Pro se appellant overturns Section 101 Abstract Idea rejection

Applicants typically rely on outside counsel who use their expertise to navigate the response strategy. And for good reason. These outside counsel have developed years of experience in advancing client goals while complying with the numerous patent laws and rules. Here, however, we write about an ex parte appeal where the Board agreed with a pro se applicant in overturning the Section 101 rejection.

The decision Ex parte Yemmela Appeal No. 2018-005814 (Oct. 25, 2019). The art unit, 2659, handles technology related to Linguistics, Speech Processing and Audio Compression.

Before getting to the substance of the rejections, the Board appears to show some level of sympathy with the appellant in a footnote: “We recognized that Appellant may be unfamiliar with patent prosecution procedure. While Appellant may prosecute the application (unless the application is assigned to a juristic entity; see 37 C.F.R. § 1.31), lack of skill in the field of patent prosecution usually acts as a liability in affording maximum protection for the invention disclosed. If Appellant chooses to request continued prosecution of the application, Appellant is advised to secure the services of a registered patent attorney or agent to prosecute the application, since the value of a patent is largely dependent upon skilled preparation and prosecution.”

It can be readily seen that the claim language is not smooth:

That being said, the Board (as it usually does) assessed each rejection independently. It laid out the framework for Section 101 judicial exceptions:

The U.S. Patent and Trademark Office (USPTO) recently published revised guidance on the application of the two-part analysis. USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (January 7, 2019) (“Recent Guidance”); see also USPTO, October 2019 Update: Subject Matter Eligibility, available at https://www.uspto.gov/sites/ default/files/documents/peg_oct_2019_update.pdf (Oct. 17, 2019).

Under that guidance, the Board rejected the Examiner’s assertion that the claims “recite” an abstract idea, under prong 1 of Step 2A. The Examiner had not provided sufficient determinations for this “sweeping” determination. Specifically, the Board agreed with the appellant that the claim recitations represent “a specific technique that computers can use to solve [the disclosed] problem in a way that is different from the way that [the] problem is solved by humans.” Without analysis of whether the specific claim recitations are part of the purported abstract idea or whether they represent additional recitations to be analyzed separately, the rejection fell.

The Board then proceeded to analyze the claims under prong 2 of Step 2A. The Board found that the Examiner made similarly deficient determinations as it relates to the claims “being directed to” an abstract idea. The Board found the Examiner broadly characterizes the recitations of the claim as representing “functions that would be performed by a skilled human in this field.” However, this characterization lacked “analysis regarding whether the specific claim recitations are part of the purported abstract idea or whether they represent additional recitations to be analyzed separately. ” The Section 101 rejection thus did not have legs at this point.

The Board proceeded to sustain others of the Examiner’s rejections (including Section 112 and 103 rejections).

A take home lesson from this decision is that a compelling argument under prong 1 is to argue that the claim addresses a problem that is solved by computers in a specific technique computers that humans cannot solve. A second lesson is that if an Examiner a broad characterization of what the asserted abstract idea is, it can be successfully pushed back. Especially if the analysis lacks specificity. The Examiner cannot have their cake and assert that the abstract idea is a broad concept, but ignore specific “additional” elements outside of that broad concept.

A final take home is that outside counsel can help deliver a winning strategy. The Section 112 rejection could have easily been cleaned up before appeal. But as is shown here, sometimes even pro se appellants can overturn even very tricky rejections.

AIPLA 2019 Annual Meeting

If you’re at the 2019 AIPLA Annual Meeting in DC, please stop by our booth. We would love to talk to you about your interests in patent data and how we might work together or help your needs. We’d also love to show you our new module “Office Action Answers”. @aipla #aiplaam2019 #annualmeeting

Ex parte Decisions have been Updated on Anticipat

We have been analyzing ex parte decisions at the PTAB for many years now. So for every day, we can see the decisions that have been imported from the USPTO. This came in handy a few months ago when USPTO personnel told us that they completed a migration of all ex parte PTAB decisions to a modernized webpage. While we were excited for this new functionality (including a RESTful API), we started noticing abnormalities in the data.

For example, July 2019 (the month when the transition to the new page took place) only had 150 decisions. That was a much lower number of appeal decisions than we were used to seeing. The next month, August, had even fewer with 109 such decisions. By contrast, June 2019 (the month before the transition took effect), had 732 ex parte decisions. This is in line with prior months, even though it is not uncommon for busy end-of-quarter months to exceed 1000 decisions.
But just to give you the fairest comparison, the prior year of the same month, July 2018, had 771 such decisions and June 2018 had 766 decisions. So to have only 150 decisions for July 2019 and even fewer decisions for August seemed strange to us. With such a dramatic decrease of the historical volume of these decisions, it seemed highly unlikely the cause would be from a sudden drop in output by the PTAB. 
We reached out to the USPTO personnel with our findings and they confirmed that there was a glitch that they would resolve. Several weeks later–in fact last Friday–the missing decisions for the last few months were replenished on the USPTO page. Our importer was hungrily back to action.
With so many decisions to process in one business day, our daily recap email came out for this Monday in an abnormal way. But by Tuesday, we were back to our normal daily email, showing that the USPTO published 66 decisions in one day.
Get this fresh recap of PTAB decisions delivered straight to your inbox by signing up for an Anticipat membership.

Now that we have an updated list of decisions for the past several months, we will continue posting trends and insights about appealed decisions. If you are interested in trying out the Anticipat Research database for yourself, sign up for a 14-day free trial here: https://anticipat.com/accounts/signup

Anticipat has fully transitioned to new data source for PTAB appeals data

Over the past few years, the USPTO has modernized its data offerings with new websites and APIs. Just recently, the USPTO confirmed completion of a new PTAB site with successfully migrated appeal decisions. Anticipat has now fully transitioned to using this new data source. 

Over the years, many practitioners have become familiar with the old ptab efoia webpage. Its 1990s-style interface and functionality made an indelible impression. In fact, we previously discussed seven key shortcomings of the PTO webpage. But now its life is all but gone.

Several weeks ago, we noticed that new decisions were no longer being published to the beleaguered webpage for appeal decisions (https://e-foia.uspto.gov/Foia/PTABReadingRoom.jsp). We also saw reference to a new page on the old webpage (circled in yellow below). 

In response to us reaching out to USPTO personnel, the Office of the General Counsel at the USPTO confirmed that they had completed the migration of this data to their new webpage (https://developer.uspto.gov/ptab-web/#/search/decisions).

We will continue to provide the same type of curated content for ex parte appeal decisions at the PTAB. Only now with a more modern and robust data source, the potential insights are even greater. Stay tuned for developments!

Get fresh ex parte PTAB decisions delivered to your inbox

For those who like to stay current on the latest appeals decided by the PTAB, we have good news. Anticipat Email Recap just rolled out a major new feature. Now, rather than waiting for a particular decision date to be populated, you can get all the organized and curated decisions from the previous day delivered right when you start off the day.

For some time, the USPTO published their appeals decisions in a somewhat reliable and timely manner. We could delivery recaps based on decision date, with some sort of a lag. But as the lag time grew larger and larger, much of the value of having these emails diminished. Now, you can see every decision that was published on efoia webpage–a less than 24 hour turnaround time.

For those interested in recap covering longer spans of time, we have built in that functionality preference.

You can also apply a filter for only decisions that meet a certain criteria, e.g., from a particular art unit, examiner, issue type, outcome. This can minimize emails that aren’t relevant to you or your practice.

As many are aware, our world has too much information. We’d like to help you get the most value out of PTAB appeal decisions. Give the new fresh recap a try here: https://anticipat.com/accounts/signup/research/

For Obviousness, Some Things Change but the Board Statistics Remain the Same

The Anticipat research database continues to comprehensively cover all legal grounds of rejection considered by the Patent Trial and Appeal Board (PTAB) for its ex parte appeals decision. This includes the more exotic like statutory subject matter Section 101 cases to the much more common issues like obviousness (Section 103).

Since July 25, 2016 to February 28, 2019, there have been around 24,448 obviousness decisions from the 29,102 total decisions meaning that nearly 84% of all appeals involve obviousness. Our observation is that obviousness is the most common ground of rejection to be decided at the Board. In this post, the data considered excludes decisions where the outcome involved a new ground of rejection based on obviousness as these typically only form a small fraction of the cases.

Of the 24,448 total decisions, 12,369 were affirmed, 8,386 were reversed, and 2354 were affirmed in part. Thus, the wholly reversed rate (for all claims in a case based on obviousness) was about 34%. The at least partially reversed rate (at least one claim in the case was found patentable) is about 44% (43.9%).

What is interesting to note is the breakdown by technology center in the USPTO. The technology centers contain the various art units to which patent cases are assigned based on how the claimed technology in each patent application is classified by the USPTO. Here is the summary of obviousness cases broken down by technology center based on cases decided between July 25, 2016 to February 28, 2019.

TC 1600 (biotech/pharma): Total decisions: 2333; 1907 total obviousness decisions. 1151 affirmed, 132 affirmed in part, 492 reversed. Wholly reversed rate is 25.8% and at least partially reversed rate is 32.7%.

1700 (chemical): Total decisions: 3950; 3633 total obviousness decisions. 2103 affirmed, 280 affirmed in part, 1041 reversed. Wholly reversed rate is 28.7% and at least partially reversed rate is 36%.

2100 (computer/electrical): Total decisions: 2976; 2575 total obviousness decisions. 1467 affirmed, 228 affirmed in part, and 739 reversed. Wholly reversed rate is 28.7% and at least partially reversed rate is 37.6%.

2400(computer/electrical): Total decisions: 3164; 2791 total obviousness decisions. 1531 affirmed, 276 affirmed in part, and 852 reversed. Wholly reversed rate is 30.5% and at least partially reversed rate is 40.4%.

2600(computer/electrical): Total decisions: 2760; 2458 total obviousness decisions. 1420 affirmed, 241 affirmed in part, and 677 reversed. Wholly reversed 27.5% and at least partially reversed rate is 37.3%.

2800(computer/electrical): Total appealed decisions: 1979; 1648 total obviousness decisions. 813 affirmed, 128 affirmed in part, 583 reversed. Wholly reversed 35.4% and at least partially reversed rate is 43%.

3600 (business methods/software): Total appealed decisions: 5941; 4212 total obviousness decisions. 1842 affirmed, 418 affirmed-in-part, 1755 reversed. Wholly reversed rate is 41.7% and at least partially reversed rate is 51.6%.

3700 (medical device/mechanical): Total decisions: 5734. 5022 total obviousness decisions. 1929 affirmed, 625 affirmed-in-part, 2195 reversed. Wholly reversed rate is 43.7%. At least partial reversal rate is 56.1%.

We note that the data has not shifted more than a couple of percentage points from our review of the data as reported in the past despite the increase in number of decisions. This indicates that, with respect to obviousness, by and large the Examiners (and the two supervisory Examiners involved in the Appeal Conferences) are very consistent in 1) picking the same kinds of bad decisions to take on appeal and the Board is 2) agreeing with applicants that this is the case at the same consistent rate. While some things like the particular cases being taken on appeal today have changed, the behavior by the USPTO has stayed markedly the same.

As a general observation, in the private sector a process producing 34% outright defective parts and 44% partially defective parts as determined by its own internal quality control process (the Board) would likely immediately regarded as being a low quality, unpredictable process (and would probably put a company out of business). At Anticipat, we believe that the ex parte appeals statistics are the closest and best end of line quality control indicator of the quality of the USPTO’s patent examination process. However, since these statistics are just an end of line quality control indicator, trying to change Examiner behavior solely using the ex parte appeals statistics will not solve the quality problem—reducing examiner variability will require the USPTO identifying meaningful inline statistical data monitors (pre-appeal) that could be used to reduce the variability in the examination process. The inline data monitors are what the USPTO could use to reduce the current levels of examination variability–and the end of line data (the ex parte appeals statistics) will show the effect too.

Could such a statistics-based process be implemented at the USPTO? Certainly–but it can only begin when the agency acknowledges that statistics like these reflect unmistakably on the quality and predictability of the patents currently granted. Tightening the USPTO’s distribution to result in lower ex parte appeals reversals will inevitably (through the operation of statistics itself) result in more predictable and better quality issued patents.  Until then, the only predictable thing is that USPTO Examiners will continue to be reversed by the PTAB at these double digit rates for obviousness.

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.