March Madness is over, but the perennial discussion over optimal ranking methodologies is not.  Depending upon application, there are numerous factors of subjectivity and objectivity which must be weighed to varying degrees in obtaining “the best of the best.”  Further, there are cases where determining ideality is far more critical than ensuring fair basketball match-ups.

Consider the example of US 2014/0244292, which disclosed a method of ranking and recommending treatments for an individual’s medical condition, a determination clearly in the public interest.  This application was ultimately abandoned, but not before receiving a pair of §101 rejections for reciting the abstract idea of “comparing new and stored information and using rules to identify options.”

That characterization certainly sounds like any generic ranking methodology.  Yet, several applications have managed to clear this hurdle.  Consider US 8,898,174, which discloses a method for ranking lawyers and their practices.  Or US 9,177,349, which patents a method for rating patents (“and other intangible assets”).  At first glance, these certainly seem just as abstract as a medical treatment recommendation method.  Yet, both of these patents were issued in due course (the latter overcoming a §101 rejection in a single round of prosecution, the former not receiving a §101 rejection at all).

Indeed, under the continually developing case law and guidance concerning subject matter eligibility, such inconsistency at the USPTO has been debated even at the highest levels.  In an effort to address this, the recent 2019 Revised Patent Subject Matter Eligibility Guidance has standardized some of the more loosely interpretable and challenging aspects of §101 rejections.

Of particular interest to this discussion is the new, two-pronged approach for determining whether or not a claim is directed to a judicial exception, including consideration of whether or not a recited judicial exception is integrated into a practical application (and therefore possibly constituting eligible subject matter).  This reveals a path for future prosecution strategies for comparison- and rules-based ranking methodologies.  Examples provided in the Revised Guidance include integrating judicial exceptions into the improvement of a technology or technical field, implementing the judicial exception with a particular machine or manufacture, and effecting a transformation/reduction of an article to a different state/thing.  Most hopeful for cases such as the ‘292 application is the potentially patentable utilization of a judicial exception to effect a particular treatment for a disease or medical condition.

The potential for ranking methodologies (and similar subject matter) under the Revised Guidance is hardly unlimited.  The Revised Guidance clearly states that judicial exceptions are not integrated into a practical application merely because the claim recites the words “apply it,” or an equivalent.  However, by constructing claims in such a way as to integrate the generation of ranked lists into “real world” practicality, there may yet be opportunities in this space.