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Another PTAB Reversal Based on 2019 Revised Subject Matter Eligibility Guidance

Update 2/7/2019: an even better opinion is out. See here.

Turns out yesterday’s post missed a seventh PTAB opinion that cites to the 2019 Revised Subject Matter Eligibility Guidance. From an applicant’s perspective, its probably the best opinion of the seven. A quick summary is below. Also, a note that I am collecting opinions, rejections, and responses citing the 2019 Guidance in the BigPatentData shared knowledge base. If you are looking for examples give it a try (e.g., search the “Ex Parte” tab for 2019 +Eligibility +Guidance). Or, if you know of a filing which cites the 2019 Guidance that are not in there, drop the application number in a comment and I will add it.

14/282,015 (PTAB says: “Not an abstract idea that falls into one of the groupings AND integrates into a practical application”):

1. A system comprising:

Here’s the meat of the opinion:

As such, the Examiner has not determined that the claims recite an abstract idea that falls within one of the enumerated grouping of abstract ideas in the Revised Guidance. See 84 Fed. Reg. at 52. Additionally, and even if one of the Examiner-asserted abstract ideas were a “tentative abstract idea,” the claims nonetheless would not be “directed to” an abstract idea under the Revised Guidance. That is because the claims as a whole integrate the asserted abstract ideas (i.e., updating software and organizing human activity) into specific practical applications of those ideas. For example, claim 1 is directed to a practical application of updating software specifically for a vehicle module, in which user consent is required and in which lack of receipt of user consent is communicated to a user via an icon within the gauge cluster of a vehicle. Claim 1 also is directed to providing in a head unit display of the vehicle an indication of an optional status of the software update and a request for consent to install the optional update and upon receipt of user consent sends an update command over the vehicle bus and installs the update to a memory of the vehicle module.

This claim is, in my opinion, a great illustration of 101 going off the rails. I think the 101 rejection is bad enough that it may have been reversed even without the new guidance. But, what I like about this opinion is there is at least some discussion as to why the panel felt it was “integrated into a practical application.”