PTAB Decisions on Section 101
AUGUST 2019
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This section contains summaries of August 2019 decisions of the Patent Trial and Appeal Board (PTAB) concerning 35 U.S.C. Section 101, which sets forth the four categories of patent-eligible subject matter: process, machines, manufactures, and compositions of matter.
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AUGUST 2019 (Approximately 226 Section 101 Decisions were issued in August; 21 are reviewed below)
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Ex Parte Srivastava et al; 8/30/2019; TC 2100; Real party in interest, IBM. The preamble of claim 1 recited a method of displaying results of one or more query searches. The Board found the abstract ideas of organizing human activity and mental processes. Section 101 rejections affirmed.
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Ex Parte Sarver; 8/30/2019; TC 3600; Real party in interest, Assessure Systems, LLC. The claimed invention was a tax fraud finder network having a device for calculating a score based on information provided to government agencies by using multiple collections of information. An HEV algorithm used mismatches in different sets of collections to arrive at a display and edit score. A report was generated and sent to local government agencies to find violations. Because the claims involved collecting, analyzing, and categorizing information, the Board found the claims to be directed to “observation, evaluation, judgment, and opinion,” which were mental processes. Section 101 rejections affirmed.
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Ex Parte Tonomura et al; 8/29/2019; TC 2100; Real party in interest, Nippon Telegraph and Telephone Company. The claims were directed to channel coding. The Board concluded the claims integrated the judicial exception of mathematical concepts into a practical application, because the claimed channel decoding device detected generation of lost data lost in a channel and decoded the lost data “thus yielding corrected data.” Although claim 1 did not explicitly recite a communication system, the Board agreed with the Appellants that addressing erroneous data in a channel was a technical problem involving communications systems. Thus, claim 1 implemented an improvement in communication technology that more efficiently corrected for lost data in a channel. Section 101 rejections REVERSED.
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Ex Parte Kim et al; 8/28/2019; TC 3700; Real party in interest, Knowre Korea Inc. The claimed invention related to education services provided to a user electronically, such as online. The preamble of claim 1 recited a system for providing education service based on knowledge units. The Board found mental processes. Section 101 rejections affirmed.
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Ex Parte Poon et al; 8/27/2019; TC 2100; Real party in interest, Dell Products, L.P. The invention related to enterprise software development and management, and more specifically to an agile framework for vertical application development and delivery. The Board agreed with the Examiner that the claims, as drafted, did not require processors to implement the software functions recited in the claims. Thus, even if “software development platforms” and “infrastructure platforms” could be understood to include processors, the terms on their own were broad enough to encompass simply the software itself as well as software implemented on processors. Section 101 rejections affirmed.
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Ex Parte Locker et al; 8/26/2019; TC 2100; Real party in interest, Lenovo (Singapore) PTE. LTD. The claimed invention pertained to monitoring the testing environment in distant learning situations. Input from audio and video sensors would be collected and processed to detected unauthorized behavior patterns. The Board determined that the recited steps of collecting information (an observation), identifying (evaluation), and mapping (judgment about what to do), were mental processes determined to be abstract ideas such that claim 1 recited an abstract idea. Section 101 rejections affirmed.
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Ex Parte Wu et al; 8/26/2019; TC 2800; Real party in interest, KLA-Tencor Corporation. The claimed invention was directed to methods and systems for detecting reliability defects on wafers. The Board found the claim 1 steps of determining and identifying involved mental processes. Section 101 rejections affirmed.
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Ex Parte Rogers; 8/23/2019; TC 2100; Real party in interest, Vecima Networks, Inc. The claimed subject matter related to storing data more efficiently by having multiple file entries in a file allocation table index the same clusters on a storage medium. Claim 1 was a system, comprising: a storage server comprising a memory and a control circuit operable with the memory, the storage server in communication across a network with one or more client devices, the control circuit to: create a file allocation table to organize clusters of a computer readable medium; the file allocation table comprising a plurality of distinguishable file entries, each of the distinguishable file entries indexing clusters of the computer readable medium; at least two of the plurality of distinguishable file entries indexing selfsame clusters of the computer readable medium. The Board said the claim limitations did not recite subject matter that fell one of the three judicially-excepted groupings: (1) mathematical concepts, (2) certain methods of organizing human activity such as fundamental economic practices, and (3) mental processes. Section 101 rejections REVERSED.
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Ex Parte Oakes et al; 8/22/2019; TC 3600; Real party in interest, USAA. The claimed invention contemplated a system, method, and computer-readable medium with computer-executable instructions for remotely redeeming a negotiable instrument. The Board said claim 2, given its broadest reasonable interpretation, recited depositing a financial instrument, i.e., a fundamental economic practice, which was a method of organizing human activity and, therefore, an abstract idea. Section 101 rejections affirmed.
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Ex Parte Riscalla; 8/22/2019; TC 3700. The claimed invention related to a method and system for ordering prepared food products via a network. The invention additionally related to a method and system allowing the customer to select a desired vendor location, and a desired physical location for delivery (drop-off) and drop-off time, based upon a prearranged course set by the selected vendor. The Board found that the steps involved in the ordering and delivery of food products were a commercial transaction, as well as managing transactions between entities, and therefore an abstract idea. Section 101 rejections affirmed.
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Ex Parte Harnick et al; 8/21/2019; TC 3600; Real party in interest, Guy Carpenter & Company, LLC. The claimed invention related generally to calculating industry index amounts. The Board found mental processes and certain methods of organizing human activity. Section 101 rejections affirmed.
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Ex Parte Flinn et al; 8/20/2019; TC 3600: Real party in interest, ManyWorlds, Inc. The claimed invention related to extending the business process paradigm so as to make processes more explicitly adaptive over time. The Board found Claim 9 achieved the claimed system by obtaining information, analyzing/evaluating information, and applying the analysis/evaluation to additional information. Claim 9 was directed to the abstract idea of certain methods of organizing human activity, and to mental processes. Section 101 rejections affirmed.
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Ex Parte Flinn et al; 8/20/2019; TC 3600: Real party in interest, ManyWorlds, Inc. The claimed invention related to extending the business process paradigm so as to make processes more explicitly adaptive over time. The Board found claim 5 was directed to managing personal behavior or relationships by organizing/arranging information, in this case, video elements. Thus the claim was directed to the abstract idea of certain methods of organizing human activity. Section 101 rejections affirmed.
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Ex Parte Grollmuss et al; 8/20/2019; TC 3600; Real party in interest, Robert Bosch Healthcare Systems Inc. The claimed invention identified a risk factor associated with a patient by (1) identifying an elapsed time between presenting a survey question to the patient and the patient’s entry of a response to the question; and (2) identifying a deviation between the elapsed time and a history of elapsed times taken to answer the survey question. The Board identified abstract ideas falling within the categories of methods of organizing human activity, mental processes, and mathematical concepts. Section 101 rejections not in error.
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Ex Parte Deirmengian et al; 8/19/2019; TC 3700; Real party in interest, DePuy Synthes Products, Inc. The claimed invention related to a system and method for treating a bone. The Board determined the claims integrated the judicial exception (mental process as abstract idea) into a practical application, i.e., the use of a particular configuration of sensors relative to an implant and fractured bone, and using the data from the sensors in order to generate a ratio of strains measured in a weakened bone region and in a non-weakened region, to provide a normalized value or effect of loads on the bone at those locations. Section 101 rejections REVERSED.
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Ex Parte Tierney et al; 8/15/2019; TC 3600. The claimed invention related to gift processing systems/methods and generally included gifting operations related to financial transfers utilizing credit card, debit card, and/or ACH transactions, as well as nonfinancial gift transactions of time, labor, and the like. The Board found certain methods of organizing human activity. Section 101 rejections affirmed.
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Ex Parte Dicks et al; 8/14/2019; TC 3600; Real party in interest, MedApps, Inc. The claimed invention related to receiving medical device data transmitted in any format and from any medical device. Notably, the system could optionally communicate with multiple medical devices, regardless of the type of wired connection or communications protocol utilized by each of the medical devices, and could retransmit (and optionally reformat) data from the medical devices to any desired recipient using any suitable frequencies and communication protocols. The Board found additional limitations integrated the abstract concept of receiving and transmitting data into a practical application. In particular, the claim did not merely receive and transmit data, but rather, in response to the received data, automatically configured a medical device interface to communicate using a frequency and communication protocol used by a medical device. The use of the claimed medical device interface provided an improvement over the use of existing medical devices in wireless device communications. Section 101 rejections were IN ERROR.
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Ex Parte Mann et al; 8/12/2019; TC 3600; Real party in interest, JPMorgan Chase Bank, N.A. The claimed invention was a way of performing transactions related to an account, so as to eliminate the need for the physical presence of a transaction card during the transaction. The Board concluded claim 44 was provisionally directed to payment processing by determining whether a user was authorized to pay by comparing data to criteria and transmitting a notification after receiving pertinent data, which was a commercial and legal interaction, one of certain methods of organizing human activity identified in the 2019 Revised Guidance, and, thus, an abstract idea. Section 101 rejections were proper.
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Ex Parte Watanabe et al; 8/5/2019; TC 1600; Real party in interest, Shimadzu Corporation and Osaka University. The claimed invention related generally to techniques for clinical diagnosis and screening of colon cancer using a multiplex colon cancer marker panel. The Board found a law of nature and a mathematical concept. Section 101 rejections affirmed.
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Ex Parte Shkedi et al; 8/2/2019; TC 3600; Real party in interest, Datonics, LLC. The claimed invention was directed to profile-based targeting placement services based on types of profile attributes. The preamble of claim 1 recited a method for providing collected profiles using one or more computers. The Board determined that the claim was directed to the concept of user profile-based targeting based on types of profile attributes, which was directed to the concept of targeted information practices, which was a fundamental economic practice, i.e., a judicial exception. Section 101 rejections sustained.
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Ex Parte Santovena et al; 8/1/2019; TC 3600; Real party in interest, Marsh USA, Inc. The claimed invention was a way of insurance risk matching. The Board conclude claim 1 recites a method for buying and selling insurance by matching insurance accounts based on a calculation using insurance account and similarity account data. The Board noted mental processes. Section 101 rejections were proper.
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