“While the PTAB routinely refers to the 2019 Guidance in decisions on Section 101 rejections, there is at least one critical requirement of the 2019 Guidance that the PTAB appears to ignore—the requirement that an examiner must show every claim, individually, is ineligible.”

The year 2019 was supposed to be when subject matter eligibility examination at the USPTO got better. First, the USPTO published Revised Patent Subject Matter Eligibility Guidance in January 2019 meant to address “how to apply the U.S. Supreme Court’s [Alice] framework for evaluating eligibility [under Section 101].” 84 Fed. Reg. 50 (Jan. 7, 2019) (“PEG”). Then, the USPTO doubled down with the October 2019 Subject Matter Eligibility update (“October Update”). In contemporary parlance, you might say that 2019 was supposed to be the year that the USPTO flattened the Section 101 rejection curve.

There is promising evidence that the 2019 Guidance has reduced Section 101 rejections during prosecution before USPTO examiners. See Update on 101 Rejections at the USPTO: Prospects for Computer-Related Applications Continue to Improve Post-Guidance. Unfortunately, the Patent Trial and Appeal Board (PTAB) does not seem to have received the memo. While the PTAB routinely refers to the 2019 Guidance in decisions on Section 101 rejections, there is at least one critical requirement of the 2019 Guidance that the PTAB appears to ignore—the requirement that an examiner must show every claim, individually, is ineligible.

A Prima Facie Case of Ineligibility under Section 101 Requires a Claim-by-Claim Analysis

The October update explains with reference to MPEP Section 2106.07(a) in no uncertain terms that ineligibility must be determined claim-by-claim:

[T]he initial burden is on the examiner to explain why a claim or claims are ineligible for patenting clearly and specifically, so that the applicant has sufficient notice and is able to effectively respond. Examiners should review the record as a whole and make subject matter eligibility decisions on a claim-by-claim basis in accordance with the broadest reasonable interpretation of the claims.

October Update at 15 (emphasis added, internal citations omitted). See also MPEP § 2106.07(a) (“The evaluation of whether the claimed invention qualifies as patent-eligible subject matter should be made on a claim-by-claim basis, because claims do not automatically rise or fall with similar claims in an application.”); § 2106 (“each claim should be reviewed for compliance with every statutory requirement for patentability in the initial review of the application, even if one or more claims are found to be deficient with respect to the patent-eligibility requirement of 35 U.S.C. 101.”).

To be sure, the requirement for a claim-by-claim analysis unequivocally applies to USPTO examiners and PTAB judges alike as they are both “USPTO personnel [] evaluating subject matter eligibility”, and “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” PEG at 50, 51.

Then why is the PTAB affirming Examiner rejections that don’t meet this basic requirement for a prima facie rejection under Section 101—that each claim is examined “clearly and specifically” and found ineligible? It has always been the rule and the practice of the USPTO to reject claims under Sections 102 and 103 in a claim-by-claim fashion. See, e.g., MPEP § 2143.03.

The answer seems to depend on when a “representative” claim analysis is proper notwithstanding the USPTO’s rules.

When is a Representative Claim Analysis Proper?

A recent Federal Circuit case affirming the PTAB’s rejection of claims under Section 101 is instructive on when a representative claim analysis is proper. In In re Marco Guldenaar Holding B.V., the Federal Circuit considered the “Appellant’s argument on appeal that the Board improperly treated claim 1 as representative of the rejected claims” and noted:

Rule 41.37(c)(1)(iv) specifies that, when an applicant does not provide separate arguments for different patent claims, the Board may select a single claim from a group and decide the appeal on the basis of the selected claim alone. And our case law and Rule 41.37(c)(1)(iv) make clear that, for an applicant to receive separate consideration by the Board for each of its appealed claims, an applicant’s appeal brief must contain substantive argument beyond “a mere recitation of the claim elements and a naked assertion that the corresponding elements were not found in the prior art.” We agree with the Board that Appellant’s brief to the Board merely identified a few additional limitations in a subset of dependent claims—no more than one per claim—without any explanation as to why the additional limitations rendered the claims patent-eligible.

911 F.3d 1157, 1162 (Fed. Cir. 2018) (emphasis added, internal citations omitted).

The problem with the Federal Circuit’s analysis, though, is that it necessarily presupposes that an examiner has met his burden with respect to all of the appealed claims. In other words, if an Office Action rejects all claims based on applying prior art to all claims, then the burden has shifted, and the Applicant cannot make a “naked assertion” regarding the content of the prior art.

That, however, is not the case when the burden has not shifted because an examiner has not made a prima facie case with respect to each claim, as required by the MPEP generally and the 2019 Guidance specifically with respect to Section 101. See, e.g., October Update at 15. Without a meaningful analysis of each claim by an examiner, the applicant simply does not have “sufficient notice” to be able to “effectively” (read: substantively) respond.

In Berkheimer v. HP Inc., the Federal Circuit similarly explained that courts “may treat a claim as representative in certain situations, such as if the patentee does not present any meaningful argument for distinctive significance of any claim limitations not found in the representative claim or if the parties agree to treat a claim as representative.” 881 F.3d 1360, 1365 (Fed. Cir. 2018). However, in Berkheimer, the Federal Circuit remanded the case because the appellant had made arguments regarding dependent claims, which the district court had not considered as part of its representative claim analysis. Id. at 1370-71.

In re Marco and Berkheimer seem to be consistent at least insofar that if an applicant presents substantive arguments (i.e., with some explanation) as to subject matter eligibility for individual claims, then a court (including the PTAB) cannot use representative claim analysis. What neither opinion addressed, unfortunately, is whether or not an argument that an examiner has not made a prima facie showing with respect to all claims is a sufficiently substantive argument.

Hitting Home

I recently made oral arguments to the PTAB on this very point; namely that an Examiner had failed to meet his initial burden by using a “representative” claim analysis of a single independent claim where there were twenty pending claims of varying scope and features. Though the briefing for the appeal was completed before the 2019 Guidance, I argued that the rule for a claim-by-claim analysis did not change with the 2019 Guidance; rather, the 2019 Guidance merely reinforced the existing rule. Section 2106 of the MPEP is not new.

Unfortunately, the PTAB disagreed, and argued that there was nothing wrong with the Examiner’s representative claim analysis, notwithstanding the burden issue. In other words, the PTAB seem to suggest that a prima facie case of ineligibility can be made without a claim-by-claim analysis, contrary to the USPTO’s own clearly articulated rules. What’s more, the PTAB panel argued that if the applicant thought the analysis was deficient, the applicant should have petitioned the Director (of the USPTO) rather than appealed the rejection under Section 101.

Say what? Let’s tug on that thread.

It is plainly wrong to suggest that an applicant should file a petition to challenge an Examiner’s failure to make a prima facie case of unpatentability. The patent statute provides that “[a]n applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the [PTAB]”. 35 U.S.C. § 134(a). Consistent with the statute, the MPEP states “[o]rdinarily, an objection is petitionable, and a rejection is appealable” and “the Director will not ordinarily entertain a petition where the question presented is a matter appealable to the Board.” See MPEP § 1201 (emphasis added); see also § 1001.01 (same).

And while the 2019 Guidance notes that “[f]ailure of USPTO personnel to follow the guidance … is not, in itself, a proper basis for either an appeal or a petition”, that is neither the real issue—which is the Examiner’s failure to meet his initial burden—nor does it avail the PTAB’s argument as the statement applies to both petitions and appeals. See PEG at 50.

The PTAB’s suggestion to raise a petition instead of an appeal was a clear, and erroneous, dodge.

It’s Not You, It’s the PTAB

My righteous indignation aside (on behalf of my client, of course), I set out to see if I could find a PTAB decision that ran afoul of both the 2019 Guidance and the case law on representative claim analyses. It was not hard to find.

In Ex Parte Thomas, an applicant appealed from an Examiner’s final rejection of all claims under Section 101. See generally Appeal No. 2018-008929. In the final office action preceding the appeal, the Examiner provided a threadbare analysis of the independent claims, failing to even consider each feature of the independent claims. See March 27, 2017 Final Office Action in U.S. Patent Application No. 13/163,673. The analysis of the dependent claims was a single line:

“Dependent claims 2-6, 10-14, 16, 18-23 are further directed to the particulars of the abstract idea.”

Id. at p. 3.

In its appeal brief, the applicant argued that “[w]ith regard to the dependent claims, the Final Office Action fails to provide any specific analysis of any of the additional features set forth in these claims ….” See Appeal Brief in Appeal No. 2018-008929, p. 30. Then the applicant analyzed specific features in five separate groups of dependent claims. Id. at 30-34. In other words, the applicant did not treat the independent claims as representative.

The Examiner’s Answer stated that “[the dependent claims] depend on claims 1, 9 and 17, and are abstract for the same reasons as disclosed above with respect to the abstract independent claims that they depend on”, but at least acknowledged the applicant’s dependent claim arguments. See Examiner’s Answer in Appeal No. 2018-008929, p. 14-16.

In its reply brief, the applicant further pointed out that the Final Office Action did not “set forth a prima facie case that the dependent claims are allegedly directed to an abstract idea and in fact is merely an unsubstantiated conclusion without any analysis of the actual features of these claims at all”. See Reply Brief in Appeal No. 2018-008929, p. 17. The applicant further argued any attempt to do so after the fact would be improper as a newly raised ground of rejection. Id.

The PTAB’s Decision on Appeal not only acknowledged the 2019 Guidance generally, but noted (as above) that “[a]ll USPTO personnel are, as a matter of internal agency management, expected to follow the guidance.” See Decision on Appeal in Appeal No. 2018-008929, p. 6. Despite the acknowledgment, the PTAB affirmed the examiner’s rejections based on its own representative claim analysis. Id. at pp. 2, 6, 8-20.

Notwithstanding the prima facie issue that the applicant raised in its briefing, which the PTAB ignored, the fact that the applicant made dependent claim-specific eligibility arguments means the PTAB should not have performed a representative claim analysis under the controlling case law.

Thus, Ex Parte Thomas is an example of the 2019 Guidance being acknowledged, and ignored, as well as an example of a representative claim analysis that appears contrary to Federal Circuit law.

This is just one recent example, and many more exist. For example, in Ex Parte Grancharov, the applicant presented separate eligibility arguments for claims and the PTAB used a representative claim in affirming the Examiner’s rejection. See generally Appeal No. 2018-006655 of U.S. Patent Application No. 14/994,561. Similarly, in Ex Parte Powell, the applicant provided specific arguments for each independent claim and the PTAB affirmed the examiner’s Section 101 rejection with a representative claim analysis. See generally Appeal No. 2019-003671 of U.S. Patent Application No. 13/794,206. In yet another example, in Ex Parte Triebel, the PTAB affirmed an Examiner’s representative claim analysis in a Section 101 rejection. See generally Appeal No. 2018-008559 of U.S. Patent Application No. 13/790,252.

Hope for the Best, Prepare for the Worst

Though the preceding examples show that doing it right does not always guarantee victory at the PTAB, as Wayne Gretzky once famously mused: “you miss 100% of the shots you don’t take.” Until we get a better solution to the subject matter eligibility mess, an applicant facing a Section 101 rejection should consider several strategies to make their shots count.

During prosecution, an applicant should set up a strong appeal position by making claim-by-claim arguments for eligibility in their office action responses, initial burden notwithstanding. This will either force the examiner’s hand during prosecution, or tee up an argument against the examiner raising “new” arguments during an appeal. See MPEP § 1207.

In an appeal, an applicant should carry forward its claim-by-claim arguments to deprive the PTAB of a legal basis for applying representative claim analysis. And the applicant should raise the burden shifting issue when an examiner has not made a prima facie case for each claim rejected under Section 101.

All of these strategies should set an applicant up for a better oral argument in front of the PTAB.

Go forth and conquer.

Research support was provided by Dalton Case, Jackson Jaro, and Michael Lew.

Image Source: Deposit Photos

Author Olga.Sova.Family

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