By Michael Borella --
As the fallout from the Supreme Court's Alice Corp. v. CLS Bank Int'l case makes its way through the federal courts and the U.S. Patent and Trademark Office (USPTO), applicants and patentees continue to struggle with the implications of the decision. Alice provided a two-part test for patent-eligibility under 35 U.S.C. § 101, requiring that one first determine whether the claim at issue is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to something more than the judicial exclusion. Notably, generic computer implementation of an otherwise abstract process does not qualify as "something more."
Notoriously unclear and difficult to apply in practice, when employed by courts, the Alice test has resulted in the vast majority of claims under review being found patent-ineligible under § 101. Similar statistics are the case for the Patent Trial and Appeal Board (PTAB), the body that handles appeals within the USPTO. As a result, any court or PTAB decision finding that claims meet the requirements of Alice are useful clues for applicants and patentees. For instance, drawing analogies between one's claims that those that a judicial body has found patent-eligible can be persuasive to patent examiners in the USPTO, as well as to other judicial bodies.
Recently, the PTAB twice reversed examiners' rejections of claims under § 101. While both opinions were short, and thus do not provide extensive reasoning, they do offer examples of the type of claim language and subject matter that can be viewed favorably by the PTAB. Notably, in both cases, the PTAB found that the claims were not abstract.
In Ex Parte Cyriac J. Wegman III, 2015 WL 5578687 (P.T.A.B. Sep. 18, 2015), U.S. Patent Application No. 12/765,954 had been rejected by the examiner on the grounds of patent-ineligibility, lack of novelty, and obviousness. A representative claim recites:
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.
The examiner viewed the claim as being directed to the abstract idea of "providing an empirical model in which a hypothetical model is created and coefficients are calculated for the model." The applicant argued that the claim was more specific than the examiner's characterization, in that it "requires the description of a portion of a defined space using multiple correlated dimensions: the described portion of the space is then altered in terms of the dimensionality of the description of the space." The applicant further stated that "nothing in these steps may be considered necessary, routine, or conventional."
Applying the first part of the Alice test, the PTAB found that "claim 1 requires performing an analysis of objects, either actual or virtual, and calculating coefficients for the model based upon that analysis," and that "these steps are sufficiently concrete as to set them outside the broad definition of abstract idea as set forth in Alice." Consequently, the PTAB reversed the examiner's § 101 rejection.
In Ex Parte Bruce Gordon Fuller, Brian Alexander Wall, Kevin George Gordon, Mark David Hobbs, and Mohamed Salehmohamed, 2015 WL 3467122 (P.T.A.B. May 28, 2015), U.S. Patent Application No. 11/864,531 had been rejected by the examiner on the grounds of patent-ineligibility and obviousness. A representative claim recites:
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.
In rebutting the § 101 rejection, the applicant argued that "claim 1 recites physical elements that 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 that "these elements provide sufficient structure to prevent the method steps from being interpreted as too abstract."
Using terse reasoning, the PTAB stated that the applicant's arguments were persuasive and that the examiner did not rebut these arguments in the examiner's answer to the applicant's appeal brief. Thus, the PTAB reversed the examiner in this case as well.
Despite these two applications involving different subject matter, a commonality can be found between their respective claims. Particularly, both claim sets involve or incorporate a physical-world aspect. For instance, Application No. 12/765,954 recites "calculating coefficients for the hypothetical model according to an analysis of real and/or or virtual objects." Likewise, Application No. 11/864,531 requires displaying a graph, receiving user input related to a time period of interest on the graph, and then "displaying the event on the display nearby the portion of the graph if the event occurred during the time period of interest."
While the blessing of the PTAB is in no way a guarantee that a reviewing court will come to the same conclusion, these cases provide applicants with indications of what types of claims and arguments are likely to result in the Alice test being satisfied. Unfortunately for the applicants here, the examiners' rejections of both applications were ultimately upheld on other grounds.