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Alice and Incongruity In PTAB Appeals
During patent prosecution before the United States Patent and Trademark Office (USPTO), applicant and examiner can become entrenched in conflicting positions on subject matter eligibility. Appeals to the Patent Trial and Appeal Board (PTAB) could clear prosecution impasse. However, Alice-related issues taken to the PTAB are not necessarily the Alice-related issues decided by the PTAB.
This article discusses the significant contrast between consideration of issues related to the U.S. Supreme Court's decision in Alice Corp. v. CLS Int'l, 134 S. Ct. 2347 (2014), in prosecution and their resolution by the PTAB. Both the legal analytical framework to address Alice-related issues as well as determinations resulting from application of the analytical framework can diverge in prosecution versus the PTAB. Prosecution culminating in recent PTAB decisions provides clear examples. The PTAB decisions are discussed below in summary fashion to identify incongruities between prosecution and appeal. Experienced practitioners will understand the impact of these incongruities on appeal consideration and strategy.
Current Analytical Framework
Current USPTO guidelines promulgated in 2019 regarding subject matter eligibility mandate a two-step legal analytical framework. See, USPTO, 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019); USPTO, October 2019 Update: Subject Matter Eligibility, 84 Fed. Reg. 55942 (Oct. 17, 2019). The first step in the current analytical framework determines whether a claim is directed to a judicial exception. In the first prong of the first step, an examiner should identify the "specific limitations" that allegedly recite an abstract idea. In the first prong, the examiner also should determine whether the identified specific limitations fall within familiar subject matter groupings, i.e., mathematical concepts, certain methods of organizing human activity and mental processes.
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