Practice Tip: Do not recite an abstract idea in claims while merely adding the words ‘apply it’

Alice v. CLS Bank in citing Mayo made one point very clear: stating an abstract idea while adding the words ‘apply it’ is not enough for patent eligibility. This point may seem apparent to patent practitioners who hopefully are not literally reciting abstract ideas in claims and adding “apply it”. But a recent ex parte appeals decision highlights how a more common claim may fall into this same patent-ineligible category.

In Ex Parte Perreault (PTAB Jan. 24, 2018), the Board assessed an extraordinary representative claim for patent-eligibility. This single claim spans five pages of the Board decision, tallying up an impressive 1100-word count. The final clause of the claim recites:

wherein said steps (a)(l)(i), (a)(l)(v), (a)(l)(vi), (b)(l)(i), (b)(l)(v), (b)(l)(vi), and (c) are performed by execution, on a processor of a computer, of computer-readable instructions contained on a non-transitory computer readable medium.

The Board was unconvinced of the appellant’s arguments and instead held that the claim was directed to gathering rules and remedies for each community and then displaying them to a sub-contractor. The fact that the claim recited the equivalent of “apply it” in the final element was no help to the patent-eligiblity of the claim.

The Board instead found that the claim includes neither a technical problem nor a technical solution, but merely the application of an abstract idea on a computer via the Internet. Then the final blow: “We have repeatedly held that such invocations of computers and networks that are not even arguably inventive are insufficient to pass the test of an inventive concept in the application of an abstract idea.” Elec. Power Grp., LLC v. Alstom S.A., 830 F.3d 1350, 1355 (Fed. Cir. 2016).

In conclusion, lengthy claims are not helped by merely reciting generic computer and network language. A final step with a wherein clause clarifying that previous steps are performed on a computer is perhaps a sign that the claim off course from patent-eligibility.

Recent ex parte appeal PTAB decision cuts a corner to avoid deciding an appealed rejection

Patent Office employees are creatures of incentives. It is well-known that patent examiners earn various counts for use in the USPTO’s internal quota system. PTAB judges are also measured by a count-based system, which is based on the number of decisions they author. It is no secret that Examiners and PTAB judges at times get creative with policies and practices to most easily meet their quotas. Here, we look at a recent decision that shows a practice of PTAB judges deciding only one ground of rejection without looking to the remaining pending ground on appeal.

In deciding grounds of rejection on appeal, the three judge panel almost always decides all the contested pending rejections. Of course, if an appellant chooses not to argue against a ground of rejection in the appeal brief, the Board will summarily affirm the rejection. Very rarely, the Board decides only one ground of rejection on appeal and lets that carry the day, without deciding other pending grounds of rejection. This rarity is found in recently decided Ex Parte MacArthur et al (PTAB Jan. 2, 2018).

In Ex parte MacArthur, the appellant had challenged both a Section 101 abstract idea rejection and a Section 112 indefiniteness rejection. But the panel never even reached the second ground of rejection. After affirming the abstract idea rejection, the panel “exercised [their] discretion” and “declined to reach the merits of the Examiner’s remaining rejection.” This, after the appellant had devoted nine pages of argumentation on the Section 112 rejection in the appeal brief and the reply brief.

To support its discretion not to reach the remaining issue on appeal, the Board cited to two Federal Circuit cases. In re Basell Poliolefine, 547 F.3d 1371, 1379 (Fed. Cir. 2008) (“Having concluded that the Board properly affirmed the rejection of claims 1-52 of the ‘687 patent based on obviousness-type double patenting in view of the ‘987 patent, we need not address the remaining issues raised by Basell regarding the §§ 102(b) and 103(a) rejections, as well as the additional double patenting rejections.”); Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC having decided a dispositive issue, there was no need for the Commission to decide other issues decided by the presiding officer). Another interpretation is that the panel found a way to achieve the same credit for deciding this appeal without the work of deciding the second issue.

Ex parte MacArthur is certainly not the first to use this kind of discretion to decline the call to decide remaining issues on appeal. Another relatively recent case, Ex parte Palmer (PTAB Mar. 10 2016), summarily affirmed a 112 rejection and proceeded not to reach several 103(a) rejections. In this analysis, the Board justified not reaching the 103(a) rejections by expressing concern for managing the Board’s docket. It also cited to the same ITC case above.

To the defense of PTAB judges, often there are many fact-specific grounds of rejection to be decided on appeal, which require time to analyze and write up. Especially in Ex parte Palmer, it would have taken a lot of time for the panel to pore over multiple references in deciding several obviousness rejections. But even though this requires a lot of time, it’s what PTAB judges do. That is, these decisions that do not decide all contested issues are extremely rare compared with the overwhelming majority of decisions that decide every issue that is argued. Interestingly, both of the above-discussed decisions come from the same tech center of 1700.

True, the appeal backlog has historically forced the PTO to get creative and balance resources at the BPAI/PTAB. But this decision not deciding an issue on appeal comes amid plunging backlogs for ex parte appeals. For example, as we recently reported, in the past year the backlog for tech center 1700 has dropped from 22.8 months to 16.9. Thus, the concern for creatively using judge resources is less compelling.

Plus, a half-baked effort at the PTAB may do little to speed up efficiency at the USPTO anyway. After a rejection is affirmed at the Board, the applicant can still prevail on this issue after reopening prosecution, either through additional argumentation or amendments. And back in the Examiner’s docket, if the Examiner still digs into his/her position on the other issue that was never decided by the board, then it would require another appeal to resolve. Better to do the job right the first time, even if it is tempting to take the shortcut in the decision.

 

PTAB: Protein modeling software claims are patent-eligible, arguing preemption

It has been over a year since the Federal Circuit decided McRO v. Namco Bandai. In short, McRO decided that software models can be patent-eligible. This long-awaited case sent ripples of hope to many in the patent bar, especially to those reeling from the confusion and unpredictability of Alice decided two years prior. But the McRO message has still not made its way to all examiners, especially in the life sciences. Fortunately, the PTAB sees fit to correct and overturn such examiners, as shown in a recent case Ex parte Ohrn, Appeal No. 2017-003914 (PTAB Nov. 20, 2017).

In Ex parte Ohrn, the Examiner had argued that the claims simply used a computer as a tool, i.e., “converting one form of numerical representation into another by organizing information through mathematical concepts,” and were thus an abstract idea. In addition to holding that this was an overgeneralization of the claims, the Board used three main arguments to counter this assertion.

First, the Board found that the exact manner in which the modeling was implemented was novel, and thus the Examiner failed to provide evidence that the computer was used simply as a tool for generic activity. The Board found that the “claimed method uses a combined order of specific rules that render information into a specific format that is then used and applied to create desired results.”

Second, the specific, claimed features of rules permit the improvement realized by the invention. Claim 1 focused on a specific articulated improvement in protein modeling instead of a result of an abstract idea itself.

Third, the Board found the preemption argument persuasive that the specific method recited in the claims did not improperly monopolize the basic tools of scientific and technological work. It cited fairly specific characterizations made by the appellant of what the claims do not cover.

While the preemption argument can be a strong one, the savvy patent practitioner will tell you that this argument is not without consequence. For purposes of prosecution history estoppel, characterizations made on the record as to what the claimed invention does not cover greatly weakens or even destroys such equivalence coverage in litigation. But a granted patent narrowed by such prosecution history estoppel can be better than an application where the argument was not used, leading to an abandoned application. That being said, the preemption argument can be a double-edged sword.

Rare split panel at PTAB reverses abstract idea rejection

 

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.

filters  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.

Will You Get C-Delay Patent Term Adjustment After Your Appeal?

An advantage of appealing a patent application is to avoid unnecessary and narrower claim amendments and prosecution history estoppel. So rather than seek to appease an Examiner in an effort to overcome a particular rejection (with no guarantee of an allowance), appellants can ask the Board to directly overturn the Examiner. But an appeal comes with a sometimes heavy cost of significant time spent in the appeal process. For this reason, PTA can compensate for this time if the appeal is successful. In some industries, this PTA translates into big money. But when exactly does an appeal result in an applicant getting the patent term adjustment?

While appeal outcomes come in varying degrees of wins and losses for the appellant, C delay is an all-or-nothing reward. In short, C delay is rewarded whenever the Board overturns an unpatentability finding of at least one claim. This is how the USPTO interprets the statutory and rule language of “delay due to the review reversing an adverse determination of patentability”. See 35 U.S.C. § 154(b)(1)(C) and 37 CFR § 1.702. When only one ground of rejection is being decided, this means that either an affirmed-in-part (at least one claim reversed) or a wholly reversed outcome (all claims reversed) will lead to the C delay. When the Board decides multiple grounds of rejection, as long as none of the Examiner’s rejections survives with respect to one claim, an appellant will get PTA C delay.

Another way of looking at it is that an applicant will get C delay as long as the decision is not designated “affirmed.” We previously reported how the USPTO’s designation of “affirmed” is misleading and overly simplistic, which means that the appellant must be aware of simple procedural techniques that could deprive of precious PTA.When considering an appeal with the best chance of securing C delay, you should use Anticipat.com to help you consider three things.

First, assess the rejection depth of the claims. By rejection depth, the number of rejections associated with each claim (the greater the depth, the more rejections for each claim on appeal). The higher the rejection depth, the more likely you’ll get an affirmance and no C delay. This is because if all claims stand rejected under multiple grounds of rejection, there is a high chance that one of the rejections will stick. While it is possible for the Board to overturn each and every ground of rejection, with more rejections applied to the claims, the less likely this happens. This is in part due to the grounds of rejection having remarkably stable reversal rates, whether the appeal includes one or more grounds. In a recent decision, where four grounds of rejection were on appeal, the 101 rejection was affirmed, which masked the Board’s reversal of the 112(b) indefiniteness rejection, the 102 anticipation rejection and the 103 obviousness rejection. This meant that the application is ineligible for C delay for this appeal. All it takes is one rejection to carry the day against C delay.

Second, look at the track record for your application’s specific appeals–whole reversals and partial reversals. Some rejections (such as Section 101 patent-eligibility and obviousness-type double patenting) are all or nothing: all claims get reversed or all claims get affirmed. This is reflected in the percentage of “affirmed-in-part” outcomes for these grounds of rejection. For example some rejections, such as 102 or 112, have a relatively large affirmed-in-part category, creating a wide spread of the likelihood of overturning at least one claim. Other grounds, such as a Section 101 rejection, have a relatively low chance of being overturned even including affirmed-in-part. And this also includes the affirmed-in-part spread. Because it only takes one reversed claim to avoid an affirmed outcome (and hence qualify for C-delay PTA), look to the total combined statistic between pure reversals and affirmed-in-part outcomes. See the below graphs to see the different spreads for overturning at least one claim. The thick orange sections add significantly to the overall reversal rate of the rejection. For Section 102 and 112, the overall reversal rate approaches 60%.

pic3

Third, render moot grounds of rejection you do not plan to contest before appealing or argue all of your grounds of rejection in the appeal brief. For one reason or another, quite a few appellants choose not to argue an appealed ground of rejection. This can be because they plan to make a minor claim amendment (such as to overcome a 112 rejection), they plan to file a Terminal Disclaimer (to overcome a double patenting rejection), or they plan to make an amendment to avoid a nonstatutory subject matter rejection (such as by adding non-transitory). This can be a mistake. In these cases, if these non-substantive outcomes apply to all the claims at issue, the entire case is affirmed and there is no PTA C-delay. For example, in Ex Parte Le Bot et al, the appellant did not argue a Section 112(b) indefiniteness argument even though its arguments succeeded in reversing the 103(a) argument. The result was an affirmance for the appeal and no possible chance for C-delay. A practice tip is that if you have a loose end to wrap up, resist the urge to take care of this loose end before or after the appeal.

It is good practice to be strategic about appeals, especially when patent term is important. Since it is difficult to predict which patents will eventually find this added patent term to be precious, better to be safe than sorry.

Another “good” bioinformatics claim found patent-eligible by the Board — insufficient evidence of routine and conventional claim

In a previous post, we defined what a good bioinformatics claim looks like. Such a claim does not suffer from divided infringement issues and it does not recite steps to be performed by hospitals or doctors (e.g., medical procedures, administration of therapies) for maximum damages. We also reported that the US Patent Office resists granting such claims, alleging a lack of statutory subject matter. Here, we report on the PTAB continuing a trend of reversing such rejections of these types of claims.

In Ex parte Shioyama, Appeal No. 2016-001637 (PTAB October 20, 2017), claims recited a cell analyzer for determining a malignancy grade of cancer. While the representative claim is an apparatus claim (i.e., cell analyzer), the claim set also included a method claim. See representative claim below.

The Board reversed the abstract idea under step 1. In its reasoning, the Board held that the Examiner failed to provide evidence to support a prima facie case of lack of patentable subject matter. Drawing support from Enfish, the Board looked to the specification to analyze the claimed invention. It agreed with the appellant that “there is something more than a mere abstract idea”.

In its holding, the Board’s overturned the Examiner’s rejection (including that the abstract idea is routine and conventional) for not being supported by sufficient objective evidence. The Board recharacterized the alleged abstract idea. Instead of “determining the malignancy of a sample by analyzing a histogram”, as asserted by the Examiner, the Board found that the claim was directed to the abstract idea of “configuring a conventional processor to obtain a number of strong area cells that are distributed in an area where the fluorescence intensity is stronger than normal cells, and determine a malignancy grade of cancer using the number of strong-area cells and the histogram.” The Board then found that in light of these elements missing from the Examiner’s asserted abstract idea, the abstract idea claim step was not routine and conventional.

The Board made it very clear that the burden to provide evidence that an alleged abstract idea is routine and conventional is squarely on the Examiner’s shoulders.

Another interesting note about this representative claim relates to the word count. The Anticipat team has been informally observing claims where the Board has reversed abstract idea rejections to see if any patterns jump out. But with the various technical fields from which these claims arise, the relatively small sample size of these claims, and diverse claim drafting styles for these claims, the most telling pattern we found for predicting a patent-eligible claim was word count. That is, the longer the claim, the more likely the Board will overturn an Examiner’s Section 101 rejection. Here, however, this claim certainly bucks this theory that a hefty word count is needed for a patent-eligible claim, the representative claim having only 85 words. See below. It turns out brevity and patent-eligibility can go hand in hand.

And while we’re on the topic of predicting patent-eligibility, yes we checked “Ask Alice” for this claim, and it outputs a 55% patent-eligible score.

Representative Claim:

1. A cell analyzer comprising:

a cytometric device which measures cells that are nuclear stained;

a display which displays a histogram of a fluorescence intensity by using a result of the measurement by the cytometric device; and

a computer comprising at least one processor configured to obtain a number of strong area cells that are distributed in an area where the fluorescence intensity is stronger than normal cells, and determine a malignancy grade of cancer using the number of strong-area cells and the histogram.

Section 101 Rejection Overturned. What’s Next: A Notice of Allowance or a Revised Office Action?

It has seemed like the PTAB has been on a recent roll in reversing abstract idea rejections. In the past four weeks, 13 decisions have reversed abstract idea rejections. But in that same time period, there have been over 60 abstract idea appeals that have been affirmed. See Anticipat Research Database. So the recent trend has actually been consistent with historical reversal rates of about 20%, which is far below other grounds of rejection reversal rates.

On this note, two related business method applications came out on October 3, 2017: Ex Parte Webber et al., Appeal No. 2015-003647, and Ex Parte Webber et al., Appeal No. 2015-003796. In the decisions, the Board reversed the Examiner’s abstract idea rejections under 35 U.S.C. 101 for the same reasons. The Examiner had failed to set forth any analysis that the claim is directed to an abstract idea, and that the claims do not provide “significantly more” than any abstract idea. The Examiner in the Examiner’s Answer provided an incomplete analysis and only applied the machine-or-transformation test. And as the Bilski Supreme Court made clear, the machine-or-transformation is a useful tool, but not the sole test.

The Board only sought to decide the rejection at hand and not to evaluate the patent-eligibility of the claims on its own. Now that the decision was rendered, the logical question is what happens next? To understand this, we navigate through a somewhat complex area of rules.

The first scenario is for a “reversed” decision. When a decision is wholly reversed (each and every ground of rejection is reversed), the general outcome is a Notice of Allowance. There is an exception to this. The director can authorize reopening prosecution under 37 CFR 1.198 for the purpose of entering a new rejection. See MPEP 1002.02(c) and MPEP 1214.04. Thus, in Ex Parte Chapman, Appeal No. 2014-007861 (PTAB Nov. 21, 2016), all grounds of rejection (Sections 101 and 103 rejections) were reversed by the Board, but rather than issuing a Notice of Allowance, a subsequent Office Action issued with both rejections reappearing as new.

The second scenario is for an “affirmed” decision. If a Section 101 rejection is reversed, but other grounds of rejection were affirmed for all claims, this designates the decision as affirmed and the applicant must file an RCE to reopen prosecution. In response, the Examiner can issue an Office Action without a Section 101 rejection (especially when the Board reversed a well-articulated Section 101 rejection). See Ex Parte FISK, Appeal No. 2015-005360 (PTAB Sept. 21, 2016).

The Examiner can also issue an Office Action with a Section 101 rejection even though the Board reversed the previous 101 rejection (especially when the original 101 rejection was underdeveloped). in this manner, the Examiner can correct a deficiency in the analysis, as is often the case. See Ex Parte Dogin et al, Appeal No. 2015-005000 (PTAB Feb. 27, 2017) and Ex Parte Kelly et al, Appeal No. 2015-001219 (PTAB Dec. 19, 2016).

Returning back to these two decisions, it seems likely that the Examiner will likely issue another Office Action with an improved Section 101 rejection. In both of these decisions, while the Section 101 and Section 103 rejections were reversed, a Section 112 Written Description rejection was sustained. Thus, the applicant may choose to file amendments with the RCE, after which the Examiner may get a second opportunity to reject the claims as abstract using the proper analysis of Alice/Mayo. And with one of the applications having the title “SYSTEM AND METHOD FOR DONATING TO CHARITABLE ORGANIZATIONS”, it seems like it could be an uphill battle for the applicant.

PTAB: It Is Not Obvious to Modify a Reference to Perform the Same Functionality

Ten years ago, the Supreme Court decided KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007). As an overseer of Examiners, the PTAB has played a pivotal role in developing the doctrine of obviousness since then. A recent case Ex parte Böger, Appeal No. 2017-001586 (PTAB August 29, 2017) highlights a common way and a less common way that obviousness rejections can be overturned. Both ways involve attacking the articulated reason for obviousness.

An obviousness rejection must include an articulated reason for why the claimed invention would have been obvious. KSR made clear that the reason cannot be conclusory and instead must be articulated with a rational underpinning.

Often times, a successful rebuttal is made by attacking the articulated reason as inadequate. The savvy patent practitioner knows established ways to pick apart an Examiner’s rejection. The MPEP and case law includes these “rebuttal arguments.” See MPEP 2143 and 2145. The decision Boger illustrates two of these rebuttals.

In Boger, the Examiner found that the primary reference does not disclose “heating the complete or entire material of the core layer in a region of the beading fold”. The Examiner asserted that a secondary reference makes up for this by disclosing a complete core-melting technique. The Examiner reasoned that it would have been obvious to modify the heating boundary layers of the primary reference with the heating of the entire thermoplastic core of the secondary reference to “minimize spring-back of the laminate from the tool.” Except that it would not have been, according to the Board.

The Board had two reasons for why this rationale was bad. For one, the Board explained that the primary reference repeatedly states that an inner core should remain unsoftened. So applying the secondary reference’s core-melting technique to the primary reference “would destroy” the primary reference’ objective, “thereby changing its principle of operation.” Here the Board is using the classic one-two punch rebuttal argument from MPEP 2143.01(V) and (VI). These gems make clear that a proposed modification cannot render the prior art unsatisfactory for its intended purposes and cannot change the principle of operation of a reference, respectively. Standard argumentation so far.

The second reason related to the pre-existing functionality of the reference. The articulated reason for modifying, as presented by the Examiner (“to minimize spring-back of the laminate from the tool”), was already achieved by the primary reference, according to the Board. So one having skill in the art would not have sought to modify something so that the something could perform the same functionality.

Thus, if a reference is already performing a function, a proper obviousness reason cannot include modifying the reference to perform that same function. In light of KSR, that point makes common sense.

The PTAB Shows It Is Possible to Get “Good” Bioinformatics Claims Patent-Eligible

The bioinformatics market continues to show signs of impressive market growth. But patent eligibility laws in the US have not helped the cause of such a promising industry. But a recent PTAB decision, Ex parte Donnett, Appeal No. 2017-003694 (PTAB September 29, 2017), reversing the examiner’s abstract idea rejection may indicate a turning of the tide.

Before delving into the case, the subject matter eligibility issues associated with bioinformatics is not that it isn’t possible to get allowed claims. It is. The problem lies in getting good allowed claims. As a software invention, the novel feature (and often incredibly groundbreaking technological improvements) typically takes place before performing a medical procedure. For example, pioneering heart modeling software that is able to simulate where is a personalized optimal ablation target is inventive for the software piece–not for performing an ablation procedure based on the software.

Since Alice and Mayo, however, the USPTO has pushed for these “post-invention” medical procedures especially for inventions having clinical application because these medical procedure steps tie in the real world. This is despite real-world limitations not being required for other technologies. See McRO and Enfish. And in a recent CLE hosted by Fenwick & West, former SPE of art unit 1631 Marjorie Moran continued to talk about the need to tie in real-world steps in these claims.

The only problem is that reciting these additional steps creates a divided infringement nightmare for patentees, especially for bioinformatics inventions that have clinical applications. Since a doctor would be performing the medical procedure and since presumably another party could perform the software piece that precedes the medical procedure, patentees would have to pursue a difficult infringement argument. Plus, even proving infringement, Section 287 deprives a patentee the ability to collect damages against a doctor or healthcare entity.

So it appears that, while Europe, China and other countries have made strides in clarifying a reasonable patent-eligibility framework, the US has taken steps backward in the aftermath of Alice v. CLS Bank and Mayo. Bioinformatics technology are at the cross-roads of two Supreme Court decisions unfavorable to patent-eligibility: one from the software side and one from the life sciences side. And because of the relatively few patent applications for bioinformatics inventions, there is a dearth of guidance from Federal Circuit decisions directly on point. This is why the following PTAB decision ex parte Donnett is so interesting.

The claim at issue in ex parte Donnette is directed to predicting seizures. Claim 1 recites an apparatus configured to predict an upcoming neurologically abnormal state by comparing the indication of the set of correlations obtained during a sampling time period to each of Normal and Non-Normal templates.

In its analysis, the Board first found that the Examiner’s step 1 analysis was erroneous. Just because the claim recites correlations, this does not mean that the Examiner had sufficiently shown that the claim is directed to an abstract idea ‘of itself’. The Board instead quoted the appellant’s argument that the claims are directed to seizure prediction, with an innovation in digital EEG signal processing. The Board quoted the appellant’s argument that “the innovation reflects both an improvement in the functioning of the signal processor and an improvement in another technology, seizure prediction.”

At the conclusion of its decision, the Board seemed a bit non-committal. That is, the Board did not expressly conclude that the claimed invention was not directed to an abstract idea because of the technological improvements articulated by the appellant. It merely quoted the appellant’s arguments. Instead, the Board concluded that the Examiner did not sufficiently show that the conclusory statement met the minimum threshold for establishing that the claims are directed to an abstract idea. Even with such non-commitment, it is a big win for the appellant. These claims do not appear to suffer from the divided infringement issues noted above and will likely receive a Notice of Allowance shortly.

Is this the first of a tide of bioinformatics claims that are both good and patent-eligible? Perhaps. But too early to tell.