- Execution by a machine — weighs against an abstract idea
- Transformation of an article — weighs against an abstract idea
- Application of a Law of Nature — weighs in favor of an abstract idea
- General principle involved in executing the method — weighs in favor of an abstract idea
The Examiner should provide a "clear rationale supporting the determination that an abstract idea has been claimed, such that the examiner establishes a prima facie case of patentability."
My two cents: Note that the guidelines speak only of method claims. Thus, I would expect Examiners to stop applying "abstract idea" to apparatus, system, or computer-readable medium claims. I find this encouraging, since I understand that the Solicitor's office looked carefully into the case law in drafting these guidelines. So far, the district courts and the BPAI have routinely applied "abstract idea" to all types of claims. I wonder if the BPAI will take a look at the Examiner guidelines. [Perhaps they should not, as a matter of policy, in order to keep some degree of judicial independence.]
As soon as Bilski was released, the PTO released a memo to Examiners indicating that guidelines were in the works, and a one paragraph summary of how Examiners were to handle Bilski in the meantime. The summary said that a method claim that fails the Machine-or-Transformation test should be rejected under § 101 absent a "clear indication" that it is not directed to an abstract idea. A number of practitioners expressed concern about the phrasing used the memo, interpreting this as shifting the burden to the applicant to show patent eligibility before the PTO even made a prima facie case. (For example, see the guest post here on PatentlyO.) The PTO's guidelines specifically state that the Examiner must establish a prima facie case. I'm interested to see if this statement allays those concerns.
I speculated in an earlier post on whether the Machine-or-Transformation was a safe harbor, such that passing MoT ended the analysis. The PTO guidelines have a clear answer to this question. Machine is a factor, as is Transformation. But the ultimate issue is whether or not a claim is directed to an "abstract idea." Thus, it's theoretically possible under the guidelines that a given claim could be executed by a machine and transform an article, and still not be patentable subject matter, if the remaining factors outweigh the first two.
Gee, who could have seen that coming? I don't know, maybe anyone who read Bilski?
ReplyDeleteAll these guidelines are quite worthless though, whether or not a claim is directed to an abstract idea or not is a question of fact. Not something that needs to be "balanced". It only needs to be "balanced" if you don't know how to do the analysis properly.
Just another shortcut, just like MOT, except longer and looks more complicated.
I think the guidance puts examiners in a tough spot; at least temporarily. There are no safe harbors for establishing patentability or unpatentability under 35 USC 101. Accordingly, examiners can expect to be second guessed by practitioners and the BPAI. I suspect that examiners who "short cut" the analysis will have to deal withh responses challenging their rejections on exactly that point.
ReplyDeleteI'm not sure what "anonymous" point is by calling the question of abstractness a question of fact. If there are conflicting factors, as will often be the case, the examiner is going to have to do a balanced analysis.
@NonAnon:
ReplyDelete>guidance puts examiners in a tough spot
Definitely more work for them.
>examiners who "short cut" the analysis will
>have to deal with responses challenging
>their rejections
Absolutely that's what I plan to do if that situation comes up. That's the great thing about the guidelines: it tells the Examiner to put something on the record (which I can then argue about), and if they don't do as required, I can challenge them on that.
"and if they don't do as required, I can challenge them on that. "
ReplyDeleteYou're confusing a "requirement" with "guidance" Karen.
>You're confusing a "requirement" with
ReplyDelete>"guidance" Karen.
You know, as *soon* as I posted that comment I thought "maybe I should have qualified that because I know I can't appeal on the grounds that the Ex. didn't follow guidelines."
OK, challenge was the wrong word.
Nonetheless, guidelines are the Applicant's friend. Here's why.
If an Examiner doesn't use factor analysis at all and instead merely concludes "method is abstract", I *can* challenge him at the BPAI by saying the Ex didn't provide a prima facie case for his rejection. [I may have backup arguments too, but this is a valid grounds for challenge.]
If the Examiner doesn't perform a factor analysis and instead shortcuts with only the MoT, saying "computer is not a particular machine", then the guidelines give *me* a list of things to use. Ie, even if lack of particularity points toward abstract, these other factors point away from abstract.
"...whether or not a claim is directed to an abstract idea or not is a question of fact."
ReplyDeleteGot a cite for that?
>"...whether or not a claim is directed to an
ReplyDelete>abstract idea or not is a question of fact."
>
>Got a cite for that?
I don't know what the Original Poster meant by "question of fact." Since I'm a lawyer, and this is a legal term, I assumed OP was contrasting this with a question of law.
Proceeding under that assumption ... surely we don't know the answer to this question yet. I mean, we don't have any post-Bilski law.
But does it really matter? Questions of fact are decided by the fact finder (judge or jury) where questions of law are decided by the court.
OP, if you didn't mean question of fact vs. law, you should let us know what you did mean. [I gotta refer to you as Original Poster, since *everybody* is *still* Anonymous around here except for Non-Anon.]
Karen opined...
ReplyDelete" I *can* challenge him at the BPAI by saying the Ex didn't provide a prima facie case for his rejection."
In my opinion, while this is literally true, it is probably not really all that helpful to make such a challenge unless there are no other rejections in the case. It seems likely that the Board will just issue a spontaneous, fully fleshed out 101 rejection. It's even possible that the board will affirm an incompletely established rejection with its own more complete reasoning.
Applicants simply cannot afford to allow cases with some potential of receiving a 101 rejection to get to the board without fully fleshing out the issues. Even if the examiner refuses to issue a 101 rejection, the applicant is in danger of having the BPAI issue a 101 rejection while blowing off the 102/103 issues on appeal.
"But does it really matter?"
ReplyDeleteI think it does. If it's a question of fact, the examiner need only provide relevent evidence that a reasonable mind "might accept as adequate to support the conclusion" whereas if it is a question of law (based on underlying questions of fact, presumably), the examiner would have to prevent evidence that established by a preponderance that the claim was directed to an abstract idea.
IDK, I think there's a difference between evidence that a reasonable mind might (not, mind you, will) accept as adequate to support the conclusion versus evidence that establishes the conclusion by a preponderance (i.e. it is more likely than not).
Maybe I'm just splitting hairs.
I just asked for the cite because I don't know if it is fact or law, but I'd like to know.
>difference between evidence that a reasonable
ReplyDelete>mind might accept as adequate to support the
>conclusion vs evidence that establishes the
>conclusion by a Preponderance of the
>Evidence.
Ah. Interesting. So the distinction is the burdens of proof.
OK, I'll rephrase. Doesn't matter until your patent gets to court.
>I don't know if it is fact or law, but I'd
>like to know.
An interesting question, though a bit outside of my usual world of patent pros.
I've never seen an opinion discussing fact vs. law for 101. I know claim construction is question of law because every opinion says so, and I know obviousness is a mixed question because I read that in an opinion recently.
Maybe one of the old 101 opinions says something -- I'm not really up on the long history of 101 case law. But I wouldn't be surprised if this precise issue hasn't been decided.
How would it even come up ... the question was sent to the jury, and on appeal the losing party said "should be question of law", and then the Fed Cir decides?
NotAnon said:
ReplyDelete>Applicants simply cannot afford to allow
>cases with some potential of receiving a 101
>rejection to get to the board without fully
>fleshing out the issues.
I agree that if you go to the Board and rely only on "Examiner hasn't made a PF case", then you're in danger. Not just for 101, but for any type of rejection.
Which is why I go to so much trouble to force the Examiner to put something on the record. Once he puts an explanation of a rejection on the record, *then* I have something I can rebut.
What's challenging is when the Examiner *doesn't* explain. When the passage in the reference he relies on is all about a heating element and you claim a cooling element. When the Examiner says "storage medium" is abstract.
In such cases, you're left with guessing what the Examiner might have been thinking and refuting that. Then the record is full of your arguments about what the claims mean or why your claim is not abstract, which creates argument estoppel regardless of whether its relevant.
Would anybody out there respond to a 101 rejection that didn't provide any explanation by evaluating the factors themselves?
"then you're in danger. Not just for 101, but for any type of rejection."
ReplyDeleteTrue, but a 101 rejection is different because the BPAI might not even address the art rejections under appeal if they sustain the 101 rejection in the case.
"Would anybody out there respond to a 101 rejection that didn't provide any explanation by evaluating the factors themselves.
I think a response should probably cite at least one factor in favor of non-abstractness while pointing out the lack of a prima facie case. That said, there are probably at least some situations where I would amend the claims even if the examiner did not establish a prima facie case. There's no sense if trying to force the examiner to make a prima facie case if you have claims just like Bilski's.
>101 rejection is different ... BPAI might not even
ReplyDelete>address the art rejections if they sustain the >101 rejection
Good point. I see that all the time -- can't believe I overlooked that.
>cite at least one factor in favor of
>non-abstractness while pointing out lack of
>a prima facie case.
So a substantive argument of some kind, even if it's not the best you could make because you don't want to put too much on the record? Or "at least one" meaning the number of factors depends on the particular facts?
I'd argue as many as I could. When I originally said "argue the Examiner didn't make a PF case" I didn't mean that was my *only* argument.
>no sense if trying to force the examiner to
>make a prima facie case if you have claims
>just like Bilski's.
Good point. Assuming you *can* amend. From my understanding of the Bilski app, there was little that could be done to salvage the claims.
Almost every one of my apps involves a computer, and I would definitely amend to include a computer in the claims before appealing. If my app involved a more particular computer -- say, a GPS receiver -- then I'd have at least one claim that recited that. And if my app interacted with physical objects in general, I'd have a least one claim to a more specific object.
"Almost every one of my apps involves a computer, and I would definitely amend to include a computer in the claims before appealing"
ReplyDeleteWould you do that even if the examiner does not make a 101 rejection?
>>I would definitely amend to include a computer
ReplyDelete>>in the claims before appealing
>
>Would you do that even if the examiner does >not make a 101 rejection?
If I'm headed to appeal? Definitely. There's just too much risk that the Board will raise a new rejection under 101. In fact, I wouldn't be surprised if Examiners are reopening pros to reject under 101 upon filing of an Appeal Brief.
If I'm not headed to appeal, and the Examiner hasn't rejected under 101 ... I'd add a dependent claim that recites a computer in the body. To deal with possible invalidity challenges in court.