In re: George Mizhen Wang

Docket No. 2017-1827

June 20, 2018


Brief summary: Board finding of patent ineligibility under § 101 affirmed as Mr. Wang’s claims “contain ‘additional features’ that embody an ‘inventive concept,’ so as to nevertheless make them patent-eligible” under Alice (US 2014).

Summary: Mr. Wang appealed Board final decision of his appeal of the Examiner’s rejection of his claims as being directed to non-statutory subject matter under § 101, indefiniteness, and anticipation. “The invention claimed in the ‘680 application relates to ‘[a] phonetic symbol system formed by phonetic symbols using letters of [the] English alphabet” which the Examiner and the Board “agreed…that ‘defining phonetic symbols in language, using strings of English letters,’ is an unpatentable abstract idea.” The FC panel reviewed the Board’s decision de novo (“a pure question of law” (Genetic Techs., FC 2016). It explained that “[f]or all categories except process claims, the eligible subject matter must exist in some physical or tangible form” (Digitech, FC 2014 (“must be a ‘concrete thing, consisting of parts, or of certain devices and combination of devices’” (citing Burr, US 1863), “a tangible article that is given a new form, quality, property, or combination through man-made or artificial means” (citing Diamond, US 1980)). The FC panel also explained that “the claimed invention” also does not “qualify as a process under section 101” as “none of the application claims on appeal requires an act or step or anything that must be performed” (35 USC § 100(b); “an act, or series of acts, performed upon the subject-matter to be transformed and reduced to a different state or thing” (Gottschalk, US 1972; In re Nuijten, FC 2007)). In addition, the FC panel wrote that “where, as here, claims of a patent application recite an abstract idea, the question becomes whether they contain ‘additional features’ that embody an ‘inventive concept,’ so as to nevertheless make them patent-eligible” (Alice, US 2014), and that “there is no inventive concept that rescues them from patent ineligibility.”

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