Published 18/11/2015 by Marin
by Marin Cionca and Iris Kim
The Supreme Court’s decision in Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. 2347, 2014 (Alice) resulted in much confusion about whether software-related and computer-implemented inventions are patent eligible under 35 U.S.C. 101. Following this, in December of 2014, the U.S. Patent and Trademark Office (USPTO) issued interim guidelines on patent subject matter eligibility. “Interim” may indicate that further guidelines are forthcoming. Until then, decisions by the Patent Trial and Appeal Board (PTAB or Board) are a useful source of guidance for what constitutes patent eligible subject matter.
Drawing similarities between cases and the hypothetical examples provided by the USPTO can be helpful for patent prosecutors and examiners.
The two-part test provided by the USPTO is a basic analysis tool, set forth in MPEP 2106. Step 1 is to determine whether the claimed invention belongs to one of the four statutory categories of invention: a process, machine, article of manufacture, or composition of matter. If yes, Step 2 is to determine whether the claim is directed to a judicial exception, such as a law of nature, natural phenomenon, or abstract idea.
Alice also provided broad examples of what may constitute an abstract idea: (1) fundamental economic practices, (2) certain methods of organizing human activities, (3) “an idea of itself,” and (4) mathematical relationships or formulae (Alice, 134 S.Ct. at 2350; 2356; 2350; 2350).
Using these tests and guidelines, many claims were found by the Board and the Federal Circuit to be directed to patent ineligible matter under 35 U.S.C. 101. However, in two recent cases, the Board reversed the examiners’ decisions that the claims were directed to unpatentable abstract ideas, even though in the majority of appeals since Alice, the examiners’ rejections were affirmed.
In Ex Parte Cyriac J. Wegman III, 2015 WL 5578687 (Wegman, PTAB Sep. 18, 2015), regarding U.S. patent application number 12/765,954, the Board agreed with the Appellant that claim 1 is patentable subject matter. The Examiner had rejected the claims under 35 U.S.C. 101 for being directed to an abstract idea, and also under 35 U.S.C. 102 and 103 for lack of novelty and obviousness.
The representative claim, claim 1, is reproduced below:
1. A method for providing an empirical model of a defined space comprising steps of: a. defining the desired space; b. describing at least a portion of the defined space with multiple correlated dimensions; c. reducing the dimensionality of the described portion; d. combining the described portion with the remaining portion of the defined space; e. creating a hypothetical model of the defined space; and f. calculating coefficients for the hypothetical model according to an analysis of real and/or or virtual objects.
In their analysis of the patentability of claim 1, the Board employed the new interim guidelines issued by the USPTO following the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012) and Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. 2347 (2014).
The Appellant argued that claim 1 is directed to a method, and thus, satisfies step 1 of the two-step test, which the Board agreed with. The Board then also agreed with the Appellant that claim 1 is much more specific than a broad abstract idea, as argued by the Examiner. The Appellant argued that claim 1 requires “calculating coefficients for the hypothetical model according to an analysis of real and/or or virtual objects.” Therefore, the method claimed involves the performing of an analysis, and is not simply an abstract idea.
Next, in Ex Parte Bruce Gordon Fuller, Brian Alexander Wall, Kevin George Gordon, Mark David Hobbs, and Mohamed Salehmohamed, 2015 WL 3467122 (Fuller et al., PTAB May 28, 2015), regarding U.S. patent application number 12/765,954, the Board again agreed with the Appellant that the subject matter was patent eligible. The Examiner had rejected claims under 35 U.S.C. 101 for being an abstract idea, and also under 35 U.S.C. 102 and 103 for lack of novelty and obviousness.
An exemplary claim, claim 1, is reproduced below:
1. A method of associating a first variable and an event on a display, the method comprising: displaying the first variable relative to a time period on the display, resulting in a graph of the first variable; receiving first user input from a graphical indicator device, wherein the first user input comprises an instruction to position an indicator over a portion of a data curve of the graph corresponding to a time period of interest to the user; in a processor, determining if the event occurred during the time period of interest; and displaying the event on the display nearby the portion of the graph if the event occurred during the time period of interest.
Of note is that both of these sets of claims from Wegman and Fuller et al. involve a physical aspect. A calculation or analysis is performed in the first, and a graph display is required in the second. In Wegman, the Board stated that the method “requires performing an analysis of objects, either actual or virtual, and calculating coefficients for the model based upon that analysis. We find that these steps are sufficiently concrete as to set them outside the broad definition of abstract idea as set forth in Alice,” (Wegman, PTAB). In Fuller et al., the Appellants argued that the physical elements present “allow a user to view a graph and an event occurring during a time period of interest on the display if the processor determines that an event occurred,” and “these elements provide sufficient structure to prevent the method steps from being interpreted as too abstract,” (Fuller et al., PTAB). The Board agreed with the Appellants’ arguments, which provides a common thread between Wegman and Fuller et al., the physical components of each of the claims.
Later, these two examiners’ rejections were upheld on other grounds, but the opinions of the Board here still offer some insight into the type of claim language and subject matter that the Board finds patentable subject matter.
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