PTAB Utilizes Enfish to Find Claim Directed to Bit Slipping is Directed to Patent-Eligible Subject Matter

Takeaway: The PTAB issued a decision overturning an Examiner's rejections of method claims directed to bit slipping as being directed to patent-ineligible subject matter. The Examiner rejected the method claims at issue as being directed to an abstract idea under step one of the Alice/Mayo framework. In overturning the Examiner's rejection, the PTAB utilized the decision in Enfish v. Microsoft to find that the claims were directed to improving the functioning of a computer. (Ex parte Carvalho, Appeal 2015-001076, PTAB July 6, 2016)

Details:

Ex parte Carvalho
Appeal 2015-001076; Application No. 12/283,652; Technology Center 2600
Decided: July 6, 2016

In a decision released on July 6, 2016, a PTAB panel found method claims directed to "bit slipping according to information regarding aligning of words" as directed to patent-eligible subject matter under 35 U.S.C. § 101. Claim 14, which is illustrative of the subject matter rejected as directed to patent-ineligible subject matter, recites:

14. A method comprising:

aligning words to a desired word boundary, wherein each of the words has a plurality of bits;

receiving from a word aligner, by a bit slipper, information regarding the aligning; and

slipping bits of the words, wherein total delay due to the aligning and the slipping is constant for all phases of a recovered clock signal,

wherein the aligning and the slipping are performed by a transceiver system.

The Examiner rejected claim 14 as being directed to patent-ineligible subject matter because claims 14 was "a mere statement of a general concept," and that its recitation of a "transceiver system," a "recovered clock signal," and the functions of aligning and slipping are insufficient to make the claim patent eligible. More specifically, the Examiner found that claim 14 was directed to the abstract idea of "bit slipping according to information regarding the aligning of words."

The PTAB disagreed with the Examiner and cited the recent Federal Circuit decision in Enfish, LLC v. Microsoft Corp.,_F.3d_, No. 2015-1244, 2016 WL 2756255, (Fed. Cir. May 12, 2016) for its support. Specifically, the PTAB explained that Enfish looked to "improvements in computer-related technology, including software improvements, are not inherently abstract, and thus, it is 'relevant to ask whether the claims are directed to an improvement to computer functionality versus being directed to an abstract idea, even at the first step of the Alice analysis'" to find the claims at issue in Enfish as directed to patent-eligible subject matter.

The PTAB then explained that the rejected method claims were directed to "an improvement in the functioning of a computer (i.e., eliminating word aligner latency delay uncertainty) and not to the addition of general-purpose computer components to a fundamental economic practice or mathematical equation." To support this decision, the PTAB looked to the specification of Appellant's application to justify that the claims were directed to the improvement in the functioning of a computer. More specifically, the PTAB identified that the specification taught how prior art systems would introduce "a Deserializer/Word aligner latency uncertainty." The PTAB then contrasted the deficiencies of the prior art with the solutions set forth in the specification. Specifically, the PTAB cited that, in an embodiment, the invention "solves this problem of latency uncertainty by using a bit slipper so that the total delay from word aligning and bit slipping is constant for all recovered clock phases, which 'allows for having a fixed and known latency between the receipt and transmission of bits for all phases of parallelization by the deserializer.'"

As such, the PTAB found that claims at issue were not directed to an abstract idea under step one of the Alice/Mayo framework but instead were directed to patent-eligible subject matter because the claims were directed to an improvement in the functioning of the computer.

Takeaway:  This a useful decision by the PTAB illustrating how to rebut an Examiner's rejection under step one of the Alice/Mayo framework. For example, Applicants and practitioners may contemplate including prior deficiencies to illustrate the technological improvements and benefits of the invention in order to align the claims at issue with the decision in Enfish (illustrating that claims are directed to improving the functioning of the computer).  

Federal Circuit Further Defines Alice Step Two to Find Claims Reciting Conventional Computing Components to Include Inventive Concept

Takeaway: The Federal Circuit issued a decision expanding upon "inventive concept," finding that the inquiry requires more than identifying that each claim element, by itself, was known in the art. Based upon this finding, the Federal Circuit found that claims directed to a specific implementation of filtering content on the Internet did include an inventive concept where the claims set forth a "non-conventional and non-generic arrangement of known, conventional pieces." (BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC, No. 2015-1372 (Fed. Cir. June 27, 2016)).

Details: BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC
No. 2015-1372
Decided: June 27, 2016

On June 27, 2016, the United States Court of Appeals for the Federal Circuit issued a decision in BASCOM Global Internet Services, Inc. v. AT&T Mobility, LLC further expanding upon step two of the Alice/Mayo framework. As a quick refresher, step one of the Alice/Mayo framework determines whether the claims recite merely an abstract idea, and step two of the Alice/Mayo framework determines whether the claims, if directed to an abstract idea, include an "inventive concept." As stated in Alice v. CLS Bank, "an inventive concept that transforms the abstract idea into a patent-eligible invention must be significantly more than the abstract idea itself, and cannot simply be an instruction to implement or apply the abstract idea on a computer."

The patent at issue, U.S. Patent No. 5,987,606, included two groups of claims: a first group limited to individual-customizable filtering on a remote ISP server, and a second group further limited to a hybrid filtering scheme implemented on the ISP server comprised of a master-inclusive list, an individual-customizable set of exclusive lists, and an individual-customizable set of inclusive lists. Claim 1 was representative of the individual-customizable filtering and recited:

1.  A content filtering system for filtering content retrieved from an Internet computer network by individual controlled access network accounts, said filtering system comprising:

a local client computer generating network access requests for said individual controlled access network accounts;

at least one filtering scheme;

a plurality of sets of logical filtering elements; and

a remote ISP server coupled to said client computer and said Internet computer network, said ISP server associating each said network account to at least one filter- ing scheme and at least one set of filtering elements, said ISP server further receiving said network access requests from said client computer and executing said associated filtering scheme utilizing said associated set of logical filtering elements.

Claim 23, which depends upon claim 22, was representative of the hybrid filtering scheme, and claims 22 and 23 recited:

22. An ISP server for filtering content forwarded to controlled access network account generating network access requests at a remote client computer, each network access request including a destination address field, said ISP server comprising:

a master inclusive-list of allowed sites;

a plurality of sets of exclusive-lists of excluded sites, each controlled access network account associated with at least one set of said plurality of exclusive-lists of excluded sites; and

a filtering scheme, said filtering scheme allowing said network access request if said destination address exists on said master inclusive-list but not on said at least one associated exclusive-list, whereby said controlled access accounts may be uniquely associated with one or more sets of excluded sites.

23.  The ISP server of claim 22 further comprising:

a plurality of inclusive-lists of allowed sites, each controlled access user associated with at least one of said plurality of inclusive-lists of allowed sites, said filtering program further allowing said network access request if said requested destination address exists on said at least one associated inclusive-list.

This case came to the Federal Circuit through on an appeal filed by BASCOM from a district court's decision to grant a motion to dismiss under Rule 12(b)(6). In its analysis, the Federal Circuit agreed with the district court's assessment that the claims were directed to the abstract idea of filtering content on the Internet at step one of the Mayo/Alice framework.

However, the Federal Circuit disagreed with the district court's assessment that the claimed subject matter did not include an "inventive concept." The district court found that BASCOM did not adequately assert that the claims included an "inventive concept" because "considered individually, or as an ordered combination, are no more than routine additional steps involving generic computer components and the Internet, which interact in well-known ways to accomplish the abstract idea of filtering Internet content.”

The Federal Circuit agreed that the limitations of the claims, when taken individually, did recite "generic computer, network and Internet components." However, the Federal Circuit stated that the "inventive concept inquiry requires more than recognizing that each claim element, by itself, was known in the art" and that "an inventive concept can be found in the non-conventional and non-generic arrangement of known, conventional pieces." To support its decision, the Federal Circuit stated that the claims did not preempt "all ways of filtering content on the Internet" but instead were directed to "a particular, practical application of that abstract idea."

The Federal Circuit went on analogize the claims at issue with the claims at issue in DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014). For example, the Federal Circuit identified that the present claims were claiming a technology-based solution to filter content on the Internet that overcomes existing problems with other Internet filtering systems much like the claims present in DDR which were claiming a technical way to satisfy an existing problem for website hosts and viewers.

My two cents: Finally, a Federal Circuit decision providing applicants and appellants the ability to rebut step two assertions from the Patent Office that the claim elements merely recite a "generic," "routine," and/or "conventional" components.