During the past week, the Patent Trial and Appeal Board issued opinions in response to two requests for rehearing that shed light on how it decides questions of subject-matter eligibility under 35 U.S.C. § 101.
In Ex parte Dickson et al., No. 2015-005044, 2017 Pat. App. LEXIS 7726 (Fed. Cir. Aug. 16, 2017), the Board reiterated that claims directed to an interface for analyzing financial instruments were directed to an abstract idea. The Appellant had argued that the rejection was improper because the Examiner had not provided sufficient evidence that the claimed process was routine or conventional. In response, the Board concluded that no evidence is required to find that a practice is fundamental or conventional. In addition, the Board thoroughly analyzed the specification, emphasizing that the characterization of the advance in the application’s disclosure is more persuasive than attorney argument when looking for a technological improvement or an improvement to computer functionality. Here, the Board found that the application presented the advancement as an improvement in efficiency resulting from computer implementation, not an improvement to the efficiency of operation of the computer itself. As a result, the addition of the computer did not render the claims patent-eligible.
The Board in Ex parte Itagaki et al., No. 2015-002702, 2017 Pat. App. LEXIS 7775 (Fed. Cir. Aug. 21, 2017), reaffirmed that claims to classifying images from an MRI machine were directed to an abstract idea. The Board conducted an extensive problem-solution analysis, relying heavily on the specification’s characterization of what the advance was over the prior art. In so doing, the Board concluded that the claimed advance represented an increase in operator efficiency through image classification, not an improvement in hardware functionality. This analysis was in accordance with the emphasis in the specification on how images are classified to aid an operator, not on how the MRI machine operates more efficiently as a result of the image classification.
As a result, patent applicants and patent owners looking to increase the likelihood that their claims will survive a subject-matter eligibility challenge may consider adding an explanation of a technological problem solved, and a technical improvement achieved by, the claimed subject matter to the specification. By contrast, patent challengers may frame a subject-matter eligibility argument in terms of what the specification says about the advancements presented by the claims.
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