Over the past several years, we have written extensively on patent subject matter eligibility – the so-called Alice standard, which has been evolving. In brief, the Alice standard precludes claim allowance when the claim is directed to a mental process (e.g., a method which can be accomplished entirely in one’s head) or abstract idea, among other reasons. Many cases have been used to help define when something is limited to a mental process or abstract idea only, and at times the claim limitations and specifications can be written such that an Alice rejection can be offset before the rejection happens. Sometimes this involves introducing concepts or “machines” and sometimes the specification needs to include discussion regarding how a process goes beyond a mental process, including demonstrating a practical application of the method. Including a machine in the claim can often be useful toward overcoming an Alice rejection.
To facilitate determining if a claim is directed to a mental process or algorithm, and is therefore not patent eligible, the U.S. Patent Office (“USPTO”) has established guidelines for Examiners to follow. Although generally helpful, the guidelines still leave a gray area in deciding when something is or is not limited to a mental process.
In the event an application is rejected by an Examiner, the rejection can be appealed to an Appeal Board in the USPTO. Recently, the USPTO’s Appeal Board has taken up a few cases regarding subject matter eligibility and in a small number of cases, has reversed the Examiner. One reversal is interesting and useful in determining how to write future applications.
In Ex Parte Bella, Appeal 2021-002297, 2022 WL 1584710 (PTAB, May 17, 2022), the Examiner’s subject matter eligibility rejection was reversed. Bella is directed to a method of lifeguarding, including supervising swimmers and searching for a body of distress by using and placing submersible devices in the body of water based on a calculated grid. On the surface (excuse the pun) this seems to be a mental process. Appellant successfully argued that “calculating and mapping a grid to determine proper positioning of the subversives …[enhances] the effectiveness of lifeguard training … resulting in less lives being lost,” so as to demonstrate a practical application of the method. Further, the Board recognized that, even though the submersible devices could be made of plastic, it still counted as a “machine”.
First, it is likely that patent authors generally think of a “machine” using a standard definition such as “an apparatus using or applying mechanical power and having several parts, each with a definite function and together performing a particular task”. But in this case, a machine is being viewed as something broader than the standard definition. The submersible devices are not described as powered.
However, appealing can be a double-edged sword. The Board found that the claim may have been indefinite for not describing how the system recognizes that a swimmer is in distress. It is important to note that even if one appeals for one reason, and can find reasons for success, new reasons can crop up and might result in new rejections. One needs to be careful in thinking through more criteria than just Alice to overcome an Alice rejection.