View all Webinars

Schwegman Lundberg & Woessner

Close     Close Mobile Menu

Transubstantiation of a Machine into an Abstract Idea

In the Catholic Church “transubstantiation” is the belief that the wafer and the wine become the actual body and blood of Christ during the communion ceremony. Recently, the PTAB went into the mystic to transform claims to a multi-station MRI apparatus into abstract ideas, and then to reject them under s. 101. Ex parte Hiroyuki Itagaki, Appeal No. 2015-002702 (PTAB 2016), application serial no. 12/598168.

And this rejection was entered after the panel found that the MRI apparatus was unobvious over the art cited by the Examiner.

This legal result requires us all to call the Alice/Mayo rule unworkable and to shout out that this is a claim to a machine, not to a conventional process carried out by a generic computer. Even the panel refers to claim 1 as an “apparatus” or as describing “a multi-station MRI.”

The panel seems to have arrived at the conclusion by taking the broadest possible view of the claims, and then [incorrectly] stating “the claimed subject matter is directed to classification…The classification concept is an abstract idea.” No it’s not. Claim 1 is directed to a machine that would probably at least maim you if it tipped over. But once you have transubstantiated metal and glass into an abstract idea, you have done quite enough to demonstrate why rejections based on identification of the invention as an abstract idea have run amok.

I was recently at a symposium in which one of the panel members declared that the term “abstract idea” is tautological; all ideas that remain ideas are abstract. We are approaching magical thinking if not outright legal magic. It’s high time to stop pulling abstract rabbits out of real top hats.

Read the decision on appeal.


  Back to All Resources