The Section 101 and and abstract idea quagmire continues to ebb and flow and modulate around. Hopefully the new guidelines will add some clarity, but whether the PTAB will follow it, and whether courts will slow down their assault are open questions. Perhaps there will be a legislative attempt to improve the situation, but for now we prosecutors must wade through the morass keeping our wits about us at all times looking for the next gotcha.

One area that has been hit with Section 101 rejections is the area of software and system diagnostics. We discussed this technical area in a recent post (here) with regard to the written description requirement. System diagnostics are ubiquitous in our daily lives and help us know when there are issues with everything from our smart phones to our vehicles. Some examiners at the USPTO have been under the impression that diagnostic inventions are only patentable under Section 101 if they cause an action to occur in response to the diagnosis. In other words, merely detecting the faulted condition, no matter how technically challenging and beneficial in the real world (as many diagnostics are mandated by regulations), cannot be patentable subject matter under Section 101.

This exact scenario was recently addressed in a PTAB decision for a Honda patent application related to diagnosing engine misfire events. Honda’s claim set forth a misfire detecting apparatus for an internal combustion engine having various detecting means, along with detailed means for calculating parameters and determining means for determining the misfire based on the various calculations and various other parameters. Honda was allegedly solving the very real world problem of accurately diagnosing the misfire situation in order to set diagnostic codes in the software as required by emission laws and regulations.

The USPTO examiner and supervisors (in art unit 3747) explained the rejection in the Answer as follows:

Thus, not only were the details in the claims irrelevant for Section 101 analysis (because only a diagnostic was claimed), those details were also irrelevant under Section 103 (meaning that they were ignored). While this approach sure makes it easy to reject the claims, the PTAB was not impressed. The PTAB first confirmed that there is no case law that requires diagnostic inventions to have an action step responsive to the diagnosis in order to be patent eligible. Next, the PTAB confirmed it is totally improper to simply ignore claim limitations under a Section 103 analysis. It is hard to believe that it was necessary to go to the Board to come to these results which no one should reasonably question. From the PTAB’s decision (emphasis added):

The PTAB’s reasoning here is important as it makes clear that there is no precedent requiring the additional step the Examiner and Supervisors (improperly) required of the applicant. And of course, the same reasoning applies to the 103 rejection, where the PTAB confirms that “[w]e are further unaware of any precedent that, even if the Examiner is correct that the equations recited in the claims for obtaining a modified engine rotational speed parameter are abstract ideas, they are to be afforded no patentable weight on the basis, particularly where the Examiner also finds that programming computers with mathematical equations is a necessity.”

While it is great that Honda was able to obtain a reversal on appeal, think of all the other applicants who had to deal with an art unit tasked with evaluating the patentability of diagnostic inventions for internal combustion engines. The applicants of such inventions would be totally stuck - you can’t argue the novelty of the diagnostic (as that is merely abstract and given no patentable weight) and you can’t argue the technical improvement and patentable subject matter because diagnostics are abstract. Not every applicant has the resources and time to persevere through an appeal to the PTAB.