Patent application for travel planning device rejected as ineligible subject matter. IN RE: BONGIORNO

Patent application for travel planning device rejected as ineligible subject matter. IN RE: BONGIORNO

An inventor must meet many requirements to get a patent on an invention.  The patent application must demonstrate several different things, 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 a 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: JAMES BONGIORNO, 2020-1835 (C.A.F.C. 2021) is a case which involves patents which were rejected because they claim an abstract idea.

This case involves two patent applications: U.S. Patent Application No. 12/910,790 (titled “Portable Vacation/Travel Planner, and Family Tour Guide Device”); and U.S. Patent Application No. 13/691,821 (titled “System, Method, and Computer Software Code for Planning and Executing a Travel Itinerary”).

The specifications of each application say that the invention relates to methods and systems of planning and executing a vacation or travel itinerary, and more particularly to software and a portable electronic unit, which may be dedicated to such planning and travel assistance at the destination.  The specifications explain that although travel requires extensive information and planning, there was previously no means of efficiently accomplishing all of this travel-related planning once arriving at the destination.  The invention claimed in the applications combines all of the functionality of the books and electronic gadgets which may need to be utilized in planning and richly experiencing a vacation abroad into one elegant and practical planning/touring device, with powerful features to enhance everyone’s vacation experience.  Essentially the patent claims a device which helps you plan your vacation.

The patent examiner and the Patent Trial and Appeal Board (PTAB) rejected both applications as not patent eligible subject matter.  The applicant then appealed to the Court of Appeals for the Federal Circuit.

The Federal Circuit reviewed the PTAB’s analysis of the Alice test.  For the first step of the Alice test, the PTAB found the applications were directed to “planning and executing a vacation or travel itinerary,” which it concluded amounted to a method of organizing human activity—an abstract idea.  The claims were not inventive programming but simply desired results. For the second step of the Alice test, the PTAB found , the elements amounted simply to applying the abstract idea using generic computer components performing routine computer functions.

The Federal Circuit agreed with the PTAB’s analysis that the applications did not claim an inventive concept which would make the claims patent eligible.

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