The Patent Trial and Appeal Broad (PTAB) of the U.S. Patent and Trademark Office has often been criticized for being particularly harsh when reviewing appeals of claims rejected by an examiner of grounds of patent-ineligibly under 35 U.S.C. § 101. According to some sources, examiners are affirmed about 80-86% of the time in these matters.[1] Therefore, when the PTAB reverses an examiner's § 101 rejection, it is worth to note how and why.
U.S. Patent Application No. 13/961,567 was filed in August of 2013, and finally rejected three years later. The Applicant appealed to the PTAB soon after, and a decision was handed down earlier this month.
According to the PTAB:
The claimed subject matter relates to mapping and characterizing sea ice from synthetic aperture radar (SAR) measurements. The ability to characterize sea ice is becoming increasingly important as the makeup of ice that covers various surfaces of the globe is changing and the characteristics of the ice have changed dramatically in recent years. Both environmental concerns and natural resource concerns have a great deal of interest in measuring and characterizing regions of the earth that have ice coverage. The structure, thickness, and location of sea ice are of particular interest.
The claimed subject matter uses dual frequency (X- and P-band) data acquired from synthetic aperture radar (SAR) systems to determine sea ice depth and the presence of leads in the ice floe. The P-band SAR penetrates ice to 5 to 10 meters or more, while the X-band SAR images the surface of the ice. The claimed subject matter also uses co-polarized (e.g., HH and VV) P-band data obtained from a SAR system to map ice structures and weak points in the ice floe.
As a representative example, claim 1 recites:
A method of generating and using mapping layers, comprising:
acquiring, via a synthetic aperture radar (SAR) system, full polarity SAR data over an area containing sea ice, wherein the acquired full polarity SAR data includes X-band data and P-band data;
storing the acquired full polarity SAR data in a SAR database;
generating layers via a processor of the SAR system by performing interferometric processing operations on the acquired full polarity SAR data that includes the X-band data and the P-band data;
registering, by the processor, the generated layers one to another geographically; and
determining, by the processor, a depth of the sea ice by combining the generated layers.
The Examiner rejected claims 1-7, 15-21, 23, 24, and 28-33 under § 101 as allegedly being directed to an abstract idea and not including significantly more than that idea.
The Supreme Court's Alice Corp. v. CLS Bank Int'l case set forth a test to determine whether claims are directed to patent-eligible subject matter under 35 U.S.C. § 101. One must first decide whether the claim at hand is directed to a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then one must further decide whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to "significantly more" than the judicial exclusion. But generic computer implementation of an otherwise abstract process does not qualify as significantly more. On the other hand, a claimed improvement to a computer or technological process is typically patent-eligible.
The PTAB began its analysis by describing the aforementioned Alice decision, as well as the Federal Circuit's follow-on decision in McRO, Inc. v. Bandai Namco Games America Inc. Regarding the latter case, the PTAB noted that the Court held claims directed to a rules-based lip-synchronization process to be patent eligible because, among other reasons, "the claims do not simply use a computer as a tool to automate conventional activity," and that there was "no evidence that the process previously used by animators is the same as the process required by the claims."
Concerning the present invention, the PTAB put a heavy emphasis on the teachings of the specification. In particular, the specification "describes that prior art attempts at using SAR and IFSAR to measure and characterize sea ice have used satellite-based X-band systems or airborne systems to map the top of ice through a few decimeters of dry snow and characterize only new from first-year and multiyear ice." But these systems did not measure ice thickness -- instead low-flying radar or drilling techniques were used for such a purpose, resulting in thickness data only on small sections of ice.
Applicant's SAR system, however, was different because "the P-band SAR penetrates the surface features and the ice itself to reveal details of surface and internal cracking of an ice floe not evident in X-band data." Notably, the specification describes "the specific steps the processor employs to determine the thickness of the ice based on the X-band and P-band SAR data. This includes "creating elevation models for the top of the ice based on the X-band digital elevation map, creating elevation models for the penetration depth based on the P-band HH digital elevation map, and subtracting these models to provide a direct measure of ice thickness."
As a result, the PTAB found that the claimed improvement involves "the processor of a SAR system to determine ice thickness, leads in the ice, and ice cracks, each of which requires data taken from below the ice surface, that previously could only be produced over very small areas using low-flying profiling radar systems, sled-based ground penetrating radar, or core samples drilled from the ice." Further "these characterizations of the sea ice are realized by improving the prior art using specific rules to combine and process dual-frequency SAR data and using specific rules to process particular types of P-band SAR data."
While the Examiner contended that the claimed invention that did not differ from past manual techniques, the PTAB disagreed. Specifically, the PTAB wrote that "[t]he record before us does not contain sufficient evidence to show that the claimed process is the same as any prior art process used to determine the claimed sea ice characteristics." Moreover, there is nothing in the background of the specification that discloses using P-band SAR data for characterizing sea ice, and the Examiner had not pointed to any such disclosure in the prior art.
The Examiner also contended that the claims are "merely a series of mathematical or logical operations that determines the depth of sea ice after merely generically gathering data used in the operation." The PTAB disagreed, noting that the claims also recite "processing the acquired data to build layers of a map, and registering the layers together to create a depth map prior to calculating the ice thickness." Thus, "the claim limitations amount to specific formatting of the data according to rules to identify leads and cracks in the ice," and "the claim limitations recite a combined order of specific rules that renders information into a specific format that is then used and applied to characterize the sea ice."
Concluding, the PTAB asserted that "[t]he Examiner erred in oversimplifying the claims and characterizing them as directed to generic computer operations, mathematical algorithms, and mere automation of prior manual activity." Therefore, the PTAB reversed the examiner's § 101 rejections.
At first blush, claim 1 of the '567 application looks doomed under § 101. This is because the Electric Power Group, LLC v. Alstom S.A. Federal Circuit case has been applied broadly by the Office to reject claims that are allegedly directed to no more than gathering data, processing the data, and providing a result. Arguably, that is all that is going on in claim 1. That case, however, was not even mentioned in this decision. Perhaps this is because it was decided in August 2016, right before the '567 application was appealed. Still it is somewhat surprising that the PTAB did not rely on, or even mention, Electric Power Group.
Instead, the PTAB's emphasis on McRO and a detailed analysis of the teaching of the Applicant's specification won the day. This might imply that even if a claim recites no more than gathering data, processing the data, and providing a result, when the claim also involves a technical advance, that is enough to overcome a § 101 challenge. While it would be nice to have the PTAB (or even better, the Federal Circuit) explain where Electric Power Group ends and McRO begins, the outcome herein is a potentially persuasive holding that can be (and probably should be) cited when § 101 prosecution gets difficult.
Ex Parte Reis (PTAB 2018)
Panel: Administrative Patent Judges Linda E. Horner, Brett C. Martin, and Paul J. Korniczky
Decision on Appeal by Administrative Patent Judge Horner
[1] http://www.bilskiblog.com/blog/2017/09/surviving-alice-with-an-appeal.html; https://www.lexology.com/library/detail.aspx?g=b5dcb8ae-3478-4e4b-b344-38258b910431.
