Patent Attorney San Bernardino

Patent Attorney in the Greater Los Angeles Area Including San Bernardino County

PTAB Decisions Give Examples of Patent Eligible Subject Matter

by Marin Cionca and Iris Kim

The Supreme Court’s decision in Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. 2347, 2014 (Alice) resulted in much confusion about whether software-related and computer-implemented inventions are patent eligible under 35 U.S.C. 101. Following this, in December of 2014, the U.S. Patent and Trademark Office (USPTO) issued interim guidelines on patent subject matter eligibility. “Interim” may indicate that further guidelines are forthcoming. Until then, decisions by the Patent Trial and Appeal Board (PTAB or Board) are a useful source of guidance for what constitutes patent eligible subject matter.

Drawing similarities between cases and the hypothetical examples provided by the USPTO can be helpful for patent prosecutors and examiners.

The two-part test provided by the USPTO is a basic analysis tool, set forth in MPEP 2106. Step 1 is to determine whether the claimed invention belongs to one of the four statutory categories of invention: a process, machine, article of manufacture, or composition of matter. If yes, Step 2 is to determine whether the claim is directed to a judicial exception, such as a law of nature, natural phenomenon, or abstract idea.

Alice also provided broad examples of what may constitute an abstract idea: (1) fundamental economic practices, (2) certain methods of organizing human activities, (3) “an idea of itself, ” and (4) mathematical relationships or formulae (Alice, 134 S.Ct. at 2350; 2356; 2350; 2350).

Using these tests and guidelines, many claims were found by the Board and the Federal Circuit to be directed to patent ineligible matter under 35 U.S.C. 101. However, in two recent cases, the Board reversed the examiners’ decisions that the claims were directed to unpatentable abstract ideas, even though in the majority of appeals since Alice, the examiners’ rejections were affirmed.

In Ex Parte Cyriac J. Wegman III, 2015 WL 5578687 (Wegman, PTAB Sep. 18, 2015), regarding U.S. patent application number 12/765, 954, the Board agreed with the Appellant that claim 1 is patentable subject matter. The Examiner had rejected the claims under 35 U.S.C. 101 for being directed to an abstract idea, and also under 35 U.S.C. 102 and 103 for lack of novelty and obviousness.

The representative claim, claim 1, is reproduced below:

1. A method for providing an empirical model of a defined space comprising steps of:
a. defining the desired space;
b. describing at least a portion of the defined space with multiple correlated dimensions;
c. reducing the dimensionality of the described portion;
d. combining the described portion with the remaining portion of the defined space;
e. creating a hypothetical model of the defined space; and
f. calculating coefficients for the hypothetical model according to an analysis of real and/or or virtual objects.

In their analysis of the patentability of claim 1, the Board employed the new interim guidelines issued by the USPTO following the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012) and Alice Corp. Pty. Ltd. V. CLS Bank Int’l, 134 S.Ct. 2347 (2014).

Related Posts