The PTAB Can Be Aggressive in Raising Patent-Eligibility Under Alice

Entering a new ground of rejection under 35 U.S.C. § 101, the Patent Trial and Appeal Board, deciding an ex parte appeal, applied Alice Corp. Pty. Ltd. v. CLS Bank Int’l. to hold that claims directed to a system and method for “propagating a media item recommendation” were not patent-eligible. Ex parte Svendsen, Appeal 2012-010845; Application 11/757,079 (PTAB April 3, 2015). Although agreeing with the Appellant that the Examiner had erred in making prior art rejections, the PTAB found that the claims were “directed to the abstract idea of a first and second ‘message’ each having content ‘information’ (i.e., data) comprising ‘a media item identifier of a media item and presence information.’” Further, the PTAB found that the claims did not recite “significantly more,” but instead simply incorporated known computer concepts.

This decision, like most PTAB decisions, was designated as non-binding. Nonetheless, this is one of those decisions that strikes fear into the heart of a practitioner, and not just because the PTAB raised the patent-eligibility question de novo. The claims appear on their face to have only technical application, and, along the lines used to uphold patent-eligibility by the Federal Circuit in DDR Holdings, LLC v. Hotels.com, L.P., to be directed to solving an Internet problem. Further, the PTAB’s statement of the “abstract idea” embodied by the claims, quoted above, by itself seems to belie the notion that the claims “broadly preempt” an entire field of use or field of technological endeavor.

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