By Michael Borella --
Last month the U.S. Patent and Trademark Office published an update ("October Update") to its subject matter eligibility guidance. As we noted at that time, the October Update is more evolutionary than revolutionary, and primarily serves to provide clarifications to the more substantive January Guidance. Nonetheless, the USPTO did provide four additional examples applying its revised test for subject matter eligibility under 35 U.S.C. § 101 to hypothetical claims. Here, we discuss Example 46.
The background, of course, is 2014's Alice Corp. vs. CLS Bank Int'l Supreme Court holding. Therein, the Court set forth a two-part test to determine whether claims are directed to patent-eligible subject matter under § 101. These parts are denoted by the USPTO as steps 2A and 2B, respectively (step 1 is to determine whether the claimed invention is one of the four statutory categories of subject matter set forth in § 101, and is rarely at issue in practice).
Under step 2A, one must decide whether the claim at hand involves a judicially-excluded law of nature, a natural phenomenon, or an abstract idea. If so, then under step 2B one further decides whether any element or combination of elements in the claim is sufficient to ensure that the claim amounts to significantly more than the judicial exclusion. Elements or combinations thereof that are well-understood, routine, and conventional will not lift the claim over the § 101 hurdle. While this inquiry is generally carried out as a matter of law, factual issues can come into play when determining whether something is well-understood, routine, and conventional.
The January Guidance breaks the first part of the Alice test into two sub-steps (let's call them 2A(i) and 2A(ii) for purposes of clarity). In the former, one determines whether the claim recites a judicial exception, such as an abstract idea. In the latter, one determines further "whether the recited judicial exception is integrated into a practical application of that exception."
To focus the analysis, the January Guidance indicates that, under step 2A(i), all abstract ideas should fall into one of three categories: mathematical concepts, certain methods of organizing human activity, and mental processes. Think of these as the "Three M's" -- math, money, and mental steps.
If the analysis moves on to sub-step 2A(ii), then one determines "whether the claim as a whole integrates the recited judicial exception into a practical application of the exception." Such a claim "will apply, rely on, or use the judicial exception in a manner that imposes a meaningful limit on the judicial exception, such that the claim is more than a drafting effort designed to monopolize the judicial exception."
Example 46 applies this test to four claims directed to an invention for obtaining and analyzing identification and behavioral data of livestock animals, such as dairy cattle. In some of these claims, cattle with aberrant behavior are identified, while in others cattle so identified are separated from the herd by a gating system or treated with a modified diet intended to address the disease of which the aberrant behavior is a symptom.
Claim 1
Claim 1 recites:
A system for monitoring health and activity in dairy livestock animals comprising:
a memory;
a display; and
a processor coupled to the memory programmed with executable instructions, the instructions including
a livestock interface for obtaining animal-specific information, wherein the animal-specific information comprises animal identification data and at least one of body position data, body temperature data, feeding behavior data, and movement pattern data; and
a monitoring component for
(a) comparing the obtained animal-specific information with animal information from a herd database to verify an animal's identity, and
(b) analyzing the obtained animal-specific information to identify whether the animal is exhibiting an aberrant behavioral pattern as compared to past behavior of the animal, and
(c) displaying the analysis results for the animal on the display.
The USPTO begins its substantive analysis by applying step 2A(i). Under the October Update, a claim recites a judicial exception when such an exception is explicitly set forth or implicitly described in the claim. Based on this interpretation, the USPTO finds that limitations (a) and (b) are an observation and an evaluation, respectively. Thus, they are "acts that can be practically performed in the human mind," and fall within the mental processes category of abstract ideas. Further, "[t]he recitation of a processor in this claim does not negate the mental nature of these limitations because the claim here merely uses the processor as a tool to perform the otherwise mental processes."
Moving on to step 2A(ii), the USPTO identifies the additional elements as "the memory, the display, the processor, the livestock interface, and limitation (c)." The first three of these elements are rapidly dismissed as being non-substantive for purposes of the § 101 analysis, because "they represent no more than mere instructions to apply the judicial exception on a computer [and] nothing more than an attempt to generally link the use of the judicial exception to the technological environment of a computer." Additionally, the USPTO finds that the livestock interface is just "insignificant extra-solution activity" because it is used for data gathering and is recited at a high level of generality. Limitation (c), on the other hand, only "performs the necessary software tasks so that the result of the abstract mental process is displayed." Thus, the additional elements, when considered in isolation, do not integrate the abstract idea into a practical application.
The step 2A(ii) analysis also requires considering the additional elements in combination with one another and the rest of the claim. The USPTO states that the claim as a whole does no more than "automate the mental processes that the farmer used to perform (e.g., the mental inspection and evaluation of the livestock animals' behavior), using the computer components as a tool." Notably, "[w]hile this type of automation improves the daily life of farmers (by minimizing or eliminating the need for mentally evaluating the behavior of livestock animals), there is no change to the computers and other technology that are recited in the claim as automating the abstract ideas, and thus this claim cannot improve computer functionality or other technology." Therefore, the claim fails to integrate the abstract idea.
Step 2B proceeds similarly as that of step 2A(ii). The memory, display, and processor are "at best the equivalent of merely adding the words "apply it" to the judicial exception." The livestock interface and limitation (c) are still extra-solution activity. The USPTO then states, in a rather conclusory fashion, "[e]ven when considered in combination, these additional elements represent mere instructions to apply an exception and insignificant extra-solution activity, which cannot provide an inventive concept."
As a consequence, claim 1 is ineligible.
Claim 2
Claim 2 depends from claim 1, and recites:
The system of claim 1, wherein the system further comprises
a feed dispenser that is connected to a feed and supplement supply and is operable to dispense individualized amounts of feed and optional supplements, and
wherein the monitoring component is further configured for
(d) automatically sending a control signal to the feed dispenser to dispense a therapeutically effective amount of supplemental salt and minerals mixed with feed when the analysis results for the animal indicate that the animal is exhibiting an aberrant behavioral pattern indicative of grass tetany.
Since claim 2 incorporates all elements of claim 1 and two of those incorporated elements have already been found to recite an abstract idea, claim 2 also recites an abstract idea under step 2A(i).
Regarding step 2A(ii), the USPTO writes that "limitation (d) does not merely link the judicial exceptions to a technical field, but instead adds a meaningful limitation in that it can employ the information provided by the judicial exception . . . to operate the feed dispenser." Moreover, "[l]imitation (d) in combination with the feed dispenser enables the control of appropriate farm equipment based on the automatic detection of grass tetany, which goes beyond merely automating the abstract idea."
The main difference between ineligible claim 1 and eligible claim 2 is the addition of feed dispenser and how it is triggered to the latter. This adds a non-computer physical element to the claim which changes state in response to the "mental" calculations performed by the computer. This appears to be enough to transform the claimed invention into one that meets the requirements of § 101.
Another way of differentiating between claims 1 and 2 is to make an analogy to Supreme Court and Federal Circuit case law regarding the law of nature and natural phenomena exceptions. Particular, since Mayo v. Prometheus and its progeny, diagnostic method claims are almost certainly going to be found ineligible, whereas method of treatment claims can be eligible. Claim 1 reads like a diagnostic method claim (e.g., gathering patient data and determining whether there is presence or likelihood of a disease), while claim 2 reads like a method of treatment claim (e.g., administering a medicine or nutritional supplement to a patient who has been diagnosed with a disease). In that light, the USPTO is at least being consistent with the precedent, even if the correctness of that precedent has been called into question.
Claim 3
Claim 3 focuses on separating cattle identified as possibly suffering from an illness from those that do not. It recites (edited to fix apparent typographical errors in the enumeration of steps):
A method for monitoring health and activity in dairy livestock animals comprising:
(a) causing a herd of livestock animals to enter a sorting gate that is automatically operable, wherein each animal in the herd is equipped with an animal sensor having a radio frequency transponder,
(b) for a particular animal in the herd, obtaining, by a radio frequency reader mounted on or near the sorting gate, animal-specific information from the animal sensor when the animal sensor is within proximity to the radio frequency reader, the animal-specific information comprising animal identification data and at least one of body position data, body temperature data, feeding behavior data, and movement pattern data,
(c) analyzing, by a processor, the obtained animal-specific information from step (b) with respect to animal information stored in a herd database to identify the animal and to determine whether the animal is exhibiting an aberrant behavioral pattern as compared to the past behavior of the animal,
(d) automatically operating the sorting gate, by the processor sending a control signal to the sorting gate to route the animal into a holding pen when the analysis results from step (c) for the animal indicate that the animal is exhibiting an aberrant behavioral pattern, and by the processor sending a control signal to the sorting gate to permit the animal to freely pass through the sorting gate when the analysis results for the animal indicate that the animal is not exhibiting an aberrant behavioral pattern, and
(e) repeating steps (b) through (d) for each animal in the herd.
Analyzing the claim, the USPTO observes that step (a) "does not impose any limits on how the livestock animals are caused to enter the sorting gate" while steps (b) and (c) "[do] not impose any limits on how the radio frequency reader obtains the animal-specific information, or on how the analysis of the information is accomplished." Similarly, step (d) "does not impose any limits on how the sorting gate is operated." The USPTO also notes that the conditional dependencies between the steps results in three embodiments being covered under broadest reasonable interpretation:
[A] first embodiment in which only the first condition and first action occur (all animals exhibit aberrant behavioral patterns and are thus routed to the holding pen); a second embodiment in which only the second condition and second action occur (all animals exhibit normal behavioral patterns and are thus permitted to freely pass through the sorting gate); and a third embodiment in which both conditions and both actions occur (some animals exhibit aberrant behavioral patterns and are thus routed to the holding pen, and other animals exhibit normal behavioral patterns and are thus permitted to freely pass through the sorting gate).
Applying step 2A(i), the USPTO finds that step (c) of the claim recites the abstract idea of performing an evaluation. This evaluation of "whether the animal is exhibiting an aberrant behavioral pattern as compared to the past behavior of the animal" could practically be performed in the human mind by observing the animal.
Turning to step 2A(ii), the USPTO quickly dismisses steps (a) and (e) of the claim as "nothing more than an attempt to generally link the use of the judicial exception to the particular field of livestock management," while step (b) "represents mere data gathering." The USPTO also takes issue that "steps (b) and (c) are also recited at a high level of generality and represent no more than mere instructions to apply the judicial exception using generic computer components."
On the other hand, the USPTO's view of step (d) of the claim is that, under all three embodiments, it "does not merely link the judicial exception to a technical field, but instead adds a meaningful limitation in that it employs the information provided by the judicial exception . . . to operate the gate control mechanism and route the animals." As a result, "step (d) goes beyond merely automating the abstract ideas and instead actually uses the information obtained via the judicial exception to take corrective action by operating the gate and routing the animals in a particular way." This is an integration of "the judicial exception into the overall livestock management scheme and accordingly practically applies the exception, such that the claim is not directed to the judicial exception."
Therefore, claim 3 is eligible.
Claim 4
Claim 4 uses similar language as that of claim 1, but takes the invention in a different direction. It recites:
A system for monitoring health and activity in a herd of dairy livestock animals comprising:
a memory;
a processor coupled to the memory programmed with executable instructions, the instructions including a livestock interface for obtaining animal-specific information for a plurality of animals in the herd, wherein the animal-specific information comprises animal identification data and at least one of body position data, body temperature data, feeding behavior data, and movement pattern data; and
a herd monitor including (a) a radio frequency reader for collecting the animal-specific information from a plurality of animal sensors attached to the animals in the herd when the animal sensors are within proximity to the radio frequency reader, each animal sensor having a radio frequency transponder, and (b) a transmitter for transmitting the collected animal-specific information to the livestock interface.
Notably, the difference between claims 1 and 4 is that the former comprises the aforementioned comparing, analyzing and displaying steps that were found to be abstract, while the latter includes the herd monitor with its radio frequency reader and transmitter.
Under step 2A(i), the USPTO rapidly concludes that there is no judicial exception recited in the claim. Particularly, "[t]he claim does not recite any abstract ideas, such as a mathematical concept, mental process, or a method of organizing human activity such as a fundamental economic concept or managing interactions between people." Further, "[t]he system's operation, like all computers, is based on mathematical theory, but that underlying operation does not trigger an eligibility analysis because it is not set forth or described in the claim." Therefore, the claim is eligible.
Analysis
We have found the USPTO eligibility examples helpful from time to time. But some, like this one, raise new questions as it provides a few answers. First, as noted above in the discussions of claims 1 and 2, is the USPTO taking the position that improvements using generic physical components that save people time are less likely to be eligible than improvements to specific devices that have the same outcome? If so, that requires an evaluation of whether a claimed invention improves a person's performance or a machine's performance, which is difficult in practice with many software-based inventions. For example, a new algorithm that recommends a course of action for a human to take might result in both human and computer performance being enhanced.
Second, the differences in the eligibility outcome of claims 1 and 4 require some rather thin bacon slicing, and involve nuances that many examiners, PTAB judges, and attorneys might not appreciate as relevant. Further, what if we added the comparing, analyzing and displaying steps from claim 1 into claim 4? Under the October Update, claim 4 would now recite an abstract idea, but would the herd monitor result in an integration into a practical application? In a broader sense, can adding limitations to an eligible claim render it ineligible? As the slogan for an infamous tabloid publication goes, inquiring minds want to know.
