This section contains summaries of September 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.
September 2019 (Approximately 309 Section 101 Decisions were issued in September; 26 are reviewed below)
Ex Parte Song et al; 9/4/2019; TC 3600. The claimed invention was a way of detecting suspicious and fraudulent activities, and more specifically, dynamically associating different risk values to different subjects, so that certain suspicious and fraudulent activities associated with those subjects could be automatically detected with higher resolution and accuracy. The Board found fundamental economic principles or practices, which constituted a certain method of organizing human activity. The Board also found mental processes and mathematical concepts. Section 101 rejections affirmed.
Ex Parte Paturu; 9/4/2019; TC 3600. The claimed invention was directed to a cancer tracking system used for scheduling, tracking and filing. The Board found mental processes and certain methods of organizing human activity. Section 101 rejections affirmed.
Ex Parte Lynch et al; 9/3/2019; TC 3600; Real party in interest, Accenture Global Services Limited. The Specification disclosed a patient anonymizing system using salted hashing of confidential protected health information (PHI) to generate an anonymized record. The Specification further disclosed a master patient index server that aggregated anonymized records using match confidence levels produced: (1) through the use of comparison vectors generated by comparing hash values of confidential PHI for anonymized records and (2) through the use of a confidence vector weighing match conditions. The agreed with the Examiner that claim 1 recited an abstract idea but did not agreed with the Examiner’s Step 2A, prong two, analysis. Section 101 rejections NOT SUSTAINED.
Ex Parte Verego et al; 9/3/2019; TC 3600; Amdocs Development Limited and Amdocs, Inc. The claims related to a component-based data processing system that could be tailored according to a plurality of different business’s needs. In a disclosed embodiment, the system included multiple data processing components that provided function, role, or task-specific processing and could be adapted and selectively invoked according to data processing requirements of each business organization. The Board found the judicial exception―mental processes or organizing human activities―was integrated into a practical application. Section 101 rejections REVERSED.
Ex Parte Mcquade et al; 9/3/2019; TC 3600; Real party in interest, Zonar Systems, Inc. The claimed invention related to vehicle data collection, including operational data and fault code data. Section 101 rejections affirmed, with one Board member dissenting.
Ex Parte Mattox; 9/3/2019; TC 3600; Real party in interest, Access the USA, LLC. The claimed invention related generally to computer software. More specifically, the invention related to a method for financing investments that met the requirements of the United States government’s EB-5 immigrant investor visa program. Section 101 rejections affirmed.
Ex Parte Wexler et al; 9/3/2019; TC 3600. The claimed invention related to devices and methods for capturing and selectively processing images from an environment of a user. More specifically, embodiments of the claimed invention related to an apparatus and methods for distinguishing between different types of captured image data. Exemplary embodiments used rules to classify images as key images and auxiliary images and delete some of the auxiliary images. Other embodiments identified a visual trigger associated with a private contextual situation, and deleted images including that visual trigger. Section 101 rejections sustained.
Ex Parte Grant et al; 9/3/2019; TC 3600; Real party in interest, Photon Medical Communications, Inc. The claimed invention related to consultation and remote diagnosis. Because additional elements of claim 1 integrated mental processes into a practical application, the Board determined the claim was not directed to an abstract idea. Section 101 rejections REVERSED.
Ex Parte Bergenudd et al; 9/3/2019; TC 3600; Real party in interest, NASDAQ Technology AB. The claimed invention related to calculating a worst case margin requirement for a particular order, wherein if the calculated worst case margin requirement exceeded the pledged collateral, then the order was not processed (i.e., matched). Section 101 rejections sustained.
Ex Parte Takeshita; 9/3/2019; TC 3600; Real party in interest, Sony Corporation. The claimed invention generally related to information processing apparatuses, information processing methods, information management apparatuses, information management methods, recording media, and information processing systems, and more particularly to an information processing apparatus, an information processing method, an information management apparatus, an information management method, a recording medium, and an information processing system which were capable of providing services using electronic money of high value for users and electronic money companies. Section 101 rejections affirmed.
Ex Parte Mejegard et al; 9/3/2019; TC 2800; Real party in interest, Husqvarna AB. The claimed invention generally related to providing a system that assisted with collection of informative data related to the running of individual powered machines, and using this collected data to evaluate the performance and status of the machine. Section 101 rejections affirmed.
Ex Parte Boyer et al; 9/3/2019; TC 3600; Real party in interest, IBM. The claimed invention related generally to service oriented architectures, and more particularly to a system, article, and method that provided a situationally aware software information tool that assigned a consistent set of tags to internet resource identifiers (IRs). Additional elements recited a specific manner of associating tags with IRs (of user viewed content) and presenting the tagged IRs to a different user, which provided a specific improvement over prior systems, resulting in an improved (more consistent) process of tagging internet resource identifiers. Thus, the claim as a whole integrated the mental process into a practical application. Accordingly, claim 1 was not directed to a judicial exception (an abstract idea). Section 101 rejections in ERROR.
Ex Parte Studnitzer; 9/3/2019; TC 3600; Real party in interest, Chicago Mercantile Exchange Inc. The claims were directed to a trade matching platform with variable pricing based on clearing relationships. Section 101 rejections affirmed.
Ex Parte Feltham et al; 9/3/2019; TC 2100; Real party in interest, IBM. The claimed invention was directed to controlling the display of a document, when the document comprised multiple columns. The Board entered a new ground of rejection under Section 101. The preamble of claim 11 recited a “computer readable storage medium,” which was broad enough to encompass non-patentable signals.
Ex Parte Fried et al; 9/3/2019; TC 2100; Possible real party in interest, IBM. The preamble of claim 23 recited a method of detecting corruption of a shared data record in a database subject to contemporaneous read and write access by multiple data processing system requesters. The Board did not agree with the Examiner’s finding that claim 23 was directed to the abstract idea of a mathematical concept. In addition, the claim as a whole included additional elements that integrated the calculating steps into the practical application of detecting and handling a corrupt shared data record in a database subject to contemporaneous read and write access. Section 101 rejections NOT SUSTAINED.
Ex Parte Tziortzis et al; 9/3/2019; TC 3600; Real party in interest, BlackBerry Limited. Decision on Request for Rehearing. In the initial decision, the Board found the claims were directed to “distributing messages [i.e., advertisement] to electronic devices” including “selection and presentation of advertisements” which was considered as a fundamental economic practice involving “advertising, marketing, and sale activities” and one of the “certain methods of organizing human activities.” Request for rehearing granted but request for changing the decision denied.
Ex Parte Radhakrishnan et al; 9/3/2019; TC 3600; Real party in interest, Uber Technologies, Inc. Decision on Request for Rehearing. Claim 1 recited a distributed network architecture including one or more processors of a transport arrangement service and mobile computing devices of users to enable a feedback system for a transport service. Request for rehearing granted but request for changing the decision denied.
Ex Parte Rich et al; 9/3/2019; TC 3600. The application related generally to methods and systems for investigating fraudulent transactions. Section 101 rejections sustained.
Ex Parte Westphal; 9/3/2019; TC 3600; Real party in interest, W.W. Grainger, Inc. The claim related to a system for providing a reference collection that was personalized for a consumer. Section 101 rejection sustained.
Ex Parte Amirbekyan et al; 9/3/2019; TC 3600; The claims related to a system and method for creation of a marketing campaign. Section 101 rejections sustained.
Ex Parte Cummins et al; 9/3/2019; TC 3600. The patent application concerned systems and methods for the distribution and updating of limited redemption coupons. Section 101 rejections sustained.
Ex Parte Theocharous et al; 9/3/2019; TC 3600; Real party in interest, Adobe Systems Incorporated. The claimed invention related to predictive modeling of consumer marketing systems. Specifically, according to the Specification, the invention improved upon the “myopic” nature of traditional models, by applying particular techniques (as recited in the claims) that took into account “inter-state dependencies” and “long-term objectives,” in order to yield optimized “return/reward to . . . digital marketers.” Under Guidance Step 2A, Prong Two, the Board determined that claim 17 recited additional elements that integrated the judicial exception into a practical application. Specifically, claim 17 recited a particular algorithm that improved the functioning of a computer by “less memory usage” and “faster computation time.” Moreover, the Board did not find sufficient support for the Examiner’s finding that claim 17 merely recited “generic computer instructions.” Section 101 rejections REVERSED.
Ex Parte Maiani; 9/3/2019; TC 3600. The claimed invention related to rating properties, such as residential properties, in order to assist prospective buyers and sellers. Specifically, the invention provided a way for “comparing properties” that was “easy for the potential purchasers to utilize and understand.” Section 101 rejections not in error.
Ex Parte Kranzley; 9/3/2019; TC 3600; Real party in interest, MasterCard International Incorporated. The claimed invention related to a method and system for controlling risk in a payment transaction. Section 101 rejections of independent claims 1, 9, and 10 not in error. But the Examiner’s failure to address the dependent claims’ additional limitations fell short of establishing a prima facie case of ineligibility. Accordingly, Section 101 rejections of dependent claims 2-8 and 11-17 were REVERSED.
Ex Parte Dubbles et al; 9/3/2019; TC 3600; Real party in interest, IBM. The preamble of claim 22 recited a system for medical imaging data management in a medical cloud computing environment. Section 101 rejections not in error.
Ex Parte Zollo et al; 9/3/2019; TC 3600; Real party in interest, Johnson & Johnson Services, Inc. The claimed invention related to the field of sales and marketing analysis and prediction. Section 101 rejections not in error.