Did Alice Turn § 101 Into An Expanded § 102?

Did the holding in Alice v. CLS Bank allow the Patent Office and the courts to expand 35 U.S.C. § 102 when rejecting patent applications and invalidating patents? In some ways, the holding in Alice may very well have expanded the ability to reject patents and patent applications as being non-novel. In other words, 35 U.S.C. § 101 could be viewed as a 35 U.S.C. § 102 (requiring that patents be novel) without the requirement of printed publications or patents.

To understand this, one has to look to recent Federal Court decisions, Patent Trial and Appeal Board (PTAB) decisions, and examiner rejections. Typically, the invalidation or rejection under expanded 35 U.S.C. § 102 (e.g., 35 U.S.C. § 101) will take the form of (1) asserting that the claims are directed to an abstract idea and (2) set forth evidence or arguments that the individual claim elements are well-known and conventional (e.g., non-novel).

For instance, in a recent PTAB decision (CBM2014-00182), the PTAB found that the claims of the patent at issue were directed to ineligible subject matter. Independent claim 33 of U.S. Patent No. 8,402,281 is reproduced below:

A computer-implemented data processing method comprising:

maintaining a database comprising a plurality of data portions, each data portion associated with a data category;

maintaining a separate data protection table comprising, for at least one data category, one or more data processing rules associated with the data category that must each be satisfied before a data portion associated with the data category can be accessed;

receiving a request to access a data portion associated with a first data category from a user;

determining whether each of the one or more data processing rules associated with the requested data portion are satisfied; and

granting the user access to the requested data portion responsive to each of the retrieved one or more data processing rules being satisfied.

The PTAB accepted Petitioner’s assertion that the claims were directed to an abstract idea (step 1 of the Mayo test). More specifically, the PTAB accepted that the claims were directed to “determining whether access to data should be granted based on whether one or more rules are satisfied.”

Once it was determined that the claims were directed to an abstract idea, the analysis moves to step 2 of the Mayo test – whether the claims contain an “inventive concept.”

In this analysis, the Petitioner asserted (and the PTAB agreed) that the “claims recite only generic computer elements and functions that were well-known and conventional” and that the “steps of maintaining a database of data portions and maintaining a separate data protection table are simply data-gathering steps and that receiving a request to access a data portion and granting access to a data portion are insignificant pre- and post-solution activity.”

In other words, it appears that this decision separates each claim element and then makes the argument that the claim element is not novel (e.g., the element is well-known and conventional) and that the sum of these non-novel elements “add nothing that is not already present when the elements are considered separately.”

In another example, one can look to the Ariosa v. Sequenom decision back in June. Claim 1 recited:

A method for detecting a paternally inherited nucleic acid of fetal origin performed on a maternal serum or plasma sample from a pregnant female, which method comprises

amplifying a paternally inherited nucleic acid from the serum or plasma sample and

detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample.

The court took the same analysis as above – (1) determine the claims are directed to an abstract idea (e.g., directed to a naturally occurring thing or natural phenomenon) and (2) determine that the claims do not result in an inventive concept.

The court could have considered the method claims as a whole to recognize that amplifying a paternally inherited nucleic acid from a serum sample was new and that detecting the presence of a paternally inherited nucleic acid of fetal origin in the sample was new and useful. However, the court found that the method steps did not support patentability because the specification stated “[t]he preparation of serum or plasma from the maternal blood sample is carried out by standard techniques.” In summary, the court found that “the method steps were well-understood, conventional and routine, the method of detecting paternally inherited cffDNA is not new and useful.”

In summary, it appears that courts and the Patent Office can invalidate or reject patents and patent applications as being not novel under the guise of 35 U.S.C. § 101 by treating the claims as, first, being directed to an abstract idea, and, second, treating each claim element as being well-understood and conventional and then finding that the claims, as a whole, do not amount to anything other the sum of the well-understood and conventional claim elements.

In the end, we can look back to the following statement in Mayo v. Prometheus – [f]or all inventions at some level embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas.”