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Help from the PTAB in Applying USPTO § 101 Subject Matter Eligibility Guidance

In July 2019 the U.S. Patent Trial and Appeal Board (PTAB) newly designated four decisions as informative to highlight the PTAB’s general consensus on issues considered in these cases.  All four cases involve the PTAB applying the U.S. Patent and Trademark Office’s January 2019 guidance for determining subject matter eligibility under 35 U.S.C. § 101.  The decisions focus on whether claims integrate a judicial exception into a practical application so as to be subject matter eligible.  The four decisions are:

  • Ex parte Olson – Claims eligible.  The claims were determined to recite a mathematical concept, which is one of the groupings of patent ineligible abstract ideas identified in the January 2019 guidance, along with mental processes and certain methods of organizing human activity.  The PTAB held that the claims integrated the mathematical concept into a practical application by applying the algorithm in a meaningful way by improving particular technology using a particular machine, a catheter navigation system.

  • Ex parte Kimizuka – Claims ineligible.  The PTAB held that claims directed to a fitting method of a golf club recite a mental process and do not provide an inventive concept or integrate the process into a practical application.  The PTAB distinguished the claims from being a technology-based integration of an abstract idea into a practical application because the claims do not improve how measurements are taken for the method and do not improve golf club manufacturing.  Additionally, the presence of a database and processor in the claims did not preclude the claims from being directed to a mental process.

  • Ex parte Savescu – Claims ineligible.  Claims directed to a method of creating a life-cycle workflow for a project were determined by the PTAB to recite a method of organizing human activity by reciting a concept related to managing relationships or transactions between people.  The PTAB also held that the claims added generic computer activity to this concept, which was insufficient to integrate the method into a practical application.  The claims being allowable over the prior art did not sway the decision of subject matter ineligibility.

  • Ex parte Fautz – Claims eligible.  The PTAB held that although the claims recited a mathematical concept, the claims integrate the concept into a practical application by reflecting an improvement to a technology (magnetic resonance (MR) tomography) and solving a technical problem (improving sensitivity correction in MR tomography devices).

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About this Author

Christina Sperry, Mintz Levin Law Firm, Boston, Medical Tech and Intellectual Property Law Attorney

Christina is an experienced patent attorney whose clients are focused in the medical technology space, from start-ups to large corporations and academic institutions. She advises on patent preparation and prosecution and provides opinions on infringement, validity, and right-to-use for clients in the US and internationally.

The areas of technology in which Christina is particularly focused include mechanical, electrical, and electro-mechanical technical fields such as medical and surgical instruments and devices including endoscopic, soft tissue...