Today we review another case from Art Unit 3747 (see previous posts for other examples from this art unit). Not only does this art unit make a significant contribution to Group 3700’s higher than average reversal rate on appeal, but many of its so-called “affirmed” decisions are actually complete reversals. SN 13/352,437 is one such example where Toyota had to appeal improper rejections under both Sections 101 and 103 (where the case was “affirmed” because of a typographical error the Applicant admitted supported the 112 rejection that was sustained).
Looking to Toyota’s case, it illustrates an example of how Section 101 rejections are misused by the Office. The invention here is easily seen to be far from the typical Section 101 case. Claim 1 is reproduced below:
The Examiner and Supervisor rejected the claim with the following reasoning:
The reasoning provided by Office is typical of that used for 101 rejections. The problem here was that the claims set forth much more than what the Office alleges. The last claim element specifically points out how a combustion chamber parameter of the (real world) engine is altered as a function of the modeled operation. Thus, the method results in a real world effect, which is exactly what Toyota argued on appeal. The PTAB easily agreed and laid out a nice summary of just how engine method claims satisfy Section 101. From the PTAB’s decision:
We disagree that claim 1 is directed merely to an abstract idea. The Examiner does not provide adequate rationale or explanation as to why "a process for reducing abnormal combustion in an internal combustion engine by simulating said engine on a general-purpose computer" is an abstract idea. Merely asserting that the steps of claim 1 "are all abstract ideas," without more, is insufficient as it fails to consider the steps as an ordered combination. See McRO, Inc. v. Bandai Namco Games Am. Inc., 837 F.3d 1299, 1313 (Fed. Cir. 2016) ("Whether at step one or step two of the Alice test, in determining the patentability of a method, a court must look to the claims as an ordered combination, without ignoring the requirements of the individual steps."). The Examiner has not established that a process of reducing abnormal combustion in an internal combustion engine, which requires the physical step of altering a combustion chamber parameter, is inherently abstract.
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We are not directed, however, to any holding suggesting "a process for reducing abnormal combustion in an internal combustion engine by simulating said engine on a general-purpose computer" is an abstract idea. Indeed, claim 1 is not directed to the types of concepts, such as fundamental economic practices, methods of organizing human activity, or financial data processing, commonly found to be abstract ideas.
Furthermore, even assuming a mathematical relationship is involved in the simulations and calculations of claim 1 (which the Examiner does not find expressly), that alone does not render the claim patent ineligible. See Thales, 850 F.3d at 1349 ("That a mathematical equation is required to complete the claimed method and system does not doom the claims to abstraction."); see also Enfzsh, 822 F.3d at 1338 ("[W]e are not persuaded that the invention's ability to run on a general-purpose computer dooms the claims."). Here, we are not provided with any rationale to indicate any such mathematical relationship would be pre-empted by claim 1.
Thus, just because there were mathematical relationships in the claims, that does not negate the non-abstractness of the other claimed elements.
With regard to the 103 rejections, the board easily disposed of the rather nonsensical reasoning the examiner and supervisors provided numerous limitations, finding time after time that the Office erred by either misinterpreting the reference, or taking positions that were internally inconsistent (and in any event wrong about each of the contrary positions - you would think that the Office would have been right on at least one, but not here), and further the references were improperly combined (among still other errors).
So, while Toyota was able to successfully overcome the rejections, the case was affirmed because of the admitted typo in claim 1, thereby justifying the Section 112 rejection. While not fatal to the case in the end, this illustrates a perfect example of what was discussed in a previous post about ensuring the case is set up well for appeal so as to avoid delays and costs after success at the PTAB. Here, Toyota had to file an RCE to ensure entry of an amendment to fix the typographical error and overcome the Section 112 issue. The case is now still pending, more than 7 months after the PTAB’s decision. Rather than waiting until after the appeal to address the 112 issue, the applicant might have filed an amendment before the appeal since it theoretically would not have changed the claim scope and further would have reduced issues for appeal.