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.