The PTAB Goes to Europe: Four Recent Section 101 Decisions Designated as Informative

By Michael Borella --

On July 1, the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) designated four of its recent 35 U.S.C. § 101 decisions as informative.  Each of these decisions came down after and applied the USPTO's 2019 Revised Patent Subject Matter Eligibility Guidance.  Two resulted in claims being found eligible, and two had the opposite outcome.  While not binding on other PTAB panels or examiners, these cases are helpful in understanding how the PTAB is applying the Guidance.  In particular, the PTAB appears to be utilizing the Guidance in a fashion that is similar to how the subject matter eligibility inquiry is employed in the European Patent Office and certain other jurisdictions -- as consideration of whether the claimed invention is a technical solution to a technical problem.

The background of these decisions -- not to mention the Guidance itself -- is 2014's Alice Corp. vs. CLS Bank Int'l Supreme Court holding.  Therein, the Court set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under § 101.  One must first decide whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea.  If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion.  But elements or combinations of elements that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle.  While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.

Notably, the Guidance breaks the first part of the Alice test into two sub-steps.  In the former, one determines whether the claim recites a judicial exception, such as an abstract idea.  In the latter, one determines further "whether the recited judicial exception is integrated into a practical application of that exception."  To focus the analysis, the Guidance indicates that all abstract ideas should fall into one of three categories:  mathematical concepts, certain methods of organizing human activity, and mental processes.  Think of these as the "Three M's" – math, money, and mental steps.

And now, on to the cases.

Ex Parte Fautz (U.S. Patent App. No. 14/326,661)

The claimed invention "generally relates to magnetic resonance (MR) tomography."  An MR device "use[s] reception coils to receive signals generated while scanning a subject," and the "invention optimizes the signal-to-noise ratio (SNR) from the reception coils."  The PTAB focused its review on representative claim 8:

The Examiner rejected the claim under § 101, finding it "similar to abstract ideas relating to mathematical formulas and collecting information, analyzing it, and displaying certain results of the collection and analysis."  The Examiner further found that "the MR tomography apparatus is an additional element that is well-understood, routine, and conventional in the art," while the "data collection and display are insignificant extra-solution activity."

The PTAB disagreed.  Applying the Guidance, the PTAB quickly concluded that under the first part of Alice, the claim recites an abstract idea -- notably three distinct mathematical formulas.  Continuing the inquiry, the PTAB then determined that the claim nonetheless integrates this abstract idea into a practical application thereof. 

The PTAB found the claim to be similar in nature to that of Thales Visionix, Inc. v. United States, where mathematical concepts were used to solve a technical problem and that the recited device "is neither a token addition nor an abstract concept."  To come to this conclusion, the PTAB looked to the application's specification which pointed out drawbacks to existing surface coils in MR systems -- these coils can result in poor image quality.  But, as described in the specification, the claimed invention improves the sensitivity of the coils, and thereby also improves image quality.

Accordingly, the PTAB concluded that the claim is not directed to an abstract idea, is eligible, and that the second part of the Alice test need not be considered.

Ex Parte Olson (U.S. Patent App. No. 11/715,923)

This second case involves a "locally deformable registration of a catheter navigation system to an external model or external image data such that the invention operates to transform the coordinate system of a catheter navigation system to the coordinate system of an external model or external image data."  Representative claim 7 recites:

The Examiner found the claim abstract because it "relies upon collecting and comparing known information, comparing new and stored information and using rules to identify options, organizing information through mathematical correlations, which are considered an abstract idea."  The Examiner further found that the claimed algorithm, the computer on which it runs, and the catheter navigation system, to all be generic.  The Examiner also stated that "Appellants do not claim any new and novel structures for the catheter and catheter navigation system."  Turning to part two of the Alice test, the Examiner found all of the additional elements to be well-known and conventional.

On appeal, the PTAB quickly determined that, through its explicit use of equations, the claim recites an abstract idea -- particularly, a mathematical concept.  But like Ex Parte Fautz, this abstract idea is integrated into a practical application.

To that point, the PTAB observed that the claim focuses on "addressing problems arising in the context of registering a catheter navigation system to a three-dimensional image in connection with cardiac procedures."  Further, the limitations therein "apply the recited mathematical calculations to improve registration of a catheter navigation system to a three-dimensional image of a heart by accounting for non-linearities and inhomogeneities in the catheter navigation system and reduce errors in the localization field."  Looking again to the specification, the PTAB noted that the invention provides a technical improvement of "avoid[ing] errors introduced in the prior art, such as those introduced when an affine transformation is used."  The PTAB also found the claims to be analogous to those of Thales and Diamond v. Diehr, and that the mathematical concepts were applied to a particular machine -- the catheter navigation system.

Thus, the PTAB concluded that the claim is not directed to an abstract idea, is eligible, and again declined to apply the second part of the Alice test.

Ex Parte Kimizuka (U.S. Patent App. No. 13/871,055)

The claimed invention involves software for selecting a golf club with a suitable lift angle for a player based on data from hit balls.  According to this application's specification, "[a] club's loft angle relates to the orientation of its face and influences a hit ball's flight distance."  Claim 7, which was deemed representative, recites:

A fitting method of a golf club, comprising the following steps of:
    creating a hit ball result database based on ball initial velocity prediction data, launch angle prediction data, and back spin prediction data, the ball initial velocity prediction data being data capable of predicting a ball initial velocity based on the dynamic loft and the blow angle, the launch angle prediction data being data capable of predicting a launch angle based on the dynamic loft and the blow angle, and the backspin prediction data being data capable of predicting a backspin based on the dynamic loft and the blow angle, wherein the hit ball result database is obtained by actual measurement and/or a simulation;
    measuring a subject's head speed, dynamic loft, and blow angle using a reference club;
    determining, by a processor, a suitable dynamic loft based on only the measured head speed, the measured dynamic loft, and the measured blow angle, the suitable dynamic loft being defined as a dynamic loft achieving a predetermined hit ball result, wherein the hit ball result database is used for determining the suitable dynamic loft, the hit ball result database includes correlation data between the dynamic loft and the blow angle which are created for each head speed, and the hit ball results in the dynamic lofts in the measured blow angle are compared using the hit ball result database;
    determining a dynamic loft difference from the suitable dynamic loft and the measured dynamic loft; and
    determining a recommended loft angle based on a loft angle of the reference club and the dynamic loft difference, wherein the hit ball result includes a flight distance.

The Examiner rapidly disposed of this claim, finding it directed to an abstract mental process, with all additional elements being well-understood, routine, and conventional.  The PTAB generally agreed.

The PTAB began by stating that, under broadest reasonable interpretation, the claimed steps could be performed in the mind (the Guidance allows one to ignore general hardware -- such as the claimed processor -- when making this determination).  Thus, the PTAB concluded that the claim recites an abstract idea.

Turning to the next step in the Alice part one inquiry, the PTAB considered whether the claim involves an improvement to a technology or technical field.  The PTAB found that the golf club selection was a non-technical problem.  Notably, the claim did not "improve how the measurements are taken or improve how the golf club is manufactured."  The PTAB then reviewed the additional elements individually, finding that each is either a token element, is used for its intended purpose (and therefore is not improved), or embodies insignificant data collection.  Therefore, the claim was found to be directed to an abstract idea under part one of the Alice test.

Applying part two (which is effectively quite similar to the second half of part one), the PTAB sought to determine whether the additional elements were just well-understood, routine, and conventional in the field.  Indeed, the processor, database, and measurements (alone and in combination) were considered to fit this bill based on reasoning similar to why they failed to integrate the claimed abstract idea into a practical implementation.

Consequently the claim was deemed ineligible and the Examiner was affirmed.

Ex Parte Savescu (U.S. Patent App. No. 12/468,616)

Here, the claimed invention relates to software for creating "a life-cycle workflow for a project."  Representative claim 1 recites:

A method for creating a life cycle workflow for a project comprising:
    creating one or more identifiable workflow stages for the project on a server computer, each of the one or more workflow stages corresponding to a specific sequence of workflow activities, wherein the creating further comprises using a workflow stage identifier as a property of the specific sequence of workflow activities for each of the one or more workflow stages;
    creating one or more identifiable workflow phases for the project on the server computer, each workflow phase includes one or more corresponding workflow stages;
    creating one or more project detail pages on the server computer, each project detail page being a web page that is made visible during a corresponding workflow stage;
    when a workflow stage is created, associating a workflow phase with the workflow stage, the workflow phase being selected from the one or more workflow phases on the server computer; and
    when the workflow stage is created, associating one or more project detail pages for the workflow stage.

The Examiner rejected the claim as being directed to an abstract idea without any additional elements that amount to significantly more than that idea.  The PTAB affirmed the Examiner's rejections.

Applying the Guidance, the PTAB pointed to the business nature of the claim ("determining a project name, describing the project's purpose, defining a project's scope, among other things") as indicative of "a concept related to managing relationships or transactions between people."  As such, the PTAB concluded that the claim recited certain methods of organizing human activity, one of the three categories of abstract ideas set forth in the Guidance.

Moving on the next phase of the first part of the Alice test, the PTAB identified the claimed server and the step of "creating one or more project detail pages on the server computer, each project detail page being a web page that is made visible during a corresponding workflow stage" as the additional elements.  The PTAB found that the server was a generic computer, while the creation of project detail pages did not involve a technical improvement to how those pages were created.  The PTAB also found that, at best, the claim automated a process that could have been carried out manually.  All of this added up to a failure of the claim to integrate the abstract idea into a practical application.

Turning to part two of the Alice test, the PTAB looked to the additional elements again and found them to be well-understood, routine, and conventional features.  Therefore, the claim did not provide an inventive concept, and was determined to be ineligible.

Analysis

There are a few lines of reasoning running through these four cases that are worth pointing out.  For the two that were found meet the requirements of § 101, the claims therein are narrowly focused and provide a technical solution to a technical problem.  For each, the technical problem and technical solution were described in the specification, and explicitly reflected in the claim language.  On the other hand, for the two cases that failed the Alice test, the PTAB specifically stated that the claims were not addressing technical problems, and were broadly drafted.

This suggests that the PTAB may be following a variant of the European view that eligible subject matter must be directed to a technical solution to a technical problem.  If so, that is problematic because there is no requirement in U.S. patent law that § 101 be applied so rigidly.  In fact, the Federal Circuit found the claims in DDR Holdings v. Hotels.com to be eligible despite their being focused on a technical solution to a business (non-technical) problem.

Furthermore, a post-hoc evaluation of whether a claim is addressing a "technical" problem can be subjective.  For example, an invention that provides real-time updating of graphical user interfaces that display data about service-level agreement compliance can be viewed as addressing a technical problem (real-time updating of the interfaces) or a non-technical problem (evaluating contractual conformity).

In any event, these four cases may help applicants determine whether a § 101 appeal to the PTAB makes sense.  If your claims fall into the technical solution to a technical problem camp, then an appeal may be viable.  Otherwise, you might be best off working a bit longer with the examiner.

Comments

[moondog]

How (if at all) can the Fautz decision be reconciled with Ex parte Itagaki and Nishihara (PTAB 216)?

[Michael Borella]

Fautz was decided under the new guidance while the other case was not.

In Itagaki and Nishihara, the PTAB gave a fairly detailed 101 analysis in their rehearing decision and seems to have concluded that the specification does not adequately establish that the invention is a technical advance over the prior art.

Nonetheless, these outcomes are just another example of why 101 needs to change.

[MaxDrei]

Two questions, if I may:

1. At the EPO, eligibility is a cakewalk. In contrast to that, the obviousness enquiry is anything but. The technical solution to technical problem routine is part of the obviousness enquiry under the extremely prescriptive Problem and Solution Approach, namely, the determination of what is dubbed the "Objective Technical Problem" which is NOT determined relative to the prior art universe in toto but, rather, exclusively relative to D1. Because of that, both eligibility and the obviousness enquiry at the EPO are manageable. Do you think the USPTO "Approach" to eligibility is inherently fair to inventors?

2. Looking at the golf club design method claim, would it still have been abstract if it had included a final step of building the club in accordance with the method. How about a final step of making a blueprint of the thus-designed club?

[Michael Borella]

Max,

1) No. The US does not have a procedure as refined as that of the EPO for carrying out this analysis. Currently, it is ad hoc and unpredictable.

2) Maybe. Up to the USPTO rep. I've seen similar claims go either way depending on who is looking at them.

[Mark Nowotarski]

The elephant in the room is class 705, business methods. It's the third largest class at the USPTO and yet unless there is a technical innovation OUTSIDE of business methods, claims will not be held eligible. See 12/468,616 above.

The best answer I have found is to focus on the other technical improvements in the application so that it will be classified in the appropriate technological art unit. If a case comes back classified as 705 despite your best efforts, consider redrafting and refiling.

[Skeptical]

"so that it will be classified in the appropriate technological art unit."

But is this NOT the very "thing" that the Supreme Court has chastised practitioners for? Is this not mere "scrivining?"

How is such a "best answer?"

The fact of the matter is that practitioners SHOULD NOT HAVE TO be so concerned with the "label" of "business method."