Top 10 Anticipat Blog Posts for 2018

With a new year upon us, it’s sometimes interesting to look backwards. 2018 for us was a year of good blogging. Here, we recap the most popular posts on Anticipat’s blog in the year of 2018.

Top 10 most visited posts in 2018 in order of highest unique page views

1) The PTAB quietly hit a milestone in June in reversing Alice Section 101 rejections

2) Update: These firms overturn abstract idea (Alice) rejections on appeal at PTAB

3) Understanding the Examiner Answer: analyze anything new and contest as needed

4) Berkheimer’s biggest effect on PTAB outcomes

5) How the biggest patent firms (Finnegan, Fish, Knobbe) do on appeal

6) Obviousness Reversal Rates Across Tech Centers: Unexpected Results

7) Expect the Berkheimer-driven patent-eligibility pendulum to swing at the PTAB

8) Business methods making comeback on appeal at the Board–Citing Berkheimer PTAB panel holds Examiner must show evidence

9) Board panel citing Berkheimer to reverse judicial exception rejection to diagnostics claims: no evidence

10) Number of abstract idea rejections decided at PTAB for August 2018 higher than ever, but reversal rate treads water

Of course, the order of these posts does not completely correlate with the most interesting or relevant content. Some of the popular posts were published at the beginning of the year, with more time to be accessed, while other posts were published late in the year. Also, some posts were arbitrarily provided to be shared on higher-profile media, giving it a broader audience.

A big lesson from these posts is that patent-eligibility, Berkheimer and abstract ideas were very interesting topics in 2018.

The PTAB continues to increase reversal rate of abstract idea rejections

Recently, the state of patent-eligibility (especially abstract ideas) has been the talk of the patent bar. Yesterday, revised examination guidelines took effect, changing the direction for examiners to examine abstract ideas at the USPTO. For its part, the PTAB has been playing a role in the abstract idea flux as applicants increasingly turn to the Board for overturning difficult rejections. Here, we report that the reversal rate for abstract ideas continues to climb slightly higher.

October 2018 had 30 decisions out of 185 total decisions in which the Board wholly reversed abstract idea rejections, or a reversal rate of 16.2%. This is up from the previous month (September) and it continues a largely unbroken streak of 5 consecutive months with relatively high reversal rates. In fact, during this streak, each month experienced an abstract idea reversal rate over 15% with the sole exception of September, which came close at 14.4%. Prior to this streak, the PTAB had a much gloomier streak for abstract idea appellants, where the reversal rate for abstract ideas was below 15% for eight consecutive months, as we reported here.

Below is a snapshot of October 2018 being queried for abstract idea rejections on Anticipat’s Research page. You can find all these decisions for this time frame, for other time frames, and a whole host of other issues on appeal to guide your prosecution strategy.

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To access this and other types of appeals information using Anticipat’s Research database, feel free to sign up for a 14-day trial.

With new leadership at the USPTO, and as seen from recent appeals data, the pendulum of patent-eligibility continues its slow swing in favor of applicants, even if this swing is at times unpredictable.

Section 101 Alice (Abstract Idea) Appeal Decisions Surge, but Reversal Rate Stays Steady

Abstract idea rejections (mostly Alice-impacted in computer-implemented inventions) are experiencing a surge at the PTAB. We previously reported that August 2018 saw a record number of abstract idea appeals decisions. But the following month shattered this record number of appeals decisions by a large margin. Practitioners have been increasingly appealing abstract idea rejections and it is dramatically showing itself in the final written decisions. The most recent data show that appeals are a more attractive option to overcoming such rejections with still small but not hopeless odds.

As we previously reported, August 2018 saw a record number of reversals (30) based in part from the equally record number of total abstract idea decisions that month (207). The following month of September saw these records shattered at the PTAB. Even with a modest total increase in the total number of decisions (771 to 840, or about a 9% increase), the number of abstract idea decisions for September increased to 257, a 24% increase.

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That surge in abstract idea decisions resulted in a record-setting 37 reversals. So while the total number of abstract idea reversals was impressive, the actual reverse rate (14.4%) stayed relatively level, on par with previous months and far lower than other grounds of rejection. As we reported, June and July saw a Berkheimer bump above the 16% reverse rate.

While the reversal rates of recent August and September months are lower than June and July, considering the substantial number of appeals with these rejections, it appears that practitioners are looking to the PTAB for relief. That is, rather than abandoning cases with determined Examiners standing by their Section 101 rejections, practitioners are increasingly using less-trodden techniques (appeals) with overcoming these rejections. After all, some practitioners view appeals as a last resort, especially in some technology sectors, due to the substantial time commitment to reach a final written decision.

Continue to expect appeal decisions that decide Section 101 rejections to increase, as the unpredictability at the USPTO plays out. Also, check out the new Research user interface that allows you to select the specific issues and subissues that you are interested in.

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PTAB reverses abstract idea rejection of business method patent application – Some key practice tips

There has been much energy focused on the flawed nature of the current Alice/Mayo framework for evaluating patent-eligibility. Even the well-intentioned desires of USPTO director Andrei Iancu’s to move away from this framework has its limits.

In a recent decision, Ex Parte Pasupulati et al, the Board reversed an abstract idea rejection to a claim directed to integrating an API-based mechanism to a merchant’s website without the merchant having to understand the API or having to know how to code in a language specific to the API. The Board rebuffed the Examiner’s position for both steps.

Step 1

Under Step 1, the Board first found that the Examiner had improperly overgeneralized the claims as “payment management in a network” or the general concept of “coding”. Without being able to over simplify the claim, it makes it much more difficult for the claims to be “directed to” an abstract idea.

Next, the Board found that the focus of the claims is not on judicical exceptions (i.e., “do not recite a mathematical algorithm … [n]or do they recite a fundamental economic or longstanding commercial practice” identified as an “abstract idea” by the Supreme Court in its trilogy of Benson, Flook, and Diehr, and its recent duet of Bilski and Alice). Instead, the Board found that the claims provide a particular solution to the particular problem of integrating an API-based mechanism to a merchant’s website without the merchant having to understand the API or having to know how to code in a language specific to the API.

Still, the Board did not have the confidence to rely only on Step 1 in reversing this rejection because “identifying the precise nature of the abstract idea [of Appellants’ claims] is not as straightforward,” it proceeded to Step 2.

Step 2

The Board analogized to DDR Holdings in showing that the claims contain an “inventive concept” for two reasons. The first reason is somewhat related to the step 1 analysis. That is, the Board found that the claims provide a technical solution to a technical problem unique to the Internet. Here it was generating code snippets and files that can be automatically integrated with an online website so that an API-based mechanism can be used with the online website.

The second reason analogized to Bascom. The Board found that the combination of Appellants’ claim elements, like the claims in Bascom, provides a practical application of integrating an API based mechanism to a merchant’s website without the merchant having to understand the API or having to know how to code in a language specific to the APL This transforms any abstract idea (i.e., “coding” or “payment management in network”) into “a particular, practical application of that abstract idea.”

Conclusion

Despite the chorus of criticism of the Alice/Mayo framework continuing to grow, it is the law of the land. That being said, there are ways to navigate through its complexities. This decision nicely shows practice tips that can be used for similarly rejected applications. For step 1, one practice tip is not to let the examiner oversimplify what the claims are directed to. Consider focusing of the claims with its technical features as a problem to solve. For step 2, if applicable, consider showing how the claimed invention is solving a problem unique to a computer-specific environment (e.g., the Internet). Lastly, consider how the combination of claim elements might transform the alleged abstract idea into a particular, practical application.

Try the Newly Upgraded Anticipat to Complement Your Patent Prosecution Practice

We are pleased to let you know about a major upgrade to the overall site at Anticipat.com, giving you relevant information faster, better, and easier.

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We hope you will find our newly organized issue/subissue and tags organization for ex parte appeals decisions to be intuitive and useful in your practice. Easily look up any issue that you face and see what has worked (or not worked) on appeal–with any metric (e.g., your Examiner, art unit, tech center). No other product offers such granularity in appeals results at the PTAB.

We’ve also made major improvements to the full text searching capabilities for even more specific research. Harness the power of patent analytics to make better-informed decisions using the power of aggregate appeals data.

We’d love for you to give us a try for a free two-week trial by clicking here. And if you have any questions or any feedback, please feel free to reach out to us.

Come see us at the AIPLA annual meeting this Thursday and Friday!

We at Anticipat have been busy improving the user experience for patent practitioners who are keen on using patent analytics in their practice. Now, Anticipat would like to show you this functionality first hand. To this end, we will have a booth and a presenter at this year’s AIPLA annual meeting in Washington, DC.

Adam Stephenson, co-founder and chief operating officer of Anticipat, will be at booth 36 demoing our new research and analytics interfaces and answering questions about using Anticipat data in patent prosecution. At the booth, we are giving away a FlashForge Creator Pro 3d printer to the lucky person who signs up for a free trial during the conference period (no need to attend the annual meeting necessary!).  To win, sign up for a free trial Thursday October 25 through 1:30 PM Eastern on Saturday October 27.  Current or past subscribers attending the meeting can leave their business card with Adam at our booth or send an email to admin@anticipat.com during the giveaway period to be entered to win.

Adam will also be presenting in the Thursday am (9am-12noon on October 25) track: patent prosecution. His presentation is titled “Tactics for leveraging objective indicia of nonobviousness during patent prosecution.”

If you are at the annual meeting this week, we’d love to meet up with you. Drop in at our booth, come check out Adam’s presentation or reach out to us to set up a time to meet at admin@anticipat.com or +1.480.779.7093.

 

Number of abstract idea rejections decided at PTAB for August 2018 higher than ever, but reversal rate treads water

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Recently at the IPO Annual meeting on September 24, USPTO director Andrei Iancu acknowledged the obvious: Section 101 is making folks’ lives difficult. The director also had some strong words about the abstract idea patent-eligibility doctrine. Calling into question the established framework, the director asked: “How can a claim be novel enough to pass 102 and nonobvious enough to pass 103, yet lack an ‘inventive concept’ and therefore fail 101?” It does not look like a fix to 101 is coming anytime soon. But it does look like this struggle is increasingly making its way to the Board.

August 2018 saw a record-number of abstract idea rejections decided at the Board. The PTAB decided 209 abstract idea rejections. And even with such a high number of cases, the reversal rate only slightly dipped compared to prior months. See previous post on recent months abstract idea decisions. For August, 33 of 207 decisions were entirely reversed, yielding a complete reversal rate of 15.9%.

As examiners and applicants grapple with the abstract idea doctrine of patent-eligibility, the trend seems to be that applicants will increasingly seek the PTAB judges to adjudicate in their favor. And if recent months are any indication, that gamble is paying off more than ever before. But still with reversal rates in the teens, it’s still one of the most difficult of all rejections to overturn on appeal. Plus with the director’s strong words, the reversal rate should continue to trend upward.

Check out additional information at Anticipat.com. You can look up, for example, all the decisions where the board reversed specific examiner rejections. Try out a trial for Anticipat Research today.