USPTO Section 101 Guildelines Have Teeth

As discussed in a previous post, new USPTO guidelines apply not only to examiners, but also the PTAB. The basic framework still utilizes the two step process - first looking whether the claims are directed to an abstract idea, and then questioning whether they provide something more. But, a significant change is that arguments that seemed to only fit in the second step (which the USPTO generally did not give much weight) now can be moved up to the first step using the language in the guidelines relating to integrating the idea into a practical application.

A recent example (SN 13/577,687) illustrates how this plays out at the board. This case is owned by Bosch, and relates to a method for actuating a starter, such as for a vehicle engine. Claim 1 on appeal is listed below:

bosch starter1.png

Claim 15 recited a non-transitory drawn to a non-transitory computer readable medium having a computer program that can be executed by an automobile internal-combustion engine control unit to "carry out all the steps of the method as claimed in claim 1." Similarly, claim 16 is drawn to an automobile internal-combustion engine control unit programmed to "carr[y] out the method as claimed in claim 1.”

The Examiner rejected claims 15 and 16 (but not claim 1) under Section 101. While both claims 15 and 16 explicitly incorporated the limitations of claim 1, the examiner nonetheless argued that the claims were directed to ineligible subject matter because the non-transitory medium, by itself, could not pre-engage the starting pinion, as just one example.

The PTAB rejected this line of reasoning. The reasoning provided by the PTAB is important because it illustrates the strength of the new guidelines in incorporating the idea of practical integration into the first step of the analysis. Further, it confirms that even claims directed solely to computer storage media can be patent eligible even if the claims do not specificaly require the components needed to carry out the actions as part of an overall system.

We have considered the positions of the Examiner and Appellants, and determine not to sustain this rejection. Although we generally agree with the Examiner that the step of comparing mathematical data represents an abstract idea, claims 15 and 16 integrate that step into a practical application: determining when to pre-engage the starting pinion of a starter motor in the direction of a toothed ring of an internal combustion engine. The claimed data comparison is thus limited to a particular operation performed by a particular component of a particular machine, and therefore the additional limitations of claim 1 "implement[] a judicial exception ... in conjunction with a particular machine ... that is integral to the claim." Patent Eligibility Guidance, 55 (citing MPEP § 2106.05(b)). Although, as the Examiner notes, claims 15 and 16 do not require the performance of this operation per se, they do require devices that are programmed to enable the performance of the operation, and thus claims 15 and 16 are limited in scope to the performance of that operation. Because claims 15 and 16 recite a judicial exception that is integrated into a practical application, the claims are not "directed to" the judicial exception and thus are patent eligible.

Thus, even though in some aspects the invention relates to actually pre-engaging the starting pinion in order to achieve the benefits, claims directed solely to determining when to pre-engage the starting pinion can be patent eligible.