By Michael Borella --
On December 15, the United States Patent and Trademark Office (USPTO) published its 2014 Interim Guidance on Patent Subject Matter Eligibility. This Interim Guidance was the long-anticipated update to the Procedure for Subject Matter Eligibility Analysis of Claims Reciting or Involving Laws of Nature / Natural Principles, Natural Phenomena, and/or Natural Products from March, and Preliminary Examination Instructions in view of the Supreme Court decision in Alice Corp. from June. The Interim Guidance supersedes the former and supplements the latter.
The Interim Guidance was recently discussed in general on this site. This article focuses on the impact of the Interim Guidance on claims that potentially incorporate an abstract idea -- i.e., those focused on business methods and software.
The discussion of abstract ideas begins with a non-exhaustive list thereof, including: mitigating settlement risk, creating a contractual relationship, using advertising as an exchange or currency, processing information through a clearinghouse, comparing new and stored information and using rules to identify options, using categories to organize, store and transmit information, organizing information through mathematical correlations, managing a game of bingo, the Arrhenius equation for calculating the cure time of rubber, a formula for updating alarm limits, a mathematical formula relating to standing wave phenomena, and a mathematical procedure for converting one form of numerical representation to another. All of these types of abstract ideas were gleaned from respective pre-Alice and post-Alice Supreme Court and Federal Circuit cases. This list is far more extensive than that of the Preliminary Examination Instructions of June.
As we know, if a claim appears to be directed to such an abstract idea, an examiner is then to determine "whether the elements of the claim, considered both individually and as an ordered combination, are sufficient to ensure that the claim as a whole amounts to significantly more than the exception itself." The Preliminary Examination Instructions set forth a few categories of elements that meet or do not meet this requirement. In the Interim Guidance, these lists have been fleshed out.
Limitations that may be enough to qualify as ''significantly more'' when recited in a claim with a judicial exception include:
• Improvements to another technology or technical field;*
• Improvements to the functioning of the computer itself;*
• Applying the judicial exception with, or by use of, a particular machine;
• Effecting a transformation or reduction of a particular article to a different state or thing;
• Adding a specific limitation other than what is well-understood, routine and conventional in the field, or adding unconventional steps that confine the claim to a particular useful application; or
• Other meaningful limitations beyond generally linking the use of the judicial exception to a particular technological environment.*
Limitations that were found not to be enough to qualify as ''significantly more'' when recited in a claim with a judicial exception include:
• Adding the words ''apply it'' (or an equivalent) with the judicial exception, or mere instructions to implement an abstract idea on a computer;*
• Simply appending well-understood, routine and conventional activities previously known to the industry, specified at a high level of generality, to the judicial exception, e.g., a claim to an abstract idea requiring no more than a generic computer to perform generic computer functions that are well- understood, routine and conventional activities previously known to the industry;*
• Adding insignificant extrasolution activity to the judicial exception, e.g., mere data gathering in conjunction with a law of nature or abstract idea; or
• Generally linking the use of the judicial exception to a particular technological environment or field of use.
* Appeared verbatim or in a similar form in the Preliminary Examination Instructions.
The Interim Guidance goes on to discuss the cases that resulted in the above list of abstract ideas and the "significantly more" factors. For the most part, the USPTO's interpretation of these cases sticks with the respective court's actual language. Indeed, when viewed as a whole, the Interim Guidance sets forth a reasonable reading of the law. In the USPTO, claims directed to disembodied methods that could potentially be performed manually are not patent-eligible, and any recited generic computer hardware or insignificant pre-solution or post-solution activity will essentially be ignored for these purposes. However, claims that require a machine for their substantive performance, improve the performance of such a machine, and/or produce a tangible result are likely to be considered patent-eligible.
In this light, it is surprising that one of the examples in the Interim Guidance is SiRF Technology v. ITC. Therein, a disembodied method claim directed to "calculating an absolute position of a GPS receiver and an absolute time of reception of satellite signals" was found to patent-eligible, despite the claim being theoretical capable of being carried out manually. This claim was evaluated prior to the Alice decision, and it is questionable whether the claim would survive judicial scrutiny under that case's two-prong test.
Regardless, the Interim Guidance contains a couple of additional nuggets of good news for applicants. First, examiners are instructed to "[i]n the rejection, identify the exception by referring to where it is recited (i.e., set forth or described) in the claim and explain why it is considered an exception. Then, if the claim includes additional elements, identify the elements in the rejection and explain why they do not add significantly more to the exception." In the 35 U.S.C. § 101 rejections that we have seen so far, it is not uncommon for an examiner to provide a terse, conclusory statement that the claims at issue are patent-ineligible. The Interim Guidance provides rebuttal material from the applicant, who can now argue that a rejection lacking specificity with respect to the analysis of either prong is facially insufficient.
Further, the Interim Guidance states that "[f]or claims that may recite a judicial exception, but are directed to inventions that clearly do not seek to tie up the judicial exception" a streamlined eligibility analysis may apply. This streamlined analysis should be used "for a claim that may or may not recite a judicial exception but, when viewed as a whole, clearly does not seek to tie up any judicial exception such that others cannot practice it." For such a claim, patent-eligibility "will be self-evident." As an example of a self-evident patent-eligible claim, the USPTO provides the hypothetical example of "a robotic arm assembly having a control system that operates using certain mathematical relationships." Under the Interim Guidance, this is "clearly not an attempt to tie up use of the mathematical relationships and would not require a full analysis to determine eligibility." Again, such language provides applicants with ammunition for rebutting overzealous examiners who have rejected analogous claims.
Despite the Interim Guidance offering a reasonably fair and thorough overview of the current law of patent-eligibility, applicants must remain cautious. The Interim Guidance is for examination of patents only. Courts may give little or no weight to its reasoning. As a result, claims that are allowable by the USPTO under a particular rationale may be invalidated by a reviewing court, even in the presence of this rationale.