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PTAB Starts to Weigh in on 2019 Revised Subject Matter Eligibility Guidance

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.

TL;DR

  • 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:

13/287,831 – 101 rejection REVERSED (find it in the knowledge base here)

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:

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:

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
and comprising:

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:

13/799,724 (PTAB says: “Fundamental Economic Practice”):

1. A method for processing payment transactions, the method comprising:

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:

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.

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