The Federal Circuit may have some doubts about the USPTO’s new Section 101 guidelines (see the Cleveland Clinic case), but that is not stopping the flow of patents that will be issuing in light of them. While here may still be uncertainty on what claims will ultimately stand in litigation many years in the future, applicants should take heed that the scope of eligible subject matter has been clarified at the USPTO and even the PTAB is following these guidelines.

A recent case by Adidas (SN 13/340,919) shows just how powerful these new guidelines can be. The invention relates to product customization (see claim 1 below) and was classified in art unit 3625. If you handle cases in that art unit, you know that it has one of the highest Alice rejection rates at the USPTO. Not surprisingly, Adidas faced a 101 rejection.

Claim 1:

1. A method for pre-customizing products, comprising:
transmitting, by a group customization server to an electronic computing device over a network, digital representations of a plurality of products available for selection by a first user operating the electronic computing device;
receiving, by the group customization server, a selection of a subset of the plurality of products from the electronic computing device, the subset including at least two of the
plurality of products;
receiving, by the group customization server, a selection of a common feature of the subset of the plurality of products from the electronic computing device;
simultaneously customizing, by the group customization server, the subset of the plurality of products in response to an input from the electronic computing device by manipulating the common feature of the subset of the plurality of products;
storing, by the group customization server, a group identifier with the customized subset of plurality of products, the group identifier identifying the customized subset of the
plurality of products;
receiving, by the group customization server, customization limits defining types of customizations available to a second user for further customization of the customized
subset of plurality of products;
receiving additional selections from the electronic computing device for associating, at the group customization server, an individual identifier with the customized subset of plurality of products, wherein the individual identifier corresponds to an identity of the second user authorized to further customize the customized subset of the plurality of products, the second user different than the first user, and
wherein the individual identifier is associated with the customization limits defining the types of customizations available to the second user;
transmitting, by the group customization server to an individual customization server, digital representations of the customized subset of the plurality of products for further customization by the second user operating a second electronic computing device communicating with the individual customization server, products;
wherein the individual identifier associated with the customized subset of the plurality of products enables further customizations to the customized subset of the plurality of products by the second user, the types of customizations available to the second user limited as defined in the customization limits associated with the individual identifier.

The Examiner argued that the claims were directed to the abstract idea of “customizing products such as dresses for sports teams of a school/college/club/association.” Specifically, the examiner argued that this was an “idea of itself” with no concrete or tangible form because customizing products is just a concept, plan or scheme which can be thought of as a mental process and can be performed by using a pen and paper, for example, citing Ultramercial. The examiner also asserted that the abstract idea was similar to methods of organizing human activity, and that the additional claim elements were no more than use of a generic computer. And so on and so on as the rejection pretty much reads like every other 101 rejection in that the examiner identifies an abstract idea and then throws away all of the limitations as being generic use of a computer or conventional approaches, as in the end there is no improvement in the computer itself.

In its decision, the PTAB walks through the USPTO guidelines and notes that in the case here:

Turning to Alice step one (Memorandum Step 2A, Prong 1 ), we agree with Appellants that the Examiner has failed to identify an ineligible abstract idea. See App. Br. 8-23; Reply Br. 2-12. Considering the claims as a whole, we determine the claims are directed to customizing products. See claims 1, 5, 7, 10-14, 16, 17, 33, and 36. Our determination is supported by the Specification, which states "[ t ]he platform allows the organization to create customized merchandise by designing products for its members to purchase or by defining parameters that enable its members or other individuals to customize certain aspects of selected base merchandise." Spec. ,r 3.

In light of the Memorandum, because customizing products is not a mathematical concept, an identified method of organizing human activity, or a mental process, we conclude the claims are not directed to an abstract idea. See Memorandum at 52; see also id. at 53 ("Claims that do not recite matter that falls within these enumerated groupings of abstract ideas should not be treated as reciting abstract ideas, except" in rare circumstances.).

In particular, customizing products is not a mathematical concept, because it is not a mathematical relationship, mathematical formula or equation, or mathematical calculation. See Memorandum at 52. Further, customizing products is not an identified method of organizing human activity, as it is not (i) a fundamental economic principle or practice (including hedging, insurance, mitigating risk), (ii) a commercial or legal interaction (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), or (iii) managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions). See Memorandum at 52. In addition, customizing products is not a mental process, as it is not a concept performed in the human mind (including an observation, evaluation, judgment, opinion). See Memorandum at 52.

As discussed in previous posts, this decision first confirms the value of discussing technical problems and solutions in the specification. While problems with enabling users to customize a product might be on the edge of a technical problem, the fact that the specification gave some specific contexts to the issues solved by the invention made a difference.

What is even more important about this case is that the PTAB explains in detail why such activity is not a method of organizing human activity (as examiners often rely on such assertions in cases like this one). The PTAB appears to follow the guidelines strictly here in looking at the provided lists of human activity as exclusive, noting that customizing products is not one of the identified method of organizing human activity (a fundamental economic principle or practice (including hedging, insurance, mitigating risk), a commercial or legal interaction (including agreements in the form of contracts; legal obligations; advertising, marketing or sales activities or behaviors; business relations), or managing personal behavior or relationships or interactions between people (including social activities, teaching, and following rules or instructions).