I wanted to consider some recent PTAB jurisprudence on patent eligibility under 35 U.S.C. § 101. The following post reviews four recent eligibility cases. In all four cases the PTAB found the claims lacked eligibility. Two of the cases affirmed examiner rejections while the other two added eligibility as a new grounds for rejection after finding that the examiner erred in their 102/103 rejections. All four cases here involve communications technology where the patent applicant was seeking to claim the functional operational steps without describing any new “technology.” I have a second post coming with recent device 101 cases from the PTAB.
Ex parte Goytia, 23-4166 (P.T.A.B. Mar. 1, 2024) (Procore Techs.) Decision_2023004166_02-28-2024.
The claimed technology relates to a system for managing an inspection and test plan (ITP) for a construction project. Specifically, the claims recite a computer system for receiving definitions of inspection and test activities to be included in an ITP, designating users assigned to each activity, publishing the ITP to client stations associated with each user, restricting access to certain activities based on hold point conditions, receiving sign-off indications when users complete activities, and automatically enabling access to subsequent activities upon receiving sign-off of prerequisite activities.
The Examiner had rejected the claims as obvious under 35 U.S.C. § 103. On appeal, the PTAB reversed the rejection, finding that the cited references failed to disclose or suggest “a hold point condition with respect to a second inspection and test activity but not a third inspection and test activity.”
However, the PTAB entered a new ground of rejection under 35 U.S.C. § 101, finding that the claims are directed to the abstract ideas of “managing personal behavior or relationships or interactions between people” and “mental processes.” Applying the two-step Alice framework, the PTAB found that the generic computer implementation failed to integrate the abstract idea into a practical application or add an inventive concept sufficient to confer eligibility. The PTAB concluded that “[c]onsidered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately.”
Ex parte Ghodrat, 23-3860 (P.T.A.B. Feb. 28, 2024) (Advanced Micro Devices, Inc.) Decision_2023003860_02-28-2024.
The claimed invention relates to a computer graphics technique for sampling partially resident texture data. Claim 1 is listed below:
1. A method for sampling partially resident texture data, the method comprising:
receiving an instruction which includes a residency map descriptor, wherein the residency map descriptor comprises a residency map; and
executing the instruction to retrieve partially resident texture data from a mipmap stored in a memory based on the residency map descriptor.
The PTAB reversed the Examiner’s anticipation rejection under 35 U.S.C. § 102 over Kazakov, finding that reference failed to teach the claimed instruction including a residency map descriptor comprising a residency map.
However, the PTAB entered a new ground of rejection for claims 1 and 11 under 35 U.S.C. § 101. The PTAB determined the claims were directed to the abstract idea of receiving an instruction and data, which constituted mental processes similar to those in Electric Power Group. The additional elements did not integrate the abstract idea into a practical application or provide significantly more.
Claim 3 (and other claims) remain eligible. I cannot, however show you those eligible claims because the USPTO Patent Center is currently broken and the USPTO discontinued PAIR.
Ex parte Jain, 22-3895 (P.T.A.B. Feb. 28, 2024) (Aetna Inc.) Decision_2022003895_02-28-2024.
The claimed technology relates to a system for fraud detection by first finding a common point of compromise (CPC) in transaction data. The claims recite obtaining transaction data, obtaining an identification of target merchants where fraud occurred, detecting a CPC by determining correlations between the target merchants and other merchants where a user’s payment information was used prior to the fraud, and performing responsive operations like deactivating forms of payment and issuing new cards.
The PTAB affirmed the Examiner’s rejection under 35 U.S.C. § 101, finding the claims directed to the abstract idea of “controlling the behavior of persons concerning preventing fraud,” which is a fundamental economic practice and certain method of organizing human activity. Applying the Alice framework, the PTAB found “no indication” that the claims “invoke any inventive programming” or “require any specialized computer hardware or other inventive computer components” to integrate the abstract idea into a practical application.
The PTAB further found that “[t]he introduction of a computer elements into the claim does not alter the analysis at Alice step two.” Rather, the claims “do[] no more than require a generic computer to perform generic computer functions,” failing to “‘transform the nature of the claim’ into a patent-eligible application.”
Ex parte Fain, 22-4360 (P.T.A.B. Feb. 28, 2024) (Trucktrax, LLC) Decision_2022004360_02-28-2024.
The claimed technology relates to a system for tracking and dispatching vehicles to facilitate delivery of perishable goods. 500+ word claim 1 requires a remote dispach computer system along with a mobile device. The system takes the steps of defining “geozones” for a pickup location and delivery location, determining a series of deliveries from the pickup to delivery location, generating manifest information identifying the deliveries, assigning deliveries to users based on location and timing, modifying the manifest information, and presenting delivery information to users.
The PTAB affirmed the Examiner’s rejection under 35 U.S.C. § 101, finding the claims directed to the abstract ideas of mental processes and certain methods of organizing human activity without any inventive concept. The PTAB found that the additional elements of computing devices and memories “are well-understood, routine, conventional elements that do not add significantly more to the identified judicial exception.” The claims merely implemented the abstract ideas in a technological environment without improvement.
The PTAB also affirmed the obviousness rejection, finding that the 4-reference combination taught or suggested all the disputed limitations relating to scheduling a series of deliveries of perishable goods to a single delivery location at distinct times.
“Claim 3 (and other claims) [of Ghrodrat ‘520] remain eligible.”
Whatever date you want to pick for this patent to issue, I’ll take the “OVER”.
I would not count on claim 3 passing the Board’s 101 test simply because it was not mentioned by name in the rejection, notwithstanding that being poor form by the Board.
Claim 4 was explicitly allowed by the Examiner, but objected to as being dependent upon a rejected independent claim. I would not rely on that indication, either.
Dennis, have you seen much of the opposite of those two ex parte PTAB application decisions? That is, PTAB reversals of examiner 101 Alice abstractions claim rejections but sending the application back to the examiner on a newly added 103 rejection?
Is anyone familiar with how the PTAB obtained the power to offer up new grounds of rejection in an ex parte appeal?
The PTAB decision says “Under our authority of 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims……..”
The PTAB decision says “Under our authority of 37 C.F.R. § 41.50(b), we enter a new ground of rejection of claims……..”
Yes, but:
“A new ground of rejection pursuant to this paragraph shall not be considered final for judicial review. When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: …”
See link to law.cornell.edu
ipguy – were you thinking of the post grant proceedings in which the PTAB is supposed to be acting as a neutral arbiter and not as “Super Examiners?”
Yes, as I recall, the regular members of the former PTO ex parte applications board of appeals [which was then a separate board from the board for inter-parties interference trials] were even called “Examiners in Chief.”
[When the change in their titles to “APJ’s” was made, I asked a board member I knew what the difference really was, and he said [for my entertainment] that “we might get better tables at D.C. restaurants with that title.”]
There is – and should be – a clear difference in the role and not merely one of title.
Neutral Arbiters are exactly that: neutral.
Further, Congress DID screw the p00ch in the post grant realm as there is NO true examiner role present. Neither the petitioner, nor the neutral arbiter are designed to fit that role.
Sua Sponte? lololol!
A 101 post this month, just under the wire on Leap Day!
I’ll make my usual quick work of these:
Ex parte Goytia:
Is it a method? Yes Is the useful result of the method new and useful information? Yes
Does the utility of the information arise in human minds ? Yes, inspection results have meaning to human quality control operators.
Ineligible
Ex parte Ghodrat:
Is it a method? Yes Is the useful result of the method new and useful information? Yes
Does the utility of the information arise in human minds ? No, the mapping data is consumed by a graphics generator and has no human meaning.
Eligible
Ex parte Jain:
Is it a method? Yes Is the useful result of the method new and useful information? Yes
Does the utility of the information arise in human minds ? Yes, fraud is a human construction whose meaning only has value to humans.
Ineligible
Ex parte Fain:
Is it a method? Yes Is the result of the method new and useful information? Yes
Does the utility of the information arise in human minds ? Yes, efficient management of dispatch information improves human decision making about delivery routes and schedules.
Ineligible
For policy reasons, new and useful information, in some context, is thought by some reasonable minds to be the kind of subject matter appropriate for patenting. Other reasonable minds may disagree.
What seems to me as completely unreasonable and not Constitutional is granting monopolies on utility that arises within a human mind. Such utility is entirely and always abstract, always dependent in value upon the particular mind consuming it, and incompatible with a free society.
I welcome your questions.
Not yours anon, but I assure you, I’m quite erect (at times) and not going anywhere, yet.
More here: link to papers.ssrn.com
Please Pardon Potential re(P)eat…
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February 29, 2024 at 3:26 pm
Ask for a 101 post – receive a 101 post.
I should have been more specific…
The PTAB, like SCOTUS and the CAFC, are cancers on innovation.
Virulent cancers.
Cancers for which only Congress has the cure.
Only Congress.
“ it is almost assured that: (i) an abstract idea can be found somewhere in the claimed invention and (ii) everything added to this abstract idea will be “well-understood, routine, conventional elements.”
And yet somehow patents are obtained, defended and licensed all the time. Seems like you must be missing something, and it seems willful.
Meant as a reply to comment 2.
And yet somehow patents are obtained, defended and licensed all the time.
The obtaining of patents is not particularly difficult as flexible tests allow flexibility both ways. Asserting them is the problem.
As for defending and licensing, they need better defense attorneys. Seriously, why would anyone license a patent these days?
That being said, where are all the Federal Circuit decisions these days that discuss damages? They are few and far between because few patent cases ever make it that far.
However, the PTAB entered a new ground of rejection under 35 U.S.C. § 101, finding that the claims are directed to the abstract ideas of “managing personal behavior or relationships or interactions between people” and “mental processes.”
Was this abstract idea preempted in any meaningful way? Absolutely not.
The PTAB determined the claims were directed to the abstract idea of receiving an instruction and data, which constituted mental processes similar to those in Electric Power Group.
Was this abstract idea preempted in any meaningful way? Absolutely not.
The PTAB affirmed the Examiner’s rejection under 35 U.S.C. § 101, finding the claims directed to the abstract idea of “controlling the behavior of persons concerning preventing fraud,” which is a fundamental economic practice and certain method of organizing human activity.
Was this abstract idea preempted in any meaningful way? Absolutely not.
The PTAB affirmed the Examiner’s rejection under 35 U.S.C. § 101, finding the claims directed to the abstract ideas of mental processes and certain methods of organizing human activity without any inventive concept.
Was this abstract idea preempted in any meaningful way? Absolutely not.
The following is from Alice v. CLS Bank:
We have described the concern that drives this exclusionary principle as one of pre-emption. See, e.g., Bilski, supra, at 611–612 (upholding the patent “would pre-empt use of this approach in all fields, and would effectively grant a monopoly over an abstract idea”).
However, the Federal Circuit has essentially read that concern out of the law. The following is from Return Mail v. USPS:
But we have consistently held that claims that are otherwise directed to patent-ineligible subject matter cannot be saved by arguing the absence of complete preemption. See, e.g., Synopsys, 839 F.3d at 1150 (holding that an argument about the absence of complete preemption “misses the mark”); FairWarning, 839 F.3d at 1098 (“But even assuming that the … patent does not preempt the field, its lack of preemption does not save these claims.”); Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1320-31 (Fed. Cir. 2016) (same); OIP Techs., Inc. v. Amazon.com, Inc., 788 F.3d 1359, 1362-63 (Fed. Cir. 2015), cert. denied, ___ U.S. ___, 136 S.Ct. 701, 193 L.Ed.2d 522 (2015) (“[T]hat the claims do not preempt all price optimization or may be limited to [a particular] setting do not make them any less abstract.”). As we have explained, “questions on preemption are inherent in and resolved by the § 101 analysis.” Ariosa Diagnostics, Inc. v. Sequenom, Inc., 788 F.3d 1371, 1379 (Fed. Cir. 2015), cert. denied, ___ U.S. ___, 136 S.Ct. 2511, 195 L.Ed.2d 841 (2016). “While preemption may signal patent ineligible subject matter, the absence of complete preemption does not demonstrate patent eligibility.” Id. Arguments about the lack of preemption risk cannot save claims that are deemed to only be directed to patent-ineligible subject matter.
Here, the Federal Circuit created the strawman about arguments as to the “absence of complete preemption.” In other words, the Federal Circuit was saying that an argument that “99% preemption is not 100% preemption” isn’t going to prevail — while ignoring that these so-called preemptive claims likely cover anywhere between 1-10% of the alleged abstract ideas. In short, a monopoly will not be “effectively grant[ed] … over an abstract idea,” which was the concern in Alice.
Let’s add bring up another couple of points stated by the Supreme Court:
1) As stated in Alice: “At some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.'”
2) As stated in KSR: “[I]nventions in most, if not all, instances rely upon building blocks long since uncovered, and claimed discoveries almost of necessity will be combinations of what, in some sense, is already known.”
Consequently, it is almost assured that: (i) an abstract idea can be found somewhere in the claimed invention and (ii) everything added to this abstract idea will be “well-understood, routine, conventional elements.”
The PTAB (again following the lead of the Federal Circuit) employs the terms/phrases such as “failed to integrate the abstract idea into a practical application,” “add an inventive concept sufficient to confer eligibility,” “did not … provide significantly more,” “failing to ‘transform the nature of the claim’ into a patent-eligible application” … the meaning of which vary from APJ to APJ and Federal Circuit judge to Federal Circuit judge.
The upshot is that any decision maker (Examiner, APJ, district court judge, Federal Circuit judge) can make any decision they want with regard to eligibility so long as they utter the right incantation. In fact, they really don’t have to utter the appropriate incantation … in most instances, any incantation will do. In short, there is no 101 jurisprudence. Rather, there are feelings as to the patent eligibility of a particular invention that can be supported by any number of irreconcilable statements from the Federal Circuit case law.
You want patent eligibility? We’ve got case law for that.
You want patent ineligibility? We’ve got lots of case law for that. It doesn’t matter of the fact patterns are the same.
As an aside, this case law doesn’t just apply to the dread computer-implemented inventions this case law can be applied to just about any invention. But we’ve known this for years and years and years so there is really nothing new to see here. What I find amusing is that of the 4 cases that were identified, the PTAB introduced new grounds of rejection under 101. Its been almost 10 years since Alice and one would expect that Examiners should be experts on how to apply the case law by now. This goes to show just how utterly fXXXed up the case law is.
Every judge on the Federal Circuit should be embarrassed. 101 case law is a complete and total disaster. If they want to completely ban computer-implemented invention, they should just go ahead and do it in one fell swoop. Bring the issue to the head and let the Supreme Court figure it out (because Congress is equally useless if not more so). By nibbling at the edges, they are just clogging the courts (and the USPTO/Board) with these issues and causing businesses to waste vast amounts of time, money, and effort on obtaining patents that cannot be obtained or if obtained, cannot enforced.
“ If they want to completely ban computer-implemented invention, they should just go ahead and do it in one fell swoop.”
You don’t seem to understand that logic has ALWAYS been ineligible subject matter and the only thing propping up the patenting of logic “on a computer” is the mythology that there is some objectively ascertainable “electronic structure” to “new” “algorithms” such as “determine Y then output X in the context of landscape greenification in a riverfront setting”. You can see the electronic structure, right? You’re an expert on this. Surely you can smell the “essence” of that structure, at least. Right? Describe it to everyone.
You’ve been making similar comments for about a decade now. Your arguments are both factually and legally incorrect for reasons many people have stated over same time and, most importantly, your comments are DIVORCED FROM THE CASE LAW. Seriously, try harder.
and exactly who has shown why Malcolm’s posts have been in error?
That’s right – me.
But for whatever reason**, Wt would rather whine (at times) than give proper credit.
** yes, we know the reason can include specific non-patent law topics as well as how correct I have been on the AI topics (to which Wt just happens not to like).
As usual – you are invited not to use anything that you would deny innovation protection to.
Talk about lame arguments that have been repeated ad nauseam.
You would get more credit if most of your posts didn’t resemble the above. You and MM are like an old married couple that argue the same points using the same arguments year after year after year. It is painful to read.
as well as how correct I have been on the AI topics
I asked this before (with no answer) and I’ll ask this again (again, with the expectation of no answer), how were you right on AI topics? What topics were they? What do you say on these topics? What proof do you have that you were right?
Like MM, you will ignore the questions and proceed to repeat the same lines you repeat time and time again. You want to have a debate on AI topics? I’m all for it.
Of course, to have an honest and illuminating debate, you’ll need to articulate your positions with some modicum of clarity and be able to address my questions as to your positions — the type of things you have shown yourself to be mostly incapable of doing.
As I stated: you refuse to give credit where credit is due.
We both know the real reasons why – you can quibble all you want about some of the range of responses I provide, but when you cannot admit the clear fact that it is I that have wrecked Malcolm’s posts the most, well, your proclivities do not speak well for you.
As for being all for it – you quite clearly ran away on the last AI thread, retreating to mindless ad hominem on the way out.
You should at least recognize YOUR OWN frailties before hefting those stones from the shards of your former glass house.
retreating to mindless ad hominem on the way out.
Projecting does not look good on you. And if you didn’t see a response to our last AI discussion, it was likely caught up in the spam filter. It is exceedingly frustrating to write a response only to be told it is in “moderation” — which means it will never get moderated and released.
Regardless and as predicted, you did not: (i) identify the AI topics, (ii) identify your position(s) on said AI topics, (iii) explain why you were right on said AI topics, and (vi) provide proof for your explanation.
You do this time and time again. You declare victory and everyone looks around and says amongst one another: “Victory as to what???”
No – no projecting, and it was not a response from you that I did not see as it was into the vapors, but was instead you retreating to mindless ad hominem on the way out – exactly as I stated.
Now hurry along – Malcom needs a lesson in the Written Matter Doctrine and its critical exceptions. As you seem not to like my corrections of him for some odd reason (couch cough political leanings cough), I have left him on the table for you to dissect.
WT: “this case law can be applied to just about any invention.”
The zombie l i e that just never quits. I mean, it’s true that any attorney can cite a case and make a terrible argument that will only win if the decision-maker is high on the same bad drugs but that’s true across the board. The reality is that it’s almost entirely logic claims and logic claims only that are being tanked under 101 and that’s to be expected because logic has never been eligible for patenting. The only significant other classes are detection claims using prior art detection methods/devices, and claims protecting information in (or on) a prior art context.
Remind me never to hire you as a defense attorney. If you actually understood both the law and the wide variety of different technologies to which the law could apply (as opposed to your extremely niche biotech background), you would be able to see how trivially easy it is to apply the case law to just about anything else.
The fact that the case law hasn’t been applied to the same extent has to do more with the value of the respective technology (with diagnostics and computer-implemented inventions generally being of much higher value than “normal” technology). For example, the value of an improved stapler design is miniscule, yet I can argue that a stapler involves an application of “Hooke’s law” as much as the invention in American Axle.
Word in the street is that Malcontent has been vegan + gluten free for 10 years.
Which explains much.
Friendly reminder that all logic claims are abstract and 99.99% are recycled j u n k that deserve nothing more than scorn and laughter. Definitely true of all of the claims mentioned in this post. “Do the thing that computers do but do it in this context, as described using these silly buzzwords, where there is nothing about the context that is incompatible with the use of computers because computers don’t care about the meaning of the data being processed, they never have and they never will.”
Your “banana republic” is evidenced by the existence of logic patents in the utility patent system where they never belonged. It’s a farce and the PTO and the PTAB need to be working a lot harder to expunge them all from the system sooner rather than later.
As usual – you are invited not to use anything that you would deny innovation protection to.
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