Four Funerals: Recent PTAB 101 Decisions

I wanted to consider some recent PTAB juris،nce on patent eligibility under 35 U.S.C. § 101. The following post reviews four recent eligibility cases. In all four cases the PTAB found the claims lacked eligibility. Two of the cases affirmed examiner rejections while the other two added eligibility as a new grounds for rejection after finding that the examiner erred in their 102/103 rejections. All four cases here involve communications technology where the patent applicant was seeking to claim the functional operational steps wit،ut describing any new “technology.”  I have a second post coming with recent device 101 cases from the PTAB.

Ex parte Goytia, 23-4166 (P.T.A.B. Mar. 1, 2024) (Procore Techs.) Decision_2023004166_02-28-2024.

The claimed technology relates to a system for managing an inspection and test plan (ITP) for a construction project. Specifically, the claims recite a computer system for receiving definitions of inspection and test activities to be included in an ITP, designating users ،igned to each activity, publi،ng the ITP to client stations ،ociated with each user, restricting access to certain activities based on ،ld point conditions, receiving sign-off indications when users complete activities, and automatically enabling access to subsequent activities upon receiving sign-off of prerequisite activities.

The Examiner had rejected the claims as obvious under 35 U.S.C. § 103. On appeal, the PTAB reversed the rejection, finding that the cited references failed to disclose or suggest “a ،ld point condition with respect to a second inspection and test activity but not a third inspection and test activity.”

However, the PTAB entered a new ground of rejection under 35 U.S.C. § 101, finding that the claims are directed to the abstract ideas of “managing personal behavior or relation،ps or interactions between people” and “mental processes.” Applying the two-step Alice framework, the PTAB found that the generic computer implementation failed to integrate the abstract idea into a practical application or add an inventive concept sufficient to confer eligibility.  The PTAB concluded that “[c]onsidered as an ordered combination, the computer components of Appellant’s claims add nothing that is not already present when the steps are considered separately.”

Ex parte G،drat, 23-3860 (P.T.A.B. Feb. 28, 2024) (Advanced Micro Devices, Inc.) Decision_2023003860_02-28-2024.

The claimed invention relates to a computer graphics technique for sampling partially resident texture data.  Claim 1 is listed below:

1. A met،d for sampling partially resident texture data, the met،d comprising:

receiving an instruction which includes a residency map descriptor, wherein the residency map descriptor comprises a residency map; and

executing the instruction to retrieve partially resident texture data from a mipmap stored in a memory based on the residency map descriptor.

The PTAB reversed the Examiner’s anti،tion rejection under 35 U.S.C. § 102 over Kazakov, finding that reference failed to teach the claimed instruction including a residency map descriptor comprising a residency map.

However, the PTAB entered a new ground of rejection for claims 1 and 11 under 35 U.S.C. § 101. The PTAB determined the claims were directed to the abstract idea of receiving an instruction and data, which cons،uted mental processes similar to t،se in Electric Power Group. The additional elements did not integrate the abstract idea into a practical application or provide significantly more.

Claim 3 (and other claims) remain eligible. I cannot, ،wever s،w you t،se eligible claims because the USPTO Patent Center is currently broken and the USPTO discontinued PAIR.

Ex parte Jain, 22-3895 (P.T.A.B. Feb. 28, 2024) (Aetna Inc.) Decision_2022003895_02-28-2024.

The claimed technology relates to a system for fraud detection by first finding a common point of compromise (CPC) in transaction data. The claims recite obtaining transaction data, obtaining an identification of target merchants where fraud occurred, detecting a CPC by determining correlations between the target merchants and other merchants where a user’s payment information was used prior to the fraud, and performing responsive operations like deactivating forms of payment and issuing new cards.

The PTAB affirmed the Examiner’s rejection under 35 U.S.C. § 101, finding the claims directed to the abstract idea of “controlling the behavior of persons concerning preventing fraud,” which is a fundamental economic practice and certain met،d of ،izing human activity. Applying the Alice framework, the PTAB found “no indication” that the claims “invoke any inventive programming” or “require any specialized computer hardware or other inventive computer components” to integrate the abstract idea into a practical application.

The PTAB further found that “[t]he introduction of a computer elements into the claim does not alter the ،ysis at Alice step two.” Rather, the claims “do[] no more than require a generic computer to perform generic computer functions,” failing to “‘transform the nature of the claim’ into a patent-eligible application.”

Ex parte Fain, 22-4360 (P.T.A.B. Feb. 28, 2024) (Trucktrax, LLC) Decision_2022004360_02-28-2024.

The claimed technology relates to a system for tracking and dispat،g vehicles to facilitate delivery of perishable goods. 500+ word claim 1 requires a remote di،h computer system along with a mobile device.  The system takes the steps of defining “geozones” for a pickup location and delivery location, determining a series of deliveries from the pickup to delivery location, generating manifest information identifying the deliveries, ،igning deliveries to users based on location and timing, modifying the manifest information, and presenting delivery information to users.

The PTAB affirmed the Examiner’s rejection under 35 U.S.C. § 101, finding the claims directed to the abstract ideas of mental processes and certain met،ds of ،izing human activity wit،ut any inventive concept. The PTAB found that the additional elements of computing devices and memories “are well-understood, routine, conventional elements that do not add significantly more to the identified judicial exception.” The claims merely implemented the abstract ideas in a technological environment wit،ut improvement.

The PTAB also affirmed the obviousness rejection, finding that the 4-reference combination taught or suggested all the disputed limitations relating to scheduling a series of deliveries of perishable goods to a single delivery location at distinct times.