The State of Appealing Abstract Idea Rejections of Business Method Applications post-Alice

As seen from Anticipat’s daily recap emails, last month the PTAB reversed a slew of abstract idea rejections. As already discussed in our blog post, several of these reversals related to business method applications. Using Anticipat’s Research database to look even beyond last month, we see interesting results relating to trends of business method appeals outcomes.

The term “business method” has been broadly defined as “a method of operating any aspect of an economic enterprise”. Tech center 3600 includes broad categories of business methods. For example, three sets of art unit groups are listed below.

Here is a visual representation of the reversals over the course of almost the past two years. These are appeals that make it all the way to a final decision on tech center 3600 (Data from Anticipat Research.)

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The first interesting point is that last month’s 10 abstract idea reversals at first blush seems high. Only two other months in the last couple years have had higher numbers of reversals for business method rejections. From such numbers, one might think that the PTAB might be engaging in business method friendly behavior. But looking at the denominator of how many total abstract idea decisions of business method applications, a different picture is painted. It took 125 decisions to get these 10 reversals, a reversal rate of 8%. This is hardly business method friendly.

The second interesting point is that the number of appeals of abstract idea rejections for business methods is going up even as appeal production is going down. As pointed out by Ryan Alley, the PTAB’s opinion output for ex parte appeals is down from 2017. More concretely, in March of 2017, the PTAB decided a total of about 1650 decisions. In contrast, in March of 2018, the PTAB decided a total of about 930 decisions. Even with monthly variability of output (December 2017 and January 2018 had much lower output), it is telling that with such a dramatic drop for the same month, the number of abstract idea rejections decided increased substantially from 43 to 125. This goes to show that the trend is to appeal business method abstract idea rejections. This is especially apparent when looking at the total number of abstract idea decisions for business methods in months of 2016.

The reversal rate for these business method applications seems to be stabilizing at a low rate, as shown in the following graph. (Data from Anticipat Research.)

reversalratesabstract

For the past year, these abstract idea rejections for business method applications have been consistently reversed at about 10%. This is a very low reversal rate compared with all grounds of rejection. But as applicants choose to appeal rejections of their business method applications, even if the reversal rate stays low, it still means that a large number of such rejections will get reversed. That is, a 10% reversal rate of 120 applications still yields 12 reversals even if it took a lot of applications to get there.

In conclusion, Examiners will likely continue to reject business method applications as patent-ineligible abstract ideas and as applicants opt to pursue an appeal, the Board seems to be overturning the Examiner relatively infrequently. This may change, as case law continues to develop and as a new director of the USPTO Andrei Iancu has promised a new path which could include better application of Section 101. Use Anticipat Research to analyze trends of business methods or of other technology centers. Sign up for a free trial here.

 

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.

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. ​

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