Patent practitioners who regularly face §101 rejections at the USPTO know that arguing a technical improvement can be a workable approach for overcoming an abstract idea-based rejection. But just as often, practitioners find themselves caught in a frustrating trap: the USPTO agrees that there's an improvement—but only to the abstract idea itself. And thus, the §101 rejection stands.
This post explores that very trap, why it happens, and ideas to address it. A recent PTAB decision involving Nissan’s commercial vehicle dispatch system illustrates a real-world example of how the these situations can play out.
Under the Alice/Mayo framework, Step 1 determines whether the claims are directed to a judicial exception (e.g., abstract idea), and Step 2 considers whether the claim elements—individually and as an ordered combination—provide an “inventive concept.”
The issue often arises as to whether the claims are directed to an abstract idea or to a technical solution to a technical problem. But what constitutes a “technical” improvement in the USPTO’s eyes is frequently murky. And depending on how the Office defines the alleged abstract idea, it can subsume nearly every aspect of the claimed invention, neutralizing the applicant’s argument for technical improvement.
As noted above, in this trap, the Office essentially accepts the applicant’s position that the system is improved—but still denies eligibility by claiming that the improvement lacks a technological character. Philosophically, it raises a question that’s hard to ignore: Can one really “improve” an abstract idea? If an idea is truly abstract, any supposed “improvement” should either ground it in a technological application (and thus move it out of the abstract realm), or reveal that the claim was never abstract in the first place.
Of course, the Alice framework does not engage in metaphysics. But it does create a gray area where applicants inadvertently concede too much. By aligning arguments too closely with the USPTO’s broad formulation of the abstract idea, Applicants can risk validating the Office’s framing—and thereby transforming what should be a technical improvement to a computer-based system into nothing more than an optimization of human behavior or information processing.
A recent PTAB decision involving Nissan’s application (Appeal 2024-003046, Application 17/056,443) for a commercial vehicle operation system illustrates this issue. The invention relates to dispatching vehicles equipped to perform assistive work (via an assistant’s terminal or other onboard assistive equipment), responding to user requests.
1. A commercial vehicle operation system comprising:
a server;
a plurality of commercial vehicles each configured to communicate with the server via a wireless telecommunication network;
a user terminal configured to communicate with the server via the wireless telecommunication network, the user terminal having a display screen; and
a preceding user terminal configured to communicate with the server via the wireless telecommunication network, the preceding user terminal having a display screen, the server being configured to determine a dispatch vehicle among the plurality of commercial vehicles and issue an instruction to the dispatch vehicle instructing the dispatch vehicle to be dispatched to a boarding location of a user; the plurality of commercial vehicles including an assistive work service providing vehicle configured to communicate with the server, the assistive work service providing vehicle being equipped with an assistant’s terminal possessed by an assistant who carries out assistive work or with assistive equipment that executes the assistive work, and a vehicle that is not equipped with an assistant’s terminal or assistive equipment, the server including a processor configured to communicate with the user terminal to cause the display screen of the user terminal to display options for issuing a request for assistive work and a request for carpooling, and receive the request for assistive work and request for carpooling from the user terminal, acquire vehicle operation information from each of the plurality of commercial vehicles, the vehicle operation information relating to a current location, current usage status, and availability of assistive work service for each of the plurality of commercial vehicles, extract at least one dispatch candidate vehicle that is capable of assistive work from among the plurality of commercial vehicles based on the current request for assistive work received from the user terminal and the vehicle operation information, the extracting the at least one dispatch candidate vehicle including determining whether each of the plurality of commercial vehicles has a preceding user who is currently on board or already has a reservation to be on board before the user would board,
transmitting a notification to the preceding user terminal to cause the display screen of the preceding user
terminal to display a fellow passenger assistive work consultation regarding whether the preceding user accepts or refuses to provide assistive work to the user, receiving a result indicating acceptance or refusal with respect to the fellow passenger assistive work consultation from the preceding user terminal, and
extracting the vehicle having the preceding user who is currently on board or already has a reservation to be on board to be included in the at least one dispatch candidate vehicle when the result indicates acceptance, extract assistant information relating to the assistant when the at least one dispatch candidate vehicle includes the assistive work service providing vehicle, transmit the vehicle operation information of the at least one dispatch candidate vehicle and the assistant information to the user terminal such that the display screen of the user terminal displays the vehicle operation information and the assist information of the at least one dispatch candidate vehicle to the user, and receive a selection of one vehicle among the at least one dispatch candidate vehicle from the user terminal, determine the one vehicle as the dispatch vehicle, issue the instruction to the one vehicle, and transmit to the one vehicle dispatch confirmation information indicating that the one vehicle has been selected as the dispatch vehicle such that, if the one vehicle is an unmanned vehicle, autonomous driving is started in a direction of the boarding location
of the user, and if the one vehicle is a manned vehicle, a driver begins to drive the host vehicle in the direction of the boarding location of the user.
Nissan argued that the claims addressed a technical problem in the dispatching of assistive-capable vehicles—namely, the inefficiency of sending such vehicles to users who do not need them. Their system improved dispatch accuracy by selecting vehicles based on a user’s specific need for assistive services, enabling better matching of resources to demand. Thus, there was an improvement to the field of vehicle resource utilization and efficiency.
The PTAB, however, side-stepped that improvement. First, the Board framed the issue by noting the claims were directed to the abstract idea of providing an assistive work service requested by a person as part of the person’s personal information. The Board categorized this as a method of organizing human activity, particularly managing personal behavior or relationships or interactions between people. Second, the Board determined that Nissan’s claimed improvement—more efficient matching of assistance-capable vehicles to requesting users—was not a technological improvement, but rather an enhancement to the abstract idea itself. Specifically, the improved vehicle management was characterized as better matching to the users’ needs, thus tying the improvement back to abstract idea as defined.
This decision underscores the importance of being strategic—and precise—in both how the abstract idea is defined, and how the technical improvement is framed. When these are aligned, it is easy for the Board to find that the improvement is merely to the abstract idea istelf, and thus no underlying technical improvement is present.
In this way, the battle over what constitutes the abstract idea matters. However, once the Office lands on the definition of the abstract idea, the applicant can then carefully construct the technological improvement to be outside the purview of the abstract idea as defined. For example, anchoring the improvement to technology beyond the abstract idea (and not user behavior) can be helpful. One might do this by emphasizing technological mechanisms—e.g., specific hardware configurations, data processing techniques, or system architectures—that achieve real-world improvements beyond assisting a user or improving the user’s experience. In this way, it may be possible to reduce conflation of user experience with technical functions.
Section 101 remains a challenging hurdle, particularly when arguing that your invention offers a technical improvement. The example from Nissan serves as a cautionary tale: if the improvement is framed—or allowed to be framed—as merely an enhancement to the abstract idea itself, eligibility is likely to be denied. Patent professionals should stay vigilant in both framing the problem and demonstrating the technical solution.