Far from finding relief from an examiner's patent-ineligibility rejection at the Patent Trial and Appeal Board (PTAB), patent applicants may find that ex parte appeals are their undoing. A recent decision in an appeal filed in 2012, reversing an examiner's prior art rejections under 35 U.S.C. § 103(a), but setting forth a new ground of rejection under 35 U.S.C. § 101, is illustrative. Ex Parte Gustafson, Appeal No. 2013-003397, Application No. 12/638,254 (May 28, 2015).
The claims at issue were directed to "intent mining," defined as a "type of document analysis in which willingness of an author to perform an action is analyzed through grammatical patterns." Representative claim 1 recited:
1. A method for intent mining comprising:
performing a preliminary search of a constrained source using one or more seed phrases to generate a plurality of preliminary search results representing different ways of expressing a desired intent;
identifying each of the plurality of preliminary search results that have expressed the desired intent to generate a plurality of intent results;
producing a plurality of action search strings around one or more action verbs in each of the plurality of intent results; and
applying each of the plurality of action search strings on one or more non-constrained sources to generate a plurality of action search results.
Although agreeing with the Appellants that the examiner had misapplied the cited prior art, the PTAB entered a new ground of rejection under Section 101. The PTAB did so even though the claim was "nominally directed to a method which is a statutory process, and it does not wholly preempt the abstract idea, namely, 'intent mining,' that is recited therein." The PTAB explained that even though "the claim involves complex data processing, and recites steps that are unconventional," the recited "steps are not applied to any particular application." The claims did not require a machine, and at least in simple cases could have been performed with pen and paper.
This is a chilling case for patent applicants. It is unclear exactly what the PTAB meant by saying that the claimed "steps are not applied to any particular application." The PTAB admitted that "the claim involves complex data processing," and the claim itself resulted in "applying each of the plurality of action search strings on one or more non-constrained sources to generate a plurality of action search results." Moreover, the PTAB found that the claim recited subject matter that differentiated it from the prior art, which would seem to reinforce the notion that the claim did not recite a broadly preemptive abstract idea without some addition innovation. Nonetheless, the mere recitation of a computer-implemented search and analysis method was, evidently, enough to result in this cursory patent-ineligibility rejection.
Further, this appeal, like many now being heard by the PTAB, was filed well before Alice Corp. v. CLS Bank was decided. Just as commentators have noted that Alice means that many issued patents are now probably invalid, many claims now on appeal to the PTAB are probably subject to new Section 101 rejections.