Ever since the Supreme Court ruling on Alice Corporation
Pty. Ltd. v. CLS Bank International, et al., patent
practitioners have seen an historic increase in the number of 35
USC §101 "abstract ideas" rejections of patent
claims in patent prosecution. We write Office action
responses, and have Examiner interviews, yet sometimes it is not
enough to convince an Examiner that claims are directed to
patent-eligible subject matter, for we have heard from Examiners
that the USPTO (United States Patent and Trademark Office) has
assembled a committee that looks at patent subject matter
eligibility issues in cases. One hint that more than one
Examiner has mentioned is that there may be a comfort zone about
claims, established by case law with which they are familiar, and
that positioning claims relative to this comfort zone may be
beneficial towards a positive finding of subject matter
eligibility.
On January 27, 2015, the USPTO published "Examples: Abstract
Ideas" as a companion to the "2014 Interim Eligibility
Guidance". This cites Federal Circuit rulings, some of
which have found claims that are not patent eligible subject
matter, and others of which found the claims are patent eligible
subject matter. Below are suggested arguments that can
bolster the assertion that claims are directed to statutory subject
matter under 35 USC §101, by citing case law from the USPTO
Examples document and comparing to present claims. Since
Examiners may be familiar with the cases in the Examples document,
they may be more comfortable with claims that are either similar in
some way to cases that have rulings of patent eligibility, and/or
claims that are dissimilar to cases that have rulings of patent
ineligibility.
As an example, suppose the present claims have been rejected as
being directed to an abstract idea implemented on a computer.
A good question to ask is, are the claims directed to an
abstract idea with a mere field-of-use limitation, or are the
claims inextricably tied to a particular technological field?
For instance, if the computer-implemented claimed subject
matter solves a particular problem in a particular branch of
medicine, vehicle or machine control, computing or communication,
etc., or improves a specific technological process, the patent
practitioner can argue that the claim is inextricably tied to a
particular technological field. Possibly, the narrower the
technological field, the better. Another good question to ask
is, is a computer merely an accessory to performance of the claimed
method, or is the computer required? Many
computer-implemented inventions would be impossible for a human to
perform using purely mental processes in any reasonable amount of
time and with any reasonable expectation of accuracy. The
patent practitioner can argue that a computer is required for
performing the claimed method. The above can be followed up
by comparison to appropriate case law, with analysis of aspects of
the claims in light of relevant court cases, a few of which are
discussed as examples below.
In SmartGene, according to the USPTO 2014 Interim 101
guidance (Section IV.B.4), "Claim 1 does no more than call on
a 'computing device' with basic functionality for comparing
stored and input data and rules, to do what doctors do
routinely" (emphasis added). In other words, doctors
(people, performing mental tasks) routinely compare stored and
input data and rules, and the computing device was employed in the
claim to do so "to identify medical options". By
contrast, doctors or other people, performing mental tasks, are not
capable of performing the present claimed method, a computer is
required, as discussed above. In the present claims, the
computer (or processor or other machine) is not merely called on to
do what doctors do routinely. The present claims are thus
unlike the patent ineligible claims of SmartGene.
In Diehr, according to the USPTO 2014 Interim 101 guidance
(Section III, Example 3), "The combination of steps recited in
addition to the mathematical formula show that the claim is not to
the formula in isolation, but rather that the steps impose
meaningful limits that apply the formula to improve an existing
technological process. Thus the claim amounts to
significantly more than the judicial exception. The claim is
eligible." Like the claims in Diehr, the
present claims are not to a formula in isolation, but rather have
meaningful limits that apply to improve a specific technological
process, namely here in [fill in the technological process].
In Flook, according to the USPTO 2014 Interim 101 guidance
(Section III, Example 4), "there is no disclosure relating to
that system, such as the chemical processes at work, the monitoring
of process conditions, the determination of variables in the
formula from process conditions, or the means of setting off an
alarm or adjusting an alarm system... The claimed invention focuses
on the calculation of the number representing the alarm limit value
using the mathematical formula. Thus, the claim is directed
to a mathematical formula, which is like a law of nature that falls
within the exceptions to patent-eligible subject matter."
By contrast, the present specification discloses a large
amount of detail in support of how the various steps or actions of
the claimed method are performed, and the present claim does not
broadly attempt to claim just a mathematical formula with no
further limitations. Unlike Flook, but like
Diehr, the present claims are not to a formula in
isolation. In Flook, "Limiting the claim to
petrochemical and oil refining industries, such that the claim does
not seek to wholly preempt the mathematical formula, is a
field-of-use limitation that does not impose meaningful limits on
the mathematical formula." In the present claims, [fill
in the technical area to which the claims are inextricably tied] is
not a mere field-of-use limitation. The claimed method is
specifically useful in [deriving, solving, whatever it is the
claimed method or apparatus, etc., does], and the claim is thereby
inextricably tied to [the technical area].
The patent practitioner should follow up these arguments, or weave
into the arguments, factual findings wherever possible. For
example, a factual finding about the necessity of using a computer
or other machine, as recited in the claims and described in the
specification, supports the assertion that the computer is required
and the claims are thus strongly tied to a machine. A factual
finding about the technical problem specific in a technical field
that is solved by the claimed method or device, etc., supports the
assertion that this is not a mere field-of-use limitation.
Then, the patent practitioner has a number of factual
findings in support of patent eligible subject matter that can
outweigh unsupported Office action assertions that the claims are
patent ineligible. It is particularly useful to point out
when an Office action assertion is unsupported, and contrasted to a
factually supported assertion.
Takeaways:
– Examiners may have a comfort zone about claims that in
some way resemble claims of familiar cases with patentable subject
matter, or that are dissimilar to claims of familiar cases without
patentable subject matter.
– Comparing claims in an application under patent prosecution
to claims in familiar cases can draw similarities to cases with
patentable subject matter and dissimilarities to cases found to not
have patentable subject matter.
– Tying a claim inextricably to a technological field, and
arguing that, can powerfully support an assertion to patentable
subject matter.
– Arguing that a computer or other machine is required for
performing a method, which cannot be reasonably performed as a
series of mental steps with any expectation of timeliness or
accuracy, can support an assertion to patentable subject matter as
the claim is strongly tied to a machine.
– Factual findings supporting arguments that the claims are
to patentable subject matter should outweigh unfounded assertions
that they are not.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.