Ex parte Bhogal and Ex parte Hoff: PTAB raises burden on USPTO to justify 101 rejections

Patent applicants finding themselves in art unit 3600 are finding glimmers of hope at the PTAB. In two recent decisions, the PTAB reversed the Examiners’ Alice patent eligibility rejections. In both cases, the PTAB panel cited BASCOM[1] and found the claims at issue to amount to significantly more than an abstract idea when the claims were considered as a whole.

In Ex parte Bhogal,[2] the claims at issue were directed to rendering objects in order based on bid values. The Panel deferred analysis of the first step of the Alice inquiry and focused on analyzing whether the claims amounted to significantly more than an abstract idea under step two. The Panel cited to BASCOM and determined that features of the claims “that ensure a first object is rendered before a second object is rendered by accounting for the rendering time of the first object and accordingly adjusting when rendering of the second object will begin” amounted to significantly more than an abstract idea.[3] The Panel reasoned that while the claim included well-know, routine, or conventional elements, the Examiner had failed to provide specificity regarding how the claimed manner of rendering order prioritization is well-understood or routine.[4]

In Ex parte Hoff,[5] the claims at issue were directed to a link-based interaction and structure for customer relationship management. The Panel analyzed the claims under step two of the Alice inquiry and found the claims as a whole amounted to significantly more than an abstract idea. The Panel likened the claims at issue to the claims at issue in DDR Holdings and found that, rather than merely reciting performance of a business practice from the pre-Internet world, the claims were rooted in computer technology to overcome a problem specifically arising in computer networks.[6] The panel identified that features recited in the claims such as including a link in an activity report to move the claims beyond an abstract idea.[7] The Panel reiterated that BASCOM requires examiners to go beyond identifying each element of a claim is well-know, routine, or conventional in the search for an inventive concept.[8]

While these two PTAB decisions alone do not make a trend, there is hope that the PTAB will encourage more examiners to find patentable subject matter and when they don’t, include additional analysis and reasoning to sustain an Alice rejection.

My thanks to Eric Bachinski from Schwegman, Lundberg & Woessner, P.A., for this analysis and post.

[1] BASCOM Glob. Internet. Servs., Inc. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016).

[2] Ex parte Bhogal, (PTAB Mar. 19, 2018), https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2016008742-03-15-2018-1.

[3] Id. at p. 6.

[4] Id.

[5] Ex parte Hoff, (PTAB Mar. 16, 2018). https://e-foia.uspto.gov/Foia/RetrievePdf?system=BPAI&flNm=fd2016002219-03-14-2018-1.

[6] Id. at p. 9.

[7] Id. at pp. 9 & 10.

[8] Id. p. 10.

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