The PTAB continues to reverse examiner 101 rejections

December 4th, 2018

The PTAB Reversed an Examiner’s 101 Rejection of Claims for a Method of Characterizing Atherosclerotic Plaque:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001873-11-06-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Thompson Reuters Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017002108-10-30-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Verizon Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001069-10-30-2018-1

 

The PTAB Reversed an examiner’s 101 Rejection of Claims Owned by Nokia:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017002730-11-06-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims for a Link Registry Owned by VMWare:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017009092-11-15-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of IBM Claims for a Method for Policy Based Energy Management: https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017005502-11-14-2018-1

 

 

More PTAB 101 Reversals – stems cells & inventory management & options trading

December 3rd, 2018

The PTAB Reversed an examiner’s 101 Rejection of Claims for a Method of growing stem cells in a patent application owned by CellResearch:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017002349-11-13-2018-1

 

The PTAB Reversed an examiner’s 101 Rejection of Claims for inventory management in a patent application owned by Baker Hughes:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017006294-11-13-2018-1

 

The PTAB Reversed an examiner’s 101 Rejection of Claims for a systems for options trading owned by the NYSE:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001617-11-13-2018-1

 

But then there is this:

 

The PTAB Affirmed an examiner’s 101 Rejection of Claims in a TI patent Application for a Method of measuring velocity:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018003062-11-13-2018-1

 

More Section 101 reversals from PTAB

November 27th, 2018

Here are some recent reversals and an affirmance, provided by Janal Kalis of Schwegman, Lundberg & Woessner, PA:

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a BT Patent Application for Controlling a Digital Subscriber Line:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018009213-10-30-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Thompson Reuters Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017002108-10-30-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection in a Verizon Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001069-10-30-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Medical Diagnostics Patent Application, Finally, for Detecting BDCA-2 Protein:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017010045-11-02-2018-1

 

But then there is this–the PTAB affirmed an examiner’s 101 rejection of claims for a radiographic imaging device:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018002225-11-01-2018-1

 

Has the USPTO SAWS Program Been Retired:  https://thehill.com/hilltv/rising/418300-inventors-raise-questions-over-retired-government-patent-program

 

Ancora v HTC America: restriction computer operations with license limitation eligible under Section 101

November 17th, 2018

ANCORA TECHNOLOGIES, INC. V. HTC AMERICA, INC., Appeal Number: 18-1404, November 16, 2018

In this case the Federal Circuit found a method of restricting software operations within a license limitation to be patentable advance, and in particular, the invention was found to be “a concrete assignment of specified functions among a computer’s components to improve computer security, and that this claimed improvement in computer functionality is eligible for patenting. As a result, the claims were found statutory under § 101.

U.S. Patent 6,411,941 is entitled “Method of Restricting Software Operation With-in a License Limitation.”  The ’941 patent describes an asserted improvement based on assigning certain functions to particular computer components and having them interact in specified ways. The proposed method “relies on the use of a key and of a record.” Id., col. 1, lines 40–41. A “key,” which is “a unique identification code” for the computer, is embedded in the read-only memory (ROM) of the computer’s Basic Input Output System (BIOS) module: the key “cannot be removed or modified.” Id., col. 1, lines 45–51. A “record” is a “license record” associated with a particular application: “each application program that is to be licensed to run on the specified computer is associated with a license record that consists of author name, program name, and number of licensed users (for net- work).” Id., col. 1, lines 52–57.

The asserted innovation of the patent relates to where the license record is stored in the computer and the inter- action of that memory with other memory to check for permission to run a program that is introduced into the computer. The inventive method uses a modifiable part of the BIOS memory—not other computer memory—to store the information that can be used, when a program is introduced into the computer, to determine whether the program is licensed to run on that computer. BIOS memory is typically used for storing programs that assist in the start-up of a computer, not verification structures comparable to the software-licensing structure embodied by the claimed invention. Using BIOS memory, rather than other memory in the computer, improves computer security, the patent indicates, because successfully hacking BIOS memory (i.e., altering it without rendering the computer inoperable) is much harder than hacking the memory used by the prior art to store license-verification information. Id., col. 3, lines 4–17; see Ancora, 744 F.3d at 733–34 (“Thus, the inventors stated that their method makes use of the existing computer hardware (eliminat- ing the expense and inconvenience of using additional hardware), while storing the verification information in a space that is harder and riskier for a hacker to tamper with than storage areas used by earlier methods.”).

Here is an example claim from the patent:

1. A method of restricting software operation within a license for use with a computer including an erasable, non-volatile memory area of a BIOS of the computer, and a volatile memory area; the method comprising the steps of:
selecting a program residing in the volatile memory,
using an agent to set up a verification structure in the erasable, non-volatile memory of the BIOS, the verification structure accommodating data that includes at least one license record,
verifying the program using at least the verification structure from the erasable non-volatile memory of the BIOS, and
acting on the program according to the verification.

 

 

Still a Challenge Getting a Reversal at the PTAB on 101 Eligibility Rejections

November 12th, 2018

The USPTO just reported 28 new PTAB decisions regarding 101 eligibility. All of the decisions affirmed the examiners’ rejections.

More PTAB Reversals of Examiner 101 Rejections

November 2nd, 2018

Some more recent 101 reversals:

 

The PTAB Reversed an Examiner’s 101 Rejection of a. Northwestern Univ. Patent Application for a Method of Analyzing Skin with Raman Spectroscopy:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017009873-10-15-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims Involving Nested Hierarchies:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017008997-10-12-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of Claims for Providing Customer Service:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017001440-10-09-2018-1

 

The PTAB Reversed an Examiner’s 101 Rejection of SAP Claims for a Brokered Service Delivery:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017004816-10-11-2018-1

 

The PTAB Reversed a 101 Rejection of a HP Patent Application for Asset Management:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017004952-10-15-2018-1

EPO Provides Patentability Guidance for AI-based Applications

October 22nd, 2018

The European Patent Office (EPO) has provided further guidance for examination in relation to the patentability of inventions involving mathematical methods and computer programs. This updated guidance is of particular relevance to inventions relating to the fast-growing field of Artificial Intelligence (AI).  This guidance was published as part of the EPO’S annual update of the “Guidelines for Examination”.

The new EPO Guidance first defines AI and ML as being “computational models and algorithms for classification, clustering, regression, and dimensionality reduction, [and which may include] neural networks, genetic algorithms, support vector machines, k-means, kernel regression, and discriminant analysis.”  Additionally, the Guidance states that such computation models and algorithms relating to AI and ML are “per se of an abstract mathematical nature,” indicating that the EPO will likely treat such algorithms as unpatentable by default.
Generally, under examination by the EPO, applications involving mathematical methods are excluded from patentability unless they are determined to have technical character.  In assessing whether a mathematical method possesses such technical character, a determination is made whether the invention produces a technical effect that serves a technical purpose.  A generic purpose such as “controlling a technical system” is not sufficient to confer technical character to the mathematical method.  However, the Guidance specifically notes that “artificial intelligence and machine learning find applications in various fields of technology,” and highlights examples of a “neural network in a heart-monitoring apparatus” and “classification of digital images, videos, audio or speech signals based on low-level features” as both possessing technical character.  In contrast, the EPO identified the classification of text documents solely based on their textual content and classification of abstract data records without any indication of a particular technical use as not having technical purpose.  Furthermore, the EPO treats expressions such as “support vector machine”, reasoning engine”, or “neural network” as merely referring to abstract models that are “devoid of technical character.”
Going forward, it appears that AI-ML-related applications filed in the EPO should specifically highlight how a specific field of technology is improved by the AI-ML-related mathematical methods in order to best demonstrate technical character.
My thanks to Greg Rabin from Schwegman, Lundberg & Woessner, P.A., for this post.

PTAB Reverses 101 Rejection for Ranking Based on Web Page Dwell Time

October 12th, 2018

On an appeal from a 101 rejection by an examiner, the PTAB has reversed a 101 rejection to the following claim, from eBay’s U.S. Application No. 12/814,020:

18. A method comprising:

identifying a plurality of listings stored in a listing database as search results;

determining, using a processor, a respective dwell time associated with each of the plurality of listings, the dwell time based on an elapsed amount of time one or more users view a page describing the listing, and the dwell time associated with a likelihood of a transaction occurring with respect to the listing; and

ranking the listings composing the identified plurality of listings based at least in part on the respective dwell time associated with each of the plurality of listings.

The PTAB reasoned:

“We determine claim 1 is directed not only to the “business idea” of organizing (ranking) search results, but claim 1 also is directed to the use of dwell time, which is an Internet-centric challenge. See, e.g., Spec. 1–4, 12-16. Claim 1 is analogous to the claim at issue in DDR Holdings in that, in both cases, a key aspect of the claim focuses on “a challenge particular to the Internet.” DDR Holdings, 773 F.3d at 1257.”

I agree with the PTAB that this claim involves a idea related to the operation of a computer system, not an idea where novelty is based on a new piece of information or a new type of information that is abstract in nature, and therefore should fall inside 101.

The brief for this appeal was written by Schwegman, Lundberg & Woessner, PA, and in particular, by Jeff Ranck.

 

 

eBay is attempting to patent a list of listings ranked by “dwell time” — the “elapsed amount of time one or more users view a page describing the listing.”

Recent PTAB Reversals of Section 101 Rejections

October 8th, 2018

Here are some recent PTAB Reversals of Section 101 rejections:

Ex parte Oudenallen—Claims for a garment for preventing hypothermia:  https://anticipat.com/pdf/2018-09-17_13217120_181837.pdf

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a Facebook Patent Application, Citing Berkheimer:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017004181-09-20-2018-1

An IBM patent application saved by Berkheimer:  https://anticipat.com/pdf/2018-09-24_12834692_182061.pdf

WMS Gaming/Bally case —a Win for WMS at the PTAB under 101:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017003379-09-24-2018-1

The PTAB Reversed a 101 Rejection of Claims in a Halliburton Patent Application:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018005435-09-25-2018-1

The PTAB Reversed an Examiner’s 101 Rejection of Claims for a Method for Measuring Central Aortic Pressure:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017000995-09-25-2018-1

The PTAB Reversed an Examiner’s Rejection of Claims for Adhesive Labels,; Yes, that’s right, Adhesive Labels:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017005890-09-25-2018-1

 

 

 

Recent PTAB 101 Decisions: The Good, The Bad, and The Ugly

September 25th, 2018

My thanks to Janal Kalis of Schwegman, Lundberg & Woessner, P.A., for this post:

THE GOOD

The PTAB reversed an examiner’s 101 rejection of claims in an SAP patent application.  The PTAB also reversed on 103.  However, there is a dissenting opinion:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018002012-09-11-2018-1

The PTAB Reversed an Examiner’s 101 Rejection of Claims in a CalTech Patent Application for a Method for Predicting 3D Structures, such as Proteins:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017000910-09-11-2018-1

THE BAD

The PTAB Affirmed an Examiner’s 101 Rejection of Claims for an Information Display Device But Reversed the Examiner’s 102 Rejection–this is what Dir. Iancu spoke of yesterday:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018002229-09-10-2018-1

The PTAB Affirmed an Examiner’s 101 Rejection of Claims in an IBM Patent Application But Reversed the Examiner’s 103 Rejection–How many more of these must we see:  https://anticipat.com/pdf/2018-09-11_12481185_181628.pdf

THE UGLY

The PTAB Affirmed an Examiner’s 101 Rejection of Claims for an Electrostatic Clamp Monitoring System:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2018001004-09-10-2018-1

Another Outrageous Decision from the PTAB Affirming an Examiner’s 101 Rejection of Claims in a Becton Dickenson Patent Application for Measuring the Amount of Blood in a Culture Vessel:  https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2017005963-09-10-2018-1