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International Business Machines Corporation

14834688 - (D) (P.T.A.B. Oct. 23, 2020)
International Business Machines Corporation

24 Cited authorities

  1. Alice Corp. v. CLS Bank International

    573 U.S. 208 (2014)   Cited 1,434 times   521 Legal Analyses
    Holding ineligible patent claims directed to the concept of "intermediated settlement," i.e., the use of a third party to mitigate the risk that only one party to an agreed-upon financial exchange will satisfy its obligation

  2. Mayo Collaborative Servs. v. Prometheus Labs., Inc.

    566 U.S. 66 (2012)   Cited 817 times   153 Legal Analyses
    Holding that "the basic underlying concern that these patents tie up too much future use of laws of nature" reinforced the holding of ineligibility

  3. Bilski v. Kappos

    561 U.S. 593 (2010)   Cited 829 times   160 Legal Analyses
    Holding claims directed to hedging risk ineligible

  4. Enfish, LLC v. Microsoft Corp.

    822 F.3d 1327 (Fed. Cir. 2016)   Cited 738 times   119 Legal Analyses
    Holding that claims to self-referential tables that allowed for more efficient launching and adaptation of databases were not directed to an abstract idea

  5. Berkheimer v. HP Inc.

    881 F.3d 1360 (Fed. Cir. 2018)   Cited 546 times   47 Legal Analyses
    Holding that claims may be treated as "representative" in a § 101 inquiry if a patentee makes no "meaningful argument for the distinctive significance of any claim limitations not found in the representative claim"

  6. Electric Power Group, LLC v. Alstom S.A.

    830 F.3d 1350 (Fed. Cir. 2016)   Cited 551 times   39 Legal Analyses
    Holding that claims directed to "a process of gathering and analyzing information of a specified content, then displaying the results, and not any particular assertedly inventive technology for performing those functions" are directed to an abstract idea

  7. Gottschalk v. Benson

    409 U.S. 63 (1972)   Cited 504 times   59 Legal Analyses
    Holding claim involving mathematical formula invalid under § 101 that did not preempt a mathematical formula

  8. Parker v. Flook

    437 U.S. 584 (1978)   Cited 370 times   63 Legal Analyses
    Holding narrow mathematical formula unpatentable

  9. Cybersource Corp.. v. Retail Decisions Inc.

    654 F.3d 1366 (Fed. Cir. 2011)   Cited 283 times   22 Legal Analyses
    Holding that a claim whose "steps can be performed in the human mind, or by a human using a pen and paper" is directed to an "unpatentable mental process"

  10. Intellectual Ventures I LLC v. Capital One Fin. Corp.

    850 F.3d 1332 (Fed. Cir. 2017)   Cited 173 times   5 Legal Analyses
    Holding abstract claims "directed to ... collecting, displaying, and manipulating data"

  11. Section 103 - Conditions for patentability; non-obvious subject matter

    35 U.S.C. § 103   Cited 6,148 times   481 Legal Analyses
    Holding the party seeking invalidity must prove "the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains."

  12. Section 101 - Inventions patentable

    35 U.S.C. § 101   Cited 3,515 times   2286 Legal Analyses
    Defining patentable subject matter as "any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof."

  13. Section 6 - Patent Trial and Appeal Board

    35 U.S.C. § 6   Cited 186 times   63 Legal Analyses
    Giving the Director authority to designate "at least 3 members of the Patent Trial and Appeal Board" to review "[e]ach appeal, derivation proceeding, post-grant review, and inter partes review"

  14. Section 134 - Appeal to the Patent Trial and Appeal Board

    35 U.S.C. § 134   Cited 98 times   30 Legal Analyses

    (a) PATENT APPLICANT.-An applicant for a patent, any of whose claims has been twice rejected, may appeal from the decision of the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. (b) PATENT OWNER.-A patent owner in a reexamination may appeal from the final rejection of any claim by the primary examiner to the Patent Trial and Appeal Board, having once paid the fee for such appeal. 35 U.S.C. § 134 July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 98-622

  15. Section 1.116 - Amendments and affidavits or other evidence after final action and prior to appeal

    37 C.F.R. § 1.116   Cited 53 times   36 Legal Analyses

    (a) An amendment after final action must comply with § 1.114 or this section. (b) After a final rejection or other final action (§ 1.113 ) in an application or in an ex parte reexamination filed under § 1.510 , or an action closing prosecution (§ 1.949 ) in an inter partes reexamination filed under § 1.913 , but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title): (1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth

  16. Section 1.136 - [Effective until 1/19/2025] Extensions of time

    37 C.F.R. § 1.136   Cited 17 times   30 Legal Analyses

    (a) (1) If an applicant is required to reply within a nonstatutory or shortened statutory time period, applicant may extend the time period for reply up to the earlier of the expiration of any maximum period set by statute or five months after the time period set for reply, if a petition for an extension of time and the fee set in § 1.17(a) are filed, unless: (i) Applicant is notified otherwise in an Office action; (ii) The reply is a reply brief submitted pursuant to § 41.41 of this title; (iii)

  17. Section 1.42 - Applicant for patent

    37 C.F.R. § 1.42   1 Legal Analyses

    (a) The word "applicant" when used in this title refers to the inventor or all of the joint inventors, or to the person applying for a patent as provided in §§ 1.43 , 1.45 , or 1.46 . (b) If a person is applying for a patent as provided in § 1.46 , the word "applicant" refers to the assignee, the person to whom the inventor is under an obligation to assign the invention, or the person who otherwise shows sufficient proprietary interest in the matter, who is applying for a patent under § 1.46 and