Post-Alice Claiming and Prosecution in the United States Jim Hallenbeck Patent Attorney | Principal Schwegman, Lundberg & Woessner, P.A. 1.612.373.6938 [email protected]
1. Post-Alice Claiming and Prosecution in the United States Jim
Hallenbeck Patent Attorney | Principal Schwegman, Lundberg &
Woessner, P.A. 1.612.373.6938 [email protected]
3. 3 Interim and Preliminary Examination Instructions
4. Interim and Preliminary Examination Instructions Preliminary
Examination Instructions issued June 25, 2014 following the Supreme
Court decision in Alice Corp. Pty. Ltd. v. CLS Bank Intl, et al
http://www.uspto.gov/patents/announce/alice_pec_25jun2014.pdf
Interim Examination Instructions issued December 16, 2014
http://www.gpo.gov/fdsys/pkg/FR-2014-12-16/pdf/2014-29414.pdf
44
5. Interim and Preliminary Examination Instructions Under
Alice, the same analysis is used for all judicial exceptions and
claim categories, see MPEP 2106(I). 55
6. Interim and Preliminary Examination Instructions First
determine whether the claim falls within one of the four categories
of eligible subject matter, i.e., process, machine, article of
manufacture, composition of matter. If not, the claim is not patent
eligible. If so, consider the judicial exceptions. 66
7. Interim and Preliminary Examination Instructions Under
Alice, considering the judicial exceptions is a two-pronged
analysis. Prong 1 Determine whether the claim is directed to a
judicial exception/abstract idea. If not, the claim is eligible
otherwise proceed to Prong 2. Prong 2 Determine whether any claim
element, or combination of claim elements, is sufficient to ensure
that the claim as a whole amounts to significantly more than the
abstract idea itself. If so, the claim is eligible otherwise
ineligible. 77
8. Interim and Preliminary Examination Instructions Prong 1 Is
the claim directed to a judicial exception/abstract idea? At some
level, all inventions embody, use, reflect, rest upon, or apply
abstract ideas and the other judicial exceptions. NOTE: An
invention is not ineligible simply because it involves an abstract
idea Examples of Abstract ideas listed in Alice are: Fundamental
economic practices; Certain methods of organizing human activities;
[A]n idea of itself; and Mathematical relationships/formulas.
88
9. Interim and Preliminary Examination Instructions Prong 1
Determine whether the claim is directed to a judicial
exception/abstract idea. If not, the claim is eligible otherwise
proceed to Prong 2. I.e., the claim is directed to a judicial
exception/abstract idea. 99
10. Interim and Preliminary Examination Instructions Prong 2
Does any claim element, or combination of claim elements, amount to
significantly more than the abstract idea itself? Considering the
claim as a whole, are there any elements or combinations of
elements that show a patent-eligible application of the abstract
idea from Prong 1? 1010
11. Interim and Preliminary Examination Instructions Prong 2
(cont.) Considering the claim as a whole, are there any elements or
combinations of elements that show a patent- eligible application
of the abstract idea from Prong 1? Elements in Alice that may
qualify as significantly more: Improvements to another technology
or technology field; Improvements to the functioning of the
computer itself; and Meaningful elements beyond generally linking
the use of an abstract idea to a particular technological
environment. 1111
12. Interim and Preliminary Examination Instructions Prong 2
(cont.) Considering the claim as a whole, are there any elements or
combinations of elements that show a patent- eligible application
of the abstract idea from Prong 1? Elements in Alice that do not
qualify as significantly more: Apply (or equivalent) the abstract
idea; Mere instructions to implement an abstract idea on a
computer; and 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. 1212
13. 13 Traversal Strategy
14. Traversal Strategy At this point, there is no silver bullet
for patent eligibility of computer implemented inventions. Generic
computing devices at this point are insufficient to make a computer
implemented invention claim patent eligible. Recent court decisions
have been mixed and inconsistent. So what do we do? 1414
15. Traversal Strategy The simple answer is to: 1. Prong 1
Address the concept of an abstract idea that the claim is or may be
considered to be directed; and 2. Prong 2 Ensure there are claim
elements drawn to significantly more than an abstract idea, or
other judicial exception, itself. 1515
16. Traversal Strategy Prong 1 Even though a claim may be
directed to an abstract idea, as seemingly all claims are to some
degree, consider: Does the claim pre-empt use of the abstract idea
of the claim or basic tools of scientific or technological work?
[I]n applying the 101 exception, [courts] must distinguish between
patents that claim the building blocks of human ingenuity and those
that integrate the building blocks into something more thereby
transforming them into patent eligible inventions. Alice, 134 S.
Ct. at 2354 (internal citations omitted). The concern that drives
the exclusionary principle [i]s one of pre-emption. Id. That is,
where a patent would pre- empt use of basic tools of scientific and
technological works, i.e., laws of nature, natural phenomena, and
abstract ideas, the patent would impede innovation more than it
would tend to promote it, thereby withdrawing the primary object of
the patent laws. Id. Helios Software, LLC v. Spectorsoft Corp. (D.
Del. Sept. 25, 2014) C.A. No. 12-081-LPS. The premise behind the
judicial exceptions to patent eligibility is pre-emption. If a
claim does not pre-empt all uses of the judicial exception and the
claim is within a statutory class, the claim is patent eligible.
1616
17. Traversal Strategy Prong 1 The previous example is
applicable where an asserted abstract idea is accurate, but the
claim language does not preempt all practices of the abstract idea.
But what if the asserted abstract idea is not accurate? Consider
whether the purported abstract idea is tied to the claim language.
In determining whether a method or process claim recites an
abstract idea, we must examine the claim as a whole and taking into
account all claim elements in combination. Alice, 134 S. Ct. at
2355 n. 3; and U.S. Bancorp v. Solutran, Inc. (CBM 2014-00076, Aug.
7, 2014). For a rejection to be sustained, there must be an
adequate tie between claim language and the abstract concept. PNC
Bank N.A. et al. v. Secure Access LLC (PTAB Case CBM2014-0010,
Sept. 9, 2014). The asserted abstract idea was authentication
stamps on paper documents. The claims related to insertion of
authentication data, referred to as an authentication stamp into a
dataset to validate the dataset. This is a bit nuanced, but shows
there is a fine line, at least at the PTAB, and that traversing an
asserted abstract idea, while seemingly a narrow argument, is not
frivolous and may prevail. 1717
18. Traversal Strategy Prong 1 The premise behind the judicial
exceptions to patent eligibility is pre- emption. If a claim does
not pre-empt all uses of the judicial exception and the claim is
within a statutory class, the claim is patent eligible. Thus,
consider whether an asserted abstract idea of a Section 101
rejection is accurate. If not: Traverse the asserted abstract idea;
and/or The claim is not directed to a fundamental economic
practice, certain methods of organizing human activities, [A]n idea
of itself, or a mathematical relationship/formula. The asserted
abstract idea fails to contemplate the claim as a whole as there is
not an adequate tie between the claim language and the purported
abstract idea. If there is no abstract idea/judicial exception or
the asserted abstract idea is not tied to the claim, the claim is
not pre- emptive and the rejection is deficient. Suggest a more
accurate abstract idea/judicial exception that is not pre-empted by
the claim. 1818
19. Traversal Strategy Prong 1 When a claim rejection is
premised on an assertion the claim is directed to an abstract idea
itself: Consider whether the asserted abstract idea is one of a
principle, an original cause, or a motive per footnote 3 of the
Preliminary Examination Instructions. If not, establish this by
argument such that the abstract idea is deficient and Prong 1
fails. 1919
20. Traversal Strategy Prong 2 Ensure there are claim elements
drawn to significantly more than the abstract idea, or other
judicial exception, itself. When claims provide a specific
computing solution for a computing problem, these claims should
generally be patentable, even if the novel elements are
mathematical algorithms. California Institute of Technology v.
Hughes Communications (C.D. Ca. Nov. 3, 2014) Ca. Case No.
2:13-cv-07245-MRP-JEM (see pages 26, 28). Despite being generally
directed to abstract concepts, the asserted claims contain
meaningful limitations that represent sufficiently inventive
concepts, such as the irregular repetition of bits and the use of
linear transform operations. Although these limitations are
mathematical algorithms, these algorithms are narrowly defined, and
they are tied to a specific error correction process. These
limitations are not necessary or obvious tools for achieving error
correction, and they ensure that the claims do not preempt the
field of error correction. The continuing eligibility of this
patent will not preclude the use of other effective error
correction techniques. Therefore, all the asserted claims are
patentable. This is a prime opportunity for traversing a Section
101 rejection. Where your claim includes elements not required for
successful performance of an abstract idea, the abstract idea
itself is not preempted. 2020
21. Traversal Strategy Prong 2 Ensure there are claim elements
drawn to significantly more than the abstract idea, or other
judicial exception, itself. This strategy is consistent with DDR
Holdings, LLC v. Hotels.com L.P., et al. (Fed. Cir. Dec. 3,
2014)(distinguishing over Ultramercial, Inc. v. Hulu LLC (Fed. Cir.
Nov. 14, 2014)). Unlike the claims in Ultramercial, the claims at
issue here specify how interactions with the Internet are
manipulated to yield a desired result a result that overrides the
routine and conventional. It is also clear that the claims at issue
do not attempt to preempt every application of the idea. Again,
this is a prime opportunity for traversing a Section 101 rejection.
Where your claim includes elements not required for successful
performance of an abstract idea, and these elements are not
conventional, the abstract idea itself is not preempted. 2121
22. Traversal Strategy Prong 2 Considering the guidance of
Alice itself, consider whether the claim provides: Improvement to
another technology or technology field; Improvement to the
functioning of a computer itself; or Meaningful elements beyond
generally linking the use of an abstract idea to a particular
technological environment. Where any of these are true, the claim
provides significantly more than the abstract idea itself.
2222
23. Traversal Strategy Prong 2 Also: Frame the claim such that
it provides a technical solution, preferably to a technical
problem. Ensure the claim is not entirely generic in the sense that
you are only claiming use of some technical widget to achieve some
desired result. Instead, claim how to manipulate the technical
widget to achieve the desired result. In traversing a rejection,
consider the abstract idea and whether every claim element is
required to perform the abstract idea. For each extra,
non-conventional and non- generic element, consider the impact of
the element on system performance, simplification, greater
accuracy, etc. Then argue: Non-preemptive, and The improvement.
Tip: To find such extra elements not required by the abstract idea,
look to what is missing in the main prior art reference. 2323
24. Traversal Strategy Prong 2 Also consider Diamond v. Diehr,
450 U.S. 175, 1981. In Diehr, the computer was used to perform
calculations to produce an output related to cured rubber and the
claim was held patent eligible. Arguing by analogy that the claim
is more like Diehr and less like the other Supreme Court decisions
holding claims ineligible has been successful for some. 2424
25. 25 Claiming Strategy
26. Claiming Strategy Consider your claiming strategy as a
whole. In recent years, a commonly employed strategy has been to
start broad and pursue narrower coverage in continuation and
divisional application filings. In view of the current state of
Section 101 practice, turn that around and go for the tailored
coverage first and then broaden via continuation and divisional
application filings. 2626
27. Claiming Strategy Regardless of what the current Guidelines
state and how closely tied to the Alice decision they may be, the
current Guidelines are being aggressively applied in rejecting
claims under Section 101 as being directed to ineligible subject
matter. But, this is a dynamic issue in United States Patent Law.
Thus, it may be advisable to delay prosecution, where possible,
until the law has settled and experience has been gained. Before
replying to rejections and perhaps before filing an application:
Consider filing provisionally to buy time to modify claims prior to
examination; Wait until the three-month date to reply; and If
appeal is an available option and considering the backlog of
appeals, appeal, monitor the developing state of Section 101
practice, and file an RCE to return the application to prosecution
when prudent. Also, consider preliminary amendments prior to
examination for pending utility applications in view of the
developing state of Section 101 practice. 2727
28. Claiming Strategy When drafting and amending claims:
Consider what the technical effect of the subject matter is and
whether the subject matter: Improves system performance; Enhances
security; Presents new user interfaces; Improves another technology
or technology field; or Applies an abstract idea, mathematical
formula, or natural phenomena in a specific manner for a specific
purpose or result. If so, ensure the claim is carefully tailored to
reflect this and not in an overly broad or generic manner such that
the claim may be considered preemptive. Include strategically
focused independent claims with regard to the most important
embodiments. 2828
29. Claiming Strategy Consider the process start to finish or
top-down. Then focus on where the technical intelligence lies.
Tailor the claim to focus on this/these specific point(s) of
technical intelligence and ensure the specification includes
thorough description thereof not only for adequate enablement, but
also to provide enhanced amendment opportunities. Also, these are
the elements that are most likely to be outside of what is required
to perform an abstract idea. 2929
30. Claiming Strategy By following this strategy, it is quite
likely you will eliminate superfluous elements leaving a
technically-focused claim. Personally, I find this strategy very
useful when dealing with business-related inventions. If you claim
a business process from start-to-finish, the claim may be
technically and contextually accurate. But the context may distract
from the technical importance and full breadth of the invention.
Field of use limitations are unlikely to help a claim overcome a
Section 101 issue, so including non- technical contextual
limitations are unlikely helpful and unduly limiting. While there
may be a business process involved, we win the day by focusing on
the technical merits. 3030
31. Claiming Strategy Consider filing method and apparatus
claims in separate applications to help avoid possible disregard of
apparatus claims with similar elements as method claims held to be
ineligible. Dont forget about design patents for user interfaces.
3131
32. 32 Thank you Jim Hallenbeck Patent Attorney | Principal
Schwegman, Lundberg & Woessner, P.A. 1.612.373.6938
[email protected]