Medical test monitoring patent rejected because it was directed to an abstract idea. IN RE: GALE

Medical test monitoring patent rejected because it was directed to an abstract idea. IN RE: GALE

Getting a patent is not a simple task.  There are many requirements that an inventor must meet to get a patent on an invention.  The invention must meet the patent requirements, including novelty, non-obviousness, written description, and enablement.  But a fundamental requirement is the invention must be eligible subject matter for a patent.  If the subject matter of an invention is not eligible for a patent, the invention cannot be patented in the United States.

United States Patent Law §35 U.S.C. 101 articulates eligible subject matter.   A patent can be granted on any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof.  There are also some judicially created exceptions to patent eligible subject matter, namely, laws of nature, physical phenomena, and abstract ideas.

Computer software was tricky subject for patent law.  For several decades the USPTO and courts had trouble articulating exactly when computer software was eligible for patent protection.  The United States Supreme Court articulated the present test to determine if computer software is eligible for patent protection in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014) .  The first step in the Alice test is to determine whether the claims of the patent are directed to a patent-ineligible concept, like an abstract idea.  If the first step is true, then each patent claim is reviewed both individually and ‘as an ordered combination’ to determine whether the additional elements ‘transform the nature of the claim’ into a patent-eligible application.  The Alice test can be confusing, therefore it is helpful to study case law to gain a better understanding of how courts will apply the test.

IN RE: GALE, 20-2270 (C.A.F.C. 2021) is an example of a software patent that was rejected because it was found to be directed to an abstract idea.

Mr. Gale filed U.S. Patent Application No. 12/408,686 (the ’686 application) titled “Verification Monitor for Critical Test Delivery Systems” on March 21, 2009. The ’686 application is generally directed to monitoring and assembling metadata related to critical test result delivery systems in the medical field. Timely reporting of diagnostic testing results is crucial.  The application describes a method for ensuring that reporting of diagnostic test information occurs consistently and continually.

Claim 1 of the application describes a method in which a computer system: (1) receives critical test result messages with associated timing-related metadata, (2) reads the timing-related metadata, (3) calculates a usage pattern from the metadata, and (4) determines whether the calculated usage pattern is compliant by comparing it to a predetermined usage pattern requirement. The PTAB found that the claims of the ’686 application were ineligible under 35 U.S.C. § 101 because they were directed to an abstract idea without significantly more.  The applicant appealed the the Court of Appeals for the Federal Circuit.

The Federal Circuit found that the ’686 application was directed to a method for monitoring the reporting of diagnostic test results, not to any technological improvement. Just because the claims were implemented on a computer did not make the claims technological.   The Federal Circuit also found that the ’686 application lacked an inventive concept nothing more than generic computer components were cited.  Based on these findings the Federal Circuit agreed with the PTAB that the ’686 application was directed to ineligible subject matter and affirmed the PTAB’s decision.

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