Is Software Solving Computer-Specific Problems Patentable

On October 23, 2015, the Patent Trial and Appeal Board at the U.S. Patent Office reversed a subject-matter eligibility rejection in Ex part Balestrieri et al., No. 2013-007305, 2015 Pat. App. LEXIS 10588 (P.T.A.B. October 23, 2015). This decision looks somewhat unusual at first blush because subject-matter eligibility rejections for software methods implemented using conventional computer hardware are frequently sustained by the Board.

The claims at issue involve testing software from an online application marketplace for certification for a client device. More specifically, the claims require establishing an online marketplace to distribute software applications, initiating testing of applications while shielding client devices from adverse effects, and determining whether to classify the application as certified based on the testing results.

The Board first concluded that the claims were not directed to an abstract idea. The Board rejected the Examiner’s identification of the abstract idea to which the claims were allegedly directed, stating that “the Examiner’s reading of the claimed steps as broad enough to encompass ‘a person [who] initiates each active step by user input into a computer system rather than reciting the active steps are solely done by the computer system’ is unreasonably broad.” For example, the Board identified “enabling the devices via the online marketplace to select software applications and initiate testing of the selected software applications” as one of the required actions that could not be performed by a person.

In a departure from the usual analysis, the Board did not go on to consider whether the claims involved an inventive concept to render them a patent-eligible application of the concepts to which they were directed. Rather, the Board found that the claimed steps, when considered in combination, generated the useful, inventive result of certifying software by machine implementation. For the foregoing reasons, the Board reversed the rejection.

It is, however, easy to imagine an alternative analysis by which the Board could have concluded that the claimed subject matter was ineligible for patent protection. For example, establishing marketplaces and testing products to determine their suitability for clients are longstanding business practices, which is a rationale decision-makers have frequently used to determine that a claim is directed to an abstract idea. The Board could then have concluded that implementing such a process utilizing conventional computer hardware did not amount to an inventive concept. Alice Corp. v. CLS Bank Int’l, 134 S. Ct. 2347, 2358 (2014) (“[T]he mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention.”) (citations omitted). The Board’s framing of what constituted the concept to which the claims were directed was critical to the outcome in this appeal.

Like the claims at issue in DDR Holdings, LLC v., L.P., 773 F.3d 1245 (Fed. Cir. 2014), these claims may have been found patent-eligible primarily because they solve a computer-specific problem. Practitioners and applicants should consider drafting their claims, supporting specification, and arguments during prosecution to characterize software inventions as solving a computer-specific problem as one possible strategy to increase the likelihood that they may survive a challenge to their patent-eligibility.