As discussed in previous posts, the USPTO’s revised guidelines issued earlier this year have teeth. Numerous recent PTAB cases are showing a strong trend where the specification is playing an increasingly critical role to the decision on whether a patentee can overcome Alice rejections in the software arts.
In the past, many voices in the patent prosecution community preached about the importance of using only broad, functional, language to describe software, and, more significantly, to always avoid any explanation of the problem or technical challenges being addressed. Further, a drafting technique of using simple boxes in a simple flowchart that perfectly matched the claim elements was touted by many as the ideal approach. Whether the wave of applications in this mold had some hand in bringing Alice upon us we will never know. But what we do know now is that Alice rejections are tailor made to kill patents drafted in this vein. And even now, with the new guidelines, it seems that applications devoid of detailed explanations of the technical problem being solved, and how the claim elements solve it, will continue to struggle.
While we have cited many previous examples, today we review a recent PTAB decision in an Amazon application (SN 14/038,706) related to a computer implemented method for conducting a transaction for an item. The invention relates to the use of kiosks, but more particularly relates to an improved distribution system for providing items to consumers that use a network of kiosks to deliver an item to a consumer. The PTAB analyzed the claim to determine that some elements of the claims were mental processes, while other elements of the claim were directed to method of organizing human activity, presumably under the theory that a claim with combinations of different types of abstract ideas is nonetheless still directed to an abstract idea overall. While the PTAB determined that the claims were directed to the abstract ideas, the inquiry did not end there.
With the new guidelines, the PTAB next had to consider whether the abstract idea in the claims was “integrated into a practical application.” The majority answered this part of the inquiry by… consulting the specification. Since publication of the new guidelines earlier in 2019, many successful PTAB reversals have come down to the specification. When the specification explains in detail how specific claim elements solve technical problems in the field, the applicant has been more successful.
Here, the specification provided details cited by the PTAB, such as the following:
With the growing accessibility and breadth of the Internet and telecommunications networks, many retail transactions may be conducted remotely, such as from a consumer's home, without necessitating the consumer to visit a brick-and-mortar retail location. Consumers may browse retail websites, order items, pay electronically, and receive the items delivered to their doorstep. Further, with the increasing usage of mobile devices, consumers frequently conduct transactions on their mobile devices while away from their homes, and can request delivery of items to locations other than a personal home address, for example, an office or a hotel. While convenient to the consumer, the delivery of numerous individual items to numerous individual consumers at varying addresses can become exponentially costly to both retail businesses and consumers.
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An improved distribution system for providing items to consumers can use a network of kiosks to deliver an item to a consumer. The item can be delivered by an operator of a distribution system to a kiosk for the consumer to pick up. For example, a consumer can order one low priced ( or otherwise eligible) item or a number of such items, which items may be delivered by an operator of a distribution system to a kiosk for the consumer to pick up. In addition, items regularly-purchased by consumers can be stocked in kiosks and can be purchased on demand according to availability in the kiosk system. The network of kiosks may, for example, include any number of kiosks strategically located for easy and convenient access to consumers. In one embodiment, the number of kiosks includes between 1,000 and 500,000 kiosks. More specifically, the number of kiosks can include 20,000 kiosks. Kiosks may be placed in locations that consumers will already frequent for other tasks, such as gas stations or grocery stores. Because shipping and delivery operations can be shared between the seller and the consumer, the shipping costs charged to the consumer for pick up at a designated kiosk may be significantly reduced (or free, if the shipping costs are negligible to the seller).
The PTAB was persuaded by the argument that carrying out the following steps represents an improvement over conventional approaches in terms of security and convenience, and specifically improve the way that kiosk inventory management systems access data to make the vending process more efficient:
identifying a subset of the kiosks that are within a predetermined proximity of the location of the user device;
receiving a query response, from each kiosk in the subset of the kiosks, with the storage status of the item for each kiosk in the subset;
identifying a plurality of kiosks in the subset of the kiosks that are pre-stocked with the item based at least in part on the storage status of each kiosk;
transmitting to the consumer a list of the identified plurality of kiosks, the list including a corresponding location for each of the identified plurality of kiosks;
generating a code to be used for retrieval of the item from the designated kiosk and providing the code to the user device; and
upon receiving the code from the designated kiosk, providing instructions to the designated kiosk to dispense the item, wherein the code is transmitted to the designated kiosk by the user device.
Specifically, the PTAB concluded that the above limitations represent “improvements to the underlying technology or technical field, namely, kiosk inventory management systems. “ See MPEP § 2106.05(a) or, alternatively, § 2106.05(e) "Other Meaningful Limitations."
Thus, this case represents example PTAB decision where Amazon saved an invention related to inventory management among kiosks because the abstract idea in the claims was “integrated into a practical application.” as evidenced by description in the specification.
As noted in a previous post, the shift from only being able to argue such elements in step 2 to now having a vehicle to argue theses issues in step 1 is significant in terms of an applicant’s ability to win at the PTAB. But, beware - the dissent illustrates how this case could easily go the other way. The dissent raises arguments that may fair better before a court and/or the Federal Circuit. For example, the dissent argues that the features beyond the abstract idea are mere data gathering, mere generic computer elements, and mere generic tools (e.g., kiosks). In particular, the dissent does not find a technological advantage here, noting that the invention merely aims to improve on the commercial interaction with kiosks( allegedly a judicial exception) by reducing cost, not by improving on a computer's functioning or other technology.