Rarely do the three-judge panels at the PTAB offer differing opinions in ex parte appeal decisions. It’s not necessarily that these judges all agree with each other all the time. Instead, it’s because the USPTO production quota system does not reward judges for separate concurrences or dissents. So any time that a judge decides to spend in writing a separate opinion is in essence off-the-clock work. But this does not deter some judges from branching out from the panel, as shown in a recent case that reversed an abstract idea rejection: Ex Parte Boucher et al, Appeal No. 2017-003484 (PTAB Oct. 31, 2017).
In Ex Parte Boucher, the majority reversal of the Examiner’s rejection under Section 101, authored by Joseph L. Dixon and joined by Larry J. Hume, was brief. It held that the Examiner had provided insufficient factual findings and analysis on patent eligibility. The Examiner’s asserted abstract idea “manipulating data for the purpose of fault detection” oversimplified the claimed invention, according to the majority.
The majority further agreed with the appellant’s arguments that the claims are directed to new and useful improvements for detecting or diagnosing faults of items or of functions implemented by the items of an aircraft. Thus, the claims were not solely directed to an abstract idea.
Judge Joyce Craig disagreed with the majority on Section 101. The dissent would have characterized the claim as existing information in a database, analogizing the claims to Intellectual Ventures I LLC v. Erie Indemnity Co., 850 F.3d 1315, 1327 (Fed. Cir. 2017). The dissent would have characterized a remaining part of the claims as using a mathematical algorithm to manipulate existing information to generate additional information, citing to Digitech Image Techs., LLC v. Elecs. for Imaging, Inc., 758 F.3d 1344, 1351 (Fed. Cir. 2014). Thus, the dissent would have concluded that the claims are directed to an abstract idea under the Step 1 analysis of Mayo/Alice.
Under step 2, the dissent looked at the claim elements taken individually and saw nothing more than “routine computer functions and amount to no more than the performance of well-understood, routine, and conventional activities in known to the industry.” Thus, the dissent would have agreed with the Examiner and sustained the rejection.
The Federal Circuit and district courts are not the only judicial bodies that are at odds with each other with regard to applying a consistent and cohesive framework for assessing the two-step analysis of patent-eligibility. It can thus be useful to have additional knowledge at to guide your chances for appeal.
With Anticipat Research, you can see which judges are deciding cases in your tech center to give you a better sense of what your chances on appeal are. For example, if you are appealing a Section 101 rejection, will you get a Judge Craig type of panel that tends to agree with the Examiner’s analysis, or will you get a Judge Dixon type of panel that sides with the appellant’s analysis. See below interface.
Try Anticipat Research today to see which judges are on the reversed panel decisions, specific to a tech center of interest. Then you can search for how often these judges appear both in panels and as authoring judges in your tech center.