Much ink has been spilled in discussing Section 101 in patent prosecution. While it is a strong weapon to attack patentability of anything having software or taking advantage of the laws of physics, it has its limits even before the PTAB. A recent case by Zazzle (an online source for personalized gifts and custom products), illustrates a key approach for applicants to succeed in prosecuting a case through the USPTO. That key relates to the distinction between a claim that “relates to” a potentially abstract idea and one the “recites” the potentially abstract idea.

The specific case is Application 13/598,544, assigned to art unit 2625 and an examiner with a typically low allowance rate. Nevertheless, Zazzle pressed their case at the PTAB and had to deal with both Section 101 rejections and Section 102 rejections. Their invention related to solving a particular problem with customizable products. The background of the application explains that customizable products can be partially described by vector patterns mapping areas of printing, called Design Areas. But a complete description of the mapping of design areas to product is often impractical or difficult to obtain from manufacturers. Thus, a system and method are provided to solve these technical challenges, namely, “a system and method . . . for acquisition, characterization, and application of Manufacturing patterns to the automated production of the digital representation of these patterns as interactive media that gathers a customer’s input, and subsequent production of physical products.” Claim 6 is reproduced below:

6. A method for acquisition, characterization, and application of one or more manufacturing patterns to the automated production of the digital representation of these patterns for a product, the method comprising:
automatically transmitting, using a computer having a processor that has a manufacturing unit, a set of design area markups to a manufacturer that returns a reference product with markups to the manufacturing unit;
generating, by the manufacturing unit, based on the one or more manufacturing patterns, one or more interactive assets for the product about the manufacturing of the product;
using, by the manufacturing unit, the one or more interactive assets to allow a user to interactively customize the product;
displaying an image of the user customized product to the user; and
transmitting, by the manufacturing unit, one of the one or more interactive assets to the manufacturer that produces the customized product.

The PTAB focused on the way in which the examiner rejected the application (that the claims recited methods of organizing human activity because they relate to commercial or legal interactions such as sales activities or behaviors since allowing a user to customize a product and view customizations of a product is a sales activity or behavior), which provided a relatively straightforward reversal. Namely, the PTAB explained that:

Under Step 2A, prong 1 of the Revised Guidance, however, the relevant question is whether a claim “recites” a judicial exception, not whether a claimed invention “relates to,” for example, sales activity. The USPTO has clarified that a claim recites a judicial exception when the judicial exception
is “set forth” or “described” in the claim. While the terms “set forth” and “describe” are thus both equated with “recite,” their different language is intended to indicate that there are two ways in which an exception can be recited in a claim. For instance, the claims in Diamond v. Diehr clearly stated a mathematical equation in the repetitively calculating step, such that the claims “set forth” an identifiable judicial exception, but the claims in Alice Corp. v. CLS Bank, “described” the concept
of intermediated settlement without ever explicitly using the words “intermediated” or “settlement.”
October 2019 Patent Eligibility Guidance Update, page 1; see 84 Fed. Reg. 55942-01 (available at www.uspto.gov/PatentEligibility).

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Here, the claims do not clearly state any sales activity. Nor do the claims “describe” a sale without explicitly using that word; the only exchange described in claim 6 is transmittal of a set of design area markups from a computer having a manufacturing unit to a manufacturer, and the return of a reference product from the manufacturer to the manufacturing unit. While the manufacturer performs a service in the method of claim 6, the Examiner has not persuasively explained how the described exchange is a “sale” of either a set of design area markups or a reference product.

The Specification’s description of the background of the invention, and the problem it seeks to solve, also indicates that the claimed process is not a sales activity, but rather a method of designing a customized product.

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While the customized products resulting from the invention may be intended to be sold to consumers, the invention is in the method of designing, not selling, the products. We therefore conclude that the Examiner has not shown that the claims recite a judicial exception. “If the claim does not recite
a judicial exception, it is not directed to a judicial exception . . . and is eligible. This concludes the eligibility analysis.” 84 Fed. Reg. at 54. The rejection of claims 1–3, 5–8, and 10 under 35 U.S.C. § 101 is reversed.

Look out for examiners using loose language in their Section 101 rejections and when you have a technical problem/solution to back-up your argument along with good support in the specification, all hope is not lost at the PTAB.