{"id":8107,"date":"2016-09-14T17:54:57","date_gmt":"2016-09-14T23:54:57","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=8107"},"modified":"2016-09-15T10:03:12","modified_gmt":"2016-09-15T16:03:12","slug":"mcro-v-bandai-lack-of-evidence","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=8107","title":{"rendered":"McRO v. Bandai — Lack of Evidence"},"content":{"rendered":"

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<\/span>, evidence is required in the assessment of whether a claim is limited to an abstract idea or natural phenomenon. [Link<\/a>][Link<\/a>]. \u00a0Yesterday’s opinion in McRO v. Bandai<\/span> supports that observation.<\/p>\n

In assessing whether the claim in question was directed to an abstract idea, the Federal Circuit stated:<\/p>\n

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2. Claims Directed To <\/span><\/p>\n

Claim 1 of the \u2019576 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\u2019 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<\/strong> that the process previously used by animators is the same as the process required by the claims.<\/p><\/blockquote>\n<\/div>\n<\/div>\n<\/div>\n

McRO v. Bandai<\/span>, __ F.3d __ (Fed. Cir. 2016)(slip opinion at page 24)(emphasis added).<\/p>\n

The defendants didn’t show by evidence that the claimed process was previously practiced — let alone practiced conventionally. \u00a0Thus, the defendants failed to prove that the claimed process was merely automating a conventional activity.<\/p>\n

The PTAB has previously commented on the need for evidence in Ex Parte Poisson<\/span> [Link<\/a>]. \u00a0One quote from Ex Parte Poisson<\/span> that might be of interest relates to “rules” as well:<\/p>\n

Thus, in the first step of the\u00a0Alice\u00a0analysis, 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 \u201ca set of rules qualifies as an abstract idea.\u201d Yet, absent supporting evidence in the record \u2014 of which there is none, the Examiner\u2019s opinion is an inadequate finding of fact on which to base the\u00a0Alice\u00a0analysis.<\/p><\/blockquote>\n

Ex Parte Poisson<\/span><\/span>, Appeal No.\u00a0Appeal 2012-011084 (PTAB Feb. 27, 2015)<\/p>\n

You can listen to the oral argument of McRO v. Bandai<\/span> here: [Link<\/a>].<\/p>\n

Judge Reyna’s well-reasoned opinion for the court in McRO v. Bandai<\/span> is available [here<\/a>].<\/p>\n","protected":false},"excerpt":{"rendered":"

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]. \u00a0Yesterday’s opinion in McRO v. […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/8107"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=8107"}],"version-history":[{"count":7,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/8107\/revisions"}],"predecessor-version":[{"id":8113,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/8107\/revisions\/8113"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=8107"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=8107"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=8107"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}