Others, as well as myself, have submitted comments to the PTO in the past commenting on the PTO’s Subject Matter Eligibility Guidance and highlighting to the PTO that, under Zurko, evidence is required in the assessment of whether a claim is limited to an abstract idea or natural phenomenon. [Link][Link]. Yesterday’s opinion in McRO v. Bandai supports that observation.
In assessing whether the claim in question was directed to an abstract idea, the Federal Circuit stated:
2. Claims Directed To
Claim 1 of the ’576 patent is focused on a specific asserted improvement in computer animation, i.e., the automatic use of rules of a particular type. We disagree with Defendants’ arguments that the claims simply use a computer as a tool to automate conventional activity. While the rules are embodied in computer software that is processed by general-purpose computers, Defendants provided no evidence that the process previously used by animators is the same as the process required by the claims.
McRO v. Bandai, __ F.3d __ (Fed. Cir. 2016)(slip opinion at page 24)(emphasis added).
The defendants didn’t show by evidence that the claimed process was previously practiced — let alone practiced conventionally. Thus, the defendants failed to prove that the claimed process was merely automating a conventional activity.
The PTAB has previously commented on the need for evidence in Ex Parte Poisson [Link]. One quote from Ex Parte Poisson that might be of interest relates to “rules” as well:
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)
You can listen to the oral argument of McRO v. Bandai here: [Link].
Judge Reyna’s well-reasoned opinion for the court in McRO v. Bandai is available [here].