All Things Pros focuses exclusively on patent prosecution. The blog uses PTAB decisions, and the prosecution history that led to appeal, to discuss good and bad strategies for handling 102, 103, 101 and 112 rejections. Claim construction using Broadest Reasonable Interpretation is also a major focus. And sometimes you'll find prosecution topics such as after-final, RCE, and restriction practice.
Thursday, April 14, 2016
Board reverses 101 rejection of a method claim reciting particular machine components
Takeaway: A PTAB panel found that the Examiner failed to establish a prima facie case of unpatentability in reversing an Examiner’s § 101 rejection relating to hardware/software technology for establishing credit on an automatic vending machine. In part, the panel found that the Examiner did not establish that the claims were directed to an abstract idea. Even if the Examiner had established that the claims were directed to an abstract idea, the claims were tied to particular machine (allowing this panel to reiterate that the machine-or-transformation test remains a useful investigative tool for § 101 analysis). (Ex parte Krampe, No. 2013-010784, PTAB Mar. 31, 2016)
Ex parte Krampe
Appeal 2013-010784; Appl. No. 12/653,741; Technology Center 3600
Decided: March 31, 2016
In a recent decision, a PTAB panel reversed an Examiner’s rejection that the claims at issue were directed to an abstract idea. The PTAB began its decision by framing the claims at issue as relating “to establishing credit on an automatic vending machine . . . using a cellular telephone, or other personal wireless communication device, using an applet placed on the personal communication device that can communicate with a vending universal wireless device placed on the vending device.” Claim 1, which was illustrative of the subject matter on appeal, recited:
A method of establishing credit on a vending device by a consumer comprising:
coupling a vending universal wireless interface to a vending device controller;
activating an applet on a personal wireless communication device to establish a wireless link with said vending device controller;
communicating between said personal wireless communication device and said vending device to acquire the vending device’s identification number and vending information;
establishing a wireless link between said personal wireless communication device and a remote computer server;
transmitting information acquired from said vending device from said personal wireless communication device to said remote computer server along with a request for credit approval for use on said vending device;
determining credit availability for said through said remote computer server;
generating a transaction record from the transmitted request;
transmitting a response from said remote computer server to said personal communication device authorizing a predetermined credit for use on said vending device when such credit is authorized;
transmitting said credit approval from said personal wireless communication device to said vending device; and
activating said vending device to dispense a product therefrom;
thereby eliminating the need for currency or the surrendering one’s credit card for swiping by a third party, or of a dedicated connection between a vending device and a remote computer server to activate a vending device is eliminated.
The panel began its analysis by determining whether the claims at issue were directed to a patent-ineligible abstract idea (Mayo step 1). In quick order, the panel found that the Examiner failed to establish that claim 1 was directed to an abstract idea. Instead, the Examiner merely argued that claim 1 “do[es] not involve a general concept.” As such, the panel concluded that the Examiner failed to establish a prima facie case of unpatentability.
However, the panel did analyze the claims at issue under Mayo step 2 (whether the claimed subject matter included an "inventive concept." Under this analysis, the panel was not persuaded that the Examiner considered “all of the claim elements both individually and in combination to assess whether the claim amounts to significantly more than an abstract idea.” Instead, the Examiner found “that the step of determining credit availability … is ‘a significant solution step,’ but is not recited as being ‘performed by an automated programmed computer, thus failing to make method claim 1 statutory.'” The Examiner then concluded that the remaining elements of claim 1 “have no explicit or inherent recitation of a machine nor qualifying transformation.”
The panel agreed with the Appellant that the claims at issue were tied to a particular machine. The panel reiterated that the machine-or-transformation test, while not dispositive of a section 101 inquiry, remains a useful investigative tool.
In supporting its decision, the panel identified that the claims at issue were directed to establishing credit on a vending device (e.g., a machine). Claim 1 recited ten steps and many of these steps/elements referenced “particular components of a vending device, information associated with the vending device, and/or communications established and exchanged between the vending device and other devices.”
The panel then found that the Examiner did not address the Appellant’s arguments. Instead, the Examiner merely repeated the Examiner’s earlier assertions that “the finding that the “claimed significant solution step [(i.e., the step of determining credit availability)] is not automated, thus making insignificant use of the machine.”
Based upon the above reasoning, the Board reversed the § 101 rejection.
My two cents: This is a case where the Board could have ended its analysis at Mayo step 1 since the Board found the Examiner's argument that claim 1 "do[es] not involve a general concept" suggested the claim was not directed to an abstract idea. However, the Board went to provide potential additional guidance in overcoming § 101 rejections insofar as the Board finding that a majority of the method steps included recitation of a particular machine components (in this case particular machine components of a vending machine) and the use of the machine-or-transformation test remaining a useful investigative tool.