The Federal Circuit has affirmed a Patent Trial and Appeal Board (PTAB or Board) decision that upheld the rejection of all pending claims in a patent application for a computer-implemented method for bartering groceries and other goods for silver and gold.

The case is In re Wenkman and the patent owner, Gregory John Wenkman, represented himself in the proceeding.

The ’833 application relates to a computer-implemented method allowing a business to enter into barter transactions.

The patent specification explains that

…it is NOT the electronically activated physical devices used in the ‘claims’ (i.e. computer, magnetic strip card, etc.) that are patentable, but rather the computer-implemented process (aka: method) and ‘inventive concept’ (aka: ‘significantly more’) produced by a special computer program implemented on a computer to perform the cited inventive method.

There is no further description of the “special computer program” in the patent application.

The patent examiner rejected claims 1–20 of the patent as patent ineligible under 35 U.S.C. § 101.

The Board affirmed the rejection, adopted the examiner’s findings, and added an additional ground for rejecting all claims: lack of written description under 35 U.S.C. § 112(a).

The court noted that in connection with § 101,

Under [the Alice Corp. v. CLS Bank International, 573 U.S. 208 (2014)] two-step approach, at step one ‘we determine whether a claim is directed to a patent-ineligible concept, here an abstract idea,’ and if the answer is yes, at step two ‘we review whether the claim recites elements sufficient to transform it into a patent-eligible application of the abstract idea.’

The Federal Circuit agreed with the Board’s determination that the claim is directed to the abstract idea of organizing human activity in the context of a fundamental economic practice (bartering).

The court noted that the representative claim describes using a computer to conduct a bartering process.

The court explained that “Processes directed toward a fundamental economic practice—like the one claimed here—are abstract.”

Said the court,

A telltale sign of abstraction is when the claimed functions are mental processes that can be performed in the human mind or using a pencil and paper.

It is not enough, said the court, “to merely improve a fundamental practice or abstract process by invoking a computer merely as a tool.”

Further, said the court,

The claim does not contain an inventive concept that transforms it into patent-eligible subject matter at Alice step two. The claim elements invoke the use of a generic computer and electronically-activated card (or mobile device or tablet) to perform basic computer functions (like data receipt, transmission, processing, and display).

The relevant question, said the court, “is whether the claims here do more than simply instruct the practitioner to implement the abstract idea . . . on a generic computer.”

The court explained that

[W]e have repeatedly emphasized that it is not sufficient, in order to pass muster, for a claim to use functional, result-focused language or to encompass ordinary computers and networks to perform their ordinary functions in carrying out an abstract idea.

Note that, as in this case, you don’t need a lawyer to represent you in a patent case. Representing yourself is known as appearing “pro se.” However, this isn’t encouraged by the US Patent and Trademark Office (USPTO), which states:

Preparing a patent application and conducting the proceedings requires knowledge of patent law, USPTO rules and procedures, and scientific or technical knowledge related to the particular invention. While you may prosecute the application without these skills, you might not get all the protection you can without an experienced attorney/agent’s help. So we suggest you hire a registered patent practitioner to draft and prosecute your application.

Just like the haiku above, we like to keep our posts short and sweet. Hopefully, you found this bite-sized information helpful. If you would like more information, please do not hesitate to contact us here: https://aeonlaw.com/contact-us/.