by Dennis Crouch
I have been reading a good number of PTAB decisions recently to try to get my head wrapped around the current state of the obviousness and eligibility doctrines within the USPTO. The Board’s recent decision in Ex parte Annakov is on point. The case involves a distributed service-and-transaction system for aircraft passengers, and the examiner rejected the claims both for lack of eligibility under § 101 (all the claims) and as obvious under § 103 (most of the claims). On appeal, the Board reversed on eligibility, but affirmed on obviousness — leaving a handful of claims ready for issuance.
- Ex parte Annakov, Appeal 2023-003538 (PTAB Sept. 10, 2024) (APN 16/902,544). Decision_2023003538_09-10-2024 | Docket
Eligibility Under § 101
Pending claim 1 is directed to a system that enables passengers and crew to use their personal devices (such as a smartphone) to conduct transactions during transit. The claims require an on-board hub-and-server running various applications, and a remote cloud-computing facility that hosts the backend.
The examiner rejected claim 1 along with all the dependent claims as directed to an unpatentable abstract idea. The examiner particularly characterized the claim as describing a process for downloading and installing web applications on an aircraft between passengers and attendants, which the examiner fits within the category of “methods of organizing human activity” and “mental processes.”
On appeal, the PTAB reversed — finding that the rejection “runs counter to the Revised Guidance, as incorporated in the MPEP.” The Board emphasized that under the USPTO’s guidance, examiners must “be careful to distinguish claims that recite an exception” from “claims that merely involve an exception.” MPEP § 2106.04(II)(A)(1). The Board found that the examiner had not adequately identified specific claim limitations reciting an abstract idea, as required by the guidance.
Analyzing the claims, the Board determined that system claim 1 “recites a structurally complete invention in which the recited structural components interact with each other and involve using additional applications and services executing on a server, which we determine do not recite one or more judicial exceptions.” Because the claims did not recite a judicial exception, the Board found them patent-eligible at Step 2A(i) of the Alice/Mayo framework, ending the eligibility inquiry.
This analysis illustrates the USPTO’s focus on examiners identifying the particular claim limitations directed to abstract ideas, rather than broadly characterizing the overall purpose or function of the claimed invention. The decision also provides at least one example of how a claim directed to a specific technological implementation, even if functionally a business practices, may avoid being categorized as abstract ideas under the USPTO’s approach to eligibility.
If you recall Alice and Mayo ask whether a claim is directed-toward an abstract idea. To make that administrable, the USPTO modified that quest and asks whether the claim recites an abstract idea. This language directs us to look particularly at what is expressly claimed, recognizing also that some level of abstraction is always permissible. And, although the Board regularly cites to Federal Circuit cases, it has been specifically directed to follow the USPTO eligibility guidance. It is that document that provides the most direct influence in these cases.
Obviousness Under § 103
While reversing on eligibility, the Board affirmed the examiner’s obviousness rejections of claim 1, along with many of the dependent claims. This portion of the decision was unremarkable, but turned largely on the Board’s application of the “broadest reasonable interpretation” — giving the patent claims broad scope — which meant that the prior art fell within that scope.
The remaining claims that are now patentable include additional limitations that tie the invention to airplane usage – such as seat-based interaction., although one dependent claim simply requires use of a subset of the personal devices.
Bob Bergstrom of Olympic Patent Works is handling the prosecution for the applicant LiFE in the Air, Inc.