted, 'the case law regarding 101 continues to evolve'".
    That is a running joke I've had with Examiners for say ... the last 10 years.

  4. Speaking of 101, the PTO denies that there have been any Office Actions sent out with 101 rejections but no prior art (102, 103) rejections. Yet I've heard from several individuals that they've seen or have heard of people getting Office Actions with 101 rejections and no art-based rejections.

    Can anyone point to any actual case where this has occurred or is it just urban legend?

    1. is it just urban legend?
      Mostly. Although there were some APJs at the Board who decided that if all the claims were rejected under 101, then they didn't have to decide the art rejections. That practice eventually ended.

      As an aside, the ex parte Adams decision is awful. A method claims that recites 5 steps -- 4 of which are explicitly recited as being performed by a hardware device, and the Board says it is "nominal." Really?

    2. Anonymous at 9:57am,

      You have touched on one of the most frustrating parts of 101 practice. What constitutes a "nominal" recitation of hardware, as opposed to a substantive recitation of hardware? Different panels of the PTAB appear to have different thresholds. One of my goals by posting analyses of 101 decisions is to see if there are general patterns that are more likely to help us draft claims to avoid 101 rejections or amend claims to overcome them. Generally speaking, the more specific the hardware recitation in method or system claims, the more likely an Applicant is to overcome a 101 rejection, but there is a very large and fuzzy gray area where decisions seem to go either way.

    3. I have had applications that have had only 101, only 112, or only 101 and 112, but no 102 or 103. Why would that surprise you?

    4. The PTO denies that Examiners send out Office Actions that have 101 rejections but not prior art rejections. PTO staff maintain that 101 rejections are accompanied by prior art rejections.
      If you can cite a case where there were only 101 rejections, and no 112 or 102 or 103 rejections, please do.

  5. "May 2014"? This post has been sitting on the shelf awhile?

    1. Sorry, folks. I updated the tabs on some of my older posts, and apparently the Blogger platform interpreted that change as a new post. Which it's not. It ran back in 2014.

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