How to overcome an abstract idea rejection? Emphasize narrowing claim amendments and lack of prior art rejections

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.

image

 

Business methods patent-eligible? PTAB: Yes

Business method art units have been a scary place for patent applications. In Alice v. CLS Bank, a vocal minority of the Supreme Court would have categorically excluded business method patents from eligibility. So it comes as no surprise that many Examiners have raised the bar of patent-eligibility of business method inventions to unprecedented levels. So much so that applicants now try and avoid any claim language that hints at business methods. But business method patents are not per se doomed, as shown in the recently decided Ex parte Breiter, dated September 29, 2017.

In Ex parte Breiter, there was no hiding the fact that the claims recited a business method because it was integral to the invention. The claim recites “a processor configured to initiate executable operations of a business process using a standard business process engine.” Indeed, that was the technological problem that the applicant sought to overcome, improving business process modelling (BPM) from a software engineering perspective.
In its decision, the Board acknowledged that the claims were directed to an abstract idea under step 1 of the Alice/Mayo framework. But in its analysis of step 2, the Board found Enfish analogous in holding that the claims are directed to an improvement of computer functionality. Citing Enfish, the Board found that in the claim, the computer implemented method is focused on “the specific asserted improvement in computer capabilities” and not “merely used as a tool.” Specifically, the claims at issue recited injecting operations that advantageously allow interchanging data with a predefined data structure instance without having the specified corresponding tasks in the business process definition in advance.

Subject matter eligibility of business method inventions is difficult, but not impossible–especially when the claims recite specific technological improvements in computer capabilities. ​

Stay updated on all decisions at the PTAB by signing up for our recap email service. You can even filter the alerts to update you only on the issues or outcomes that are important to you. Right now, you can even give it a try for free for 14 days.

Board Reverses Abstract Idea Rejection for Improper Oversimplification; Board Should Evaluate Examiner Rejections, Not Conduct Own Examination

In continuing to monitor high interest areas at the PTAB, today’s Anticipat Recap email included a recently issued decision that reversed the Examiner’s abstract idea rejection. We go over why the Board reversed and discuss an interesting point raised related to the scope of Board activism. 

In Ex Parte Grokop et al., Appeal No. 2016-003047, the Board disagreed with the Examiner’s conclusion of step 1 that the claims were directed to an abstract idea. The Board cited Enfish and McRO to establish two important points that touch on judicial exception rejections: the claims cannot be oversimplified and specific requirements of the claims must be considered.

According to the Board, the Examiner’s characterization of the claim as directed to “generic audio analysis” oversimplified the claims and failed to account for the specific requirements of the claim. This included claim features of capturing only a single frame from each block, analyzing the collection of captured frames, and determining a characteristic of an ambient environment based on that analysis.

Interestingly, at the end of this analysis, the Board made a point to establish that the Board need not examine the claims. Instead, the Board’s job is to evaluate whether the Examiner’s rejection was proper. To support this, the Board cited to the MPEP (“The Board’s primary role is to review the adverse decision as presented by the Examiner, and not to conduct its own separate examination of the claims.” MPEP § 1213.02). It also cited to the statutory code (“An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board.” 35 U.S.C. § 134(a); and “The Patent Trial and Appeal Board shall. . . review adverse decisions of examiners upon applications for patents pursuant to section 134(a).” 35 U.S.C. § 6(b)).

This last point is important because often times rejections (including abstract idea rejections) get affirmed under a new theory or analysis, requiring that the rejection be designated as new. Or claims that were previously unrejected under Section 101 are found to be patent-ineligible by the Board as an entirely new ground of rejection. It seems like this panel would focus entirely on whether the Examiner’s pending rejections are proper and not examine the claims by itself. 

There may be advantages and disadvantages to Appellants under this approach. Advantageously, the appellant need not fear an unfriendly Board panel that seemingly arbitrarily introduces a new 101 rejection. Additionally, the appellant need not fear a bad Examiner rejection getting strengthened by the Board as an affirmed as new outcome. But the downside is that if the Board purely evaluates the Examiner rejections, the Examiner could simply turn around a more well-articulated rejection once the application makes it back. So on the flip side, under the approach where the Board more actively evaluates the claims, if the appellant survives such an approach without a new rejection, the Examiner may be less likely to simply flip around a more well-articulated rejection.

PTAB Mocks Alice Supreme Court in Reversing 101 Rejection — Claims Include “Talismanic” Inventive Concept when the conventional computer components are arranged to provide specific advantages to the users

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. 

“Particular Machine” Relied on in Overturning an Abstract Idea Rejection for NLP invention directed to Abstract Idea

In its heyday, the machine-or-transformation required that all process claims be implemented by a particular machine in a non-conventional and non-trivial manner or transforms an article from one state to another. While the Supreme Court in Bilski v. Kappos overruled the Federal Circuit’s reliance on the test as the exclusive test for patent-eligibility, it left open the test as being an important clue. In a recent decision, the PTAB shows that analysis of this test can be helpful in overturning an abstract idea rejection under step two of the Alice/Mayo framework.

In Ex Parte Milman, August 22, 2017, the PTAB overturned a 101 – non statutory rejection in an application. The claimed invention generated free text descriptions using natural language processing to generate an anatomical path for display on a graphical user interface. This was found to be directed to an abstract idea.

However, in step two of the analysis, the Board disagreed with the Examiner’s finding that the claims did not recite significantly more than the asserted abstract idea. The Examiner had found that the method is deployed on generic hardware and “the computer appears to perform only generic functionality that is well known in the art, e.g. processing data.” The Board found that the Examiner did not adequately show that the reliance on natural language processing capability involves a general purpose computer performing well-known generic functionality, rather than being a “particular machine” that is the result of implementing specific, non-generic computer functions. See Bilski v. Kappos, 561 U.S. 593, 601 (2010).

Ever since Bilski, the machine-or-transformation test has taken a backseat. This is even when the Supreme Court emphasized that the machine-or-transformation test could serve as an important clue for patent-eligibility. In the meantime, the Supreme Court in Mayo and Alice cemented a two-step test for patent-eligibility that used a different analysis than the machine-or-transformation. But Ex Parte Milman makes clear that the analysis of the machine-or-transformation test is still applicable. At least as it relates to claims that recite natural language processing, an Examiner must show that the claim are not more than a particular machine that is the result of implementing specific, non-generic computer functions.