- posted: Nov. 10, 2023
A recent decision before the Board of Patent Appeals regarding patents analyzed under 35 U.S.C. 101 provides some helpful guidelines for patent applicants.
On October 2, 2023, the Patent Trial and Appeal Board decided Ex parte Cohen: where the Board determined that a computer implemented content suggestion engine provides content suggestions to a requesting user based upon information about content items that other users may have independently categorized or organized into folders within a content repository was patent eligible subject matter.
The Board ultimately held that because the applicant proved that Claim 1 improves the functioning of a computer or other technology or technical field, specifically search system technologies Claim 1 was patent eligible under 35 U.S.C. 101. The case is noteworthy because it shows that an innovative process using a computer that clearly improves the functionality and efficiency of a computer can be considered as patent eligible.
More particularly, the Patent Trial and Appeal Board first determined whether the claim was eligible under step 1 of the analysis by reviewing whether the claim was a process, machine, manufacture, or composition of matter. The Board found that the following claim was eligible:
Claim 1. A computerized method for suggesting web pages to users comprising:
storing, in a content repository on a server computer, a plurality of representations of folders and web pages;
creating a folder ID for each folder created by one of a plurality of users;
creating a link ID for each web page saved by at least one of the users to one or more of the folders;
associating each link ID with one or more folder IDs based on the one or more folders in which the link ID’s respective web page was saved;
receiving, from a client device, a request from a first user of the plurality of users for one or more suggested web pages based on a basis link ID; and
in response to the request:
determining a plurality of related link IDs, wherein each related link ID and the basis link ID are associated with one or more common folder IDs among folders created by one or more of the plurality of users other than the first user;
determining a plurality of multi-hop link IDs, wherein each multi-hop link ID and one or more of the related link IDs are associated with one or more common folder IDs among folders created by one or more of the plurality of users other than the first user; and
providing one or more of the respective web pages corresponding to the plurality of related link IDs and the plurality of multi-hop link IDs as suggested web pages to the client device.
The Patent Trial and Appeal Board next looked to whether the claim recited any judicial exceptions including certain groupings of abstract ideas. The Board found that there were abstract ideas expressed in Claim 1 under step 2A prong 1 of the analysis (see MPEP 2602). Next, the Patent Trial and Appeal Board looked at Claim 1 particularly the following steps:
determining a plurality of related link IDs, wherein each related link ID and the basis link ID are associated with one or more common folder IDs among folders created by one or more of the plurality of users other than the first user;
determining a plurality of multi-hop link IDs, wherein each multi-hop link ID and one or more of the related link IDs are associated with one or more common folder IDs among folders created by one or more of the plurality of users other than the first user; and
providing one or more of the respective web pages corresponding to the plurality of related link IDs and the plurality of multi-hop link IDs as suggested web pages to the client device.
under the analysis of step 2A prong 2 and held the following:
These limitations do not merely represent a mental process, but instead set forth “limited rules [that] reflect[] a specific implementation.” McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). Yet the Examiner’s findings and analysis fail to demonstrate that this specific implementation is one any human suggesting web pages would likely have used. Id. (quoting Ass’n for Molecular Pathology v. Myriad Genetics, Inc., 569 U.S. 576, 596 (2013)). That is, the Examiner’s findings do not show that all of the limitations detailed under the step 2A, prong one, analysis are part of a mental process.
Based on the record before us, the Examiner’s findings and analysis do not show that claim 1 merely recites applying the recited mental process on a computer or merely using a computer as a tool to perform the mental process, that it adds insignificant extra-solution activity to the recited mental process, or that it generally links the mental process to a particular technological environment or field of use. MPEP §§ 2106.04, 2106.05(f)–(h). Moreover, Appellant presents unrebutted arguments that show that claim 1 improves the functioning of a computer or to other technology or a technical field (specifically, search system technologies). Appeal Br. 4–5. Therefore, we agree with Appellant that claim 1 integrates the recited mental process into a patent-eligible practical application. Id. at 3–5.
As indicated above, the Court ultimately held that because the applicant proved that Claim 1 improves the functioning of a computer or other technology or technical field, specifically search system technologies claim 1 was patent eligible under 35 U.S.C. 101. Thus, as is indicated in the above decision, patent applicants should look to file patent applications which have claims that express limited rules which reflect a specific implementation. McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1316 (Fed. Cir. 2016). In addition, these limited rules are even more patentable if they improve the functionality of a computer to other technology or technical fields.
