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).  

PTAB: Nuijten Doesn't Apply to Method Claims

[Today's guest post is from Robert K S, who is a patent attorney from Cleveland, Ohio.]

Takeaway: The 35 U.S.C. § 101 prohibition against claims covering transitory signals per se, as articulated by the Federal Circuit in In re Nuijten, 500 F.3d 1346 (Fed. Cir. 2007), does not apply to method claims, since methods are processes and are therefore among the expressly permitted categories of statutory subject matter. Ex parte Kosuru, No. 2014-005593 (P.T.A.B. May 19, 2016).

Details:
Ex parte Kosuru
Appeal 2014-005593; Appl. No. 13/406,478; Tech. Center 2100
Decided: May 19, 2016

In the application underlying this appeal decision, all of the independent claims were method claims, and each recited an "input file being stored on a computer readable storage medium." Initially, the word "storage" was absent from the claims, and the examiner rejected all of the claims as directed to non-statutory subject matter under § 101, citing to In re Nuijten, 500 F.3d 1346, 1357 (Fed. Cir. 2007) ("A transitory, propagating signal . . . is not a 'process, machine, manufacture, or composition of matter.' Those four categories define the explicit scope and reach of subject matter patentable under 35 U.S.C. § 101; thus, such a signal cannot be patentable subject matter.") The claims were amended to specify that the "medium" was a "storage medium," as above, but the examiner maintained the rejection on final.

The Federal Circuit held in Nuijten that a propagating signal itself, such as a radio broadcast, an electrical signal through a wire, or a light pulse through a fiber-optic cable, is not patentable subject matter. According to then-director David Kappos's January 26, 2010 memo to the examining corps, entitled "Subject Matter Eligibility of Computer Readable Media," the PTO interpreted the Federal Circuit's decision in Nuijten to mean that "[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected under 35 U.S.C. § 101 as covering non-statutory subject matter." The memo references the Nuijten opinion as well as the August 24, 2009 PTO memo, "Interim Examination Instructions for Evaluating Subject Matter Eligibility Under 35 U.S.C. § 101."

In their briefs in Kosuru, the appellants conceded that their claims were "drawn to" a computer-readable storage medium, but emphasized that the use of the word "storage" meant that the claims could not read on transitory signals and thus were subject-matter eligible. In support, the appellants referred to Ex parte Hu, No. 2010-000151 (B.P.A.I. Feb. 9, 2012), which held that "[w]hile a computer-readable medium is broad enough to encompass both tangible media that store data and intangible media that carry a transitory, and propagating signal containing information, a computer readable storage medium is distinguished therefrom as it is confined to tangible media for storing data" (emphasis added).

The examiner's only response was an allegation that the specification did not refer to "storage" media—a weak response given that the claims clearly recited "storage" and no rejection was made on § 112 grounds for lack of written description or enablement. The appellants' reply brief noted several specification paragraphs that mentioned algorithms "stored on" computer-readable media or on "a disk," but even absent this support, PTO policy evidently tolerates amendment language limiting claims to non-transitory embodiments even when such language is not explicitly supported, so long as non-transitory interpretations are not ruled out by the specification. See the above-mentioned 2010 memo ("A claim drawn to such a computer readable medium that covers both transitory and non-transitory embodiments may be amended to narrow the claim to cover only statutory embodiments . . . . Such an amendment would typically not raise the issue of new matter, even when the specification is silent . . .").

The PTAB resolved the appeal of the § 101 rejection on much broader grounds than the examiner and appellants had argued: "Unlike the claims at issue in In re Nuijten, each of the pending claims here recites a method—a series of acts or steps—and thus falls under the statutory category of 'process.'" Indeed, the examiner (and the Board) had only to read the opinion cited in support of the rejection to realize that, in Nuijten, disputed independent claim 14 was directed to "[a] signal," while claims 1-10, directed to "[a] method," and 11-13, "[a]n arrangement for embedding supplemental data in a signal," were not appealed because the PTO found them statutory without any fuss.

My two cents: Nuijten did not expressly hold that process claims cannot be rejected as "covering" transitory signals, because that issue was not before the Nuijten court. This case may provide useful support for countering Nuijten-type rejections of method claims.

Kosuru may have been a case of an examiner attempting to follow a PTO directive rather than the law upon which it was based. Transitory signal subject-matter analysis is a narrow area of subject-matter eligibility analysis. Like the words "directed to" used in broader subject-matter eligibility jurisprudence, including abstract-idea jurisprudence (see, e.g., Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014); In re Benson, 441 F.2d 682, 684 (C.C.P.A. 1971)), the word "covers" used in the Kappos memo ("[w]hen the broadest reasonable interpretation of a claim covers a signal per se, the claim must be rejected . . .") can be interpreted overly broadly. When "covers" is read to mean "includes" or "involves" rather than "effectively claims" or "ties up," the PTO interpretation of Nuijten can be read as making ineligible even statutory categories like processes. The examiner and appellants got lost on a wild goose chase over whether the specification taught "storage" media, whereas the real question was the propriety of the examiner's initial decision as to whether the claims could be interpreted as attempting to capture, among whatever else, transitory signals per se.

Another potentially winning argument in this case might have been to argue that the claimed "input file" cannot reasonably be interpreted as encompassing transitory signals, since, even under broad interpretations, "file" has a meaning of a record of greater-than-transitory permanence such that it can be stored and retrieved at arbitrary times. After this PTAB decision, such an argument is superfluous in view of the fact that an Applicant can simply point out that the claims are couched as methods.

PTAB picks Broadest definition of "secured" among those offered by Examiner and Applicant, but was it Reasonable?

Takeaway: In an ex parte reexamination of a patent on a rolling tool cabinet, both the Applicant and the Examiner made extensive use of dictionary definitions to interpret the claim term "secured." The Applicant asserted the prior art structure was not "secured" because it was not “fixed,” “attached,” or “fastened.” The Board disagreed, finding that "at least some of the definitions encompass a broader meaning." The Board adopted the Examiner's interpretation, under which a container “inserted” into a compartment is considered “secured” in the compartment "because it had to be placed in the compartment and would therefore be unlikely to come loose or give way." (Ex parte 500 Group, PTAB 2010.)

Details: 
Ex parte 500 Group
Appeal 2010-010428; Appl. No. 90/008,998; Patent 6,601,930; Tech. Center 3900
Decided:  October 26, 2010

One of the independent claims on appeal read:

     1. An apparatus for transporting articles between working locations, comprising:
     a base container having an interior space in which articles to be transported can be stored,
     one or more rotatable ground engaging wheels mounted to the apparatus toward the bottom of said apparatus ...
     at least one removable container having [four elements]...
     said at least one removable container being removably secured above said base container when said apparatus is at a working location ...

The Patentee appealed the Examiner's final rejection as obvious over Spielhoff in view of Kennedy. Spielhoff was a German patent, and the Examiner included a PTO translation with the Final Office Action. One of the issues on appeal was the meaning of the language highlighted above.

The Examiner alleged that FIG. 3 of Spielhoff disclosed the base container as 4' and removable container as 8'. The Examiner also provided annotated FIG. 3 (below) bearing the added label "removably secured region for removable container."

Spielhoff Fig. 3

In the Appeal Brief, the Applicant first described the cabinet of Spielhoff and then extensively discussed the proper interpretation of "secured." According to the Applicant, the Figures showed that Spielhoff's cabinet had an upper bin structured to enclose a container such as a toolbox, and the upper bin included a lid but not a latch. Furthermore, the English language translation of the text for Fig. 4 mentioned that multiple cases could be "inserted" (double arrow) into a common frame.

Spielhoff Fig. 4

Moving on to the proper interpretation of "secured," the Applicant introduced multiple definitions for the term "enclosed" used in Spielhoff and for the term "secured" used in the claim. The Applicant asserted, based on these definitions, that "enclosed does not mean secured" and elaborated as follows:

In this rejection, the Examiner has used such a colloquial and overly broad interpretation of the word "secured" as used in the present claims. That is, as set forth in detail above, "secured" means "fixed," "attached" and "fastened." Two objects that are "secured" to each other may not be separated absent the removal/separation of that which is "securing" the two objects together. ... [T]he broadest reasonable interpretation of "securing" elements together, as recited in the claims, requires that the elements be "fixed," "attached" or "fastened" together.

The Applicant's claim construction argument also mentioned various securing mechanisms disclosed in the specification, but explicitly stated that these features should not be read into the claims.

The Examiner's Answer specifically explained how Spielhoff's cabinet was encompassed by various definitions of "secure" provided by the Examiner and by the Applicant:

• One definition of "secured" proffered during reexamination by the Examiner is "to relieve from exposure to danger: act to make safe against adverse contingencies" (Merriam-Webster's  Collegiate  Dictionary, 10th ed., page 1056).  Under this definition  the toolbox is relieved from exposure when placed in the region defined by the Examiner.
• Further, another definition of "secured" supplied by Appellant is "firmly fixed: firmly fixed or placed in position and unlikely to come loose or give way" (Brief at top of page 8). Under this definition the toolbox is firmly placed in position and unlikely to give way when placed  in the region defined by the Examiner.
• Further, another definition of "secured" supplied by the Appellant is "to make firm or tight; fasten" (Brief at top of page 8).  One definition of "tight" is "strongly fixed or held: secure" (Merriam-Webster's  Collegiate  Dictionary, 10th ed., page  1234).  Under this definition  the toolbox is made tight by being strongly held when placed in the region defined by the  Examiner.

Finally, in addressing the Applicant's discussion of embodiments in the specification, the Examiner noted another embodiment: "tool case 212 is secured to the organizer 214 in any manner, for example, by a frictional fit as shown." The Examiner explained that Spielhoff's mechanism for securing – placing the toolbox in to an (Examiner-defined) region above the base container – was "within the ambit of 'any manner' and 'frictional fit' " since the toolbox would be held in this region by the force of friction in conjunction with the compartment's sides.

The Board agreed with the Examiner's interpretation. The Board first noted that Specification did not expressly define the claim term ("secured"), nor did it use the other terms (“fixed,” “attached,” fastened”) to describe the relationship of the removable container and the base container. To the contrary, the Specification states that the securing function can be accomplished “in any manner, for example, by a frictional fit.” Thus, the Specification "makes it clear that the term is being used, and should be construed, broadly."

Moreover, while the Applicant asserted that every definition of "secure" uses the word "fasten," the Board found that some of the definitions had a broader meaning. The Board elaborated as follows:

For example, one of the definitions of “secured” relied upon by Appellant is “firmly fixed: firmly fixed or placed in position and unlikely to come loose or give way.” (App. Br. 8, Ex. 9 (emphasis added)) Thus, a container that is “inserted” into a compartment, as in Spielhoff, would be “secured” in the compartment because it had to be placed in the compartment and would be unlikely to come loose or give way. In this respect, we further note the provision of a lid (not numbered) for the compartment in the tool cart of Spielhoff, which furthers securing of the removable case. 

The Board then concluded that the Applicant's interpretation (fastening required) was too narrow. Instead, "the arrangement of Spielhoff, where the container is inserted into the top compartment, is encompassed by Appellant’s claims."

My two cents: The Board got this one wrong. I'll agree with that the Broadest definition here – firmly fixed of place in position and unlikely to come loose  – is also Reasonable. But I say the Board overreached in applying the reference to the claims.

Simply put, there was zero evidence in the record that a toolbox placed in Spiehoff's compartment would be unlikely to come loose due to friction along the sides of the compartment. The crude drawings in Spielhoff's suggest that the container is roughly the same size as the compartment, but there isn't enough detail to say that the sizes are close enough to achieve the function implied by "secure."

I give the Applicant points for making claim construction the heart of the argument, but unfortunately Applicant didn't sieze on this particular issue that is implicated by the broadest definition.

The way I see it, the Board improperly speculated about the teachings of the reference. But this could have gone another way.

The Board could have treated the claim language "secured ... when said apparatus is at a working location" as intended use, and then taken the position that the compartment need only be capable of fixing a container in place. Under that theory, the reference anticipates if there exists a hypothetical compartment and a hypothetical container having relative sizes such that friction fit keeps the container in place. Right? Or is hypothetical not good enough?

New resource for searching and analyzing PTAB decisions

There's a great new resource available for practitioners interested in PTAB decisions: the Patent Board Ferret.

The Ferret includes both search and analysis tools. On the search side, you can search not only by text in the decision, but also by rejection type, disposition, art unit, Examiner, and decision date. On the analysis side, you can generate charts which answer questions like:
do some judge panels introduce new 101 rejections more than others?
do some Examiners have a high reversal rate for section 112?
do cases with oral hearings have a higher rate of reversal?

While the Ferret hasn't processed every single one of the decisions on the PTAB's official site, it does include almost 13000 decisions, and continues to grow. So the Ferret is now my default search engine for PTAB decisions.

I do still use ptab.us to quickly look at recent decisions of interest to me. ptab.us shows me all decisions issued on a particular day, along with Examiner name, Correspondent Name (i.e. law firm or sometimes corporation), issues decided, and disposition. ptab.us has some analysis features too: it can generate spreadsheets for decisions by judge, law firm, tech center, etc.

Board reverses 101 rejection based on a server recited in the preamble

Posted by: Adam Ellsworth

Takeaway: In an appeal involving a computer-implemented method of matching mobile agents with location-based orders (such as assigning a taxi to a customer), the Board reversed the rejection under 35 U.S.C. § 101 of a method claim that recited a server in the preamble. The Board acknowledged that the machine-or-transformation test was not the sole test to apply, but found that the claims satisfied the “machine” prong of the test, which was sufficient to render the claims patent-eligible.

Details

Ex parte O’Meara

Appeal 2012-005110, App. No. 09/740,201, Center 3600

Decided: September 26, 2013

The application on appeal was directed to assigning mobile agents to location-based orders. Claim 1 reads as follows:

1. A computer-implemented method of allocating a location-related order to one of a plurality of mobile agents, said method being carried out by an ordering server programmed to carry out the steps of the method, which comprise: 

a) maintaining a current order record identifying a first location and first time at which each agent is expected to become free to fulfill a new order; 

b) maintaining a prioritized listing of locations including both scheduled locations which an agent is currently due to visit and unscheduled locations which said agent is not currently due to visit, with locations in said listing being prioritized to rank both the scheduled and unscheduled locations for said agent according to availability of the agent to reach each location after said first time, said availability having been calculated for each location irrespective of whether or not said agent is currently due to visit a particular location in said listing; 

c) receiving said location-based order and recording the location and time at which said order is to be fulfilled; 

d) determining from said prioritized listing of locations a suitable agent to fulfill said order; and 

e) allocating said order to said suitable agent.

The application first went to appeal in 2006 and the Board reached a decision in that appeal in 2009. In that decision, the Board reversed the Examiner’s obviousness rejections under 35 U.S.C. § 103(a), but the Board entered a new ground of rejection under 35 U.S.C. § 101, holding that the claims were directed to patent-ineligible subject matter. The Board applied the machine-or-transformation test to determine patent eligibility, which was the test of the time as set forth by the Federal Circuit. The preamble of the claim at the time of the first appeal recited only that the method was “computer-implemented.” The Board stated that the term “computer-implemented” in the preamble of the claims did not recite a “particular” machine, and no other elements of the claims tied the claims to a machine or transformed an article to another thing.

During the intervening prosecution between the first appeal and the present appeal, the Appellants amended the preamble of claim 1 to recite “A computer-implemented method of allocating a location-related order to one of a plurality of mobile agents, said method being carried out by an ordering server programmed to carry out the steps of the method, which comprise:”

The Examiner rejected the claims by applying only the machine-or-transformation test. Interestingly, the Examiner cited the Supreme Court decision Bilski v. Kappos, 95 USPQ2d 1001 (2010) as a reference in the Final Office Action, even though that case states that the machine-or-transformation test is not the sole test to apply to determine patent eligibility. The Appellants pointed out that reliance solely on the machine-or-transformation test was inconsistent with the Supreme Court decision Bilski, to which the Examiner responded in the Final Office Action: “The Examiner respectfully disagrees,” and the Examiner didn’t address the argument further. Nor did the pre-appeal review board address the error.

In maintaining the rejection, the Examiner argued in the Answer to the Appeal Brief that the “ordering server” recitation was (1) insufficient recitation of a machine or transformation, (2) the recitation was merely nominally, insignificantly, or tangentially related to the performance of the steps, and (3) merely recited the field in which the method was intended to be applied.

The Examiner also refused to give the amended preamble patentable weight, arguing that the preamble recited merely the purpose of the process, and was not required by the steps in the body of the claim.

The Board disagreed with the Examiner on both counts. First, the Board held that the preamble, and in particular the limitation that the method be carried out by an ordered server, should be given patentable weight. Since the “ordered server” was a required element for performing the steps in the claim, the ordered server gave “life, meaning, and vitality” to the claim,

Second, the Board held that the term “said method being carried out by an ordering server…” recited in the preamble rendered the claim patent-eligible under 35 U.S.C. § 101. The Board acknowledged that the standard for determining patent eligibility under § 101 had evolved since the first appeal, but stated that the machine and/or transformation prongs are factors for determining whether a claim is patent-eligible. The Board held stated that the recitation of the ordering server in the preamble of the claims sufficiently tied the claims to a machine, and so the claims satisfied the machine-or-transformation test and were patent-eligible.

My two cents:

This opinion is remarkable for two reasons. First, the Board held that a limitation in the preamble limited the scope of the claim. It is common practice for Examiners to refuse to give preambles any patentable weight, but the Board points out that the “ordering server” in the preamble is a required element for practicing the claim steps and thus gives meaning to the entire claim. The Board appears to have been swayed by the specificity of the recited machine, since the Board had previously rejected the claim when the preamble recited only “a computer-implemented method.” Second, the Board acknowledged that its previous opinion was based on outdated law, and reversed an Examiner who tried to rely on the Board’s previous opinion to maintain the rejection.

The Appellants in this case did a good job of referring to the “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos,” 75 Fed. Reg. 43,922, 43926 in their Appeal Brief. The Appellants pointed out that even though the machine-or-transformation test was not the sole test to apply, it was one test to be applied under the Interim Guidance, and the Appellants pointed to the specific prongs of the test described in the Interim Guidance that were satisfied by the claims. Although the Examiner ignored the Interim Guidance during regular prosecution and on appeal, the Board was persuaded by the Appellants’ arguments.

While the machine-or-transformation test is not the sole test to apply to determine patent-eligibility of a claim, the Board treated the test as a threshold in this case. Once it found that the claims satisfied the "machine" prong of the test, it didn't apply any other test. I agree with this approach. There are multiple tests available to demonstrate patent-eligible subject matter. In the Interim Guidance, some are listed as "Factors that Weigh in Favor of Patent Eligibility." Factors that are not part of the machine-or-transformation test include practical application of a law of nature and observable and verifiable performance of steps of a method. Not every test needs to be applied in each case, and a claim may be found patent-eligible based on only one of the tests. But if practitioners want an Examiner to apply any test other than the machine-or-transformation test, they should not merely state that "the machine-or-transformation test is not the sole test to apply." Instead, they should supply what they consider to be the appropriate test to the Examiner, supported by the Interim Guidance and other case law, as appropriate.

Board finds Machine-or-Transformation test, applied alone, insufficient to sustain 101 rejections

Posted by: Adam Ellsworth

Takeaway: In an appeal involving e-learning games, the Board reversed a rejection under 35 USC § 101 of a method claim directed to constructing e-learning games, where the rejection was based solely on the grounds that the claims did not satisfy the machine-or-transformation test. The Board relied on the Federal Circuit's decision in Cybersource, stating that the Examiner should have determined if the claim was directed to an unpatentable mental process. The Board also suggested that claims be analyzed based on the “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos” to determine whether a claim is patent-eligible under 35 U.S.C. § 101.

Details

Ex parte Bagley

Appeal 2011-001822, App. No. 10/853,298, Center 3700

Decided: May 31, 2013 

The application on appeal was directed to e-learning games. Two representative claims read:

1.     Apparatus for dynamic construction of e-learning games, said apparatus comprising:at least one learning object assessment object;   a repository comprising a plurality of video scenes; and  a game generator for associating a video scene with an assessment object, dynamically responsive to an answer to the assessment question by a student, whereinthe video scene is selected from a plurality of video scenes capable of being associated with the assessment question.

…

8.     A method for constructing e-learning games dynamically, comprising the acts of:          selecting a learning object from a repository of learning objects;selecting a learning object assessment object associated with the learning object from a repository of learning object assessment objects;testing an e-learning student according to an assessment question from the learning object assessment object; andselecting a video scene from a video repository, responsive to an answer to the question by the student, for display to the student, whereinthe video scene is selected from a plurality of video scenes capable of being associated with the assessment question.

The Examiner initially rejected claims 1-12 as being directed to non-statutory subject matter under 35 U.S.C. § 101, but the Examiner withdrew the rejections of the apparatus claims 1-7 on appeal. As a result, the only 35 U.S.C. § 101 rejections argued on Appeal were those directed to the method claims 8-12.

In rejecting claim 8, the Examiner applied only the machine-or-transformation test to determine whether the claim was directed to non-statutory subject matter under 35 U.S.C. § 101. The Examiner set forth the standard as follows:

“[I]n order for a claimed process to be considered statutory it must be: (1) tied to a particular machine or apparatus, or (2) transform a particular article into a different state or thing.”

On appeal, the Applicant, paraphrasing the Supreme Court decision in Bilski v. Kappos which had issued a few weeks previously, argued that the Examiner “failed to produce substantial evidence that the claim was directed to one of the exceptions to statutory subject matter.” The Applicant further argued that the claim was tied to a machine, stating:

“Specifically, claim 8 refers to ‘a repository of learning objects,’ ‘a repository of object assessment objects,’ and a ‘video repository.’ All of these items are devices, and thus, the claimed invention is not directed to one of the exceptions to statutory subject matter.”

The Examiner, ignoring the Applicant’s reference to Bilski, responded by stating that that “the claim does not make any implicit or explicit recitation of a particular machine which is critically tied to the performance of the method.”

Regarding the limitations recited in the claims of storing objects in a repository, the Examiner dismissed this limitation as merely being an extra-solution activity, stating that “it is not part of the critical steps and procedures of the claimed process.”

The Board agreed with the Applicant and reversed the rejection of claims 8-12 under 35 U.S.C. § 101 for not following the most recent guidance from the Supreme Court, the Federal Circuit, and the U.S.P.T.O. The Board stated:

“Following the Federal Circuit’s post-Bilski approach in Cybersource, the Examiner should have analyzed the method claim to determine whether ‘it is drawn to an unpatentable mental process-a subcategory of unpatentable abstract ideas.’ The Examiner’s analysis, however, is devoid of any mention of an ‘abstract idea’ or ‘mental process.’”

The Board noted that since the Examiner’s rejection was issued four months prior to the Supreme Court’s Bilski decision, the Examiner’s rejection in the Final Office Action was not based on the most recent guidance from the Courts or the Patent Office. The Board stated:

“[T]he Examiner presumably had neither the benefit of the Court’s analysis nor the benefit of this Office’s ‘Interim Guidance for Determining Subject MatterEligibility for Process Claims in View of Bilskiv. Kappos,’ 75 Fed. Reg. 43,922, 43926, which became effective July 27, 2010. The Guidance provides in exquisite detail the analysis that the Examiner should follow in determining whether a method claim is claiming an abstract idea.”

Although the Board reversed the § 101 rejections, the rejections of all of the claims were ultimately affirmed by the Board, either under 35 U.S.C. §§ 102 or 103.

My two cents:

The Board analyzed the rejections of claims 8-12 under 35 U.S.C. § 101 exactly right. The Examiner provided no analysis of whether the claims were directed to an abstract idea. In addition, the Applicant in this case was lucky that the Board was aware of the Interim Guidance and directed the Examiner to follow the Interim Guidance, since most Examiners and PTAB judges are either unaware of the Guidance or choose to ignore it.

Other panels of judges at the PTAB have interpreted the Supreme Court’s language in Bilski that “the machine-or-transformation test is not the sole test for determining the patent eligibility of a process” to mean that, although other tests may exist, the machine-or-transformation may be the sole test applied by an Examiner in any given application. This interpretation is inconsistent with the Supreme Court’s decision, which rejected the Federal Circuit’s application of only the machine-or-transformation test to reject the claims in Bilski, and this interpretation is definitely inconsistent with Cybersource, in which the Federal Circuit further stated that “the machine-or-transformation test is not dispositive of the § 101 inquiry.”

The more logical interpretation of Bilski is set forth in the “Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos,” 75 Fed. Reg. 43,922, 43926. In the Interim Guidance, the machine-or-transformation test is one test to determine whether a method claim is directed to patent-eligible subject matter, but not the sole test. In addition to the machine-or-transformation test, the Guidance directs Examiners to determine whether an abstract idea has been practically applied. The Guidance includes factors that weigh in favor of patent-eligibility of a claim and factors that weigh against patent-eligibility of a claim.

Here, although the Examiner had access to Bilski at the time of the Examiner’s Answer, the Examiner did not have access to the Interim Guidance. Examiners do not generally follow or analyze court cases without guidance from the PTO, and this Examiner was no exception. When the Applicant relied on Bilski to argue that the Examiner had not provided substantial evidence that the rejected claims were directed to abstract ideas, the Examiner ignored the argument and instead relied upon the outdated guidance from the Patent Office that directed Examiners to apply only the machine-or-transformation test to method claims to determine patent-eligibility of the claims.

Prosecution Tip: My tip for responding to § 101 rejections in which an Examiner rejects a method claim using only the machine-or-transformation test is to direct the Examiner to the Interim Guidance for Determining Subject Matter Eligibility for Process Claims in View of Bilski v. Kappos. Applicants should not only cite the location of the Interim Guidance in the Federal Register, and possibly even provide a hyperlink to the Guidance on the USPTO website, but Applicants should also point out the specific features in the rejected claims that weigh in favor of patentability according to the Interim Guidance. This provides concrete reasons on the record, supported by case law, why the claims are directed to patent-eligible subject matter.