Friday, June 17, 2016

Claims Directed to Prioritizing Events on an Electrical Power System Found Invalid as Being Directed to Patent-Ineligible Subject Matter Under 101

Takeaway:  A PTAB panel introduced a new ground of rejection sua sponte finding that the claimed subject matter was directed to patent-ineligible subject matter. The panel found that the claimed subject matter was directed to prioritizing events within an electrical power system and that the Applicant's patent application described nothing more that mere data collection within the system and prioritizing events based upon a ranking.  In other words, the Applicant's patent application admitted that it was known to gather data about abnormal conditions within an electrical system.  As such, the panel equated the technical details of the claimed subject matter to limiting the use of the abstract idea of prioritizing events to a particular technological environment.  (Ex parte Muthu-Manivannan, Appeal 2014-006595, PTAB June 13, 2016.)

Ex parte Muthu-Manivannan
Appeal 2014-006595;  Application 12/031,990;  Technology Center 2400
Decided: June 13, 2016

In a recent decision in which the Applicant appealed an examiner's rejection under 35 U.S.C. 103, the Board entered a new ground of rejection under 35 U.S.C. 101 for method claims that were directed to "prioritizing events on an electrical power system."  Claim 1, which was illustrative of the claimed subject matter, recited:

A method for prioritizing events on an electrical power system, comprising:
(a) acquiring at least one data portion representative of the behavior of an electrical power system, where the electrical power system comprises all or a part of a system that conducts electrical power between an electric power source and an electric load, the at least one data portion containing at least one power system event which represents a deviation from steady-state operation of the electrical power system;
(b) assigning at least one rank value to the at least one data portion based on the type of power system event, the rank value indicative o f a priority o f the event; and
(c) conducting subsequent data processing operations on the at least one data portion in accordance with the at least one rank value.
The Board began its analysis with first determining "whether the claims at issue are directed to one of those patent-ineligible concepts" (e.g., fundamental economic practice, method of organizing human activity, an idea of itself, or mathematical formula or relationship).

In this analysis, the Board noted that claim 1 was directed to a method that comprised "(a) acquiring data containing an event representing a deviation from a steady state operation of a power system, (b) assigning a rank indicative of a priority based on the type of event, and (c) conducing data processing operations in accordance with the rank."  Based upon this finding, the Board found that the claim was only directed "to the idea of prioritizing events based on type and processing data in accordance with the rank."  The Board went on to state that "this idea, which amounts to a scheme for organizing and using information, is abstract, as were similar to concepts that have been considered by both the Supreme Court and our reviewing Court" and referred to decisions finding claims directed to patent-ineligible subject matter such as in In re TLI Communications LLC Patent LitigationNo. 2015-1372, 2016 WL 2865693 (Fed. Cir. May 17, 2016) and in Intellectual Ventures I LLC v.Capital One Bank (USA)792 F.3d 1363, 1367 (Fed. Cir. 2015).

Finding that the claimed subject matter was directed to an abstract idea, the Board transitioned to determining whether the claimed subject matter was directed to significantly more than the abstract idea itself (i.e., directed to a patent-eligible application of the abstract idea).  In this analysis, the Board pointed to the background and specification portions of Applicant's patent application to find that "it was known to gather information about abnormal conditions in an electrical system for used by operations and maintenance personnel" and that "the claim merely acquires data, ranks the data, and 'conduct[s] subsequent data processing operations' according to the ranking."  Based upon these findings the Board found that claim 1, as a whole, comprised "conventional steps involved in managing an electrical system (i.e., processing events), to which the abstract idea of ranking is applied, where the steps are performed on a computer."  The Board went on to note that "neither limiting the use of an abstract idea to a particular technological environment nor using a general purpose computer can transform the idea into a patent-eligible invention."

Based upon these findings, the Board concluded that independent claim 1 did not amount to more than an abstract idea and entered a new ground of rejection. 

My two cents:  This decision provides further support that any description of "conventional," "known," and "routine" usages of technology within the specification may come back to bite an applicant since the Board, patent examiners, and the courts have utilized these types of descriptions to support a finding that an abstract idea was merely being implemented within a particular technological environment or being implemented using a general purpose computer. 


  1. Karen,

    I noticed your 'two cents' didn't express an opinion as to whether the Board got this right or got this wrong.

    Does anyone even know where the line is actually drawn these days? Heck, forget where the line is drawn. Does anyone even know where the gray area around the line begins or ends?

  2. Guidelines ... who needs guidelines.

    From the latest guidelines published a month or so ago: Examiners should be familiar with any cited decision relied upon in making or maintaining a rejection to ensure that the rejection is reasonably tied to the facts of the case and to avoid relying upon language taken out of context. Examiners should not go beyond those concepts that are similar to what the courts have identified as abstract ideas.

    These claims aren't anything like In re TLI Communications or IV v. Capitol One Bank.

    The Board's analysis is common to the dreck I see out of the USPTO -- abstract the invention to something unrecognizable and then declare it "similar" to other concepts deemed abstract ideas while citing a laundry list of other cases.

    I suspect that the "cut and paste" hack job associated with the new grounds of rejection issued by the Board took less than 10 minutes to accomplish.

  3. "Similar" is itself a relative word. Judging very severely anybody who has the task of making a post-Alice decision is not fair.

  4. This is the sort of slipshod analysis I see from examiners all the time. Unfortunately it's not uncommon to see if from the lazy APJ class.

    The analysis is supposed to explain why the "conventional" elements or steps, each individually and in commbination, don't add "significantly more." But what you see from the examiners, and APJ's, is basically, "Well, these aren't 'significantly more' because they're conventional."

    Of course they're conventional. There are no new "elements" unless we're talking about atomic element 95 (or whatever it was). That "analysis" (for lack of a better word) just short circuits the required inquiry. But that's all the PTO is providing applicants. "The conventional elements/steps don't add 'significanly more' because they're conventional."

    Heckuva job, PTO. Keep up the record breaking outstanding quality work y'all are doing over there.

  5. In the sweepstakes for the single most clueless, and lazy, person from the patent world, we have a new winner!!!!!!!! Please everybody, congratulate J. Kimberly Moore from the United States Court of Appeals for the Federal Circuit!!!!! As truly clueless and lazy a judge as the patent community could ever want!!!!!!!

  6. I'm not here to pile on, but the technical contribution is not strong. Steps (a) and (b) have some real meat on them, but what about step (c): "conducting subsequent data processing operations on the at least one data portion in accordance with the at least one rank value."

    From the dependent claims, the data processing operation leads to nothing more than presenting the ranked information. I'm sure this information could be used to control (or help control) a technical machine or otherwise solve a specific technical problem, but step c is amazingly broad, and no applicant is going to get that claim language granted unless steps a and b are truly groundbreaking.

    As I have said before, I believe signal-processing inventions are largely spared from 101 hell because those inventions typically include a lot of detail in what is processed and how. I've had serious objections to overly broad 101 rejections, but this one seems in-line with the current state of 101 law.