Method to anonymously send and receive mail deemed unpatentable. IN RE: ABEL

Method to anonymously send and receive mail deemed unpatentable. IN RE: ABEL

A patent is a set of exclusive rights granted to the inventor of an invention which is new, useful and not obvious.  An inventor gains a patent in the United States by filing a patent application with the United States Patent and Trademark Office.  The patent application is reviewed by a patent examiner at the United States Patent and Trademark Office and if the patent application meets all the requirements, the inventor is granted a patent on the invention.

A patent will only be granted to certain types of inventions.  Any new and useful process, machine, manufacture, composition of matter, or any new and useful improvement thereof is eligible for patent protection. §35 U.S.C. 101  Even if an invention falls into one of these categories, a judicially created exception can still make the invention ineligible for patent protection.  Laws of nature, physical phenomena, and abstract ideas are examples of judicially created exceptions to patent eligible subject matter.

The abstract idea exception embodies the longstanding rule that an idea of itself is not eligible for patent protection.  This exception prevents patenting a result instead of the process or machinery used to accomplish the result.  During the patent application process a two step test is used to determine whether a patent directed to an abstract idea is eligible for patent protection.   In step one, the patent examiner considers the claim in its entirety to ascertain whether the claim is directed to an abstract idea.  If the claim is directed to an abstract idea the court proceeds to step two. In step two, the patent examiner looks for an inventive concept sufficient to transform the nature of the claim into a patent eligible application.  This test for patent eligibility is generally referred to as the Alice test after the court case that introduced the test.

IN RE: KENTON ABEL, 2020-1611 (C.A.F.C. 2021) is an example of a patent application which was refused because it was directed to an abstract idea.

U.S. Patent Application No. 13/049,873, titled “System and Method of Generating Mailers from Online Interactions.”, describes generating a mailer, that allows a user to send and receive physical letters and/or products to another user without divulging personal information.  The patent application describes a computer system to receive electronic communications from users and a database within the system to store users’ personal information, including their mailing addresses and permissions to receive mail and to share personal information. Upon receiving a request to send a mailer, the system can create and deliver the mailer based on the intended recipient’s permissions. The sender need not know the recipient’s physical address; nor will the system reveal the recipient’s personal information to the sender unless the recipient has given permission.

The patent examiner rejected the application for claiming patent ineligible subject matter. The examiner first determined that the claims are directed to the abstract idea of generating a mailer, which is a fundamental economic practice, a method of organizing human activities, or both. The examiner then determined that the patent application did not include more than an abstract idea because the patent application simply gave instructions to implement the idea on a computer.  The Patent Trial and Appeal Board affirmed the refusal and the applicant appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit found that using a generic computer as an intermediary between a sender and a receiver is a method of organizing human activity and therefore, an abstract idea.  The Federal Circuit also found that the patent application did not disclose an inventive concept that would transform the subject matter of the application into something more than the abstract idea.  The patent application failed to disclose a particular improvement in how computers carry out the basic functions relevant to implementing the abstract idea.  Based on these findings the Federal Circuit affirmed the refusal.

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