On February 23, 2016, the Patent Trial and Appeal Board of the U.S. Patent Office issued a routine (i.e., nonprecedential) decision in Ex parte Beier et al., No. 2013-006251, 2016 Pat. App. LEXIS 533 (P.T.A.B. Feb. 23, 2016). The claims at issue were directed to supply chain management as implemented using mobile devices. More specifically, claim 1, which the Board analyzed as a representative claim, required that a server receive product-identifying information from a mobile device, query another server for data related to the product, record the location from which the identifying information is sent by the mobile device, determine whether the product is in the expected location, and output processed location and other product data to the mobile device. The claims had been rejected by the Examiner as being directed to ineligible subject matter, in addition to lacking definiteness and being obvious in view of the prior art.
Applying the analytical framework of Mayo and Alice, the Board concluded that the claims were directed to an abstract idea. It first found that the claims were directed to the management of the flow of goods. The Board did not specifically state why it considered management of the flow of goods to be an abstract idea, but it implied that the supporting reasoning was that the claims merely required receiving, checking, comparing, and outputting data.
The Board then concluded that the comparing and processing acts required by the claims did not amount to significantly more than an abstract idea because they were conventional. Such a holding was in tension with the Board’s reversal of the obviousness rejection because there was no evidence in the record to suggest that the claimed acts were conventional. Indeed, at least one precedential court opinion suggests that the Board’s identification of the nonobvious elements as failing to supply an inventive concept was improper because it did not reflect the novel and nonobvious aspects of the claimed subject matter. See Internet Patents Corp. v. Active Network, Inc., 790 F.3d 1343, 1346 (Fed. Cir. 2015) (“Determination of what is an inventive concept favors inquiries analogous to those undertaken for determination of patentable invention, for a known idea, or one that is routine and conventional, is not inventive in patent terms ….”).
The Board also concluded that generic computer implementation of acts performable by a human did not represent an inventive concept, but amounted to the addition of conventional acts and hardware to apply the abstract idea. Accordingly, the Board affirmed the patent-ineligibility rejection.
The inconsistencies and lack of evidentiary support displayed in the Beier decision are unfortunately too common for subject-matter ineligibility challenges to patent claims under the Mayo/Alice framework. Patent owners, patent applicants, and practitioners should consider highlighting these discrepancies and deficiencies in the eligibility challenges they face, particularly relying on facts and statements from the courts requiring that such challenges meet higher standards, as they seek to obtain and enforce claims to computer-implemented methods.
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