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Can I Patent This?

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Yes you can!

That’s what the board said in ex parte Linden.

Examiners are challenging claims of patents that are patentable as being directed to “ineligible subject matter” under section 101 of the patent law. This means that the claims are not patentable, but only due to the invention being directed improperly to some “abstract idea” rather than some practical application. (This stems from the difficulty in applying the Supreme Court’s logic in its “Alice” decision, which has left many inventors and patent professionals, alike, seemingly lost in patent Wonderland.)

The board disagreed with the Examiner’s reasoning for rejecting claims as ineligible in ex parte Linden. So, this case is instructive for showing software that is patent eligible.

Since no claims recited any mathematical concept, the Examiner was mistaken to base a rejection of the claims on an algorithm being recited in the specification. At least one mathematical concept must be recited in the claims to even go there.

Also, while it’s possible for transcription to be performed by a human, the board found the claims directed to a specific implementation that could not be performed in the human mind. The board pointed to the limitations in the claims including the steps of normalizing an input file, generating a jitter set of audio files, generating a set of spectrogram frames, obtaining predicted character probabilities from a trained neural network, and decoding a transcription of the input audio using the predicted character probability outputs. These steps are directed to a machine, not the human mind.

The Examiner’s argument that the claims recited “organizing human activity” was rejected by the board, also, because these steps have nothing to do with human activity.

The board sided with the Applicant that “…the claims of the current application include specific features that were specifically designed to achieve an improved technological result…” providing “…improvements to that technical field.”

Thus, the boards decision provides a blueprint for overcoming hasty rejections of claims that fail to provide any logical reason that specific limitations of claims are patent ineligible. Too often, Examiners seem to be rejecting claims on flimsy accusations of patent ineligibility. More board decisions like ex parte Linden will be needed to correct this common practice, which persists, notwithstanding the patent office’s revised guidance issued in October 2019.


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About the author 

Chris Paradies

Florida Bar certified intellectual property and U.S. patent attorney, founder of ParadiesĀ® law, chair of the board of directors for the Tampa Bay Innovation Center and certified coStarters facilitator. West Point graduate, entrepreneur, disruptor. Father, husband, faithful steward.

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