Recently decided ex parte Blaho, Appeal No. 2016-007954, (PTAB September 28, 2017) reversed an Examiner’s abstract idea rejection. In doing so, the Board first dismissed the Examiner’s characterization of the claims. Then, the Board found that the long prosecution history with significant amendments to overcome prior art rejections was evidence that the claim elements were not routine or conventional. It is a case worth studying for practice tips.
In ex parte Blaho, the panel found that the claimed invention was more than the asserted abstract idea. Whereas Planet Bingo merely retrieved numbers and then merely performed processing of the retrieved numbers, the Board found that the claims at issue recited specific interaction among multiple devices. Thus, the claims are not merely management of human activity.
Then more interestingly, the panel rejected the Examiner’s assertion that the claim elements are routine or conventional, pointing to the long prosecution of this case (going back all the way to an abandoned parent application). Here, the Board found that the Examiner not providing a good prior art rejection was evidence that the elements are not routine or conventional. The Board lifted this argument straight from the Reply Brief, as shown below.
Your correspondent had never seen this exact argument successfully used to overcome abstract ideas. But it is a variation of a similar classic argument against abstract ideas: that the Examiner cannot reject the claims under prior art grounds is evidence that the claims are not abstract.
This prior art/preemption argument will not always win the day because of the Ariosa v. Sequenom Federal Circuit line of reasoning: “the absence of complete preemption does not demonstrate patent eligibility.” Slip op. at 14. But this prior art/preemption argument is still in line with Supreme Court and Federal Circuit precedent. The Supreme Court in Alice stressed the balancing act that should exist in the patent-eligibility analysis of judicial exceptions. The Federal Circuit in McRO further articulated this by framing the discussion on preemption: a claim is directed to an abstract idea when it improperly preempts. A big part of preemption is the specific implementation recited in the claims or whether the claim invention recites mere conventional or generic routines.
Ex parte Blaho is an interesting way of articulating this argument as it relates to prior art rejections. It reframes the debate on preemption. That is, it is a way to push back against Examiner arguments asserting that the claims recite an abstract idea with only generic or routine claim elements. If it doesn’t just recite an abstract idea with generic or routine claim elements, no improper preemption.
This case highlights three important practice tips. First, where appropriate, it is important to push against the Examiner’s characterization of the claims in Step 1.
Second, if there is no prior art rejection, or if there are a large number of references cobbled together, this may be used to further bolster the case that the claims are not really directed to an abstract idea because the claims do not improperly preempt. If they did, a good prior art rejection would be found.
Third, use cogent and persuasive advocacy in your briefs. You may find the Board using your exact arguments in its decision.