Update Feb 5, 2019: There is a 7th opinion (and second reversal). Discussed here.
As of today (Feb 3, 2019), there are five PTAB decisions citing the 2019 Revised Subject Matter Eligibility Guidance.
- Five of six 101 rejections affirmed.
- For the most part, these were probably not close cases, so the fact that the analysis (ostensibly) under the 2019 Revised Subject Matter Eligibility Guidance was basically the same as under the old guidance may not necessarily spell trouble. That said, If your claim can still be lumped into the very broad “certain methods of organizing human activity” the new guidance may not be of much help.
- I have put all of the opinions discussed below (along with their the final rejections and briefs) in the BigPatentData shared knowledge base. For the foreseeable future I will try to put all opinions, rejections, and responses citing the 2019 Guidance in there. So if you need some help working with the 2019 Guidance, give the knowledge base a try. If you come across any opinions/briefs/responses citing the 2019 Guidance that are not in there, please help the community by dropping the application number in a comment here or on LinkedIn or send me an email. Thanks!
First Impression: Not Looking Promising
Five of the six decisions citing the 2019 Guidance were affirmances:
12/906,381 – 101 rejection AFFIRMED (find it in the knowledge base here)
13/225,430 – 101 rejection AFFIRMED (find it in the knowledge base here)
13/799,724 – 101 rejection AFFIRMED (find it in the knowledge base here)
13/810,242 – 101 rejection AFFIRMED (find it in the knowledge base here)
13/841,634 – 101 rejection AFFIRMED (find it in the knowledge base here)
The one which may have benefited from the new guidance is:
A Closer Look: Most of these Claims Were Probably Not “Close Cases”
12/906,381 (PTAB says: “Fundamental Economic Practice”):
1. A method for conducting an exchange, comprising:
[(a)] distributing, by at least one processor in electronic communication with at least one memory, a first set of entries in
at least one first activity, the at least one activity having at least one winner;
[(b)] conducting trading of at least one of the entries between at least one buyer and at least one seller, in which conducting trading of at least one of the entries between at least one buyer and at least one seller comprises:
[(bl)] receiving, by the at least one processor, from a first user comprising a buyer, at least one buy request associated with at least one entry of the first set of entries, the at least one entry comprising a first entry that identifies at least one participant to be a winning participant;
[(b2)] receiving, by the at least one processor, from a second user comprising a seller, at least one sell request associated with the at least one entry of the first set of entries;
[(b3)] matching, by the at least one processor, the at least one buy request with the at least one sell request; and
[(b4)] responsive to matching the at least one buy request with the at least one sell request, causing, by the at least one processor, the at least one entry of the first set of entries to be transferred from the second user to the first user.
13/225,430 (PTAB says: “Fundamental Economic Practice”):
1. A computer-implemented method of determining reference pricing of health care deliverables to be obtained by users and to be paid for by a payer other than the users, comprising:
 storing in a provider prices database negotiated rates for a health care deliverable from each of a plurality of health care providers, each health care provider located at a geographic location;
 receiving from a computing device of a payer a maximum distance for a user to travel to obtain the health care deliverable;
 determining using the negotiated rates in the provider prices database, the reference price for the health care deliverable to be
obtained by the user as a function of the maximum distance and the negotiated rates of health care providers having geographic locations
within the maximum distance, wherein the reference price is a capped price the payer will pay for the health care deliverable obtained by the user;
wherein the payer is not the user who obtains the health care deliverable from the health care provider; and
 storing the reference price in association with the health care deliverable in a reference price database.
13/841,634 (PTAB says: “Fundamental Economic Practice”):
1. A method for determining a valuation of a subject item, the method being implemented by one or more processors
analyzing a listing of a subject item to determine a set of characteristics for the subject item;
determining, based at least in part on data retrieved from a third party online source via a network connection,
comparable criteria for the subject item based on the set of characteristics;
determining multiple comparable transactions conducted through an online marketplace, based at least in part on a search of a transaction log of the online marketplace using the comparable criteria; and
calculating the valuation for the subject item based on the multiple comparable transactions, wherein calculating the valuation includes providing an indicator of valuation elasticity based on a set of unsuccessful offers recorded in the transaction log of one or more of the comparable transactions.
13/810,242 (PTAB says: “Advertising = Fundamental Business Practice”):
1. A method for rendering an advertisement, the method being executed by an apparatus that comprises a user interface
and a processor, the method comprising:
 identifying, by the processor, whether a current advertisement received or did not receive a negative input;
 estimating, by the processor, which one or more features of the current advertisement caused the negative input, the estimating being based at least partially on a discriminative power of the one or more features of the current advertisement, the one or more features of the current advertisement being arranged in a feature space configured in the apparatus and accessible by the processor, the feature space comprising features associated with
 selecting, by the processor, a new advertisement that differs from the current advertisement, the selecting being based at least partially on a distance in the feature space between one or more features of the new advertisement and the estimated one or more features of the current advertisement;
 replacing, by the processor, the current advertisement with the new advertisement.
13/799,724 (PTAB says: “Fundamental Economic Practice”):
1. A method for processing payment transactions, the method comprising:
receiving, by a card reader, batched information from a mobile device in communication with the card reader, where the batched information includes a plurality of information items for a payment transaction between a merchant associated with the mobile device and a cardholder associated with a payment card, wherein the plurality of information items in the batched information include a passcode input by the cardholder on the mobile device;
storing the batched information in the card reader;
receiving, by the card reader from the payment card, a plurality of requests for at least some of the information items;
providing, from the card reader to the payment card, corresponding information items from the stored batched information on an individual basis in response to the requests, without separately requesting each of the corresponding information items from the mobile device in response to the
requests, to cause the payment card to determine whether the payment transaction can be authorized;
receiving, by the card reader from the payment card, a first transaction authorization request message in response to a determination by the payment card that the payment transaction can be authorized; and
sending, from the card reader to the mobile device, a second transaction authorization request message in response to the first transaction authorization request message, to cause the mobile device to send a third transaction authorization request message over a network to a payment authorization entity.
In my opinion, right or wrong, the first three claims above never stood a chance under any possible guidance that is in line with current judicial precedent.
I think the fourth (13/810,242) could have been an interesting case if the claim was actually specific enough to require an interpretation that it was directed to online advertising. Instead it is claimed so broadly that I think it was fair to say it was directed to any advertising.
The fifth application, I think (and hope), was a much closer case. I think the “Batched mode” power saving argument should have been good enough to qualify as an “improvement in the functioning of a computer or an improvement to other technology or technical field,” which the 2019 Guidance says is indicative of being integrated in a practical application. (The PTAB argues that the claim doesn’t really claim “batched mode,” but they completely ignore the “without separately requesting” language).
A Possible Ray of Hope
Finally we come the one that was reversed:
13/287,831 (PTAB says: “‘Collecting Usage information’ is not an abstract idea under the 2019 Guidance”):
1. A method for providing services corresponding to productivity applications comprising:
collecting usage information from devices connected to a computing system in response to inputs to the devices, the usage information including occurrences of usage events generated by the devices, the usage events being associated with activities related to content encoded on a data store;
providing an interface for configuring the usage events and to provide the usage information;
receiving by an analytics engine the usage information and aggregating the usage information for a specified period of time; and
automatically altering operations of the computing system based on the aggregated usage information, the operations including at least one of a retention time of the content, a crawl policy of the content, a backup policy of the content, a restore schedule of the content, and one or more storage tier levels of the content.
Unfortunately, it is a pretty short opinion that doesn’t give us much to work with. After a lengthy cite to the 2019 Revised Subject Matter Eligibility Guidance they simply say:
More specifically, the Examiner identifies the abstract idea as “a method for collecting usage
information.” Ans. 4.
Appellants argue that the claims are not directed to an abstract idea; instead, Appellants argue the claims are directed to a technological solution
to a technical problem. See App. Br. 13—14; Reply Br. 3-4.
On the current record, we are persuaded that the Examiner has failed to identify an ineligible abstract idea. In light of our guidance, because
collecting usage information is not a mathematical concept, an identified method of organizing human activity, or a mental process, we conclude
“collecting usage information” it is not an abstract idea. See Memorandum at 52; see also id. at 53 (“Claims that do not recite matter that falls within
these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas, except” in rare circumstances.). Accordingly, we do
not sustain the Examiner’s rejection.
So there may be a ray of hope here. It’s an (in my probably biased, and definitely unsupported opinion) aggressively-broad claim. Just the type of claim that Examiners and the PTAB were very likely to give short shrift to with 101, rather than doing the hard work of 102, 103, and/or 112 rejections1. But that was not exactly the case here because there had been art-based rejections which led to an allowance — which was then withdrawn in light of Alice. Since then, the fight has been only the 101 issue. So, with the reversal, this application seems destined for allowance because reopening after a reversal is rare.
1If I was an examiner it would be very tempting to take this approach because I also look at this case and think “no way that is patentable over the prior art.” And what’s currently the best way to make sure this “surely anticipated and obvious claim” is dead in the water? A 101 rejection. But of course, looking for the best way to turn my preconceived notions into reality is not how patent examination is supposed to work. Hopefully A.I.-assisted patent examination will soon help to take some of the human bias out of examination.