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.