Due to the rapidly shifting requirement for subject matter eligibility, some patent examiners seem to believe that, when it comes to software inventions, they are entitled to assume the invention is not patent eligible subject matter under § 101, and it is the applicant’s duty to prove otherwise. A recent decision by the Patent Trial and Appeals Board (the “Board”) in Ex parte Cohen, Appeal No. 2014-000444, is a reminder of the examiner’s duty to follow the established test in Alice Corp. Pty. Ltd. v. CLS Bank Int’l (citing to Mayo Collaborative Services v. Prometheus Laboratories).

Cohen invented a method of evaluating the sustainability of a brand. The method was claimed as six method steps, with the final caveat that at least one step must be performed with a processor or a computer. Cohen’s base claim reads as follows:

A method for determining a composite rating for sustainability for a brand, comprising the steps of:

• Selecting a number of sustainability factors that are applicable to the brand;
• Associating each sustainability factor with a list of activities pertaining thereto, wherein the activities are ranked by level of sustainability;
• Selecting an activity from the list that is an attribute of the brand for each applicable sustainability factor;
• Determining a score for each selected activity based on its rank in the list of activities for that sustainability factor;
• Calculating the composite rating based on the scores for the selected activities; and
• Displaying the composite rating where in at least one of the steps of the method is performed with a processor or computer.

The patent examiner’s rejections included one for ineligible subject matter. On appeal to the Board, the examiner explained that the claims did not meet the requirements of the “machine or transformation test” (MT test), and that Cohen had failed to explain why her invention was eligible subject matter in light of this failure. The Board reversed the examiner, concluding that the examiner had failed to meet his burden of making a basic case for ineligibility (a “prima facie case”). Specifically, the Board believed that “the Examiner’s statements do not rise to the level of a finding that claim 1 discloses an abstract idea.”

The general test in Alice for patent eligibility has been described as a two-part test, but in fact the test has three distinct parts. The first step is to determine whether the claim is one of the categories of subject matter Congress intended should be patented, as expressed in 35 U.S.C. § 101: “any new and useful process, machine, manufacture, or composition of matter, or new and useful improvement thereof” (the “statutory categories”). If the first answer is “no,” then the claim is not eligible subject matter. If the first answer is “yes”, the second step is to determine whether the claim is “directed to” one of the judge-made exceptions to the statutory categories: an abstract idea, a physical phenomenon, or a law of nature. If the second answer is “no,” then the claim is eligible. If the second answer is “yes,” then the third step is to determine whether the claim as a whole encompasses “substantially more” than the judicial exception itself. Finally, if the answer to the third step is “yes,” then the claim is patent eligible; if it is “no,” then the claim is not patent eligible.

In Cohen, the examiner jumped directly to the third step. The MT test is one way to determine whether a claim to a process (which is one of the statutory categories) that is directed to an abstract idea (one of the judicial exceptions) is “significantly more” than the abstract idea itself. The Board’s message to the examiner (and probably to the examiner’s art unit) is that one must go through each step of the analysis in order to make a prima facie case that the claim is not eligible subject matter.

After a full and proper analysis, the examiner might reach the same final conclusion that the claim is not eligible subject matter. Cohen’s claim 1 is a “process,” which is one of the statutory categories. Although the Board chastised the examiner for failing to explain why the claim is directed to an abstract idea, the claim does appear to be at least partially abstract. The term “directed to” in this context simply means “recites or includes” reference to at least one abstract idea. Steps such as selecting factors, associating factors with activities, ranking activities, and the like can be performed purely mentally without the aid of a computer (although the claim is restricted to the use of a computer). Assuming the examiner can make a full and well-reasoned finding that the claim is directed to an abstract idea, then the examiner would properly apply the MT test.

Although the final result might be the same, legal conclusions by governmental decision makers must be arrived upon systematically and transparently. All relevant reasoning and facts must be included on the record, to give the applicant a real opportunity to respond. This is an aspect of due process of law that is the foundation of our legal system. On a practical level, such explicit analysis can reveal flaws in the examiner’s understanding of the invention (which can be corrected) or reveal versions of the invention which are eligible subject matter, even if the claim at bar is not. This is a good case to cite to an examiner who has cut corners in the subject- matter eligibility analysis.