In ex parte Lynch, Appeal No. 2016-002985, the Board reversed a Section 101 rejection, holding that the claimed invention provides an improvement in the functioning of the computer. Specifically, the claimed invention allows a user to register for new websites without entering all of their information each time, but with the option of modifying the information if necessary. The Board seemed to acknowledge that the claims were directed to an abstract idea under step 1. But the Board held that the claimed conventional computer components when considered as an ordered combination do include an inventive concept sufficient to render the claims eligible for patenting. Finally, in an apparent mocking of the Supreme Court, the Board concluded that the claims include the talismanic inventive concept.
By way of background, the Court in Alice v. CLS Bank analogized the claims at issue to the claims in Bilski. The Alice petitioner had argued that one of the claims recited a formula, which should have brought the claim outside the realm of abstract ideas. However, the Court disagreed by explaining that Bilski belies this argument. The Court explained that the Bilski “Court did not assign special significance to that fact, much less the sort of talismanic significance petitioner claims.” Id. at 10.
Understanding how claims are and are not abstract ideas remains elusive, as suggested by the Board in this case. But this case illustrates supports that claims reciting general purpose components can be patent-eligible when the components are arranged to provide specific advantages to the users. To support this, the Board referenced three cases.
First, the Board analogized to Bascom for the proposition that conventional computer components are patent-eligible as they carve out a specific location for the filtering system (a remote ISP server) and require the filtering system to give users the ability to customize filtering for their individual network accounts.
Second, the Board referenced Amdocs where a claim that required arguably generic components “necessarily requires that these generic components operate in an unconventional manner to achieve an improvement in computer functionality.”
Third, the Board references Trading Technologies that held, “Abstraction is avoided or overcome when a proposed new application or computer-implemented function is not simply the generalized use of a computer as a tool to conduct a known or obvious process, but instead is an improvement to the capability of the system as a whole.”
This case shows that abstract idea rejections are still tricky. But as shown here, it is not fatal to patent-eligibility for claims to recite conventional computer components as long as the ordered combination provides a specific improvement. This shows that understanding which legal authority relied on by the Board can be important in knowing how to reverse Examiners in other applications. Anticipat Practitioner Analytics does just this. Click here for a free trial.