PTAB on Eligibility: Four Recent Decisions

Ex parte Gillam, APPEAL 2021-002217, 2022 WL 1641777 (Patent Tr. & App. Bd. May 20, 2022) (RPI – Texas Instruments). [2021002297_Mail_Decision]

9. A method for evaluating a generalized rational function on a handheld graphing calculator, the method comprising:

determining, by a processor of the handheld graphing calculator, whether or not the generalized rational function has at least one asymptote; and

displaying, by the processor, the at least one asymptote on a display screen when the generalized rational function has the at least one asymptote, the displaying includes a textual representation of the at least one asymptote.

In its decision, the PTAB issued a new ground for rejection against Claim 9 for lacking subject matter eligibility.  The Board concluded that the claim was directed to an unpatentable mathematical concept.

= = =

Ex Parte Allaway, APPEAL 2021-002898, 2022 WL 1599499 (Patent Tr. & App. Bd. May 19, 2022) (Mars, Inc.).[2021002898_Mail_Decision]

1. A method of screening a foodstuff comprising:

(a) preparing a foodstuff comprising i) one or more of aspartic acid, serine, glutamic acid, glycine, alanine and praline, and ii) one or more of myristic acid, palmitic acid, stearic acid, palmitoleic acid, oleic acid and linolenic acid, the foodstuff further comprising a protein to fat ratio of 1:0.27 to 1:0.63 on a gram:gram as fed or dry matter basis;

(b) feeding a cat the foodstuff, and

(c) measuring the level of margaric acid in a blood sample from the cat before and after feeding the foodstuff, wherein an increase in endogenous margaric acid levels post prandially is indicative of a foodstuff effective to prevent or reduce the risk of coronary heart disease, type 2 diabetes and/or inflammation in the cat.

The Board found that the final wherein clause was directed to a potential mental process and thus an abstract idea in addition, the correlation between margaric acid and disease is a law of nature similar to that seen in Mayo.   Rejection Affirmed.

= = =

Ex Parte Mallet, APPEAL 2021-003081, 2022 WL 1641787 (Patent Tr. & App. Bd. May 20, 2022) (RPI – BIOMERIEUX) [2021003081_Mail_Decision]

1. A method for detecting at least two RNA transcripts, comprising:

obtaining a biological sample that is collected from a human patient suspected of having prostate cancer; and

detecting, in the biological sample, the presence or absence of at least two RNA transcripts comprising a first RNA transcript expressed by a first nucleic acid sequence having at least 99% identity with SEQ ID NO: 1, and a second RNA transcript expressed by a second nucleic acid sequence having at least 99% identity with SEQ ID NO: 3.

The claim was not rejected under Section 101, but the PTAB included an interesting footnote suggesting that the claim may lack eligibility under Mayo/Alice, but is OK under the 2019 USPTO Examination Guidelines.

= = =

Ex Parte Bella, APPEAL 2021-002297, 2022 WL 1584710 (Patent Tr. & App. Bd. May 17, 2022) [2021002297_Mail_Decision]

Maria Bella is a forensic expert who testifies in cases involving aquatics and drowning.  She created a step-by-step lifeguarding methodology that includes a series of steps and actions such as

  • staff mapping the shape of the swimming pool or body of water including any irregularities that may be present;
  • staff determining the number of submersible devices available;
  • staff determining the length of the swimming pool or body of water;
  • the staff determining the width of the swimming pool or body of water;
  • staff calculating and mapping a grid to determine the positioning of the submersible devices based on the number of submersibles, the length of the swimming pool or body of water, the width of the swimming pool or body of water and the blind spots present;
  • the staff positioning submersible devices on a bottom of the swimming pool or body of water according to the calculated grid …

The examiner rejected the claims on eligibility grounds. On appeal though the PTAB has reversed that rejection — basically finding that the submersible devices are “concrete things” that sufficiently “integrate” the mental processes “into a practical application.”

The Board did, however, issue a new ground of rejection on indefiniteness – The claim includes the following wherein clause that the Board found lacks any workable objective standard: “wherein failure to recognize the swimmer/bather in distress increases the risk of the swimmer/bather suffering a fatal drowning.”

52 thoughts on “PTAB on Eligibility: Four Recent Decisions

  1. 6

    These decisions clearly illustrate why the Supremes should take American Axel or Congress should get its proverbial heads out of their proverbial asses and fix 101. Europe does just fine without a 101 equivalent; why can’t that happen here? For a law of nature or natural product – they aren’t novel and are inherently present. Easy rejection there. Abstract ideas would be less easily rejected although obviousness seems appropriate in many cases – any process that is simply “do it on a computer” or “do it with a processor” would be obvious (absent significant technical hurdles). Enablement would also be applicable for many functionally claimed “inventions”. Granted, these kind of rejections would be much harder for the Examiners to make, but so what. European examiners have no trouble with it.

    1. 6.1

      “Europe does just fine without a 101 equivalent”

      Europe has an “equivalent” to 101 which is the requirement that improvements must be “technical” in nature. For what it’s worth, Europe’s eligibility rules are also riddled with contradictions and absurdity when it comes to claiming logic (ineligible in Europe, on its own terms, just as it is in the US) “on a computer”.

      1. 6.1.1

        Translation:

        “Wah – my feelings are still hurt.”

    2. 6.2

      “these kind of rejections would be much harder for the Examiners to make, but so what. European examiners have no trouble with it.”

      Considering of all the European rejections I’ve seen that hand-wave at 80% of the claim being “non-technical”, I suspect that the portion of the patent bar that is paying their mortgages by representing business methods clients is why we would never have the European system.

      1. 6.2.1

        Utter bullocks…

        “the patent bar that is paying their mortgages by”

    3. 6.3

      +1 Dvan.

    4. 6.4

      +1 to Dvan.

  2. 5

    In a better, faster, cheaper world:

    Bella: is it a method? Yes
    Does the utility of the method arise from some new and useful information? Yes
    Is the utility of the information realized in a human mind? (Yes, lifeguards would use the information by better knowing where to look for a victim) Yes
    Ineligible

    Mallet: is it a method? Yes
    Does the utility of the method arise from some new and useful information? Yes
    Is the utility of the information realized in a human mind? Yes (a doctor would use the information have a higher confidence of prostate cancer)
    Ineligible

    Allaway: is it a method? Yes
    Does the utility of the method arise from some new and useful information? Yes
    Is the utility of the information realized in a human mind? Yes (a doctor would use the information to have better knowledge of margaric acid response in a cat)
    Ineligible

    Gilliam: is it a method? Yes
    Does the utility of the method arise from some new and useful information? Yes
    Is the utility of the information realized in a human mind? No, a calculating machine uses the new information to expand its repertoire of calculation types.
    Eligible

    Is it obvious? As sunrise, but that’s another problem.

    1. 5.1

      In a better, faster, cheaper world:

      Stoplight.

      Full stop.

    2. 5.2

      >In a better, faster, cheaper world:

      I’m not sure I agree with ‘better,’ as your test seems to preclude patentability for wide swathes of diagnostic medical tests.

      As someone who’s getting older, I greatly desire that the medical industry be incentivized to develop more, easier, and better tests.

      1. 5.2.1

        “ As someone who’s getting older, I greatly desire that the medical industry be incentivized to develop more, easier, and better tests.”

        And you think granting 20 year patents on effin correlations is the way to achieve this? That is hilarious.

        Please shuffle off, gramps. You aren’t helping anymore.

        1. 5.2.1.1

          >And you think granting 20 year patents on effin correlations is the way to achieve this?

          Yes. Yes, I do. I still believe that the patent system promotes innovation.

          And if you no longer do, then you really need to reflect on your life. Do you consider yourself to be a shyster? A parasite??

          1. 5.2.1.1.1

            There is a vast amount of territory between “can a patent system promote innovation in certain contexts” (which I do believe) and “should we allow people to effectively own medically relevant facts for 20 years”.

            Is this difficult to understand? Is it difficult for you to understand why we don’t grant patents on correlations? Most normal people who understand the issues find the prospect revolting, for good reasons.

            1. 5.2.1.1.1.1

              in certain contexts

              Is that like reverse-NIMBYISM – “contexts” that you happen to like?

              Because it is for darn sure NOT for innovation in general, nor for the types of innovation that mark the current Kondrateiv wave.

              But why bother with facts like that that are just not convenient for you?

          2. 5.2.1.1.2

            Old Dude, instead of being a patent-fellating reactionary, pause for a moment and contemplate the absurdity of your “logic.”

            It’s like saying “Guns promote safety” (a highly debatable absolutism) and then saying “Therefore everybody should have one.” (pure idiocy).

            There are long-standing universally recognized limits on patent eligibility for all kinds of good reasons. Are you not aware of any of them?

            1. 5.2.1.1.2.1

              being a patent-fellating reactionary

              Malcolm being Malcolm….

              Just checking: link to patentlyo.com

              Yep, still there.

            2. 5.2.1.1.2.2

              for all kinds of good reasons.

              Oh, do tell.

              And please tie them into the actual limits on patent eligibility as provided by the branch of the government actually authorized under our Constitution for providing those limits.

              I know, I know, you disdain the Constitution. But since you insist on staying IN this country, and partaking in the benefits of this country, you might want to rachet back that disdain (or better yet – as I have oft reminded you – you are free to leave).

              1. 5.2.1.1.2.2.1

                One reason for the limits is the existence of sociopaths like you, Billy. Do you need more “explanation”?

            3. 5.2.1.1.2.3

              It obviously defies liberty for any claim to exist on the act of one person telling another person about a material fact in the world.

              A machine, composition, manufacture, or process that is improved by nothing but the knowledge of that fact cannot be an invention. That knowledge, and any arising utility, is a human abstraction. The utility will vary from person to person.

              Applying material facts to existing inventions, with nothing else, means that arbitrary differences in targets, work pieces, etc. are all inherently obvious variations. Telling a miner to look under yonder mountain is not an invention in a free society.

              Of course, non-humans cannot host abstractions, and all utility is of exactly the same character to every non-human user.

              1. 5.2.1.1.2.3.1

                Stoplight.

                Full stop.

                Still.

  3. 4

    Go crawl back under the rock where you came from, MM!

    1. 4.1

      ‘Twas the rock who threw him out PL.

      1. 4.1.1

        And it did not even take the collective intellect of a box of them….

  4. 3

    Ex Parte Allaway: “Mental steps” my posterior. However, it’s as if the knuckleheaded braintrust of the PTAB never read MAYO. The “wherein” clause deserves no weight and this should have been rejected under 103

    Ex Parte Bella – I’d say definitely mental steps – any I mean true mental steps involved of the sort Judges Newman and Lourie warn about. Some limitations (not all) are mental steps.

    Ex Parte Mallet – I’d say generally on-point with the holding of Mayo, but I’d hold patent eligible given no wherein clause — as compared to how poorly the Mayo claims were written with the do-nothing wherein clauses

    Professor Crouch – you certainly picked these cases for good reason

    KUDOS

    1. 3.1

      The Mallet claims are junk because, as with Ariosa, one is simply using existing detection technology to detect an existing biological fact which has been imbued with “new meaning” (correlates with some form of disease … like a zillion other things).

    2. 3.2

      +1 to B

  5. 2

    “A method for evaluating a generalized rational function”

    No 101, but definitely 103.

    I was doing this decades ago on a PC using MathCad

    Resulting to 101 on something like this is an admission of a weak and lazy mind

    1. 2.1

      So why not 102?

      Trying to get you to think about how this kind of claim even gets FILED in the first place. Good luck.

      1. 2.1.1

        “So why not 102?”

        Calculator versus computer, McDerp. Miniscule difference, but arguably a difference

        1. 2.1.1.1

          “ arguably a difference”

          It’s a method claim and the “handheld calculator” is a meaningless limitation. Might as well be “a computer with a battery” or “a computer in a big building.” Who cares? Why should anyone care? This is basic math and a display. Ineligible.

          1. 2.1.1.1.1

            “It’s a method claim and the “handheld calculator” is a meaningless limitation”

            All claim limitations must be considered. MPEP 2143,03

            You really are bad at this. No wonder Anon makes you look foolish so easily so often

            1. 2.1.1.1.1.1

              Thing is – he has not changed his script for about 15 years now.

              Sure, he took off for just over a year and adopted a new moniker, but the same Malcolm talking points and the same LACK of addressing counter points long on the table of discussion make this like the proverbial shooting fish in a barrel.

              It’s evident that the only thing he actually cares about is shouting his feelings.

            2. 2.1.1.1.1.2

              “ All claim limitations must be considered.”

              Right. No exceptions, ever!

              lol

              1. 2.1.1.1.1.2.1

                Sounds a bit like “Gist” eh, Malcolm?

                (here’s a hint: Congress expressly rejected that path back in 1952 after a prior Supreme Court self-described with the phrase, “The only valid patent is one that has not yet appeared before us.”

                Your bias against personal property is showing.

    2. 2.2

      “ Resulting to 101 on something like this is an admission of a weak and lazy mind”

      ? Super insulting to the brilliant inventors and their attorneys.

      And yes they deserve to insulted.

      1. 2.2.1

        Here there may be agreement on the concept:

        they deserve to insulted.

        You just get the “they” wrong.

  6. 1

    The PTO screwed up the last two cases because those claims are also ineligible. The Mallet claim is junk and the Bella claim is even worse junk.

    Not even close calls . Heckuva job, Fraud Iancu.

    1. 1.1

      “Heckuva job, Fraud Iancu.”

      Iancu is no longer the Director. Drew Hirshfeld is acting Director.

      You’re really bad at this

      1. 1.1.1

        People who live in glass houses…

      2. 1.1.2

        I think actual director Vidal might take issue with this comment…

        1. 1.1.2.1

          Sorry – -let me clarify. Kathi Vidal took the helm of the PTO about 7 minutes ago. I don’t care to blame her for anything the PTAB did last week.

          Hirshfield, however, was in control for the previous 15 months, and of course Inacu is long history.

          Please – who, if any of these people, is to blame

          1. 1.1.2.1.1

            The irony of Ben of all people talk not about glass houses…

            Stultifying.

            1. 1.1.2.1.1.1

              Egads autocorrect…

              talk not ==> talking

          2. 1.1.2.1.2

            Please – who, if any of these people, is to blame

            Why, dontcha know (per NS II’s quip) you could just “Google” and see that Iancu is a confirmed
            L
            I
            A
            R
            (and NS II’s keeping company with Malcolm makes them both saints).

      3. 1.1.3

        Iancu was responsible for the 2019 Examination Guidelines which were (and are) garbage. Read the blog post.

        1. 1.1.3.1

          You do realize that he had to deal with the mess that the Court (and courts) created, eh?

          Of course you are — I personally made sure that you were aware.

          But none of that actually matters to you and your feelings.

          1. 1.1.3.1.1

            “ You do realize that he had to deal with the mess that the Court (and courts) created”

            Most normal people can handle alleged “messes” without resorting to lies. But not Iancu. Sad!

            1. 1.1.3.1.1.1

              Second time from you with that accusation.

              Maybe an example….?

              (And then – GOODNESS – let’s compare Your
              L
              I
              E
              S….)

              1. 1.1.3.1.1.1.1

                “ Maybe an example….?”

                More like many dozens of them. Start with his first statements upon taking over the position.

    2. 1.2

      Hi, the link to the first decision for TI is wrong—it points to the Bella one instead. Please fix when you can, thanks.

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