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« Natera Responds to Sequenom's Petition for Rehearing En Banc | Main | Dynamic Drinkware, LLC v. National Graphics, Inc. (Fed. Cir. 2015) »

October 26, 2015


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.

@ 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.

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


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".

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.


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."

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?

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?

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.

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