Ex parte Nathan Victor Bak, Elizabeth Baruka Silberg, Yelena Bayeva, Sukadev Bhattiprolu, And Alexis Hope Bruemmer

The Patent Trial and Appeal Board of the U.S. Patent and Trademark Office has likely seen an increase in the number of appealed rejections under 35 U.S.C. § 101 due to the Supreme Court's decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014).  A review of a recent decision shows some inconsistencies in the application of the framework set forth in Alice.

On October 19, 2015, the PTAB issued a Decision on Appeal for U.S. Application No. 12/822,772 (Appeal 2013-009289) in Ex parte Nathan Victor Bak, Elizabeth Baruka Silberg, Yelena Bayeva, Sukadev Bhattiprolu, and Alexis Hope Bruemmer.  The Appeal Brief identified the Real Party in Interest as International Business Machines Corporation, the assignee of the patent application.

The invention described in the patent application "relates to the automated scheduling of meetings on calendars and the organization of such calendars of invitees based upon the importance of a set of predetermined attributes of such meetings."  Independent claim 1 is reproduced below.

1.    In a network of computer controlled user interactive display stations, a method for the scheduling of meetings on the calendars of invitee users comprising:
    prompting an inviter, at a sending display station, to enter into an invitation a predetermined set of general attributes for the scheduled meeting;
    enabling each invitee to predetermine a set of invitee-specific attributes applicable to each invitation; and
    enabling each invitee to prioritize each predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee's calendar.

The Examiner rejected claim 1 (and claims 2-8 dependent upon claim 1) under 35 U.S.C. § 101 as being directed to non-statutory subject matter.  Additionally, the Examiner rejected all pending claims 1-20 under 35 U.S.C. § 103(a).

With respect to the § 101 rejection, the Examiner stated that "none of the recited steps in claim 1 are explicitly or inherently performed using a particular machine; thus, no particular machine imposes a meaningful limit on the scope of the claims."  The Examiner also determined that in claim 1 "no subject matter transforms into a different state or thing."  The Examiner determined that Appellants' method of scheduling meetings on calendars of invitee users is an abstract idea that is not eligible for patenting.

After the mailing of the Examiner's Answer, the Supreme Court issued its decision in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014), and thus, the Board applied the framework set forth in Alice for distinguishing patents that claim laws of nature, natural phenomena, and abstract ideas from those that claim patent-eligible applications of those concepts.

Step 1: Are the claims at issue directed to a patent-ineligible concept?

For the analysis of Step 1, the Board simply paraphrased claim 1, and then stated "[w]e determine that, when read as a whole, independent claim 1 constitutes a patent-ineligible abstract idea -- i.e., the claim is directed to the abstract idea of scheduling a meeting."

Such analysis is troubling since there is no reasoning given for why this concept of "scheduling a meeting" is an abstract idea.  Presumably, following such absence of reasoning, any idea whatsoever can be considered to fall within the "abstract idea" prong of patent-ineligible concepts, and it is only whether the claim is found to satisfy step 2 that section 101 will be satisfied.  The Board must give some rationally based reasoning for why this claim's features for scheduling a meeting are directed to an abstract idea, or why even the act of scheduling a meeting itself is directed to an abstract idea.  Not much is required, but some reasoning is needed to hold the Board accountable.

For example, even if the claims can be considered to be directed to an abstract idea as asserted by Board, the Board has not shown that the claims would preempt all applications of the alleged abstract idea, and failed to provide any reasoning to show that the specific combination of features recited by the claims will "disproportionately [tie] up the use of the underlying idea," thereby pre-empting all applications of the abstract idea, which the Supreme Court stated is the "concern that undergirds our § 101 jurisprudence" (Alice Corporation Pty. Ltd. v. CLS Bank Int'l, slip op. at 13).  In particular, the Board did not identify a single previously known application that would be preempted by the presently claimed combination of features.  Rather, the Board offered mere conclusory statements without identifying any particular facts in the record of this application that support the stated conclusion.

Step 2: Is there something else in the claim which ensures that the claim is directed to "significantly more" than a patent-ineligible concept?

The analysis of Step 2 should have been more cursory than the analysis of Step 1, since here, the recitation of a network of computer controlled user interactive display stations and a sending display station in claim 1 amounts to nothing more than generic components insufficient to transform the claim into a patent-eligible application.

However, the Board provided further reasoning here and stated that "[t]aking the elements of claim 1 separately, for example, the function performed by the computer display at the claimed step of the process is purely conventional."  This reasoning, of course, contradicts the requirements of considering the claim as a whole, and so, such reasoning is further flawed.

Perhaps equally troubling is that of the pending claims 1-20, only claims 1-8 stand rejected under 35 U.S.C. § 101.  However, assuming the § 101 analysis by the Board is correct (despite flawed or non-existent reasoning), then the other two independent claims 9 and 13 must fall as well with claim 1.  Independent claims 9 and 13 are reproduced below.

9.    A computer controlled system, for the scheduling of meetings on the calendars of invitee users in a network of computer controlled user interactive display stations, comprising:
    a processor; and
    a computer memory holding computer program instructions which when executed by the processor perform the method comprising:
    prompting an inviter, at a sending display station, to enter into an invitation an predetermined general set of attributes for the scheduled meeting;
    enabling each invitee to predetermine a set of invitee-specific attributes applicable to each invitation; and
    enabling each invitee to prioritize each predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee's calendar.

13.    A computer usable storage medium having stored thereon a non-transitory computer readable program for the scheduling of meetings on the calendars of invitee users in a network of computer controlled user interactive display stations, wherein the computer readable program when executed on a computer causes the computer to:
    prompt an inviter, at a sending display station, to enter into an invitation a predetermined set of general attributes for the scheduled meeting;
    enable each invitee to predetermine a set of invitee-specific attributes applicable to each invitation; and
    enable each invitee to prioritize each inviter-predetermined general attribute and each invitee-specific attribute to a numerical priority level to determine the priority of said meeting on the invitee's calendar.

Independent claim 9 recites a traditional "computer" claim with functions that mirror the functions of the method claim 1, and independent claim 13 recites a traditional computer-readable medium (CRM) claim with functions that also mirror claim 1.  Alice was clear that a statutory category of a claim does not impact the analysis of patent-eligibility of the claim.  Thus, it would appear that all claims should be rejected under section 101.

Since the rejection of claims 1-8 under 35 U.S.C. § 101 was affirmed, the Board designated the rejection as a new ground of rejection, to the extent the rationale differed from that set forth by the Examiner, and Section 41.50(b) provides that "[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review."  Thus, the Applicant has two months from the date of the decision to (1) Reopen prosecution and submit an appropriate response, or (2) Request rehearing.

As a note, with respect to the § 103 rejections, the Board reversed the Examiner's rejections since the cited art failed to describe all features of the independent claims.

As a take-away from this Decision, with the increase of § 101 rejections being levied upon Applicants by Examiners and the Board at the USPTO, Applicants must be diligent in forcing strict application of the framework set forth by Alice to avoid rejections unsupported by rationale reasoning.  Otherwise, literally any claim can be called into question as directed to some kind of "abstract idea".