PTAB Issues Questionable 101 Decision

Ex parte Nathan Victor Bak, Elizabeth Baruka Silberg, Yelena Bayeva, Sukadev Bhattiprolu, And Alexis Hope Bruemmer

By Joseph Herndon --

The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office has likely seen an increase in the number of appealed rejections under 35 U.S.C. § 101 due to the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014).  A review of a recent decision shows some inconsistencies in the application of the framework set forth in Alice.

On October 19, 2015, the PTAB issued a Decision on Appeal for U.S. Application No. 12/822,772 (Appeal 2013-009289) in Ex parte Nathan Victor Bak, Elizabeth Baruka Silberg, Yelena Bayeva, Sukadev Bhattiprolu, and Alexis Hope Bruemmer.  The Appeal Brief identified the Real Party in Interest as International Business Machines Corporation, the assignee of the patent application.

The invention described in the patent application "relates to the automated scheduling of meetings on calendars and the organization of such calendars of invitees based upon the importance of a set of predetermined attributes of such meetings."  Independent claim 1 is reproduced below.

1.    In a network of computer controlled user interactive display stations, a method for the scheduling of meetings on the calendars of invitee users comprising:
    prompting an inviter, at a sending display station, to enter into an invitation a predetermined set of general attributes for the scheduled meeting;
    enabling each invitee to predetermine a set of invitee-specific attributes applicable to each invitation; and
    enabling each invitee to prioritize each predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee's calendar.

The Examiner rejected claim 1 (and claims 2-8 dependent upon claim 1) under 35 U.S.C. § 101 as being directed to non-statutory subject matter.  Additionally, the Examiner rejected all pending claims 1-20 under 35 U.S.C. § 103(a).

With respect to the § 101 rejection, the Examiner stated that "none of the recited steps in claim 1 are explicitly or inherently performed using a particular machine; thus, no particular machine imposes a meaningful limit on the scope of the claims."  The Examiner also determined that in claim 1 "no subject matter transforms into a different state or thing."  The Examiner determined that Appellants' method of scheduling meetings on calendars of invitee users is an abstract idea that is not eligible for patenting.

After the mailing of the Examiner's Answer, the Supreme Court issued its decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014), and thus, the Board applied the framework set forth in Alice for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.

Step 1: Are the claims at issue directed to a patent-ineligible concept?

For the analysis of Step 1, the Board simply paraphrased claim 1, and then stated "[w]e determine that, when read as a whole, independent claim 1 constitutes a patent-ineligible abstract idea -- i.e., the claim is directed to the abstract idea of scheduling a meeting."

Such analysis is troubling since there is no reasoning given for why this concept of "scheduling a meeting" is an abstract idea.  Presumably, following such absence of reasoning, any idea whatsoever can be considered to fall within the "abstract idea" prong of patent-ineligible concepts, and it is only whether the claim is found to satisfy step 2 that section 101 will be satisfied.  The Board must give some rationally based reasoning for why this claim's features for scheduling a meeting are directed to an abstract idea, or why even the act of scheduling a meeting itself is directed to an abstract idea.  Not much is required, but some reasoning is needed to hold the Board accountable.

For example, even if the claims can be considered to be directed to an abstract idea as asserted by Board, the Board has not shown that the claims would preempt all applications of the alleged abstract idea, and failed to provide any reasoning to show that the specific combination of features recited by the claims will "disproportionately [tie] up the use of the underlying idea," thereby pre-empting all applications of the abstract idea, which the Supreme Court stated is the "concern that undergirds our § 101 jurisprudence" (Alice Corporation Pty. Ltd. v. CLS Bank Int'l, slip op. at 13).  In particular, the Board did not identify a single previously known application that would be preempted by the presently claimed combination of features.  Rather, the Board offered mere conclusory statements without identifying any particular facts in the record of this application that support the stated conclusion.

Step 2: Is there something else in the claim which ensures that the claim is directed to "significantly more" than a patent-ineligible concept?

The analysis of Step 2 should have been more cursory than the analysis of Step 1, since here, the recitation of a network of computer controlled user interactive display stations and a sending display station in claim 1 amounts to nothing more than generic components insufficient to transform the claim into a patent-eligible application.

However, the Board provided further reasoning here and stated that "[t]aking the elements of claim 1 separately, for example, the function performed by the computer display at the claimed step of the process is purely conventional."  This reasoning, of course, contradicts the requirements of considering the claim as a whole, and so, such reasoning is further flawed.

Perhaps equally troubling is that of the pending claims 1-20, only claims 1-8 stand rejected under 35 U.S.C. § 101.  However, assuming the § 101 analysis by the Board is correct (despite flawed or non-existent reasoning), then the other two independent claims 9 and 13 must fall as well with claim 1.  Independent claims 9 and 13 are reproduced below.

9.    A computer controlled system, for the scheduling of meetings on the calendars of invitee users in a network of computer controlled user interactive display stations, comprising:
    a processor; and
    a computer memory holding computer program instructions which when executed by the processor perform the method comprising:
    prompting an inviter, at a sending display station, to enter into an invitation an predetermined general set of attributes for the scheduled meeting;
    enabling each invitee to predetermine a set of invitee-specific attributes applicable to each invitation; and
    enabling each invitee to prioritize each predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee's calendar.

13.    A computer usable storage medium having stored thereon a non-transitory computer readable program for the scheduling of meetings on the calendars of invitee users in a network of computer controlled user interactive display stations, wherein the computer readable program when executed on a computer causes the computer to:
    prompt an inviter, at a sending display station, to enter into an invitation a predetermined set of general attributes for the scheduled meeting;
    enable each invitee to predetermine a set of invitee-specific attributes applicable to each invitation; and
    enable each invitee to prioritize each inviter-predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee's calendar.

Independent claim 9 recites a traditional "computer" claim with functions that mirror the functions of the method claim 1, and independent claim 13 recites a traditional computer-readable medium (CRM) claim with functions that also mirror claim 1.  Alice was clear that a statutory category of a claim does not impact the analysis of patent-eligibility of the claim.  Thus, it would appear that all claims should be rejected under section 101.

Since the rejection of claims 1-8 under 35 U.S.C. § 101 was affirmed, the Board designated the rejection as a new ground of rejection, to the extent the rationale differed from that set forth by the Examiner, and Section 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review."  Thus, the Applicant has two months from the date of the decision to (1) Reopen prosecution and submit an appropriate response, or (2) Request rehearing.

As a note, with respect to the § 103 rejections, the Board reversed the Examiner's rejections since the cited art failed to describe all features of the independent claims.

As a take-away from this Decision, with the increase of § 101 rejections being levied upon Applicants by Examiners and the Board at the USPTO, Applicants must be diligent in forcing strict application of the framework set forth by Alice to avoid rejections unsupported by rationale reasoning.  Otherwise, literally any claim can be called into question as directed to some kind of "abstract idea".

Comments

[Skeptical]

While Mr. Cole may not have foreseen this type of case, his (admittedly reasonable desired) view of the Supreme Court cases that have unleashed an UNLIMITED "Gist/Abstract" sword remind me of four words that I replied to Mr. Cole with:

I told you so.

There is but one path (through Congress) that can truthfully remedy what the Supreme Court have written into patent law: a resetting of 101 coupled with a removal (based on the fact that patent appeals are NOT a matter of original jurisdiction for the Supreme Court) FROM the Court of patent appeals, along with a resetting of the now brow-beaten CAFC.

THAT is the only way to make sure that the patent law is not merely a wax nose remolded into a desired shape, but still to be mashed by a Court that does not respect the separation of powers.

[Paul Cole]

@ Skeptical

A Saturday panel session at the AIPLA Annual meeting in Washington was directed towards legislative reform. Whether there would be political support for such reform is inappropriate for me as an alien (US Department of Homeland Security: "any person not a citizen or national of the United States") to speculate.

However, in my view it would be equally helpful for AIPLA in collaboration perhaps with the ABA to set up a panel to provide an authoritative report on what the various decisions under s.101 really mean. In my view the Supreme Court opinions are narrower than supposed, they have been unjustifiably extended by the Federal Circuit and the USPTO, and it would be helpful for authoritative bodies to publish considered opinions as to the correctness or otherwise of that position. Such a report if published in a legal journal would carry greater weight than individual opinions.

In the present case there is a real problem tackled within a computer network. Not abstract in my submission.

[A Rational Person]

As bad as Ex Parte Bak is, I think Ex Parte Base, also decided this month, is even worse:

http://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2013009505-10-13-2015-1

The PTAB, based on zero evidence and zero facts, made the factual determinination that with respect to the steps of claim 11, provided below: "These are mental process steps which 'can
be performed in the human mind, or by a human using a pen and paper.'"

11. A method for video coding using symbols, the
method performed by execution of a computer program stored on a non-transitory computer readable medium and comprising
the steps of:

providing a prediction error matrix;

converting the prediction error matrix by coefficient sampling into a series of symbols; and performing context-adaptive arithmetic encoding of the symbols,

wherein the encoding includes for a symbol being
encoded, selecting from different predetermined distributions of symbol frequencies a particular predetermined distribution of symbol frequencies based on the symbol encoded immediately beforehand, the predetermined distribution of symbol frequencies indicating the likelihood of different types of symbols occurring immediately following the type of the symbol encoded immediately beforehand based on known
statistical interdependencies between different types of symbols occurring in succession;
wherein a number of symbols read out for coefficient sampling is encoded and transmitted.

Based on the PTAB's absurd and factually unsupported factual determination, the PTAB made a de novo rejection of the claims under 35 USC 101 because the PTAB asserted the claimed "recite a patent-ineligible abstract idea".

[An Examiner]

There's nothing questionable about the decision. The claim is abstract whargarrbl. Not to mention the entire thing can be infringed by a human conversation when you give "at a sending station" its BRI where "at" indicates geographical proximity. Joe asks Bob for invitation details while they both stand at the computer. The last two steps are infringed by the human brain itself, as it enables someone to determine.

The only thing questionable is why PTAB didn't assert the last two steps of claim 1 invoke 112 sixth paragraph. There is no such act as "enabling". It's a blanket, catch-all, generic, and useless term that has no bounds on what actual acts must be performed to constitute infringement. It is identical to claiming "doing unspecified acts that allow [each invitee to predetermine a set of invitee-specific attributes applicable to each invitation]".

The PTO has covered how to identify made-up-named structure and assert it invokes 112 sixth, now they need to get training out on how to identify made-up-named "acts" for these useless result-based claims.

[A Rational Person]

@Examiner

The PTAB based its decision on the stated reason that claim 1 "is directed to the abstract idea of scheduling a meeting".

Why is "scheduling a meeting" an abstract idea?

The article did not say the claim was patentable. The article was rightly pointing out that there is a problem with the reason provided by the PTAB for rejecting the claim under 35 USC 101.

The PTAB was free to reject the claim under 35 USC 112, as you suggest, but the PTAB chose not to do so and instead rely on the factually unsupported ground that the claim was "directed to an abstract idea."

[Curious George]

Hey Rational, regarding ex parte Base: I don't go near this kind of subject matter in my practice, but I wonder, if there was a time limitation thrown into the claim, could that get around the "a human could do it with pencil and paper" argument? A modern computer could do what is claimed in under a second, a human would take a wee bit longer. Or would PTAB just ignore that particular limitation?

[A Rational Person]

Curious George,

Before even addressing the issue of whether the PTAB make the a determination of whether a human could perform the claim with mental steps or with a pencil and paper, there are at least two other problems with the PTAB decision that make the PTAB's decision in Ex Parte Base "arbitrary and capricious" by any reasonable standard:

1. The PTAB made an factual determination concerning the claims, i.e., that they could be done by a human with pencil and paper or mentally with no evidence to support this finding.

2. Not only did the PTAB provide no evidence supporting their decision, they did not even bother to provide an explanation as to how a human could perform these steps mentally or with a pencil and paper.

I can't comment on whether the PTAB would ignore the particular limitation you propose.

However, the PTAB ignored a lot of other things in creating their de novo 35 USC 101 rejection, including some of the basic requirements of procedural and substantive due process, in making their decision; how can there be due process where the PTAB, or any other administrative judge or board of administrative judges, does not provide any evidence or explanation supporting a de novo factual determination they have made?

[Luke]

If you ever want to look at a case where the PTAB has merely paraphrased the Examiner's rejections, look at the file 12/298,148 in USPTO public Pair. Unfortunately, the client decided to abandon the case due to cost issues. It's not in the software field, but it's nevertheless indicative of the current PTAB way of (un)doing things.