Takeaway: Bucking decades of settled precedent and USPTO guidance, the Patent Board rejected claims reciting computer-readable media (CRM) as subject-matter ineligible software per se and printed matter, even as it reversed Alice rejections of the same claims.Note: This is the second of two posts covering the same PTAB decision. For the other, see “
Takeaway: Finding, under step two of the Alice analysis, the rejected claims to recite an advancement to the technology for delivering targeted advertising, the Patent Board reversed § 101 rejections of claims directed to delivery of targeting advertising in airports.Note: This is the first of two posts covering the same PTAB decision. For the other, see “Patent
Takeaway: The argument that an Alice rejection failed to follow a USPTO requirement to identify abstract ideas by way of comparison to concepts already found by the courts to be abstract is not a successful argument before the Patent Trial and Appeal Board, because the case law on which Office guidance is based does not
Takeaway: Improvement arguments succeeded in overturning § 101 subject-matter eligibility rejections of claims relating to Internet-based directed-advertising under circumstances involving broadcast TV and simultaneous chat room participation. The arguments had failed to persuade at step one of the Alice framework but worked at step two.Details:Ex parte RelyeaAppeal No. 2017-001443; Application No. 12/410,588; Tech. Center
Takeaway: The Patent Board reversed § 101 Alice rejections of commercial transaction processing claims when the claims relied on a “time cell” and thus presented an improvement of the “relevant technology.”Details:Ex parte BerstisAppeal No. 2016-007050; Application No. 12/366,951; Tech. Center 3600Decided: Mar. 12, 2018The application is a continuation-in-part with priority to a line of
Takeaway: The PTAB reversed Alice rejections of pure-software random digital generation claims, crediting the appellants’ improvement argument in the face of examiner criticism of that argument and even in the absence of a reply brief addressing that criticism.Details:Ex parte SherwoodAppeal No. 2017-006552; Application No. 13/906,056; Tech. Center 2100Decided: Sep. 28, 2017The application on
Takeaway: Viewing the claims as representing an improvement upon technology that uses synthetic aperture radar imaging to determine the position of a target at great distances, the PTAB reversed Alice rejections that had found claims to be directed to patent-ineligible subject matter. The broadest claim was what could be called a “pure software” claim, consisting
Takeaway: Finding improvement arguments set forth in a reply brief to be persuasive, the Patent Board reversed Alice rejections of claims directed to controlling content presentation on banks of networked casino game machines (the better to attract your attention to all those flashing lights and screens when you set foot in the casino).Details:Ex parte Greenberg
Takeaway: The applicants appealed subject-matter eligibility rejections made under 35 U.S.C. § 101, alleging that the tissue volume monitoring claims were directed to a law of nature and an abstract idea. Persuaded by the appellants’ improvement arguments, the PTAB reversed the rejections, holding that “while using generic and known tracking modalities (such as ultrasound and MRI),
Takeaway: Apple Inc. inventors filed a patent application for an invention relating to context-based to-do list reminders, of the type that might be entered to a smartphone via voice command. Pertinent to the claims at issue, the specification describes automatically applying context on initial entry of the reminder (e.g., “Remind me to call George,” or
