Short 101 Decision

In re Noble Systems Corp. (Fed. Cir. 2020)

So far in 2020, the Federal Circuit has issued judgment on 30+ appeals from the USPTO.  The majority of these issued without opinion under the Federal Circuit’s “Rule 36” that allows for no-opinion judgments. In this case, the court changed tack and instead issued a two-sentence opinion. Although short, this is better than non opinion at all:

In this case, the Board affirmed the Examiner’s rejection of claims 1–7 and 9–21 of U.S. Patent Application No. 13/950,907. We affirm the Board on the ground that the claims are patent ineligible under 35 U.S.C. § 101.

Although not expressly stated, by affirming on eligibility, the Federal Circuit did not affirm the PTAB’s parallel finding of obviousness based upon a single prior art reference. In this situation, the creation of an opinion actually creates a greater preclusive impact on the patent applicant than would have existed otherwise. R.36 judgments on the other hand are only seen as preclusive as to issues necessary for the final judgment.

= = = =

The claims at issue are software code that the PTAB found to be directed to “providing e-learning training content to an agent in a call center” which is nothing “other than an abstract idea of organizing human activity.”

18. A tangible computer-readable storage medium comprising instructions that when executed by a computer processor, cause the computer processor to:

receive input identifying an agent to receive a training course where the input comprises an agent identifier, a training course identifier of the training course;

generate training context data comprising a logical association of the agent identifier, the training course identifier;

determine whether the agent is to be provided the training course as fixed-time training or flex-time training, and

if the training course is to be provided as fixed-time training, then request a schedule module in a workforce management system (“WFM”) to schedule a start time for a training session for the agent,

wherein the WFM is configured to [1] generate a first beginning-of-training indicator to an e-learning module comprising the computer processor at the start time of the training session, and [2] generate a second beginning-of-training indicator to a call handling system,

wherein the call handling system ceases offering calls to the agent in response to receiving the second beginning-of-training indicator.

50 thoughts on “Short 101 Decision

  1. 6

    The problem is “abstract idea” does not have an ordinary meaning, but a special meaning of the Alice test. The Alice test basically says that anything we don’t like is an “abstract idea.”

    An invention that is enabled cannot be an “abstract idea.” Are the claims enabled? Yes. Can it be an “abstract idea”?

    1. 6.1

      Why would you join the conflation game and insert enablement into the eligibility discussion?

      Eligibility has two simple (and that can be read as purposefully broad) pieces:

      Can the innovation be claimed in at least one of the (purposefully broad) statutory categories; and

      Does the claimed innovation provide utility within the Useful Arts.

      That
      Is
      It

      All else is muckery.

      1. 6.1.1

        You have to deal with what the justices have put in front of us anon.

        1. 6.1.1.1

          You have to push back when the score board is broken, Night Writer.

    2. 6.2

      The problem is “abstract idea” does not have an ordinary meaning, but a special meaning of the Alice test.

      +1

      1. 6.2.1

        Slight, albeit important correction:

        but a special — and undefined a priori — meaning of the Alice test.

        Can you say “Void for Vagueness”…?

      2. 6.2.2

        What’s the problem with ‘special meanings’? Isn’t ‘things are obvious iff the prior art teaches every element and provides a TSM’ a ‘special meaning’ that is repeatedly defended here?

        (Not that I’d disagree with “The problem is ‘abstract idea’ does not have an ordinary well-defined meaning”. My comment is specific to the critique of terms having ‘special meaning’ in this arcane field.)

        1. 6.2.2.1

          Sorry, not quite following. What term in that sentence do you perceive to have a meaning that is special?

          1. 6.2.2.1.1

            Its sentence is supposed to be an approximate definition of ‘obvious’ under the TSM regime.

          2. 6.2.2.1.2

            I think that Ben is referring to items that may be deemed “Terms of Art.”

            There is nothing wrong with “special meaning” coming from Terms of Art.

            There is everything wrong when “Terms of Art” are explicitly left undefined in a “I Know It When I See It” manner.

            Do you see this difference, Ben?

  2. 5

    This purported invention should fail for multiple reasons. It really does not matter which one. In a 101 sense, as usual I suggest if the method results in an item of information (the availability and utility of training materials compared to the work state of the agent) and that information is only useful to a person, it should not be eligible. The method is obvious as daylight under 103- being educated while doing one’s normal job is common sense inefficient. The method is not described under 112 because it teaches nothing to PHOSITA.

    The Alice test is a compact inquiry across the board, but ironically probably not best suited for 101 eligibility. History is irony.

    1. 5.1

      It really does not matter which one.

      Translation: “I want to throw my credibility into the dirt right away.”

      In case you forgot, Marty, this is a legal blog that you are commenting upon, and in legal matters, the “how” is paramount.

      The pithy statement that is directly on point and oh so easy to remember: The Ends do not justify the Means.

    2. 5.2

      No. The invention is sending an instruction to a machine to stop routing calls to a particular station under particular circumstances. That passes your test, doesn’t it?

  3. 4

    Wow. The Board clearly did not understand the invention and it appears the court didn’t either. That claims is clearly NOT “directed to “providing e-learning training content to an agent in a call center””.

    The invention is a training system that interacts with the call center system to automatically shut off call processing for the trainee during the training session.

    While I wouldn’t want to take training in the middle of a noisy call center, and it seems simple enough to manually turn off call routing to a station, this does not appear to me to be an abstract idea, but is instead a solution to a problem that arises in call center technology that is solved by an improvement to call center technology and is, let me repeat, not an abstract idea.

    1. 4.1

      The invention is a training system that interacts with the call center system to automatically shut off call processing for the trainee during the training session…a solution to a problem that arises in call center technology that is solved by an improvement to call center technology and is, let me repeat, not an abstract idea.

      It took 58 minutes, ladies and gentlemen.

      While I wouldn’t want to take training in the middle of a noisy call center,

      Statement of fundamental act (removing distractions)

      and it seems simple enough to manually turn off call routing to a station

      admission of previous enablement and lack of inventiveness

      that is solved by an improvement to call center technology

      Mistaken application of really step 2 of the alice procedure (although it is couched in terms of step 1)

      When the prior art is “A human being can unplug their phone whenever they want. A computer rerouting center could reroute calls whenever they want”, a claim that a computer is used to reroute calls because *it is motivated by a particular fundamental motivation* is an attempt to patent the fundamental motivation applying in a context, not advance or improve the state of already-existing technology. I bet if you look in the specification there isn’t a single technological teaching that one of skill in the art would find valuable at all. The alleged valuable teaching here is that when one is being educated, they want to be able to focus, and that also applies (shocker here) in the context of a call center agent being educated – as it would in every context that one could ever generate between now and the end of time.

      It also applies in the context of a lawyer taking continuing legal education. It also applies in the context of patent examiner taking examination refresher meetings. Look, I’ve “improved law firm technology” and “improved government administration technology” – I’m twice the inventor this guy is (and cross-disciplinary too) and it’s barely noon. Of course, my “invention” isn’t a statement improving technology, it’s more a recognition that 1) society specializes and therefore splits people into distinct jobs and 2) adding stimuli denigrates performance (such as recall) in human beings, but those disclosures are a) surely the type of things meant to be covered by the power to advance the arts and sciences and b) clearly discovered by me such that the benefit should inure to me, right?

      This isn’t a claim that they invented (or a specification that provides an enabling disclosure for) call rerouting, which would clearly be eligible. This is a claim that, in a world where call rerouting exists and has already been dedicated to the public, a particular fundamental motivation or a particular context for using old technology renders the conventional use of old technology a new invention.

      an improvement to call center technology

      There should be a rule that nobody can make this statement unless they can point to a technical disclosure in the specification that, by itself, enables the art to do something it was unable to do before. It wouldn’t be a perfect statement of the law, but it would be so useful in stopping people from confusing “utility” and “improvement to technology” that it would be worth the loss.

      1. 4.1.1

        I think I can make it even simpler. The invention is rerouting an agent’s calls while they are busy (e.g., with training). The claim recites doing this using a computer, but doesn’t appear to recite any particular way of doing it with a computer.

      2. 4.1.2

        Notice that Random is saying things that go to 103. And not technical?

        1. 4.1.2.1

          As is often the case, those who want a different thing than what Congress provided only too eagerly jump into the conflation game and focus on the Ends as opposed to the Means.

    2. 4.2

      Hm. It’s not obvious to me that this addresses a problem in call center “technology.” It does seem to address a non-technological issue with call center workflow management, and it does so by changing the workflow rule. Not really a technological solution to a technical problem – although calling it an abstract idea makes no sense either.

      1. 4.2.1

        It does seem to address a non-technological issue with call center workflow management, and it does so by changing the workflow rule.

        That’s only truly a “change” if the conventional workflow rule is that one keeps working their standard day while they are taking a training course. Is it your experience that corporations always do that? Isn’t it more common that employers do exactly what is done here – they hold or reassign your work when they send you to a conference for training, because its generally understood that if you wanted the training to be effective you need to pause their work requirements?

        I know if I was doing my normal work while sitting in the middle of meeting it would not only be unexpected but frowned upon.

        It’s not obvious to me that this addresses a problem in call center “technology.”

        Exactly, of course not. Bringing a [known technology] into a [context] for [conventional utility] isn’t a statement of improving the context, it’s just a statement that the technology originally had utility. It makes as much sense to say that introducing a call re-router to a call center improves “call center technology” as it does to say that introducing a flashlight to a cave improves “cave technology.” Rather, both the call center and cave are just contexts that don’t interfere with the conventional utility of the known technologies that are brought into them.

        1. 4.2.1.1

          “hey hold or reassign your work when they send you to a conference for training, because its generally understood that if you wanted the training to be effective you need to pause their work requirements?”

          Yes, exactly. And that isn’t what the invention is. The invention is they don’t send you anywhere. You sit at your workstation and are trained right there. Its one click. Your supervisor listens to a call and sees that you are doing it wrong. With one click the supervisor orders up a training session and the system both provides the training material and blocks calls to your station.

      2. 4.2.2

        Is “workflow management” a ‘technical issue?’

        Maybe we should define “technical” (and after defining that term, tieing that defined term to 35 USC 101 — oh wait, we don’t have a “technical arts” test in the law as written by Congress, now do we?)

    3. 4.3

      Les is correct. Good summary.

      The problem is “abstract idea” does not have an ordinary meaning, but a special meaning of the Alice test. The Alice test basically says that anything we don’t like is an “abstract idea.”

  4. 3

    Instructions on a medium that is readable by a computer?

    How odd. “Everyone knows” that software is anything but instructions for an nstructable computing device.

    Right? And yet …

    How very strange.

    1. 3.1

      Oh, how so “protons, neutrons and electrons for a Big Box of such to render configurations thereof” of you.

      Maybe you should try that ‘ol Grand Hall experiment (finally)….

  5. 2

    Waiting for some rabble to compare the wherein clauses to arrhenius in Diehr.

    [gets popcorn]

    1. 2.1

      Why? And why would anyone doing so be deemed ‘rabble?’

      All that I see here Random is you imbibing in your confirmation bias tendencies again.

      1. 2.1.1

        Why?

        Because the claimed invention is using a computer to calculate when and to send a signal as to when to open the mol-sorry, when to stop sending calls to the agent and start training. Which, according to some people, is why Diehr was eligible.

        And why would anyone doing so be deemed ‘rabble?’

        Because Diehr did not conclude that is what made it eligible, Diehr simply concluded that using a computer did not inherently make it ineligible.

        All that I see here Random is you imbibing in your confirmation bias tendencies again.

        Otherwise known as stating the law. Scoreboard.

        I don’t see you arguing that the claims are eligible.

        1. 2.1.1.1

          Lol – AND you missing the issue that the score board is broken.

          As I said, all that I see is you feeding your own propensity for confirmation bias.

          Thanks for proving my point.

          1. 2.1.1.1.1

            Lol – AND you missing the issue that the score board is broken.

            So says anon, whom the constitution provides plenary patent powers to. Very Trumpian of you.

            As I said, all that I see is you feeding your own propensity for confirmation bias.

            I can’t believe you literally wrote this sentence right after the previous one and don’t see any irony.

            1. 2.1.1.1.1.1

              Your reply of “plenary powers” is a non sequitur to the issue of the score board being broken.

              Quite in fact, it only highlights just how much your confirmation bias is in play, as you SHOULD recognize that the Constitution gave actual patent law writing power to but a single branch (and that was not the branch that rewrote the laws with the judicial exceptions).

              Thanks again for proving my point.

              1. 2.1.1.1.1.1.1

                “Your reply of ‘plenary powers’ is a non sequitur to the issue of the score board being broken.”

                I don’t think “non sequitur” means what you think it means.

                1. Hi Shifty.

                  You have (repeatedly) shown that what you think simply is untethered to reality.

                  Did you have anything else?

                  A funny GIF, maybe?

              2. 2.1.1.1.1.1.2

                “you SHOULD recognize that the Constitution gave actual patent law writing power to but a single branch”

                How’s that whole thing about reversing Marbury v. Madison going for you? Done it yet?

                1. My comment has nothing whatsoever to do with reversing Marbury.

                  You clearly understand none of the delegation of duties, the separation of powers, and just what judicial review means.

                  What is your line of work that you have such poor understanding of basic concepts?

                  I truly doubt that it is as an inventor — more likely, a government flunky that ‘has’ to process other people’s patents.

              3. 2.1.1.1.1.1.3

                We know you have a point. What is it?

                1. “Thanks again for proving my point.”

                  Actually, we don’t know what your point may be. But now’s your chance. Fill the room with your intelligence.

                2. With you, that would be a classic pearls before swine.

                  Maybe show that you can grasp some of the basics first…

                3. You said you want to discuss the basics, Mr. Snowflake. We’re waiting. Fill the room with your intelligence.

                4. And while you are at it, please (finally) answer the question of what is your line of work?

                  Are you embarrassed by the answer to that question? you seem only able to play games instead of being forthright.

        2. 2.1.1.2

          But Flook did something similar, but only rang an alarm and that was ineligible. So, Flook and Diehr combine to arrive at computer controlling process is eligible.

          1. 2.1.1.2.1

            Les,

            You will not (and cannot) get anywhere with Random discussing eligibility.

            He only believes what he wants to believe in that happy realm.

  6. 1

    They called it an order. The court’s procedures say:

    “2. The court’s decisions on the merits of all cases submitted after oral argument or on the briefs, other than those disposed of under Rule 36, shall be explained in an accompanying precedential or nonprecedential opinion.
    3. The court’s decisions on motions, petitions, and applications will be by precedential or nonprecedential orders.”

    So, I take it this is not a decision on the merits of the appeal.

    1. 1.1

      This decisional approach by the court is confusing.

      As NPtC notes, this is a motion. Yet, they then supply a decision-like (yet bare bones) rationale to “explain” their decision.

      Therefore, what — if any — 101 preclusion actually exists?

      And what about the 103 rejection? Does the court’s “no comment” mean that the patent office was wrong? Or just that they didn’t need to reach that decision given their 101 rejection “affirmance?”

      Accordingly, is this really better (for whom?) than a non-opinion rule 36?

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