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.