Archive for the ‘Uncategorized’ Category

Ex Parte Jadran Bandic, et al. — The bar is raised for proving the presence of an abstract idea

Wednesday, May 9th, 2018

The USPTO recently provided a Memorandum and Examiner training related to a Federal Circuit decision, Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018). The Memo and training give hope that the patent office is taking seriously the need for consistency in applying rejections under 35 U.S.C. §101. While the Memo and training apply to Examiners, it remains an open question how the Patent Trial and Appeal Board (PTAB) will consider the contents of the Memo.

In Ex Parte Jadran Bandic, et al., (Decision) decided by the PTAB on April 30, 2018, this question appears to be partially answered. The case hinges on a §101 analysis of a single independent claim with five steps. The PTAB first reverses the Examiner’s rejection under Alice Step One as failing to consider the claim as a whole, stating that the “The Examiner’s asserted abstract idea is based on “the steps within the [claimed] method of comparing and determining” and ignores the claim as a whole” (Decision, pages 4-5). Despite the sufficiency of the Step One reversal for disposing of the Appeal, the PTAB also considered the Alice Step Two analysis.

In the Alice Step Two section of the Decision, the PTAB found that “The Examiner’s analysis of the second step of the Alice analysis is conclusory and unsupported” (Decision, page 6). The PTAB continued by making it clear that unsupported statements from an Examiner are insufficient for complying with Step Two (See, e.g., Decision, pages 5-6). This sentiment is certainly suggested and supported by the Berkheimer case, but more importantly, the analysis by the PTAB here upholds the requirements presented in the Memo that are placed on Examiners in making a Step Two rejection. Namely, that absent a citation to an Applicant’s admission, a court decision, or a publication “demonstrating the well-understood, routine, conventional nature of the additional element(s),” a rejection under Step Two is inappropriate (Memo, pages 3-4).

Thus, the Decision validates the Memo’s interpretation of Berkeheimer requiring Examiners to “expressly support[] a rejection in writing” with a citation to an Applicant’s statement, court decision, or publication, and further that the citation must demonstrate not only that the identified additional elements were known, but well-known, routine, and conventional.

My thanks to Jeff Cobia of Schwegman, Lundberg & Woessner, P.A., for this posting.

USPTO Posts slides for new examiner training on Section 101

Monday, May 7th, 2018

On May 7, 2018, the USPTO posted the slides for the Examiner Training in relation to the Berkheimer decision, Berkheimer v. HP Inc., 881 F.3d 1360 (Fed. Cir. 2018), titled Subject Matter Eligibility: Well-Understood, Routine, and Conventional Activity.  The slides start off by making it clear the Berkheimer decision does not change the basic subject matter eligibility framework, but does clarify how to determine if an element(s) represent well-understood, routine, or conventional activity in step 2B of the subject matter eligibility analysis.  The slides distinctly point out that obviousness or lack of novelty does not establish that the additional elements are well-understood, routine, or conventional activities.


As seen in the Berkheimer Memorandum, the examiners are now instructed to expressly support a rejection with one of the following four options.  Option 1: A statement by the applicant in either the specification or during prosecution.  Option 2: a citation to a court decision discussed in MPEP § 2106.05(d)(II).  Option 3: a publication, with the slides including a reminder that merely finding the additional element in a single patent or application would not be sufficient to establish the element as well-understood, routine, or conventional, unless that patent or application demonstrates that the additional  element is widely prevalent or in common use in the relevant field.  Option 4: the examiner may take official notice.  The slides strongly caution using this option and state it should be used only when the examiner is certain the additional element is well-understood, routine, and conventional.


The examiners were reminded to consider the additional elements individually and in combination, and thus to support a rejection of a claim where the examiner takes the position that two elements are routine, then the combination of those two elements must also be shown to represent well-understood, routine, and conventional activity.  When the examiner’s position is challenged by the applicant, the examiner should reevaluate whether it is readily apparent that the additional elements are in actuality well-understood, routine, conventional activities to those who work in the relevant field.  If the applicant is responding to when the examiner has taken official notice, then the examiner should reevaluate  and provide support from options 1-3.

My thanks to David Dyer at Schwegman, Lundberg & Woessner, P.A., for this post.

USPTO to Issue new 101 Guidance Today!

Thursday, April 19th, 2018

Very much looking forward to the new guidance on 101 from the USPTO.  I am very encouraged that the USPTO is going to take a leadership role in leading our country out of the 101 “Alice in Wonderland” era.  Software 101 jurisprudence is probably the most absurdly vague, inscrutable and unpredictable body of law in the entirety of the US legal system.  Worse yet, the weakening of the patent system has done absolutely nothing to help start ups.  On the contrary, it has most likely accelerated the decline of tech start-ups.  Ultimately, that can’t be good news for the U.S.

So, let’s hope the USPTO can help the U.S. put the Section 101 chaos of the last few years behind us once and for all.

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

Friday, March 23rd, 2018

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),

[3] Id. at p. 6.

[4] Id.

[5] Ex parte Hoff, (PTAB Mar. 16, 2018).

[6] Id. at p. 9.

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

[8] Id. p. 10.

China on course to eventually pass U.S. in innovation?

Tuesday, November 21st, 2017

Another article on the alarming decline of start-ups in the U.S., the rise of innovation in China, and the unfortunate self-inflicted degradation of the U.S. patent system’s ability to support innovative new companies.   The U.S. patent system is now tied for 10th place in the world, with Hungary.  As the author of the below article points out, the U.S. should stop worrying about China, and start worrying about improving the environment for start-ups in the U.S.

Start Up Economy in Bad Need of a Patent System Fix

Sunday, November 19th, 2017

The URL below points to an important opinion piece by James Glassman on the importance of the patent system to start ups, and why it needs to be fixed as a top economic priority. All the tax cuts in the world are not going to help jump start accelerated job growth if our entrepreneurs can’t afford to protect their innovations, which is a sad reality of today’s patent system.

Smart Sys v. Chicago Transit: One more sorry decision from the Federal Circuit

Wednesday, October 18th, 2017

The Federal Circuit in Smart Sys v. Chicago Transit decision (, again has demonstrated the need to buttress software/process claims with at least some concrete elements.

In this case, the Federal Circuit found the claims were directed to an abstract idea, stating that the claims in issue “are not directed to a new type of bankcard, turnstile, or database, nor do the claims provide a method for processing data that improves existing technological processes.”   Rather, the court found the claims are directed to the collection, storage, and recognition of data, which constitutes an abstract idea.

Claim 14, which the court determined was representative, recites:

A method for validating entry into a first transit system using a bankcard terminal, the method comprising:

downloading, from a processing system associated with a set of transit systems including the first transit system, a set of bankcard records comprising, for each bankcard record in the set, an identifier of a bankcard previously registered with the processing system, and wherein the set of bankcard records identifies bankcards from a plurality of issuers;

receiving, from a bankcard reader, bankcard data comprising data from a bankcard currently presented by a holder of the bankcard, wherein the bankcard comprises one of a credit card and a debit card;

determining an identifier based on at least part of the bankcard data from the currently presented bankcard;

determining whether the currently presented bankcard is contained in the set of bankcard records;

verifying the currently presented bankcard with a bankcard verification system, if the bankcard was not contained in the set of bankcard records; and

denying access, if the act of verifying the currently presented bankcard with the bankcard verification system results in a determination of an invalid bankcard.

Arguably, the first two steps are passively receiving data.  The third step is arguably so high-level that it could be deemed abstract under various theories (e.g., mental steps, humanly performable with pen and paper, conventional computer, or well-known economic activity).  The fourth step could arguably be cast as a yes/no decision that falls into abstractness on similar grounds.  The fifth and sixth steps are more active, but are recited at such a high-level as to sound non-technical.  Had these claims been presented from the perspective of explicitly reading a bankcard using a on-site device, and controlling physical access to a transit system, through for example a turnstile, it is less likely that the claims would have been dismissed as claiming an abstract idea.  

On the other hand, it would be much preferred if inventions such as this, that provide a very practical solution to a big technical problem, did not have to meet a standard of utility and eligibility that exceeds other technologies.

Thanks to Joe Wang of Schwegman, Lundberg & Woessner, P.A., for this analysis.


Is Economic Growth Lower Due to Fewer Start-Ups?

Thursday, September 21st, 2017

Interesting NY Times story about the reduced number of start-ups possibly being a drag on economic growth, or put another way, the lower number of start-ups corresponds to lower economic growth rates.   Here is link to story:

What I find interesting is that just a few years ago, patent academics in the US (some of which admit to being funded by a large US tech company) were blaming trolls for inhibiting start-up activity, and hobbling economic growth for giant mega-corporations.  The NY Times article suggests a very different reason for that:  large corporates have so much market power it is difficult for start-ups to get enough oxygen to survive.  Of course, a start-up with a successful product can at least get a measure of countervailing market power from its patent portfolio.  That is, if it can get past Section 101 subject matter eligibility challenges, and avoid having its patents thrown into daisy-chained IPR challenges.   Its understanding that we needed a solution to trolls, but it should not come at the expense of start-ups activity, without which our tech industry cannot thrive.

So, you are telling me there is a chance? PTAB Finds Anti-Fraud Idea Patentable

Wednesday, September 20th, 2017

The PTAB shows us a little glimmer of the return of sanity to Section 101, with this decision that finds a claim to a credit card transaction verification algorithm patentable.  See Ex parte PATRICK FAITH and AYMAN HAMMAD

Here is one of the claims found 101 compliant:

9. A method for conducting a transaction, comprising:

generating, by a portable consumer device, a verification value in response to a transaction involving an access device;

sending, by the portable consumer device, the verification value and a portion of a first dynamic data element to the access device, the portion of the first dynamic data element including data included in a fixed position of the first dynamic data element, the verification value being different from the portion of the first dynamic data element; and

communicating, by the access device, the verification value and the portion of the first dynamic data element to a service provider computer;

wherein the service provider computer determines a plurality of candidate dynamic data elements using the portion of the first dynamic data element in response to determining that the verification value does not match a second verification value independently generated by the service provider computer, determines a plurality of candidate verification values from the plurality of candidate dynamic data elements, and determines whether the verification value matches any of the plurality of candidate verification values;

wherein, each of the plurality of candidate verification values is unique to a corresponding candidate dynamic data element of the plurality of candidate dynamic data elements; and

wherein the transaction is thereafter authenticated when the verification value matches any of the plurality of candidate verification values.

A Historical Review of the “Golden Age” of the Patent System in the U.S.

Wednesday, September 20th, 2017

For an excellent review of the history of the patent system over the last several decades, check out Steve Kunin’s PowerPoint presentation:

The Decline of the Golden Age of the Patent System in the U.S.: An Historical Retrospective 1983-Date

Steve was one of the USPTO’s best patent scholars and policy champions during the “golden age”, and now is an outstanding patent lawyer at the Oblon firm.