The other day I posted the links to comments that have been submitted in regard to the USPTO’s July §101 Guidance. I have enjoyed reading through those comments as time permits. One submission that caught my eye was FICPI’s focus on the PTAB’s Ex Parte Poisson case. Those comments by FICPI are shown below:
FICPI is concerned that these broad generalizations encourage examiners to reject claims as being directed to an abstract idea without a thorough analysis of the claims or a proper characterization of what “those in the art would recognize, as elements that are well-understood, routine and conventional.” The Update provides scant direction as to what, more than the mere opinion of the examiner, is required to present a prima facie case of ineligibility. As one example, the Update provides no direction to examiners regarding determining a level of skill for “those in the art” who might be capable of performing a claimed method in one’s own mind or by “using a pen and paper.”
The Patent Trial and Appeal Board (PTAB) has held that examiners must present a prima facie case of patent ineligibility, finding that an examiner’s mere “opinion” that claims are abstract is an “inadequate finding of fact on which to base the Alice analysis.” See Ex parte Poisson, No. 2012-011084 (PTAB Feb. 27, 2015). Rather, the “examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability.” See, e.g., In re Oetiker, 977 F.2d 1443, 1444 (Fed. Cir. 1992) (emphasis added); see also MPEP § 2106.III (citing Oetiker).
While the Update notes that examiners have been instructed to make such a prima facie case, and admits that the Supreme Court and the Federal Circuit have used textual evidence (e.g., books) to support that the claims are directed to an abstract idea, the Update stops short of identifying what is required from Examiners to present a prima facie case of ineligibility. FICPI is concerned that this will led to inconsistent and unpredictable results, neither of which is favorable to practitioners or the industry at large.
The Ex Parte Poisson decision is available here: [Link]. Here is one quote that might be of interest:
Thus, in the first step of the Alice analysis, the question is whether claim 1, i.e., as a simulation of a football game using a table and cards, is directed to an abstract idea. That determination has not been made in this case based on evidence. Instead, the Examiner merely expresses an opinion that “a set of rules qualifies as an abstract idea.” Yet, absent supporting evidence in the record — of which there is none, the Examiner’s opinion is an inadequate finding of fact on which to base the Alice analysis.
Ex Parte Poisson, Appeal No. Appeal 2012-011084 (PTAB Feb. 27, 2015)