PANEL DECLARES MRI MACHINE AN ABSTRACT IDEA, PATENT INELIGIBLE UNDER ALICE
In a roundly criticized decision, the Patent Trial and Appeal Board of the United States Patent and Trademark Office recently ruled in Ex parte Hiroyuki Itagaki a magnetic resonance imaging machine to be patent ineligible because it is an abstract idea. The PTAB cited the U.S. Supreme Court’s landmark 2014 decision in Alice v. CLS Bank, in which the court ruled that an abstract idea does not become eligible for a patent simply by being implemented on a generic computer.
U.S. Patent Application No. 20,100,119,136, titled Magnetic resonance imaging apparatus and image classification method, relates back to a Patent Cooperation Treaty filing date from April 2008. The applicant appealed two different obviousness rejections. The PTAB overruled the patent examiner, finding the claims were not obvious, but instituted a new ground of rejection. That new ground of rejection for this MRI machine related to lack of patent eligibility under U.S. Code Title 35, Section 101 because the machine is nothing more than an abstract idea.
The illustrative claim discussed by the PTAB in the decision was Claim 1, which unambiguously relates to a machine. Claim 1 was specifically and unambiguously directed to “a magnetic resonance imaging apparatus.” For reasons not explained by the PTAB panel, the Alice/Mayo framework was used to determine whether this machine claim is patent eligible. (In a 2012 ruling, the Supreme Court ruled that process claims at issue in Mayo v. Prometheus are not patent-eligible subject matter.)
The Alice/Mayo Framework
To this point, the Alice/Mayo framework has only been used with respect to software patents and life science-related innovations, but I have not seen the framework applied to machines. The framework has been limited in applicability to when there is a possibility that one of the three so-called judicial exceptions to patent eligibility may be in play. Those three judicial exceptions relate to abstract ideas, laws of nature and nature phenomena. If the claim does not implicate one of those judicial exceptions, the claim is patent eligible.
This framework requires the decision maker—whether a patent examiner, administrative tribunal or reviewing court—to ask and answer a series of questions before determining whether the patent claim in question constitutes patent eligible subject matter. The first question, commonly referred to as Step 1, is whether the patent claim covers an invention from one of the four enumerated categories of invention defined in U.S. Code Title 35, Section 101 (i.e., is the invention a process, machine, article of manufacture, or composition of matter). If the answer to this question is “no,” the patent claim is patent ineligible. If the answer is “yes,” the decision maker must move on to the next inquiry because the statutory test established by Congress is no longer the complete test for patent eligibility in the United States.
The second question (commonly referred to as Step 2A), where the Alice/Mayo framework truly begins, requires the decision maker to ask whether the patent claim seeks to cover one of the three specifically identified judicial exceptions to patent eligibility. Although there is no textual support for the creation of any judicial exceptions to patent eligibility in the Patent Act, the Supreme Court has long imposed its extra-judicial view of the statute relative to patent eligibility.
In the case where the patent claim seeks to cover a judicial exception to patent eligibility, the final question (commonly referred to as Step 2B) asks whether the inventive concept covered in the claimed invention added “significantly more” than the judicial exception, or whether the claimed invention did not add “significantly more” and, therefore, was seeking to merely cover the judicial exception.
The PTAB’s Analysis
In this case, the PTAB panel did not examine the statutory language to determine whether the claims were drawn to a process, machine, article of manufacture, or composition of matter. Had this happened, the panel might have noticed that the invention being claimed is a machine (i.e., apparatus, which in patent terms is indistinguishable from a machine).
The PTAB panel starts its Alice/Mayo analysis with Step 2A and somehow determined that “the claimed subject matter is direct to classification.” How or why the panel chose to ignore the explicit language of the claim is not explained. Neither is it explained how the panel could possibly determine that a claim explicitly drawn to a machine was not directed to a machine. In any event, the PTAB panel concluded “the classification concept is an abstract idea.”
The PTAB panel then moved on to Step 2B of the Alice/Mayo framework in search of an inventive concept. The panel wrote: “We see nothing in the subject matter claimed that transforms the abstract idea of classification into an inventive concept.”
This decision completely misses the point that what is claimed is a machine.
Eventually, the PTAB panel gets around to acknowledging: “Claim 1 describes a multi-station MRI, comprising an image acquisition unit, a display control unit, a classification processing unit.” The decision, however, seems to search for its own vindication of ruling a machine patent ineligible by pointing out that there is no requirement that the MRI be computer implemented.
Ultimately, the PTAB panel concludes: “[M]erely reciting a generic multi-station MRI so as to apply the classification abstract idea to its images is insufficient to transform the clas – sification abstract idea into an inventive concept.”
The administrative patent judges who participated in this panel should be suspended or removed from the PTAB altogether— and if that isn’t possible, within the bureaucracy of the federal government they should be sidelined indefinitely so as not to do any more damage.
A decision finding a machine claim abstract has to be a bridge too far for even the most vocal proponent of the Alice/ Mayo monstrosity. Many people openly mocked me as I wrote that the Alice v. CLS Bank decision would be used and intentionally misinterpreted by those who ideologically oppose pat – ents. In the 33 months since the decision, my predictions have sadly come true.
If this decision stands, we might as well shutter the patent office. Because in this age of artificial intelligence and virtual reality, little of consequence will be patent eligible if a machine is an abstract idea.