Friday, March 16, 2018

Beating Alice: Improvement arguments win Apple claims on context-based to-do list item generation

Takeaway: Apple Inc. inventors filed a patent application for an invention relating to context-based to-do list reminders, of the type that might be entered to a smartphone via voice command.  Pertinent to the claims at issue, the specification describes automatically applying context on initial entry of the reminder (e.g., "Remind me to call George," or even "Remind me to call him," can be automatically disambiguated to "George Smith" based on, for example, the recentness of a phone call or e-mail with that particular George).  The applicant appealed a subject matter eligibility rejection of claims to methods for storing, in association with a task item, a plurality of attributes derived from context data.  Likening the claims to those found ineligible in SmartGene, Inc. v. Advanced Biological Labs., SA, 555 F. App'x 950 (Fed. Cir. 2014), as mere mental steps performed by a computer, the examiner held that the claims were directed to the "abstract idea of gathering of user information related to tasks that are based on user input and contextual data to display and assign task to a user which is viewed as the comparing of new and stored information and using rules to identify options."  The examiner further found the context-based attribute derivation to be insignificant extra-solution activity that did not "amount to significantly more than the judicial exception because it is not clear that there is any meaningful improvement in the technology or to the technological environment."  The appellants argued that the claims were directed to intelligent generation of reminders and tasks in electronic to-do lists based on user input and context data separate from the user input, and not to a fundamental economic practice or mathematical algorithm, or to anything that would preempt all practical applications of an abstract idea.  The appellants further argued that the claimed subject matter represented a technological improvement over the previous state of the art in digital assistants.  Noting that the examiner failed to adequately address the appellants' improvement arguments, the Board reversed the judicial-exception eligibility rejection.


Ex parte Gruber

Appeal No. 2017-001924; Application No. 13/251,088; Tech. Center 3600
Decided:  Feb. 27, 2018

Improvement arguments would seem to be the fissure in Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), that patent seekers are now laboring to widen into a gaping portal.  Apple eked through this portal after throwing a litany of arguments at the Board and sticking one that persuaded the panel—an improvement argument.

The application on appeal described techniques for processing task items, among them, one in which a task item is generated based on input from a user and context of the input.  A representative claim on appeal read:

1.         A method comprising:
            at an electronic device comprising one or more processors and memory storing one or more programs for execution by the one or more processors, the method comprising:
            receiving, from a user, input that expressly specifies one or more first attributes of a task;
            based on the input, generating a task item for the task;
            automatically without user intervention, retrieving context data that is separate from the input;
            deriving from the context data one or more second attributes of the task; and
            causing a plurality of attributes to be stored in association with the task item, wherein the plurality of attributes includes the one or more first attributes and the one or more second attributes, and wherein the task item is stored in a list of task items to be displayed to and performed by the user.
(Emphasis added.  The unorthodox "at an electronic device" element—unorthodox because it stuffs a structural element in a method claim—was added in response to a pre-Alice subject-matter eligibility rejection, in a May 2013 amendment that also deleted "wherein the method is performed by one or more computing devices" from the end of the method.  The same amendment fleshed out the retrieving step a bit more.)

The meaning of the claim can be understood in light of an example provided by the appellants in the specification and appeal brief (at page 55):

[U]pon receiving an email from "Jack Bauer" asking for a status update about a project named "Project Bunny," a user can provide to a device the voice input "Send him an email about the project when I get home," which expressly specifies a first attribute of a task (e.g., send an email regarding the project). Using contextual data (e.g., the email from "Jack Bauer"), the device can determine second attributes of the task (e.g., that "him" refers to "Jack Bauer" and that "project" refers to "Project Bunny"). The device can then generate or store a task item that includes the first and second attributes (e.g., "Send Jack Bauer an email about Project Bunny").
(The specification also describes later triggering a notification that can be context-based.  For example, a reminder to "pick up my dry cleaning" can be delivered when it is next detected that I am driving, as opposed to the reminder being delivered at a set time, when I might happen to be at my office or home and thus not especially disposed to running an errand.  However, it seems that no claims at issue were directed particularly to this alternative/additional context-based notification trigger feature.)

After a long prosecution that included an RCE and an interview, the examiner finally rejected the claims under 35 U.S.C. § 101 as directed to
the abstract idea of gathering of user information related to tasks that are based on user input and contextual data to display and assign task to a user which is viewed as the comparing of new and stored information and using rules to identify which is the mental steps done on a computer.  The mental steps include the insignificant extra solution activity of receiving data from a human which is not a statutory category, retrieving data regarding the user and task, saving data related to the task, and displaying information.  These insignificant extra solution activities are used to derive information about the assignment of tasks is seen as the use of the use of mathematical relationships/formulas of data in order to provide the required tasks of a user which is seen as a form of using mathematical relationships/formulas to determine the organizing of human activities thus an abstract idea.
(Emphasis added.)  The final rejection also stated that "it is not clear that there is any meaningful improvement in the technology or to the technological environment," despite an improvement argument having been placed on the record in response to the previous Office action.  See March 2, 2015 filing, pages 11-12.

The appellants repeated and expounded on the improvement argument in the appeal brief:
The claimed invention . . . contemplates the intelligent use of "context data" in addition to user input to improve the accuracy, relevance, and usefulness of tasks generated for electronic to-do lists.  As a result, fewer interactions between the digital assistant and the user are needed to adequately define the generated task, which enhances the computing efficiency and battery life of the electronic device and improves user experience.  These improvements represent improvements to the technology and technical field of digital assistants specifically, and computers in general.  For example, no general purpose computer could perform the complex association of task attributes based on context data without the instant invention.
In the answer brief, the examiner even went so far as to argue that "the claimed invention is not a technical problem being solved, it is a managerial problem being solved as invention seeks to notify the assignment of tasks to workers . . . and this is worker reminder to perform tasks."

In their reply brief, the appellants leaned on recent case law, including BASCOM Global Internet Servs. v. AT&T Mobility LLC, 827 F.3d 1341 (Fed. Cir. 2016), and Amdocs (Isr.) Ltd. v. Openet Telecom, Inc., 841 F.3d 1288 (Fed. Cir 2016), and argued that the examiner's finding that the claims related to a managerial problem were a mischaracterization.

The Board found that the examiner failed to address the specific recitations of the claims, including those that resulted in relieving the user of making further input of context data after the first attribute of the task is received.  The panel held that the record contained no explanation as to "why the derivation of context data without user intervention is not a technical improvement to the process of gathering user information," and reversed the subject-matter eligibility rejection.

My two cents:

The appellants won here not only because they were able to offer facially plausible improvement argument, but also because the examiner did not effectively address it.  Below, I'll offer some tips for making improvement arguments that are proofed against a wider arsenal of examiner countermeasures.  First, I want to talk more broadly about the increasing importance of improvement arguments and why patent practitioners ought to know how to make good ones.

At the moment, improvement arguments are among the most promising approaches to countering Alice rejections alleging that colorably statutory subject-matter claims are directed to mere abstract ideas, given how unadministrable the Supreme Court's separation of the abstract-idea analysis into two "steps" of dubious distinction has proven to be.  (What is "significantly more," really?  And if a claim has the magic "significantly more" in step two, how is it right to label the claim an abstract idea in step one?)

A brief historical background might start with the text of § 101, the relevant portion of which, declaring patentable "any new and useful improvement" on any "process, machine, manufacture, or composition of matter" (emphasis added), dates to 1793 statutory language attributed to Thomas Jefferson.  Following a tradition established by a line of pre-1952 cases, the binary coded decimal conversion method case of Gottschalk v. Benson, 409 U.S. 63 (1972), judicially supplemented the statute, declaring "[p]henomena of nature, though just discovered, mental processes, and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work."  The tension between the statutory prescription and these judicial proscriptions has undergirded all subject matter eligibility jurisprudence since, including the abstract-idea cases of Bilski v. Kappos, 561 U.S. 593 (2010), and Alice.

The potential success to be had in overcoming abstract-idea subject-matter-eligibility rejections with improvement arguments was augured in the Alice decision itself, wherein the Supreme Court noted that the claims at issue in that case did not "purport to improve the functioning of the computer itself or effect an improvement in any other technology or technical field," unlike those at issue in Diamond v. Diehr, 450 U.S. 175 (1981), which "were patent eligible because they improved an existing technological process, not because they were implemented on a computer."

In the e-commerce patent case of DDR Holdings, LLC v., L.P., 773 F.3d 1245 (Fed. Cir. 2014), claims variously characterized as being directed to, among other allegedly abstract ideas, "making two web pages look the same," "syndicated commerce on the computer using the Internet," and "making two e-commerce web pages look alike by using licensed trademarks, logos, color schemes and layouts" were held patent-eligible because the claims did "not merely recite the performance of some business practice known from the pre-Internet world along with the requirement to perform it on the Internet.  Instead, the claimed solution is necessarily rooted in computer technology in order to overcome a problem specifically arising in the realm of computer networks."

The Federal Circuit further latched on to the implication in Alice of an "improvement" solution to the "abstract-idea" problem in Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016), deciding that pure software claims could be eligible under step one of Alice test where "the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity."  Several months later, the appellate court's decision in McRO, Inc. v. Bandai Namco Games America Inc., 837 F.3d 1299 (Fed. Cir. 2016), held that claims for automatically animating characters using particular information and techniques were directed to a "technological improvement over the existing, manual 3-D animation techniques" and not to a mere abstract idea of "automated rules-based use of morph targets and delta sets for lip-synchronized three-dimensional animation."

Subsequent USPTO guidance issued November 2, 2016 urged that an "improvement in computer-related technology" is "not limited to improvements in the operation of a computer or a computer network per se, but may also be claimed as a set of 'rules' (basically mathematical relationships) that improve computer-related technology by allowing computer performance of a function not previously performable by a computer."  The January 2018 revision of the MPEP now discusses improvement arguments in sections 2106(II), 2106.04(a)(I), 2106.04(a)(1)(II), 2106.05(I)(A), 2106.05(a), 2106.05(d)(I), 2106.05(f)(2), 2106.06(b), and 2106.07(b) and (c).  Favorable improvement cases continue to trickle from the CAFC, like Thales Visionix, Inc. v. United States, 850 F.3d 1343 (Fed. Cir. 2017) (finding eligible claims directed to an improved method of calculating the position and orientation of an object on a moving platform), Finjan, Inc. v. Blue Coat Systems, Inc., 879 F.3d 1299 (Fed. Cir. 2018) (finding eligible claims directed to an improvement behavior-based virus scan), and Core Wireless Licensing S.A.R.L. v. LG Electronics, Inc., 880 F.3d 1356 (Fed. Cir. 2018) (finding eligible claims directed to an improvement in user interfaces).

A survey of recent PTAB decisions will show that improvement arguments are not easy to win at the Board—affirmances far outnumber reversals—and a survey of final rejections will show that examiners are often confused when it comes to asserted-improvement law.  For example, some examiners wrongly believe that for an improvement argument to overcome a subject-matter eligibility rejection, the asserted improvement must improve the speed, efficiency, security, etc., of one or more hardware elements such as a computer processor.  This misimpression is discredited with citation to McRO, where the improvement was to the state of the art of computer animation and had nothing to do with making computers themselves faster, more efficient, more secure, etc.  The same point could be made by reaching back to Diehr, in which the claimed invention likewise merely used a computer as a tool for improving an art, and nevertheless was found patent eligible.  Some examiners also misread the "effect an improvement in any other technology or technical field" language from Alice to mean that the asserted improvement must be effected in a different technology or technical field than that to which the claims pertain, which, of course, is nonsensical.  The rules of English grammar suggest that, as used in the quoted language, the word "other" is only meant to convey that computer functioning is itself one technology or technical field among many amenable to patentable improvement.

Even so, as the present case of Gruber shows, improvement arguments can be won, so let's dive into some practice tips.

1. Know that "improvement" means a technical benefit that comes out of the claims.
What is an "improvement"?  Necessary but not sufficient to every improvement argument is demonstration of a clear difference between the claimed invention and the previous state of the technology field.  A showing of such a difference, while sufficient to overcome an anticipation rejection made under § 102, is not all that is needed to overcome a subject-matter eligibility rejection made under § 101.  Ultimately, a successful showing of an improvement requires answering the questions of (1) what benefit relative to the previous state of the technology field comes from the demonstrated difference, and (2) how does that benefit inure from positively recited claim elements?

2. Don't argue non-technical improvements.
In order for an improvement argument to hold water, the claimed invention should improve a technical problem, not, for example, a business problem.  See, e.g., Ex parte Xiao, No. 2016-002437 (P.T.A.B. Nov. 30, 2017) (finding ineligible claims directed to an improved methodology for forecasting new product sourcing).  Any examiner efforts to recharacterize technical-problem claims in an ineligible light (as the examiner attempted to do in Gruber by recasting the invention as solving only a "managerial problem") should be called out and credibly controverted on appeal.  Merely automating previously manual processing by using computers does not qualify as an eligibility-rejection-defeating improvement.  Credit Acceptance Corp. v. Westlake Servs., 859 F.3d 1044 (Fed. Cir. 2017).  So, it is helpful if the specification and claims are drafted with these prohibitions in mind to better draw out the improvement and the technological field it relates to and to distinguish the invention in its fundamental character from those inventions already judicially prohibited as abstract.

3. Make it clear that you are attempting to overcome a rejection with an improvement argument.
Any improvement argument should be placed clearly on the record.  A patent practitioner should consider using the phrase "specific asserted improvement" in the argument and should consider at least citing to one or more cases like EnfishMcRO, and Thales, signaling the line of eligibility argument being pursued.  More preferably, if possible, the patent practitioner will clearly analogize the disputed claims to claims from one or more Federal Circuit or Board cases already held patent-eligible in consideration of improvement arguments.

4. Be specific as to the asserted improvement.
Another mistake that applicants make is merely stating that an invention improves a technology field, without showing exactly how the field is improved or what the precise improvement is.  In accordance with the Enfish requirement for a "specific asserted improvement," the improvement asserted should be sufficiently particularized, for example, by showing in a non-conclusory fashion that a better result is achieved by the claimed invention, or that the claimed process is more efficient, etc.  Asserting an "improvement" in only a general sense, without supportive detail, is unlikely to be looked on favorably by an examiner or the Board.  See, e.g.Ex parte Spears, No. 2017-009838 (P.T.A.B. Mar. 8, 2018) (sustaining an eligibility rejection where the contended improvement was "provid[ing] access to content . . . in a non-conventional manner that substantially improves a user experience").

5. Explain real-world benefits of the improvement.
The argument should explain how the asserted improvement is substantial, i.e., provides a real-world advantage to practitioners of the art.  An alleged improvement that lacks substantiality may be looked on by PTO as not a real improvement and therefore disqualified from the improvement exclusion to the judicial exception to § 101.  Especially to the extent that an improvement can be characterized as a mathematical one (e.g., reduced noise in a signal), it can sound abstract, and it may need to be shown how the mathematical improvement relates back to the real-world invention practitioner.  There is no wasted ink spent convincing examiners and APJs what the invention practitioner is getting out of the invention that couldn't be gotten before.

6. Through argument or amendment, make sure the asserted improvement is commensurate with claim scope.
Asserted improvements can be explicitly recited in claims (e.g., in a "postamble" clause introduced by "thereby," "whereby, or the like), or inherent to the claims; the improvements can be quantitative or qualitative; but in any case, they are more easily discounted if they are not shown to apply to all claimed embodiments within recited claim scope.  Just as a claim can be properly rejected under § 112(a) for greater breadth than the disclosure enables (see MPEP § 2164.08), an improvement argument can fail if claims can be reasonably read to be broader than embodiments to which the asserted improvement is confined.

If the explanation of the improvement shows that it applies to a limited subset of the claim scope, then either it should also include an explanation that a person of skill would understand that the improvement applies to more than just the explained claim scope subset (i.e., the explanation should be "scoped up" to the full scope of the claim), or the limited scope subset should be recited in the claim (i.e., the claim should be "scoped down" to what the improvement has been explained to apply to).  The applicant should ensure that changes to claim scope are afforded patentable weight.

Consider, for example, method or computer-readable media (CRM) claims directed to vehicle maneuvering software used in a self-driving car, rejected under § 101 as allegedly directed to an abstract idea.  The motivation behind the invention was to solve a problem with the parking phase, and a good improvement argument can be made that the claims provide a substantial, particular improvement in the parking of self-driving vehicles.  Yet, the claims do not recite parking, but instead recite vehicle navigation more generally.  Under such circumstances, it may make sense to narrow the claim scope to parking embodiments of the invention via amendment before proceeding to appeal, if a broader improvement argument applicable to all claim embodiments cannot be made.

7. Provide evidence in support of the improvement argument where necessary.
Successful improvement arguments have often been very simple ones, pointing to the art problems and solutions described in the specification.  In some cases, however, the improvement argument may require explanation that is extrinsic to the original disclosure.  This is permissible; like all other arguments for patentability made in response to a rejection, an improvement argument is not an amendment to the disclosure and cannot be considered new matter.  As such, where an improvement argument cannot ride solely on scientific reasoning (e.g., showing cause and effect), it can resort to evidence comparing claimed results to conventional results.  Such evidence can be documentary (e.g., white papers, book chapters) or testimonial (e.g., declarations entered under Rule 132), and is not limited to reference materials from before the priority date of the invention.  In some instances, the argument can be bolstered by collected data and visual aids such as graphs and charts.  Just as it is important to marshal the needed evidence at the procedurally appropriate time prior to appeal when combating anticipation or obviousness rejections at the Board, it can be important to build the evidentiary record to support an improvement argument before going to appeal.

8. Identify the previous state of the technology field carefully.
Any improvement argument will need to identify the previous state of the technology field in order to illustrate the distinction from, and provided benefit over, this previous state.  This identification can be done by way of example, and is sometimes already done by the examiner elsewhere in prosecution via the one or more references produced to support one or more art-based rejections.  Thus, it may be that the previous state of the technology field is that described in art from an overcome or still-disputed § 102 or § 103 rejection, and it might still be clear that the improvement is relative to that art.  In other instances, particularly following amendment to distinguish art that is not particularly relevant to the intended invention, it may no longer be appropriate to use examiner-cited art as the basis for comparison, and the applicant may want to select a different example as the basis for comparison.  Where art-based rejections have been overcome, an advantage to using examiner-cited art as the basis for comparison is that there is already agreement that there is a difference between the claims and the eliminated-art examples.  If that art does not best represent the previous state of the technology field, perhaps because it addressed a fundamentally different problem or involved fundamentally different means, then it may be advantageous to carefully select an example best suited to illustrate the asserted improvement.

I hope these tips have provided some food for thought when next crafting improvement arguments to overcome judicial-exception subject-matter eligibility rejections.  In future posts I'll cover a few more recent Board decisions in which improvement arguments won the day.

1 comment:

  1. Thank you very much for an eye-opening post.
    I believe my two cents from this post are that the 101 was invented to overcome the Examiner's duty to articulate obviousness rationals. Now he can just throw at an applicant "it's an abstract idea", and the applicant is compelled to explain the invention - something we always tried not to do in order not to establish damaging file wrapper estopels.
    Do you agree?