PTAB Appellants May Improve Outcomes By Filing Supplemental Expert Declarations

On November 25, 2019, the Patent Trial and Appeal Board (PTAB) of the United States Patent and Trademark Office (USPTO) affirmed an appeal from IBM that its invention fails to recite patent-eligible subject matter under 35 U.S.C. §101. U.S. Patent Application Number 15/212,216 claimed a method for mining threaded online discussions, where an information handling system (IHS) would perform a natural language processing (NLP) analysis on multiple web sites containing threaded discussions of a particular topic. Those discussions would be correlated, and the IHS would identify a question from the discussions, as well as several potential answers to the question, with one answer marked as the most likely answer.

Following the two-step framework laid out by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 573 U.S. 208, 216 (2014) and Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 70 (2012), the USPTO Examiner first found that the invention was directed toward abstract ideas similar to those concepts identified in CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366 (Fed. Cir. 2011) and Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057, 1067 (Fed. Cir. 2011). The Examiner further found that the claims lacked any additional elements amounting to significantly more than the abstract ideas since the additional computer elements, including a processor and memory, were recited at a high level of generality. The Examiner determined that the claims merely performed conventional computer functions, and provided no indication that the functioning of any computer or other technology was improved.

IBM appealed by arguing that updating a corpus with the collected discussions, and answering a question posed by the QA system, could not be performed as a mental process, placing the invention beyond a mere abstract idea. IBM further explained that its claims were necessarily rooted in computer technology, citing the specification's description of a specific improvement in the technical field of Question/Answer (QA) computer systems. IBM argued that its claims "include specific, concrete steps such as adding harvested discussions to a corpus utilized by a QA computer system," and noted a similarity to Enfish, LLC v. Microsoft Corp., 822 F.3d 1327, 1335 (Fed. Cir. 2016) by providing more accurate answers to questions asked in the online discussions.

The PTAB nonetheless agreed with the Examiner that the claims could...