PTAB Panel Can’t Agree on Patent-Eligibility

Lest anyone think that patent-eligibility determinations at the USPTO’s Patent Trial and Appeals Board (PTAB) are easy, even in appeals in ex parte patent prosecution, consider the recent case of Ex parte Plondke, Appeal 2016-006905, Application 13/241,673 (PTAB April 3, 2017).  The claims at issue were directed to data processing software patents, specifically to an improved technique for searching for a “global extremum,” i.e., a max or min value.  Two of the three panel judges agreed to reverse the examiner’s patent-eligibility rejection under 35 U.S.C. § 101, but their third colleague dissented.

Exemplary claim 1 recites:

A method of determining an extremum in a processing system, the method comprising:

storing a reference location identifier and a reference extremum in a storage medium;

receiving an input data set comprising two or more data elements from a memory system;

determining an input extremum of the two or more data elements of the input data set;

determining a corresponding location identifier of the input extremum; and

comparing the input extremum with the reference extremum to determine an output extremum and output location identifier, based on the comparison.

The Majority Opinion

According to the patent examiner, the claim “limitations are an abstract idea” because “they are directed to mathematical relationships/processing/algorithms.”  The panel majority, after digging into the Appellants’ Specification, disagreed.  The Specification explained that:

Appellants’ invention “maintain[s] a reference extreme value and its corresponding location identifier during the course of searching for a global extremum in the data set” that “are appropriately updated during the course of the search,” thereby, solving the art recognized problem of determining a global extremum without consuming “intensive” computing resources.

Moreover, under Enfish, LLC v. Microsoft Corp., the claims could not be considered an abstract idea because they solved a specific problem in the software arts.  Quoting Enfish, the majority explained that claim 1 recites a “‘specific asserted improvement in computer capabilities’ rather than ‘a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool.’”

Although novelty and non-obviousness over prior art are not supposed to mean that claims survive Section 101 patent-eligibility rejections, it is worth noting that, in addition to reversing rejections under 35 U.S.C. § 101, the panel also reversed rejections under 35 U.S.C. § 103.

The Dissent

Judge Bui in dissent found that all of the limitations of claim 1 recited “abstract processes of collecting, storing, and analyzing information of a specific content.”  At the second prong of the Alice test, moreover, Judge Bui saw nothing that recited “significantly more” than these abstract concepts.  Even the “system” claims “simply incorporate a general-purpose processor to perform the abstract concept of collecting, storing, and analyzing information.”

Further, Judge Bui explained, Enfish was inapposite.  The claims here did not “seek to improve any type of computer capabilities, such as Enfish’s ‘self-referential table for a computer database.’”  Rather, the claims here recited nothing more than an abstract idea.

Interestingly, Judge Bui dissented only from the reversal of the Section 101 rejections, thus at least implicitly taking the position that claims could be patentable over prior art, and nonetheless fail the Alice patent-eligibility test.

Lessons

Lesson number one, as always, is that whether in federal court or before the USPTO’s Patent Trial and Appeals Board (PTAB), patent-eligibility determinations rest on adjudicators’ subjective reading of claims.  But as practitioners, there are things we can do to orient that reading.  The case here emphasizes the desirability of presenting a technical problem being solved in the software patent specification; fail to present a technical solution at your peril because a technical solution is evidence supporting patent-eligibility.

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