On December 30, 2016, the Patent Trial and Appeal Board of the U.S. Patent Office entered a new ground of rejection on subject-matter ineligibility grounds for claims involving an MRI machine. Ex parte Itagaki et al.[1] presented claims requiring an MRI machine that was configured to acquire images of different types, station by station, and present those images based on a classification scheme. The Examiner had rejected the claims as obvious in view of the prior art, a rejection that the Board reversed. Notwithstanding the claims’ novelty and nonobviousness, the Board rejected the claims for being directed to an abstract idea.
The background section of the patent application’s disclosure clarifies that the MRI machine itself, including the many stations and the data collected by those stations, were not the advancement contributed by the named inventors. Rather, the named inventors came up with the automated classification that would be performed by an image processing system, essentially a general-purpose computer, operatively connected to the MRI machine.
Applying the two-part test for patent eligibility from the Supreme Court’s Mayo and Alice decisions, the Board concluded that the claims were directed to “classification.” Stating that classification was a building block of human ingenuity, the Board concluded that the claims were directed to an abstract idea.
Although loosely connected to what the claims require, looking at the claims at this high level of abstraction and generality ignores many of the claim limitations during step one of the Mayo/Alice test. The decision has come under criticism from several commentators for that very reason, with one calling the analysis “incredibly off the mark,” and another going so far as to say that it was “an utterly ridiculous, intellectually insulting, and idiotic decision.”
The Board went on to find that limiting the type of classification employed to image classification did not render the claims any less abstract because it merely limited the concept of classification to a particular type of data. It also held that the implementing hardware, including the multi-station MRI machine and units that appear to require computer functionality, were “generic,” such that they could not lend patent-eligibility to the claims. As a result, the Board concluded that the claims did not require significantly more than the abstract idea of classification.
While the Board’s analysis may seem to ignore many of the claim elements during the first step, and then dismiss them as insignificant during the second step, it does take a common-sense approach to what the named inventors actually contributed to the art. Their own application admits that they did not invent MRI machines or produce new types of images that would enable better diagnosis. Rather, they came up with a way to automate classification and presentation of the images. The claims do little to specify how that classification and presentation take place, requiring only that classification occur by “image types and station position” based on unspecified “imaging condition[s]” and that presentation occur “by image types in spatial order of station positions.” In other words, the story told by the application’s disclosure and the lack of specificity in the claims themselves appears to support the Board’s conclusion: that the claims were directed to classification, and that limiting classification to a known data type produced by existing hardware does not amount to an act of invention.
However, this analysis is difficult, if not impossible, to reconcile with the statute and what has been considered a hallmark Supreme Court decision on patent-eligibility. Specifically, 35 U.S.C. § 100 (2016) clarifies that “new use[s] of a known process, machine, manufacture, composition of matter, or material” are patentable. The claims rejected in this case appear to fall squarely within that definition, because there was no question that the use was new. Remember, the Board reversed the obviousness rejection. According to the statute, the fact that the machine was known, or in the Board’s words “generic,” should be irrelevant. Moreover, the Supreme Court stated in Diamond v. Diehr[2] that “[i]t is inappropriate to dissect the claims into old and new elements and then to ignore the presence of old elements in the analysis.” But that kind of subjective dissection is exactly what the Board did in this appeal and what the Supreme Court did in Mayo and Alice. It’s no wonder that commentators are frustrated; application of the test employed by the Supreme Court in Mayo and Alice produces results that are the opposite of what is expected in light of the statute and Diehr.
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[1] Ex parte Itagaki et al., No. 2015-002702, 2016 Pat. App. LEXIS 12831 (P.T.A.B. Dec. 30, 2016) (non-precedential)
[2] Diamond v. Diehr, 450 U.S. 175, 188–89 (1980)