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TAKEAWAY: The growing list of PTAB informative decisions could help improve consistency in patent eligibility analysis.

On December 11, 2019, the Patent Trial and Appeal Board (PTAB) designated Ex parte Hannun as an informative decision in assessing patent eligibility under 35 U.S.C. § 101 by applying the USPTO’s 2019 Patent Subject Matter Eligibility Guidance (2019 PEG). An informative decision provides, among other things, guidance on issues of first impression and USPTO rules and practices. Six PTAB decisions have been designated informative with respect to § 101, four of which reversed the examiners’ § 101 rejections.

The claims at issue in Ex parte Hannun recite methods for transcribing speech into text. The examiner rejected the claims under § 101 as being directed to abstract ideas (i.e., a mathematical relationship/formula and certain methods of organizing human activity), wherein the examiner argued that a human could listen to an audio file and transcribe audio data into text. The PTAB disagreed and reversed the rejection, noting that the mathematical algorithm or formula identified by the examiner was not recited in the claims, and that transcription cannot be performed mentally. The PTAB specifically cited one of the hypothetical examples (Example 38, related to audio mixing) accompanying the 2019 PEG in support of its analysis. This signals to examiners and practitioners alike that the 2019 PEG in combination with the examples can provide a common reference point in determining § 101 eligibility.

Ex parte Hannun and the other informative decisions to-date indicate a willingness by the PTAB to use the 2019 PEG to establish an intelligible and consistent framework in the notoriously uncertain legal landscape surrounding § 101. With the Supreme Court recently denying certiorari in several Federal Circuit cases involving patent eligibility (i.e., Athena Diagnostics v. Mayo Collaborative Services, Hikma Pharmaceuticals v. Vanda Pharmaceuticals, and HP v. Berkheimer), no drastic changes to the current USPTO guidance are expected in the foreseeable future. Patent practitioners should keep the 2019 PEG in mind not only during examination, but also in the drafting process.

A list of all PTAB precedential and informative decisions may be found here.