The Federal Circuit has affirmed a decision by the US Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (PTAB or Board) that a claim of a patent application for a “System and Methods for Operating an Information Exchange” didn’t contain an inventive concept that would transform the abstract idea into a patentable invention.
The case is In re Brian McFadden.
In 2018, inventor Brian McFadden filed patent application No. 15/891,363. During prosecution, the USPTO examiner rejected claim 14 of the application as
(1) anticipated under 35 U.S.C. § 102 by Mr. McFadden’s previous patent application publication No. 2015/0088879 and
(2) directed to ineligible subject matter under 35 U.S.C. § 101.
The patent application’s abstract states that it is generally directed toward “[m]ethods and apparatuses useful for operating, regulating, and controlling” and information exchange.
Such an exchange, according to the application, could be a “social network,” “ad network,” “digest,” or “any service that facilitates a flow of information items from producers to consumers.”
According to the application, the information exchange may comprise “computer coded software,” or “any combination of one or more physical computer hardware systems . . . with an applicable operating system appropriate for the specific hardware and, in the case of more than one, interconnected via a private or public network.”
The Federal Circuit agreed with the Board that that claim 14 is directed to an abstract idea because it “recites a method of organizing human activity, i.e., an abstract idea,” and “the claim does not include additional elements or a combination of elements that integrates the recited abstract idea into a practical application.”
Said the court,
The limitations of claim 14, at base, recite generating one distribution of information items, then comparing it to a previous distribution of information items, to determine how information should be presented to a consumer.
The court also agreed with the Board that the
claim is directed to “advertising, sales, and marketing activity,” or at least the close corollary of packaging and presenting information, which is an abstract idea covering “[c]ertain methods of organizing human activity.”
Further, said the court, claim 14 isn’t directed toward a specialized computer system or an improvement in technology, but only claims “mathematical operations and determinations implemented via computer.”
Said the court,
It is axiomatic that merely “reciting ‘use of an abstract mathematical formula on any general purpose computer,’ or ‘a purely conventional computer implementation of a mathematical formula,’” is abstract and does not constitute an improvement to technology.
McFadden, who represented himself, argued that the Board erred by determining that a combination of generic computing elements, rather than “algorithm(s) described in the Specification,” provides structure to the means-plus-function limitations.
The court was unpersuaded, saying that the
“algorithms” merely describes computing differences between information distributions at a high level of generality. For instance, one such “algorithm” sets forth four mathematical formulas for calculating distribution difference.
According to the court,
These general instructions for how a standard computer is to manipulate, transform, and compare data fare no better in the abstract idea analysis than generic software or computing components.
Thus, said the court,
even if the Board misidentified structures in the specification as associated with the means-plus-function limitations of claim 14, any error was harmless.
McFadden also argued that the algorithms disclosed in the application “improve information exchange functioning and thus supply an inventive concept that is more than mere implementation of an abstract idea.”
The court noted that this argument was raised only in a reply brief and thus was not properly made.
However, even if the court were to consider this argument, it said, improving “abstract and generic calculations on a standard computer, without more, is still abstract.”
The court thus affirmed the Board’s rejection.
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