PTAB Invokes Bilski When Rejecting Claims Under §101
In a decision handed down on February 24, 2016, a panel of Patent Trial and Appeal Board (PTAB) administrative patent judges invoked In re Bilski when issuing a new grounds for rejection for claims 1, 23, 34, and 35 and the respective dependent claims in In re Wegbreit. The Appellant appealed the Patent Examiner’s rejections under §102 (anticipation) and §103 (obviousness). The PTAB panel agreed with the Appellant and reversed the aforementioned rejections. However, the PTAB panel then issued a new grounds for rejection holding that the claims were directed to non-statutory subject matter.
The PTAB utilized claim 1 as being illustrative of the Appellant’s invention:
1. A method for computing a 3D scene model comprising 3D objects and representing a scene, based upon a prior 3D scene model, the method comprising the steps of:
(a) acquiring an image of the scene;
(b) initializing the 3D scene model to the prior 3D scene model; and
(c) modifying the 3D scene model to be consistent with the image, by:
(i) comparing data of the image with objects of the 3D scene model, resulting in associated data and unassociated data;
(ii) using the unassociated data to compute new objects that are not in the prior 3D scene model and adding the new objects to the 3D scene model; and
(iii) using the associated data to detect objects in the prior 3D scene model that are absent and removing the absent objects from the 3D scene model.
The PTAB panel recited the framework set forth in Alice v. CLS Bank and in Mayo Collaborative Services v. Prometheus Labs., Inc. As a quick refresher, the (1) first step of the analysis is to “determine whether the claims at issue are directed to one of those patent-ineligible concepts” and, if the claims are directed to those patent-ineligible concepts, the (2) second step of the analysis is to consider the elements of the claims “individually and ‘as an ordered combination’” to determine whether there are additional elements that “‘transform the nature of the claim into a patent-eligible application.”
Under the first step of the analysis, the PTAB panel held that the claim limitations “are 3D abstractions of an image or an abstract concept that could be performed in the human mind, or by a human using a pen and paper” (citing CyberSource Corp.) and noted that “mental processes–or processes of human thinking– standing alone are not patentable even if they have practical application” (citing In re Comiskey). In other words, the PTAB panel found that the claim limitations were directed to a patent-ineligible concept.
For the second step of the analysis, the PTAB panel held that the claim limitations did not have any additional limitations that represent a patent-eligible application of the abstract concept. However, for this part of the analysis, the PTAB panel invoked In re Bilski for the purposes of holding that the claim limitations did not represent a patent-eligible application of the abstract idea.
For example, the PTAB panel stated that “neither of Appellants’ process claims 1, 23, 34, and 35 is tied to any machine; nor any of the recited steps of Appellants’ claims 1, 23, 34, and 35 transforms ‘a particular article into a different state or thing.'” (See page 8 of the PTAB decision).
Of particular interest, the PTAB panel states “we find Appellants’ claims 1, 23, 34, and 35 are neither ‘tied to a particular machine or apparatus’ nor do they ‘transform a particular article into a different state or thing’ as required by In re Bilski. In particular, we note that none of recited steps in Appellants’ independent claims 1, 23, 34, and 35 refers to a specific machine by reciting structural limitations of any apparatus or to any specific operations that would cause a machine to be the mechanism to perform these steps. (Emphasis added).
While a majority of the claims were method claims, independent claim 23 did recite “[a] non-transitory computer readable storage medium having embodied thereon instructions for causing a computing device to execute a method for computing a 3D scene model.”