Technical Solutions to Computer-Based Problems Give Patent Applicants Success at the PTAB
In August and September of 2017, the Patent Trial and Appeal Board of the U.S. Patent Office has issued an unusually high number of reversals in response to appeals from rejections based on subject-matter ineligibility under 35 U.S.C. § 101. Based on a review of those decisions, it appears that there may be an emerging pattern for the Board to reverse rejections when the claim arguably presents an advancement rooted in computer technology that solves a technological problem, even though the claim may at least tangentially be related to a business process.
For example, the Board in Ex parte Dwyer et al., No. 2016-002377, 2017 Pat. App. LEXIS 8844 (P.T.A.B. Sept. 15, 2017), reversed a subject-matter ineligibility rejection of claims relating to a global electronic funds payment system for receiving clearing information required to implement a funds transfer. Based on specific, technical limitations in the claims, the Board held that the claims were directed to generating and delivering a dynamic user interface, which it concluded was not an abstract idea based on DDR Holdings. The Board stated that the claims were rooted in computer technology to solve a problem arising particularly in computer networks, which rendered the claims patent-eligible.
In Ex parte Esque, No. 2015-008269, 2017 Pat. App. LEXIS 8826 (P.T.A.B. Aug. 2, 2017), the Board reversed a subject-matter ineligibility rejection of claims involving internally organizing marketing tasks and related data within a business entity. The Board noted that the Examiner’s characterization of the claims as being directed to customer relationship management ignored the many technical acts required by the claims, including the generation and behavior of specific links, windows, and button groupings. The Board stated that those elements provided a specific means that improved GUI technology, such that they were not directed to an abstract idea.
Finally, the Board in Ex parte Skupin, No. 2016-004714, 2017 Pat. App. LEXIS 8894 (P.T.A.B. Sept. 18, 2017), reversed a subject-matter ineligibility rejection of claims resulting in controlling and/or monitoring at least one apparatus in a medical intervention. The Board held that the claims were directed to inserting an intermediary between two otherwise conventional nodes to move the location where a process is otherwise ordinarily executed, which it concluded was not an abstract idea because it was rooted in Internet technology. The Board also stated that the claimed process presented a particular technical advantage, which meant that the claims were not directed to an abstract idea.
These cases highlight the importance of including the technical details of your invention in the claims, so that those features can be highlighted if faced with a § 101 challenged. In addition, it can be important to disclose the technological challenges overcome, and the ways in which technology is improved, in the patent’s disclosure so those problems and solutions can be relied on to support the patent-eligibility of claimed subject matter.
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