USPTO Issues Preliminary Examination Instructions Regarding Alice Corp. v. CLS Bank International

    By Michael Borella --

The U.S. Patent and Trademark Office (USPTO) wasted no time providing guidance to its examining corps regarding the recent Supreme Court decision in Alice Corp. v. CLS Bank International.  Just one week after the Justices struck down all of Alice's method, device, and system claims as being patent-ineligible under 35 U.S.C. § 101, the USPTO has published a memorandum with its preliminary examination instructions.

As an initial matter, the memorandum makes it clear that the decision "neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods."  Instead, examiners are now to apply the framework set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., "to analyze all claims directed to laws of nature, natural phenomena, and abstract ideas for subject matter eligibility under 35 U.S.C. § 101."

This unifies the analysis in two ways.  First, the same standard is applied to claims with abstract ideas and laws of nature.  Previously, the former was evaluated under Bilski and the latter under Mayo.  Second, the same standard is to be used for all statutory classes of claims, not just method claims.  Before CLS Bank, it wasn't clear that the holdings of Bilski, Mayo, and their § 101 predecessors impacted more than just method claims.

The memorandum reiterates the two-part Mayo test with examples.  For the first prong, "determine whether the claim is directed to an abstract idea," the memorandum indicates that abstract ideas include:

• Fundamental economic practices;
• Certain methods of organizing human activities;
• An idea of itself; and,
• Mathematical relationships / formulas.

Such an abstract idea would then be further considered under the second prong, "determine whether any element, or combination of elements, in the claim is sufficient to ensure that the claim amounts to significantly more than the abstract idea itself."  Examples of types of limitations that may lift the claim up to meet the § 101 bar include:

• Improvements to another technology or technical fields;
• Improvements to the functioning of the computer itself; and
• Meaningful limitations beyond generally linking the use of an abstract idea to a particular technological environment.

Claims that do not include such limitations should be rejected as being directed to non-statutory subject matter.  Of note is that the USPTO does not address whether prior art should be used to establish that an abstract idea is "fundamental" or to determine that an addition limitation is more than routine or conventional.

This brief memorandum provides a glimpse of the immediate impact of CLS Bank in the USPTO -- applicants are likely to have software and business method claims scrutinized carefully in light of these guidelines.  For applications already under examination, an applicant's options may be limited.

However, for new applications, the USPTO has provided something of a roadmap with which one can try to avoid CLS Bank rejections.  To the extent possible, draft claims to avoid reciting any of the examples of abstract ideas given above.  If that is not possible, include limitations that clearly demonstrate how the claimed invention improves a technological process, device or system.  Doing so may result in more focused claims, but this approach may be necessary to avoid § 101 roadblocks during prosecution.

Comments

[EG]

[T]he memorandum makes it clear that the decision "neither creates a per se excluded category of subject matter, such as software or business methods, nor imposes any special requirements for eligibility of software or business methods."

Michael,

I'll believe that statement when I actually see an Examiner heed that statement. So far, that has not been my experience.

[Skeptical]

Speaking for my brother Curious for a moment,

Why would a memorandum spell out that the decision is not CREATING a per se excluded category, if, as many members of a certain philosophy already hold, such categories are ALREADY in place?

If such are already in place, would not the Office memo AFFIRM that understanding, rather than distance itself from that understanding?

[Mike Borella]

I have no doubt that an over-zealous examiner could take a narrow view of 101. However, with the PTO guidelines in hand, at least you could point out to him or her that there is no per se ban on software or business method patents, and that he or she needs to provide the two-prong analysis.

[harry]

the tests are unless if examiners don't follow them.