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More 2019 Subject Matter Guidance PTAB Opinions

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I ended my last post saying that there was a bunch of “ho hum” opinions that I would get to later. Turns out after a bit of sleep I don’t think some of them are as “ho hum” as I originally thought, so here is one last post on this topic.  All opinions discussed in the last two weeks (as well as the briefs and answers and the final rejections) are in the knowledge base.

Three more reversals under the 2019 Guidance that somewhat surprised me

What It think these claims have in common is a bit more detail on the technical aspects, as compared to all the affirmances at the bottom of this post.

12/950,103 (PTAB says: “claim 1 goes beyond merely comparing input data in a conventional manner or performing scan and OCR operations on a printed receipt.”):

1. A proof-of-performance verification system for providing
purchase incentives to customers over a computerized telecommunications-based system utilizing electronic transmission of images of paper purchase receipts, the system comprising:

This one is the most surprising of the bunch because “detecting a font and/or printed art element” — the part which the PTAB hung its hat on — does not seem to be inherently technical.

13/331,288 (PTAB says: Examiner didn’t show that the claims fall into one of the 3 groups of the 2019 Guidance):

1. An apparatus comprising:

The key here was specific, and at least facially unique, details about the interface.

14/062,126 (PTAB says: “when evaluated under the Memorandum, the claim limitations of claim 1 do not recite a method of organizing human activity.”):

1. A computer-implemented purchased part order data management system, comprising:

Here the key seemed to be the inclusion of a fair amount of technical detail such as the “referential link” and the automated prompting to “ingest information.” I would say this one is a good example of how draftsman’s skill was the primary determinant in getting past 101. No matter what any PTAB or Fed. Cir. or Supreme Court judge says, I firmly believe that 80% of the time clever drafting can avoid 101. The other 20% of the time would be where the disclosure is too thin. (I am not saying, that the claims which get around 101 would be what the applicant needs for its business goals, I am just saying that no 101 test will every be immune from drafting skill/creativity.

Reversals that didn’t surprise me

Looking at the claims below, I can’t say I am much surprised by any of them being affirmed. The reasoning, however, is often a bit sloppy / ad hoc (IMHO). I think this is ultimately because it is still very much a squishy, “you know it when you see it” test.

13/412,451 (PTAB says: “the “generating” step applies or uses the abstract idea in a meaningful way such that the claim as a whole is more than a drafting effort designed to monopolize the exception”):

1. A method for normalizing point of sale (POS) sales data, the method comprising:

13/957,627 (PTAB says: “Cannot practically be performed by the mind”):

11. One or more computer storage devices having computer¬executable instructions embodied thereon, that when executed, perform a method of prepopulating clinical events with image based documentation, the method comprising:

In the above two cases, the emphasis is on GUI elements and – very importantly – there are specific details about the how the GUI is unique. With that, I think the reversals are consistent with Federal Circuit precedent (e.g., various Trading Technologies opinions)

14/665,452 (PTAB says: “the Examiner has not sufficiently explained why claim 1 is directed to the abstract idea of “mathematical relationships,” and we decline to speculate.”):

1. A method of determining a collision of cloth in a game representing said cloth using oblate spheroids having only a dimension normal to a surface of said cloth that depends upon velocities of said oblate spheroids’, and treating intersections involving said oblate spheroids as collisions.

I don’t think there is much to take away from this one other than the PTAB felt the examiner did a half-assed job.

17 more affirmances that I don’t think were close (and I think I agree with)

Similar to 5 of the 6 opinions discussed in my first post on this topic, here are a bunch of claims where the 101 rejection was unsurprisingly (IMO) affirmed:

11/958,291 (PTAB says: “Mental process and Fundamental Economic Practice”):

1. An information management system comprising:

12/906,381 (PTAB says: “directed to transferring interests in entries in an activity between users in an exchange system — a fundamental economic practice”):

1. A method for conducting an exchange, comprising:

12/961,699 (PTAB says: “directed to reporting insurance claim data, i.e., providing insurance information . . . a fundamental business practice”):

1. A method for verifying insurance claim submissions comprising:

13/030,794 (PTAB says: “a fundamental economic practice. . . . does not “improve the functioning of the computer itself’ or “any other technology or technical field.” . . . Nor, does it provide a technological solution to a technological problem. . . . implement a known business practice utilizing a general purpose computer.”):

1. A method implementable in a computing system, comprising:

13/032,415 (PTAB says: “merely adapts to a technological setting . . . the broad concept of transferring ownership of an employee retirement account upon the occurrence of one or more of four recited conditions precedent.”):

1. A method for administering a financial instrument, the method comprising:

13/233,801(PTAB says: “‘managing a plurality of proof of purchase reward programs’ of claim 1 recites a judicial exception in the form of a method of organizing human activity”):

1. A system for managing a plurality of proof of purchase reward programs, the system comprising:

13/401,748 (PTAB says: “directed to a method for facilitating a secure electronic financial transaction . . . a fundamental economic practice”):

1. A method for facilitating at least a portion of a secure electronic financial transaction, the method comprising:

13/485,440 (PTAB says: “directed to promoting business goods and services to a user, and more specifically, to offering a gift from the business to the use . . . fundamental business practice . . . Alternately, this is an example of concepts performed in the human mind as mental processes”):

22. A method of incentivizing and tracking patronage of a consumer by providing a gift of a merchant that can be retrieved by the consumer via a communication network, the method comprising the steps of:

13/693,477 (PTAB says: “‘detecting data events for executing data operations on an annuity database,’ including steps of monitoring, retrieving, calculating, and resetting data relating to the annuity, and also administering the annuity. These steps comprise fundamental economic principles”):

1. A computer implemented method for detecting data events for executing data operations on an annuity database, the method comprising:

13/846,442 (PTAB says: “The concept of advertising is a fundamental business practice long prevalent in our system of commerce. . . . Alternately, this is an example of concepts performed in the human mind as mental processes because the steps of receiving, analyzing, modifying, and storing data mimic human thought”):

1. A method comprising:

13/920,690 (PTAB says: “nothing more than ‘mental processes’ that could be performed in the human mind or by a human using a pen and paper”):

1. A system implemented in a reservation computer device, comprising:

14/046,761(PTAB says: “the claims are directed to sales activity of a credit report service or credit monitoring service, which is a method of organizing human activities and a fundamental economic practice”):

1. A method comprising: using at least one processing device:

14/058,654 (PTAB says: “targeted advertising, which is a method of organizing human activity and, therefore, an abstract idea.”):

1. A method, comprising:

14/063,786 (PTAB says: “fundamental economic practice”):

1. A contingent purchasing system, comprising:

14/084,903 (PTAB says: ‘Appellants do not dispute the Examiner’s determination that claims 1— 4 and 6—19 are directed to the abstract idea of “classifying or grouping customers.’ . . . the claim does not integrate the noted judicial exception into a practical application . . . does not recite an additional element reflecting an improvement in the functioning of a computer, or an improvement to other technology or technical field.”):

1. A computer-implemented method, comprising:

14/193,296 (PTAB says: “the claims are directed to processing an authorization request for a transaction which is considered to be an abstract idea in as much as such activity is considered a fundamental economic practice.”):

1. A method for processing an authorization request for a transaction between a client computer of a consumer and a merchant computer, the method comprising:

15/488,839 (PTAB says: “directed to mental processes (observation, e.g., collecting HVAC equipment state information) and mathematical relationships (e.g., determining heat loss using a processor)”):

1 : A method of collecting and sharing envelope efficiency of a building structure on a comparative basis, the method comprising: