On November 25, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) affirmed an appeal from IBM that its invention fails to recite patent-eligible subject matter under 35 U.S.C. §101. U.S. Patent Application Number 15/212,216 claimed a method for mining threaded online discussions, where an information handling system (IHS) would perform a natural language processing (NLP) analysis on multiple web sites containing threaded discussions of a particular topic. Those discussions would be correlated, and the IHS would identify a question from the discussions, as well as several potential answers to the question, with one answer marked as the most likely answer.
Following the two-step framework laid out by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012), the USPTO Examiner first found that the invention was directed toward abstract ideas similar to those concepts identified in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) and Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011). The Examiner further found that the claims lacked any additional elements amounting to significantly more than the abstract ideas since the additional computer elements, including a processor and memory, were recited at a high level of generality. The Examiner determined that the claims merely performed conventional computer functions, and provided no indication that the functioning of any computer or other technology was improved.
IBM appealed by arguing that updating a corpus with the collected discussions, and answering a question posed by the QA system, could not be performed as a mental process, placing the invention beyond a mere abstract idea. IBM further explained that its claims were necessarily rooted in computer technology, citing the specification's description of a specific improvement in the technical field of Question/Answer (QA) computer systems. IBM argued that its claims "include specific, concrete steps such as adding harvested discussions to a corpus utilized by a QA computer system," and noted a similarity to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) by providing more accurate answers to questions asked in the online discussions.
The PTAB nonetheless agreed with the Examiner that the claims could be performed mentally or with pen and paper, and that the invention was directed towards a judicial exception. The PTAB further affirmed that the claims performed well-understood, routine, and conventional activity, and commented that IBM did not argue that any of the additional elements were beyond what was well-understood, routine, and conventional in the art. Citing Berkheimer v. HP Inc., 881 F.3d 1360, 1370 (Fed. Cir. 2018), the PTAB wrote that "it is irrelevant whether [the claimed abstract idea] may have been non-routine or unconventional as a factual matter ... narrowing or reformulating an abstract idea does not add 'significantly more' to it."
The primary takeaway from Berkheimer remains that "whether something is well-understood, routine, and conventional to a skilled artisan ... is a factual determination." Thus, IBM may have benefited from the filing of a Supplemental Brief under MPEP § 1205.02, citing Berkheimer as new authority and including factual evidence, such as a declaration under 37 C.F.R. § 1.132 explaining why one of ordinary skill in the art would view updating a corpus based on threaded online discussions as not being well-understood, routine, and conventional activity. Doing so may have placed an additional burden on the Examiner to demonstrate why this combination of elements would amount to an inventive concept, and potentially sway the PTAB into reversing the ineligibility rejection and requiring additional analysis by the Examiner.
With the two-year anniversary of the Berkheimer decision approaching, it remains critical for patent practitioners to ensure that appeals take full advantage of the rapidly-changing landscape of 35 U.S.C. § 101 law by filing supplemental briefs where appropriate, along with supporting evidence and declarations.
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