When navigating the bureaucratic Patent Office, with its arcane restriction rules and relatively lax oversight of examiner overreach, an appeal to the board is an Applicant's best chance at some semblance of fairness. It is disheartening when the Board issues a decision that is plainly based on improper reasoning.
In a recent rehearing (11/873,969), the Board re-considered, among other issues, its new ground of rejection under Section 101. In the original decision, the Board did not address the pending prior art rejections, but rather entered a new ground of rejection under Section 101. Claim 9, shown below, relates to a method of arranging for the shipment of goods:
The Applicant requested rehearing and noted that the Board's reasoning was problematic. Specifically, in the original decision, the Board asserted that the method could be "completely performed as mental steps by a person with or without the aid of a computer or pen and paper." The applicant then pointed out that claim 9 requires actions such as scheduling, via a computer network, the shipment. In response the Board makes the following statement:
The Board here seems to (purposely?) mix up the issues. Whether or not the "via a computer" transforms the subject matter into something more is a separate question from whether or not the claimed method can be practiced completely as mental steps. It is not correct to say that the method can be practiced mentally because it is not transformed into something more. Otherwise the reasoning becomes circular and illogical.
It is disappointing to see a Board decision that further churns already muddy waters.