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.