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27 New Opinions Citing 2019 Revised Subject Matter Eligibility Guidance

Okay, I know last week I said I wouldn’t blog about every PTAB opinion citing to the 2019 Revised Subject Matter Eligibility Guidance, but turns out that I am going to do it for one more week. Next week I will do my best to make some sort of pretty visualization. I promise (with fingers crossed, just in case). Here is a very quick recap of 27 more PTAB opinions that have come out citing to the 2019 Guidance.

As I quickly skimmed through these opinions I mostly found them consistent and unsurprising. But there were handful that I thought were debatable and 2 that kind of stuck in my craw.

2 affirmances that I don’t like

14/169,866 (PTAB says: “method of organizing human activity”):

1. A method comprising:

My problem with this one is not so much that the claim is absolutely patent eligible (although I think it is), but that a bit of hand waiving is central to the decision. The Board writes:

As to the first step of the Alice framework the Examiner states that, “[t]aken as a whole, the claim recites the abstract idea of using two different data sets which are then processed and used to develop a model for predicting customer behavior” that is considered to be “mathematical relationships/formulas (i.e. which provide a prediction of customer shopping or buying behavior based on past patterns).” Final Action 15. The Examiner alternatively identifies the abstract idea as “processing customer data from different databases for the purpose of generating a predictive model of customer behavior,” which the Examiner regards as a type of “mathematical and/or statistical formulation.” Id. at 14. The Examiner also compares the present claims to those involved in Versata Development Group, Inc. v. SAP America, Inc., 793 F.3d 1306 (Fed. Cir. 2015), explaining that the present claims amount to an “application of linking data to form a predictive model” that is “merely a method of calculating.” Answer 10. Viewed through the lens of the 2019 Revised Guidance, 84 Fed. Reg. at 52, the Examiner’s analysis depicts the claimed subject matter as one of the ineligible “[c]ertain methods of organizing human activity” that include “advertising, marketing or sales activities or behaviors” and “business relations.”

So the Examiner said its directed to either: (1) “using two different data sets which are then processed and used to develop a model for predicting customer behavior,” which somehow is merely a “mathematical relationship/formula;” or (2) “processing customer data from different databases for the purpose of generating a predictive model of customer behavior,” which is also inexplicably merely a “mathematical relationship/formula;” or (3) “application of linking data to form a predictive model;” which is “merely a method of calculating.” The Board seems to realize the examiner’s “all roads lead to math” approach is not going to work, so it just waives its hand and says “so really what the examiner is saying is that this is directed to certain methods of organizing human activity.” Really? Because I am pretty sure the examiner did NOT say that. Honestly, I think they would have been better off going with “mental process.” I might have bought that.

In reality I think the problems with these claims is that they: (a) are perceived as being too broad (a 112, not 101 issue), and (b) mention “transactions” and “merchants.” If there is one take away from the 30+ opinions so far it is that you should do everything in your power to avoid admitting your invention is somehow related to financial transactions. The smell of money on a claim is the smell of death.

14/083,496 (PTAB says: “fundamental economic practice”):

1. A non-transitory computer-readable medium having instructions stored thereon that, when executed by a processor, cause the processor to automatically optimize a configurable invoice matching engine, the automatic optimizing comprising:

Here the part that rubs me the wrong way is:

We note the preamble of claim 1 is expressly directed to “automatically optimizing a configurable invoice matching engine” which we conclude is directed to a certain method of organizing human behavior, i.e., a fundamental economic practice.

Really? Optimizing an engine is a fundamental economic practice? I’m calling B.S. Again, I think the PTAB just doesn’t want to see anything finance related. If the matching engine matched something other than “invoices” and there was no mention of “cost” in the claim, I think it would have avoided 101.

2 reversals that I could see going the other way

13/709,517 (PTAB says: “We fail to see how the claimed process of partitioning transportation routing problems is directed to an economic concept”):

1. A method for automated partitioning of transportation routing problems by a data processing system, comprising:

This one seems like it could be done mentally? I am not suggesting it should have been rejected on that grounds, I am just saying I would not have been surprised. But even if it could be done mentally, so what? If this is a new and non-obvious method that could, for example, reduce the cloud of smoke that the 1950s-era USPS truck spews outside my window everyday, then that is the type of invention I want the patent system to promote. I don’t care if it is carried out by a specially-built UNIVAC or class of third graders on their Mead 5-Star notebooks.

14/037,357 (PTAB says: “the dynamic variable display of optional information on a display is not an abstract idea”):

1. A method comprising:

You know all that stuff I said above about anything related to a financial transaction getting axed under 101? That’s why I was very surprised by this opinion. But, ultimately this claim is about a specific way of controlling a user interface of a client application, which I think should be good enough to get to the heart of the order (112, 102, 103).

23 more opinions (to be continued…)

Update 2/15/2019: 23 more opinions discussed in this follow-up post.

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