The PTAB Provides Guidance on Patent Eligibility Framework
Earlier this month, the Patent Trial and Appeal Board (PTAB) designated as informative four of its decisions applying the newest patent eligibility framework. This new eligibility framework, based on the United States Patent and Trademark Office’s guidance which took effect in January of this year, is meant to clarify when an abstract idea is and is not eligible for patent protection under Section 101 of the Patent Act. “Informative” decisions are not binding on PTAB judges, but do represent the PTAB’s “general consensus on recurring issues.”
Because abstract ideas, laws of nature, and natural phenomenon “are the basic tools of scientific and technological work,” the Supreme Court has expressed concern that monopolizing these tools by granting patent rights may impede innovation rather than promote it. Under the new framework, the PTAB first determines if a claim recites one of the following categories: (1) mathematical concepts, (2) methods of organizing human activity, or (3) mental processes. If so, that claim is still eligible for patent protection if the claim is “integrated into a practical application.” A claim reciting a judicial exception is “integrated into a practical application” if it adds a specific limitation beyond the judicial exception that is not a “well-understood, routine, conventional activity in the field.” On the other hand, if the claim “simply appends well-understood, routine, conventional activities previously known to the industry,” it is still directed to that abstract idea and ineligible.
The four decisions designated by the PTAB provide helpful examples of when an abstract idea has or has not been integrated into a practical application:
- In the first decision, an application’s claims were directed to a magnetic resonance (MR) tomography apparatus that uses a mathematical equation to adjust for the sensitivity of input signals. The patent examiner determined that the claims were directed to an abstract idea that was similar to “abstract ideas relating to mathematical formulas and ‘collecting information, analyzing it, and displaying certain results of the collection and analysis.’” According to the examiner, the addition of the MR tomography apparatus did not meaningfully limit the abstract idea beyond generally linking the formula’s use to a computer.
The PTAB reversed the examiner’s rejection. The mathematical formula in the claims fell within the judicial exception for mathematical concepts. MR tomography systems collect data using surface coils, but the sensitivity of the surface coils decreases with distance. While there were existing methods of adjusting for sensitivity, using a mathematical formula represented an improvement over the prior art. Because the claims solved a technical problem by improving sensitivity correction in MR tomography devices, the PTAB found that they successfully integrated the recited mathematical concept into a practical application.
- In the second decision, an applicant claimed a method of using several mathematical formulas to map surgical procedures in 3D. The claims fell within the judicial exception for mathematical concepts. The examiner found that “the claimed invention fails to recite any specific machine for performing the apparent computational steps” and that “generic computer implementation is not the sort of ‘additional feature’ that provides any ‘practical assurance that the process is more than a drafting effort designed to monopolize the [abstract idea] itself.’”
Again, the PTAB reversed the rejection, finding that the claims apply the recited mathematical formulas to improve 3D imaging by avoiding errors introduced in the prior art. Further, the claim limitations apply the mathematical concepts only with a specific machine, a catheter navigation system, such that the methods at issue could not be performed without the use of the machine. Therefore, the abstract idea was integrated into a practical application.
- In a third decision, the PTAB upheld an examiner’s rejection of a claimed method of creating a project workflow on a computer. (A workflow is a pattern of activities, such as determining a project’s name or purpose, that accomplish a specific purpose.) The claims recite a method of organizing human activity, and the automation of the manual process of creating a workflow did not improve the functioning of the computer or any other technology or technical field. Therefore, the claimed method did not integrate the judicial exception into a practical application.
- Finally, the PTAB affirmed the examiner’s rejection that a method for selecting a golf club that fits an individual player’s needs was not patentable. The claimed method was directed to a mental process, but the claims did not provide a technical solution to a technical problem, such as “improv[ing] how the measurements are taken or improv[ing] how the gold club is manufactured.” Because the PTAB did not consider helping a user select a golf club that fits the user’s needs a technical problem, the abstract idea in the claims was not integrated into a practical application.