By Kevin E. Noonan --
A great deal of angst has been generated by the Patent Trial and Appeal Board's decision, in Ex parte Itagaki and Nishihara, regarding the panel's application of Section 101 (sua sponte as a new ground of rejection under 37 C.F.R. § 41.50(b)) that claims to a magnetic resonance imaging machine do not recite patent-eligible subject matter. While this decision does illustrate the difficulties that can be occasioned by trying to apply the Supreme Court's subject matter eligibility jurisprudence (extending beyond Mayo Collaborative Servs. v. Prometheus Labs., Inc. and Alice Corp. Pty. Ltd. v. CLS Bank International to reach Bilski v. Kappos, Parker v Flook, Gottschalk v. Benson and even Funk Bros v. Kalo Inoculant), a review of the cases cited by the Board in support of its conclusion indicate that the fault does not lie with the Board.
An analysis must start with the claim (or at least that rubric of patent law remains true for now):
1. A magnetic resonance imaging apparatus comprising:
an image acquisition unit configured to divide an imaging region of an object to be examined into a plurality of stations of respective station positions, and acquire a plurality of images having different image types for each station, while moving a table on which the object is mounted, station by station;
a display control unit configured to display the plurality of images in a predetermined display format; and
a classification processing unit configured to classify the plurality of images by image types and station position, based on imaging condition including imaging parameters,
wherein the display control unit displays the plurality of images by image types in spatial order of station positions, based on the classification result by the classification processing unit.
The claims came to the Board after final rejection on the grounds of obviousness under 35 U.S.C. § 103 over a combination of references, which rejection applicants overcame with their arguments before the Board rebutting the Examiner's reasoning in arriving at an obviousness determination.
The Board then instituted its own new ground of rejection under § 101 by applying the Mayo/Alice test to the claims. For the first prong, whether the claims were "directed to" a judicial exception, the Board identified the limitation that a classification processing unit configured to classify the plurality of images by image types and station position, based on imaging condition including imaging parameters, was directed to "classification," a "building block of human ingenuity" according to the Board. As such, this portion of the claim (at least) was directed to an abstract idea and thus satisfied the first prong of the Mayo/Alice test.
Next the Board applied the second prong, to search for "'an inventive concept'—i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself,'" citing the Mayo opinion. Here, as has frequently happened in other cases, the Board parsed through the other limitations, finding them to be broadly recited as being "configured" to perform certain steps or functions of a method without "structural" limitations; the fact that these limitations were per se "structurally limited" by their recitation (to "an image acquisition unit, a display control unit, [and] a classification processing unit" was not enough for the Board), which the Board finds to be generic. According to the decision, the claim is directed to "a typical multi-station MRI" wherein "[a]ny multi-station MRI available at the time the application was filed would have satisfied this." And of course the specification, which is written to broadly encompass within the claims conventional MRI apparatuses supports this interpretation (further being interpreted under the PTO's "broadest reasonable interpretation" standard). As the Court did in Alice, the Board determined that "the mere recitation of a generic computer cannot transform a patent-ineligible abstract idea into a patent-eligible invention. Stating an abstract idea 'while adding the words 'apply if'' is not enough for patent eligibility."
The Board recognized that the claimed MRI apparatus was not entirely conventional, insofar as it comprised the "classification processing unit." But even here the generic manner in which this element "does little to patentably transform the classification abstract idea" particularly because the classification step of the method practiced using the apparatus "could be performed mentally or manually."
It is the citation of myriad Federal Circuit precedent that informs the opinion that it is not the Board or this particular panel that is at fault for what seems to be an outré extension of subject matter eligibility practice to an apparatus claim. For example, the panel cites CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1371 (Fed. Cir. 2011), for support, which case cited Parker v. Flook for the principle that "a recitation of practical application for an abstract idea is insufficient to transform an abstract idea into an inventive concept." In the CyberSource case, decided prior to the Mayo/Alice paradigm under the Court's reasoning in Bilski v. Kappos (and hence illustrating how far back in the Court's consideration of subject matter eligibility the concepts set forth in Mayo and Alice arose) the claims at issue were a method claim for verifying the validity of a credit card transaction over the Internet, and a claim to a computer-readable medium containing programming instructions to put the method into effect (i.e., a so-called "Beauregard" claim from In re Beauregard). After finding the method claim to fail the "machine-or-transformation" test as well as the more general test that methods that could be performed mentally were not patent eligible, the Court then went on to find the Beauregard claim to the unpatentable method similarly outside the proper scope of patent eligibility. Prefiguring Justice Breyer's imprecations in Mayo against the "clever draftsman," the Court said that:
Regardless of what statutory category ("process, machine, manufacture, or composition of matter," 35 U.S.C. § 101) a claim's language is crafted to literally invoke, we look to the underlying invention for patent-eligibility purposes. Here, it is clear that the invention underlying both claims 2 and 3 is a method for detecting credit card fraud, not a manufacture for storing computer-readable information.
And the CyberSource Court relied upon In re Abele, where the Federal Circuit had earlier considered an apparatus claim to be a method claim for Section 101 purposes, "[d]ue to its 'broad' and 'functionally defined' nature (in that case because the claims were drafted in "means-plus-function" format under 35 U.S.C. § 112, 6th paragraph.
Thus, it can be seen that the Board has extended the objection raised against computer-related inventions, wherein "merely" having method steps (that can be performed mentally) performed by a computer is not enough to render Beauregard claims to patent eligibility, as those concepts have taken root and come to flower in more recent cases (see DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245, 1257 (Fed. Cir. 2014), and Amdocs (Israel) Ltd. v. Openet Telecom, Inc., No. 2015-1180, 2016 WL 6440387, *10 (Fed. Cir. Nov. 1, 2016)).
One evident defect in the Board's application of the Mayo/Alice test (which is a defect in the test itself and shared by district courts and the Federal Circuit) is dissecting the claims into their component limitations and then paying no more than lip service to the Court's admonition from Diamond v. Diehr that claims must be construed as a whole. Another is the application of categorical standards of eligibility, where the way an invention is categorized is enough to invalidate it. The Board is bound to follow relevant legal precedent (although it might be good to see the Office use its expertise as an administrative agency to find inventions patentable rather than the other way around). But this decision should not be so easily dismissed by castigating it as the PTAB run amok; rather it seems to be the legally logical result of Supreme Court and Federal Circuit cases that should be corrected, either by the Court or Congress. American innovators deserve nothing less.