The Patent Trial and Appeal Board (“PTAB”) recently held in Ex parte Itagaki and Nishiara (PTAB 2016) that claims reciting a magnetic resonance imaging apparatus are directed to ineligible subject matter under 35 U.S.C. § 101. This ruling appears to broaden the scope of what qualifies as a “generic computer” and raises the question of whether a claim directed to an improvement to a specific apparatus, such as an MRI machine, can accurately be characterized as being directed to an abstract idea and not eligible as patentable subject matter.
The claims at issue, from U.S. Patent Application No. 12/598,168 (“Magnetic Resonance Imaging Apparatus and Image Classification Method”), were rejected by the Examiner as allegedly obvious. Claim 1 is illustrative:
1. A magnetic resonance imaging apparatus comprising:
an image acquisition unit configured to divide an imaging region of an object to be examined into a plurality of stations of respective station positions, and acquire a plurality of images having different image types for each station, while moving a table on which the object is mounted, station by station;
a display control unit configured to display the plurality of images in a predetermined display format; and
a classification processing unit configured to classify the plurality of images by image types and station position, based on imaging condition including imaging parameters, wherein the display control unit displays the plurality of images by image types in spatial order of station positions, based on the classification result by the classification processing unit.
The applicant appealed the obviousness rejections, and the PTAB reversed. However, the PTAB issued a new ground of rejection under § 101. Applying the two-step test from Alice Corp. v. CLS Bank Int’l., 134 S.Ct. 2347 (2014), the PTAB held first that the claims were directed to “classification” (“a building block of human ingenuity”), and as such were directed to an abstract idea. The PTAB then applied the second prong of the Alice test, and held that “nothing in the subject matter . . . transforms the abstract idea of classification into an inventive concept.”
Analysis under Alice Framework
In Alice, the Supreme Court held that “the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea while adding the words ‘apply it’ is not enough for patent eligibility.” The Federal Circuit, in recent cases applying Alice such as DDR Holdings v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014), Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), and McRO, Inc. v. Bandai, Case 15-1080 (Fed. Cir. 2016), has held computer software claims to be patent-eligible if they “overcome a problem specifically arising in the realm of computer networks” (DDR Holdings), recite “an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity” (Enfish), or are directed to “a specific means or method that improves the relevant technology”—as opposed to claims directed to “a result or effect that itself is the abstract idea and merely invoke generic processes and machinery” (McRO).
In issuing the sua sponte rejection under § 101, the PTAB held that the MRI apparatus recited in Itagaki’s claims is “a generic multi-station MRI,” and that “[a]ny multi-station MRI available at the time the application was filed would have satisfied [the claim].” The PTAB further held that claim language reciting a “classification processing unit” as part of the MRI apparatus “does no more than place the classification abstract idea in a particular context.” The PTAB therefore concluded that the claims do not recite significantly more than an abstract idea. In effect, it appears that the PTAB has determined that the Alice Court’s “mere recitation of a generic computer” analysis applies to any computing apparatus available at the time an application was filed.
The case highlights the ongoing challenges for patent applicants, patent owners, and accused infringers with regard to the abstract idea exclusion under § 101. For patent applicants, careful scrutiny of apparatus claims may be required to avoid analogy to a generic apparatus that implements an abstract idea. For example, a claim might be directed to a computing-based improvement to a specific apparatus that appears to be more specialized than a “generic computer.” Under the PTAB’s reasoning in this appeal, such a claim might be held patent-ineligible on the grounds that it recites a “generic” apparatus that was available at the time the application was filed and simply implements the abstract idea of the computing-based improvement. For patent challengers, this holding—together with examples of abstract ideas from recent court cases—may provide a roadmap for arguing that an apparatus claim, seemingly directed to an apparatus that is not merely a generic computer, is nonetheless patent-ineligible.